Posts By: CCLaw

Practical Intellectual Property Practices for Corporate Clients

Imagine the embarrassment of having an email discovered during litigation where one of your employees exclaims that your new product probably infringes a competitor’s patent he has only just perused. Of course, it is sound business practice for companies to routinely review their competitors’ published patent applications and issued patents.    Armed with this information, your… Read more »

Trademark Abandonment

If you are a trademark owner who has several registered trademarks that correlate to various products in your portfolio, then you may have periods of time in which certain trademarks are not currently being used. While periods of non-use are often unavoidable, there are a few things to keep in mind during these times so… Read more »

Colin On The Mark Davis Show!

On February 19th, Colin Cahoon returned to the Mark Davis Show to discuss intellectual property.  The focus of the discussion was on entertainment and highlighted related considerations under copyright, patent, and trademark law. Colin discussed the recent lawsuits against the famous game Fortnite that have been brought under copyright as well as California privacy laws. … Read more »

Women Inventors—Does this group comprise you?

Albert Einstein, Thomas Edison, Samuel Morse, Henry Ford, Bill Gates—the list of famous male inventors that many Americans can recite from memory are endless.  Mary Kies, Hedy Lamarr, Bette Graham, Josephine Cochrane—do any of these names sound familiar?  These are just a few among many women who hold U.S. patents and have contributed significantly to… Read more »

Recapping 2018—The year of Data Privacy

Last year, General Data Protection Regulation (GDPR) went into effect in the European Union (EU) regulating and protecting data from individuals within the EU.  Large US companies operating abroad were forced to update their privacy policies and procedures and have opted to broaden the changes to individuals even outside the EU.  Although GDPR has already… Read more »

Principal vs Supplemental Register

If you are researching potential trademarks for your business or your products, you may have come across terms such as principal register and supplemental register. To the uninitiated, these terms can be a little confusing and opaque. So, what is the difference between the two and do you have a choice when you request registration… Read more »

Don’t Go to the Trouble of Creating a Website and then Ignoring the Trademark Infringement Lawsuit – Neutron Depot LLC v. Bankrate, Inc.

If you’ve taken the time and effort to create a website in a competitive industry and your trademark is arguably close to an industry competitor, don’t make the mistake of ignoring a subsequent trademark infringement lawsuit.  In a recent case set in the federal court for the Southern District of Texas, Insurance Depot Marking Corporation… Read more »

How to Fight the Jabberwock Known as Alice

“Beware the Jabberwock, my son!” from Through the Looking Glass, and What Alice Found There (1871) by Lewis Carroll. Since Alice v. CLS Bank[1], companies have found that obtaining software patents is more difficult, especially as many software patent applications going through the examination process at the USPTO were drafted before the Alice decision.  Although… Read more »

Carstens & Cahoon, LLP Intellectual Property Scholarship – $750

Carstens & Cahoon, LLP has partnered with the JL Turner Legal Association Foundation to offer a $750 scholarship to a diverse law student interested in Intellectual Property. The following criteria are to be considered: Science or Engineering undergraduate degree (strongly preferred) Demonstrated interest in Intellectual Property Law (courses, seminars, club memberships, etc…) Connection to DFW and/or… Read more »

Solving Alice

The Supreme Court’s abstract ideas exception to categorical subject-matter eligibility under 35 U.S.C. § 101 has become the bane of computer-implemented inventions.  In June of 2014, the Supreme Court, in Alice Corp. Pty. Ltd. v. CLS Bank International, affirmed the framework for patent-eligibility initially set out in Mayo Collaborative Services v. Prometheus Laboratories, which includes… Read more »

Alice Corp. and an “Abstract Idea”

In the recent Alice Corp. v. CLS opinion, the Supreme Court described a two-part “framework,” for making such a distinction between patents that claim the building blocks of human ingenuity and those that integrate the blocks into something more: Determine whether the claim(s) at issue are directed to a patent-ineligible concept, (is it an abstract idea?) and if… Read more »

IP Trends We’ll Be Following in the Coming Year

As we transition in to a new year, we re-focus our efforts in certain trends in the area of intellectual property law.  Four trends are briefly discussed below. Data Privacy and Protection Big Data Growth and Use Post-Grant Patent Review via IPR Patent Subject Matter Eligibility after Alice Corp. v. CLS Bank  Data Privacy and… Read more »

Abstract Ideas – Are they Patentable?

Recently, the USPTO issued a memorandum to its Examiner Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” At its core, the memo addressed subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas. Comments were submitted by AIPLA and IPO… Read more »

Copyright Law

The Transmit Clause gives copyright holders the exclusive right to transmit or otherwise perform a copyrighted work to the public by means of a device or process.

CLS Bank Patent Analysis and Claims Salvaging

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… Read more »

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

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.

The Federal Circuit’s En Banc Opinion on Patentability Under Section 101 – It’s Splitsville!

by Gregory Perrone

This past Spring, in CLS Bank International, CLS Services Ltd. v. Alice Corp, Pty Ltd. 2011-1301 (Fed. Cir. May 10, 2013), a splintered en banc panel of the United States Court of Appeals for the Federal Circuit vacated its three-member panel’s reversal of the district court’s judgment and affirmed a grant of summary judgment of invalidity.

The en banc panel held that a patent claiming a computerized system and methods for eliminating settlement risk are not eligible for patent protection under 35 U.S.C. Section 101. While the panel’s six opinions and 127 pages provide a menagerie of commentary on why subject matter may or may not be patent eligible, little guidance is offered to inventors, patent counsel or the courts on how to determine whether subject matter is patentable.

Rudy, Rudy, Rudy!: Reducing Patent Fees for the Little Guy

by Bobby W. Braxton

It’s easy to root for the little guy.  Whether we are rooting for Rudy Ruettiger to take the field in Rudy, or for inventor Robert Kearns when he takes on Big Auto in the movie Flash of Genius (the Rudy equivalent for patent attorneys), we root for success stories.  A truly American success story is an invention that allows the smallest inventor to compete with the largest corporation.  Unfortunately, while individual inventors dream about inventing the next big thing, the costs and fees involved in filing a patent application often make these dreams prohibitively expensive.  According to the United States Patent and Trademark Office (“USPTO”), less than 20% of the patents granted in 2011 were awarded to so-called small entities, individuals or businesses with less than 500 employees.  How is the little guy supposed to compete?  The USPTO and the American Invents Act (“AIA”) have offered a few avenues to make it a bit easier for Rudy to get into the game.

Trademark Basics: What’s in a Name?

by Mandy K. Jenkins

Is the name of a new business or product really that important to its success?  As Shakespeare would say, “that which we call a rose by any other name would smell as sweet.”  No offense to Shakespeare, but most people would agree that when starting a new business or launching a new product, the name is very important.  The name gives people a first impression and is associated with the product or business forever.  So choosing the right name is paramount.  When deciding upon the name for a new company or product, you want to select a name that can be protected as a trademark, ensure your chosen name will not infringe another’s trademark, and take the proper steps to protect your trademark.

Patent Filers: No More Swearing

By Yon S. Sohn, as featured in The Texas Lawbook

New Year’s resolutions are made to be broken. But on March 16, the America Invents Act (AIA) will come to aid inventors and corporate R&D departments to keep their resolution to not swear anymore.

Of course, we are not talking about profanity but rather the practice known as “swearing
behind” or antedating the date of invention when procuring a U.S. patent. But first, let us cover a little background before further discussing this no-more-swearing law.

USPTO Announces Dallas Satellite Office Location

By Yon S. Sohn

Today, the U.S. Patent and Trademark Office (USPTO) announced the site of its Dallas Regional Satellite Office. (See the official press release here.) It is to be located in the Terminal Annex Federal Building on Houston Street, south of the Dealey Plaza, and it will be in the heart of the Dallas’s legal epicenter with George Allen Courthouse as its next-door neighbor.

Procedures for Opposing Issuance of Patents

By Yon S. Sohn

One of the new features of the AIA is the Post-Grant Review (PGR), often referred to as a third-party opposition. PGR allows any party to challenge any new or reissue patent.

Starting with patents issued having a filing date on or after March 16, 2013, an opposer will have a nine-month window to submit to the Director of the Patent Office a petition to cancel one or more claims on the basis of invalidity. Compared to ex parte or inter partes reexaminations previously available, PGR allows a broader scope of information to be used as evidence, including patents, printed publications, commercial sales, and public use.

Need for Speed? – Think Prioritized Examination

By Bobby W. Braxton

If asked how quickly would you like obtain a patent, most inventors would reply “now.”  Unfortunately, due to a large back-log at the USPTO, applications often wait two or more years before they are even examined by an Examiner. The America Invents Act now provides for Prioritized Examination (“P.E.”), which can significantly reduce the wait.

AIA Rolls Out New “Virtual” Patent Marking Provision

By Zach W. Hilton

U.S. patent law has long required that patent owners and any licensees mark products they sell with the patent number of any patents covering such products in order to recover pre-suit damages resulting from infringement.  Until the passage of the America Invents Act (“AIA”), compliance with the patent marking statute required that a list of patents appear on a covered product itself, although it was sometimes sufficient to mark the product packaging.  In either case, compliance with the marking statute led to increased manufacturing costs as it was often necessary to retool product molds and/or redesign packaging as additional patents were deemed to cover a product or as patents expired.  The end result was that patent owners were placed at a competitive disadvantage.

Sue the B**##@*S!: Jury Selection

Part 2: The Jury (It’s Not a Jury of Your Peers)

By Chris Kilgore

In the first part of this series, we noted the particular challenge of trying a complex or technical case before a jury.  This is an important consideration because, even though trial may not be the end game, litigation matters can sometimes take on a life of their own.

The phrase “jury of your peers” arises from the Magna Carta (1215).  At the time, it meant persons who actually knew the parties, the facts, or had the duty to discover the facts.  The concept of the jury trial as it was understood by the Founding Fathers was intended as another check on government power.  While the jury may work well in that role, the advent of tort litigation around the turn of the 20th Century and cases of ever increasing complexity has put new strains on the efficacy of the jury system.

Sue the B**##@*S!: The Litigation Decision

The conventional wisdom is that the number of lawsuits filed rises while the number of transactions fall in a down economy.  When times are good, companies tend not to worry about the “small stuff,” to not account for every penny.  But when times aren’t so good, every penny counts, and litigation is used much more… Read more »

The USPTO Count System: Using the Count-Carrot to Your Advantage

By Bobby W. Braxton

Everyone knows that there are times that are better than others for obtaining good deals.   One of the best times to buy a new car is at the end of the month when the car salesman is desperately trying to reach his or her quota for the month. Better deals can be had on retail items after the holiday season. Likewise, there are times when it is better to negotiate with the United States Patent and Trademark Office (USPTO) during the prosecution of a patent.

A patent examiner’s perfor

The Evolving Effect of Working Requirements in Foreign Jurisdictions

By Amanda K. Jenkins

The patent rules of many foreign jurisdictions contain working requirements. A working requirement is the requirement that, after a certain number of years, the patented invention be worked on a commercial scale in the country. The effect of these requirements has evolved in the last few years in many countries due to amendments to their patent laws.

Leveling the IP Field For Minorities

By Celina M. Orr

Although minorities have grown to recognize the rewards of the legal profession,
intellectual property law continues to be under-represented. Intellectual property (patents, trademarks, copyrights, and trade secrets) plays an important role in an increasingly diverse range of areas, from literature and the arts to genetic engineering. Yet there is a relatively small pool of diverse attorneys in the practice of intellectual property (IP) law.

Strengthening Your Patent Portfolio Through Reexamination

By Zach W. Hilton

In recent years, the United States Patent and Trademark Office (“PTO”) has been plagued with a substantial backlog of pending patent applications awaiting examination. The PTO reports that it now takes a little over two years on average to provide an applicant with a first office action. As a result, the PTO has been under increased pressure to accelerate the examination process.

Pirates of the Twenty-First Century – Tips for Fighting Back Against Counterfeiting

By Zach W. Hilton

Worldwide Counterfeiting Epidemic

Over the course of the last couple of decades, the counterfeiting of almost every conceivable product has become endemic worldwide.  While thought of as harmless by many, the massive amount of trade currently occurring in counterfeit products can often lead to disastrous consequences for both individuals and businesses.

Intellectual Property Assignments in Employment Contracts: Employ Creative Thinking

By Celina M. Orr

If your business employs someone for their creative or technical abilities, you should strongly consider using an intellectual property assignment.  An intellectual property assignment can be part of a larger employment contract but, at a minimum, should clearly define ownership rights in the intellectual property created by the employee.  Such assignment clauses allow the employer to retain control of a work or invention by its employees. Like all contracts, employment contracts should be carefully worded to clearly convey the intent of the parties.

Patent Pending: A Label with Bark & Bite

By Bobby W. Braxton

You may have noticed the phrases “patented” or “patent pending” stamped onto various products without understanding the message, power, or responsibility that each phrase carries. “Patent pending” refers to an application wherein patent protection has been sought but a patent has not yet been issued. As it may take several years, depending on the technology, before a patent issues, there can be significant lengths of time during which the owner of an invention may sell a product embodying the invention without the benefit of patent protection.

Copyright Overview: An Ounce of Prevention is Worth a Pound of Statutory Damages

By Zach W. Hilton

Both attorneys and laypersons who are not sufficiently familiar with current U.S. copyright law are often guilty of relying upon, and spreading, popular myths and misconceptions concerning basic copyright related issues.  In most instances, reliance on copyright myths and misconceptions will not result in any harm.  However, for the minority of copyright owners who must one day attempt to protect their copyrighted works, such reliance can have potentially disastrous consequences that can effectively preclude enforcement of the copyright.  In hopes of preventing such an unfortunate outcome, a brief primer on the basics of copyright law is provided below.

Purchase a Declaratory Judgment Lawsuit for the Price of a Stamp

By Bobby W. Braxton

The recent Supreme Court decision in MedImmune Inc. v Genentech Inc., (January 9, 2007) lowered the hurdle a party must clear before filing a declaratory judgment lawsuit.  A declaratory judgment lawsuit allows a party to seek a determination of the rights among the parties without waiting for the opposing party to file a claim.  Additionally, a potential defendant can race an adversary to the courthouse by filing a declaratory judgment lawsuit in the erstwhile defendant’s choice of forum.

The PTO’s New Accelerated Examination Program—Heaven Sent or Pandora’s Box?

By Zach W. Hilton

In March, the United States Patent and Trademark Office (“PTO”) celebrated the issuance of the first patent under its new accelerated examination program.  This patent issued from an application filed on September 29, 2006.  Implemented in August 2006, the accelerated examination program allows an applicant to dramatically shorten the time an application spends in the examination process.