Intellectual Property Blog

Preti Flaherty's intellectual property lawyers discuss developments and trends in the areas of patents, trademarks, copyrights, licensing and intellectual property litigation. The group, whose practice is international in scope, represents clients in more than fifty countries.

Recent Blog Posts

  • It is generally known that one who manufactures, uses, sells or offers to sell a product in the US or that practices a process in the US that is covered by one or more claims of a US patent is liable for patent infringement under US law.  Less well known is that certain activities involving activities outside of the US can give rise to a cause of action for patent infringement.(1)       Importing a product manufactured by a patented processUnder US... More
  • Since the Supreme Court decided Alice Corp. v. CLS Bank International, patent examiners and the courts have been working to better define patent eligibility. Following closely on the heels of their Enfish, LLC, v. Microsoft Corporation decision, the Federal Circuit provides more guidance on whether software qualified as patentable subject matter with Bascom Global Internet Services, Inc., v. AT&T Mobility LLC. Taken together, Enfish and Bascom indicate the future for software patents is not nearly as bleak as originally predicted when... More
  • The courts have long been attempting to establish an appropriate framework with which to handle software-based inventions. Even before the Supreme Court decision in Alice Corp. v. CLS Bank International numerous tests have been created to determine whether software qualified as patentable subject matter. Since Alice patent examiners and courts have stumbled over determining what makes a claim an abstract idea ineligible for patenting often at the detriment of software-based inventions. With Enfish, LLC, v. Microsoft Corporation the Federal Circuit... More
  • When developing a new product, companies will frequently engage counsel to perform a “freedom to operate” study in an effort to identify patents that might raise a risk of patent infringement following the introduction of the product. While there is nothing fundamentally wrong with this approach, there are pros and cons associated with the decision to proceed with such a study that are frequently not considered. What should be done if you find a patent or pending application that includes... More
  • President Barack Obama signed the federal Defend Trade Secrets Act of 2016 (DTSA) into law on Wednesday, May 11, 2016. As discussed in a prior blog article, the new federal trade secret law provides a new federal civil cause of action for trade secret misappropriation, and imposes new whistleblower immunity notice requirements on employers. The effective date of the DTSA is the date of enactment. Starting May 12, 2016, all employers will be required by federal law to “provide... More
  • Congress has passed a new intellectual property law to protect trade secrets. The law provides a new federal civil cause of action for trade secret misappropriation. The law also imposes a new whistleblower immunity notice requirement on employers.On April 27, 2016, the U.S. House of Representatives voted 410 to 2 in favor of a bill to enact the Defend Trade Secrets Act of 2016 (DTSA). Congress presented the bill to the White House on April 29, 2016... More
  • On Wednesday, March 23, 2016, changes are coming to the world of European Community trademarks and Community designs. The Office for Harmonisation in the Internal Market (OHIM) has to date been the European Union (EU) authority responsible for examining new European Community trademark (CTM) and Community design applications and for maintaining registers of granted CTMs and Community designs.On March 23, 2016, OHIM will be renamed the European Union Intellectual Property Office (EUIPO), while the CTM will be renamed the European... More
  • Has the United States lived up to its obligations under the WIPO Internet Treaties to protect the exclusive “making available” right of copyright owners?  Some would argue no, and that Congress should amend the U.S. Copyright Act.  Others would argue that the exclusive rights provisions in Section 106 of the Copyright Act are adequate.In Internet copyright infringement litigation, this issue has arisen in the context of a plaintiff’s evidentiary burden of proof and whether the “making available” right requires a... More
  • Patent prosecution is a back and forth dialogue to get the broadest coverage allowable. In order to keep from bogging down the system, the USPTO can issue a Final Office Action to close off prosecution. There are limited choices to responding to these Final Office Actions. A recent pilot program has created a new option – the After Final Consideration Pilot 2.0 (AFCP 2.0).The traditional options included filing a Request for Continued Examination (RCE), Appealing and submitting a Response. An... More
  • Under the U.S. Copyright laws “Copyright protection subsists … in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”  Copyright protection includes works of authorship in pictorial form, including photographs.With this background I’d like to report on a case filed in the U.S. District Court for the Northern District of California in... More
  • Do you manufacture, ship, or sell products abroad that contain the ® trademark registration symbol on the products, labels, or packaging?  If so, did you know that you may face criminal liability, imprisonment, fines, seizure of your products, injunctions, unfair competition claims, damages, and other liability if you failed to register your trademark in the foreign countries where you manufacture, ship, or sell the products?“False marking” occurs when an unregistered trademark is represented as a registered trademark.  Internationally, the ®... More
  • The Visual Artists Rights Act (VARA) is part of the U.S. Copyright Law and is found at 17 U.S.C. §106(A). This law went into effect in 1990 and grants certain rights to visual artists. It is akin to moral rights laws which have been in existence for many more years in European countries. Works of art meeting applicable requirements provide the artist with certain rights in their works which are in addition to rights available to all authors under... More
  • People are generally aware that a painting, photograph, sculpture or other works of art are subject to copyright protection but many are less aware that copyright has many layers of possible protection which can present legal traps for the unwary. An original work of art which may be a painting, photograph or sculpture, is subject to copyright from the time of creation of the work.  The copyright is owned by the artist or creator unless the work was produced as... More
  • U.S. patent law provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,” 35 U.S. Code §101. This leaves open a broad range for potential patent protection. The categories of a “machine, manufacture, or composition of matter” provide for many traditional concepts of an invention, such as devices, chemicals or other physical objects. Focusing on these physical items as being invention... More
  • A Non-Disclosure Agreement (“NDA”), also known as a Confidentiality Agreement, is an agreement that precludes the use of confidential information provided by one party (a “Disclosing Party”)  to another party (a “Receiving Party”) for any purpose other than that expressly contemplated by the agreement.  Such agreements are routinely used in business. For example, when one party desires to enter into discussions with another party with respect to a potential business relationship or transaction, it is frequently necessary for the disclosing... More