The Neglected Design Patent?

By Shaukat A. Karjeker

When people talk about patents, they generally mean a “utility patent.”  To date, over 8 million utility patents have issued in the United States.  In contrast, only about 680,000 design patents have ever issued.  Why that discrepancy?  It’s hard to fathom, especially after Apple Corp. recently won a $1.05 billion jury verdict for design patent infringement against Samsung Electronics in the ongoing battle for cell-phone supremacy.[1]  So, the oft-neglected and overlooked design patent is clearly “no lightweight” in high-stakes patent litigation between heavyweights.  Nonetheless, the utility patent has almost entirely subsumed the entire concept of “a patent” in the public mind.

While a utility patent provides exclusive rights in useful technology, its neglected design patent cousin provides exclusive rights in “ornamental designs.”  As marketing executives know, the ornamental design of a product is often as significant, or even more compelling, as the useful features of the product, especially in the consumer products marketplace.  Recently, the Federal Circuit Court of Appeals decided an appeal from a design patent case relating to a slipper design in High Point Design, [2] and succinctly stated the standards for obtaining a design patent, the standards applicable for determining design patent infringement, and the tests for determining the validity of a design patent.

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Texas Fashionably Late to the Uniform Trade Secrets Act Party

By Vincent J. Allen

Significant changes in the law in Texas with respect to trade secrets went into effect September 1, 2013, with Texas becoming the 48th state to adopt the Uniform Trade Secrets Act.  Previously, there was no central repository for Texas trade secret law, as it was a combination of the common law, restatements, and the Texas Theft Liability Act.

The Act changes Texas trade secret law in a number of material respects and applies to any alleged misappropriation occurring on or after the effective date.  The extent of the changes will be determined by the courts as they interpret the Act but the Act is believed by many to eliminate a number of ambiguities that existed in the prior trade secret laws of Texas.  The changes will make trade secret protection broader in some circumstances and narrower in others, but will likely give more clarity to what is and is not considered a trade secret in Texas.

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CLS Bank Patent Analysis and Claims Salvaging

By Kevin Klughart

The courts have been particularly active recently with respect to the question of what is patentable subject matter.  Despite this activity, there has been no real guidance provided by the courts to practitioners. In CLS Bank v. Alice Corp., the Federal Circuit found the claimed computer-related subject matter not patentable.  Unfortunately, there were seven different opinions in the case containing at least three different approaches to determining whether particular subject matter is patentable.

While the Federal Circuit and commentators have concentrated on the claims formation and issues regarding §101 patentable subject matter, the real issue not addressed by either party are the deficiencies in the SPECIFICATION and DRAWINGS.  Without a properly written specification with supporting drawings that define the invention, there is no hope of generating supporting claims that meet the court’s requirements for §101 patentable subject matter.  Thus, when properly analyzed, the issue in the CLS case is one of §112 disclosure and enablement, not subject matter.  Had the invention been disclosed and claimed in the proper manner, the chances of the Federal Circuit finding patentable subject matter would have been much better. Continue reading

Black Gold: Patent Battle Royale Moving From Silicon Valley to Midland, Texas? | Intellectual Property in the Oil & Gas Industry

By Bobby Braxton

We have all heard of the patent battles between tech giants Apple and Samsung.  It is easy to imagine the countless patents that protect the new iPhone and Galaxy smart phones.  However, intellectual property is not limited to the Steve Jobs and Mark Zuckerbergs of the world.  A huge amount of intellectual property is being developed, and protected, in the oil field.  In fact, the next major patent dispute is more likely to involve a method of fracking than a processor on a smart phone.  The reason, in part, is that as “easy oil” reserves become more and more rare, oil and gas companies are developing incredible technological solutions in order to harness oil, which was previously believed unreachable.  In solving these complex problems, they are developing vast amounts of intellectual property.  Oil and gas companies of all sizes need to begin protecting their intellectual property because their competitors are.  Failing to protect intellectual property will place these companies at a huge competitive disadvantage in the long run. Continue reading