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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.

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Use the Highway: A New Paradigm for International Patent Portfolio Management

By Colin P. Cahoon What if there was a new way to manage an international patent portfolio that results in lower costs and quicker issuances of patents? If this question piques your interest, read on as I walk you down that highway, or what the USPTO calls the “Patent Prosecution Highway.”

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Design Patents after Egyptian Goddess: The Comeback Kid

By Vincent J. Allen In 1871, the Supreme Court established the standard for proving design patent infringement in Gorham Manufacturing Company v. White.The design patent in Gorham covered the ornamental features of forks and tablespoons. The Supreme Court explained that the appearance of an article may increase its “salable value.”  The test of identity of design “must be sameness of appearance, and mere differences of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity.”  Based on this rationale, the Court outlined the “ordinary observer” test that is still used by courts today in design patent infringement cases:

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The Federal Circuit Puts a Damper on Forum Shopping

By Vincent J. Allen The Eastern District of Texas has the reputation of being a favorable forum for filing patent infringement suits. For the year ending September 31, 2007, more patent cases were filed in the Eastern District than in any other district in the nation. The Central District of California, despite having a substantially greater population of businesses, trailed the Eastern District’s 359 filings by 25.

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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.

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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.

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Ding-Dong! The Witch of Patent Reform is Dead…Or is She?

Many in the patent community are singing the joyous news that the Patent Reform Act of 2007 is dead. Recent events in Congress lead to this conclusion. The departure on May 1, 2008 of the former Solicitor of the U.S. Patent and Trademark Office, John Whealan, from his temporary position with Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) is a strong indicator that patent reform legislation will not pass in 2008. Whealan’s departure was not the only sign that the bill is finished. On April 10, 2008, Senator Arlin Specter (R-Pa.), ranking minority member of the Senate Judiciary Committee, commented on the floor of the Senate that the Republican caucus may refuse to act on pending patent reform legislation “as a matter of leverage to get fair and equitable treatment” in regard to the confirmation of federal judges. On the same day, Senate Majority Leader Harry Reid (D-Nev.) stated that…

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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.

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Is a Compulsory License the New Remedy for Successful Patent Litigation?

By David W. Carstens A patent provides its owner with the right to exclude others from making, using or selling a patented product. These rights may be enforced by filing an infringement lawsuit. In such a lawsuit, the Patent Act empowers the court to issue an injunction against an infringer “in accordance with the principles of equity.”  So how is it possible to acknowledge and honor the right to exclude the making of an infringing product without always granting an injunction against the infringer of those rights? One Texas court is trying carefully to balance these principles of equity to determine when a permanent injunction is appropriate.

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New Patent Rules Blocked by an 11th Hour Injunction

By Vincent J. Allen On the day before the new continuation rules discussed in our previous newsletter were to go into effect, a federal judge in Virginia issued an injunction against the Patent Office that prevented the Patent Office from changing the rules on November 1, 2007 as scheduled.  GlaxoSmithKline filed suit in Virginia claiming that the new regulations are vague, arbitrary, and capricious.

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Can I Patent My Teddy Bear?

By Colin P. Cahoon Years ago a non-patent lawyer colleague of mine told me that he had been asked by one of his clients if it was possible to obtain patent protection on the client’s new stuffed animal design.  “There was nothing special about what the stuffed animal did or how it was made.  It just looked like, you know, a variation on a teddy bear.  The client wanted to know if we could get a patent on the look of this fluffy creation, and I said ‘No.’”  I informed my colleague that he needed to call the client back and revise his answer, because he had just given bad advice.

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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.

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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.

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The Battle Continues: Supreme Court v. Federal Circuit

By Vincent J. Allen The U.S. Supreme Court has reversed all nine patent cases decided on appeal from the Federal Circuit since 2002.  In two cases handed down in April, the Court continues its trend of reversing the Federal Circuit.  In a much anticipated decision, the Court in KSR v. Teleflex unanimously rejected the Federal Circuit’s rigid approach to determining whether a patent is non-obvious in view of the prior art.  Although not as far reaching as KSR, a second case, Microsoft v. AT&T, may hamper owners of software patents in their ability to prevent copying of software outside the United States.

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Dallas Leads the Charge with New Patent Rules

By Vincent J. Allen In an order issued April 2, Chief U.S. District Judge of the Northern District of Texas, A. Joe Fish, established case management rules on a trial basis for patent cases filed in the Dallas Division.  The patent rules apply to all civil actions containing an allegation of utility patent infringement and to any action seeking a declaration that a utility patent is not infringed, is invalid, or is unenforceable.  The patent rules take effect on May 1, 2007 and apply to any Dallas Division patent case filed on or after that date and to certain cases filed prior to the effective date.  Although other districts such as the Eastern District of Texas and the Northern District of California have had patent rules for some time, many other districts are now considering creating patent rules as well.  Dallas is the first in a new wave of districts…

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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.

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