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• Mediation of Patent Disputes—Part 3 of 3 In the first two parts of this series (Part 1, Part 2), we examined what mediation is and considered reasons why a party might desire to engage in mediation. In our final segment, we discuss how parties may come to mediate a patent dispute and provide an overview of the mediation process.    Getting to Mediation Parties can arrive at mediation in various ways.  Some courts order parties to a patent litigation to participate in compulsory mediation. The old adage “you can lead a... More
• Mediation of Patent Disputes—Part 2 of 3 Part 1 of this series discussed the general nature of mediation as a dispute resolution process. There are a number of reasons why parties may find it advantageous to attempt to resolve a patent dispute through mediation rather than litigation. Some of those reasons are considered below.  Uncertainty of litigation outcome – After more than 35 years in practice, I have come to understand that the only thing certain about the outcome of litigation is the uncertainty of the outcome. This is... More
• Mediation of Patent Disputes—Part 1 of 3 In recent years, mediation has been used with increasing frequency by parties to patent disputes for good reason. Mediation has the potential to achieve a rapid resolution of the matter upon terms mutually agreeable to the parties.  Mediation is an extra-judicial process that has been described as an assisted negotiation. It is a voluntary process in which parties to a dispute seek to resolve their differences with the aid of a neutral, disinterested third party (a mediator), who facilitates discussions by... More
• Young Innovators Begin Patent Filing for Robot Invention The United States Patent and Trademark Office can be a tricky area to navigate if you are not familiar with its proceedings. When a team of young inventors and their mentors approached us at Preti Flaherty to help begin the process for a patent application, we were excited to lend a hand.   Pro Bono Case Helps Team of Students This unique pro bono case had me meet a team of students ranging from grades four to six. The team and their coaches... More
• Patents as a Technology and Marketing Resource Several types of patent searches are known for identifying patents and published patent applications of potential interest. One type of search, often called a novelty search, is employed to identify prior issued patents and published patent applications relating to a particular concept or idea in an effort to assess patentability of the concept. Another type of search, often known as an infringement or freedom to operate search, is conducted in an effort to identify patents the claims of which may... More
• Your Business May Be Infringing on a Patent. What Should You Do? What should your company do if it becomes aware of a patent having claims that appear to be relevant to one of its products or receives a cease and desist letter charging infringement?      Enhanced Damage Awards and Awards of Attorney’s Fees in Patent Cases When a suit for patent infringement is filed, in the event of an adverse judgment, an infringer may be subject to permanent injunction that precludes further infringement and an order to pay the patent owner money damages to compensate... More
• Some Foreign Activities Can Result in Liability for Patent Infringement Under US Patent Law 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 process   Under US law one who imports into the... More
• Software Inventions See More Help in Bascom Decision 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
• HOPE FOR SOFTWARE PATENTS IN THE POST-ALICE LANDSCAPE 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
• Introducing a New Product? Should a Freedom to Operate Study Be Undertaken? 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
• UPDATE: President Signs Defend Trade Secrets Act of 2016 (DTSA) into Law and Imposes New Employer Whistleblower Immunity Notice Requirements 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 Passes Defend Trade Secrets Act of 2016 (DTSA) and Imposes New Employer Whistleblower Immunity Notice Obligation 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
• Your European Community Trademark Is About to Disappear - BUT DON'T WORRY! 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
• US Copyright Office Reports: WIPO Internet Treaties Require No Copyright Act Amendment to Protect Exclusive “Making Available” Rights 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 plaintiff to prove that an infringing work... More
• Final Office Actions - Sometimes Final Is Not So Final 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