November 2011 Patent Group Luncheon
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Topics covered in this month’s patent group presentation include prioritized examination, discussion of a case regarding the De Novo standard of review, and discussion of recent case law following the Bilski decision.
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3) Recent changes to patent procedures and laws in India, the UK, and the USPTO are noted.
2016 August Patent Prosecution Lunch
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February 2017 Patent Prosecution Lunch
The document discusses a Web-Based Issue Fee Form (Web 85b) that can be accessed online with a password through a provided URL or by submitting a USPTO Change of Address for Practitioners Form. It also summarizes a Patent Trial and Appeal Board decision that dismissed three Inter Partes Review proceedings against the University of Florida Research Foundation based on the university's claim of sovereign immunity, as well as new USPTO subject matter eligibility examples related to business methods that are available at a provided URL.
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June 2010 Newsletter
The document summarizes the Supreme Court's 2010 decision in Bilski v. Kappos regarding business method patents. The Court ruled that the "machine-or-transformation" test was not the sole test for determining patent eligibility but was still a useful tool. However, four justices would have banned business method patents altogether. The Court provided little additional guidance and left many questions unanswered, ensuring further debate around the patent eligibility of software, business methods, and other technologies. Litigators are expected to increasingly challenge such patents based on subject matter eligibility and obviousness.
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2) Ensuring opinions of counsel are timely obtained, provided to decision-makers, and relied upon before production begins.
3) Making sure all relevant information is provided to opinion counsel.
4) Reviewing opinions for quality and protecting counsel's independence.
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Bilski Verse Kappos Case
The Supreme Court affirmed the Federal Circuit's ruling that the claimed invention in the patent application is not patent eligible. The Court rejected two approaches advocated by the Federal Circuit and respondents: 1) that the machine-or-transformation test is the sole test for determining patent eligibility of a process, and 2) that business methods are categorically excluded from patentability. However, the Court found that the claimed invention in this case was attempting to patent the abstract idea of hedging risk, which is not patent eligible subject matter.
Just Intellectuals Newsletter (March 2017 ed)
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PGR article
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2) Recent Supreme Court cases have increased the use of Section 101 challenges in district courts, which have invalidated patents around 70% of the time post-Alice. However, post-grant reviews have limitations for Section 101 challenges including timing restrictions and estoppel risks.
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2016 07-Patent Prosecution Lunch
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- Rule 37 on sanctions for lost ESI was amended to address prejudice and
January 2016 Trademark Prosecution Lunch
The document summarizes key trademark cases and updates from January 2016. It discusses the 10th edition of the Nice Classification taking effect, an USPTO shutdown over winter holidays, a case finding TTAB opposition decisions have preclusive effect in infringement suits, a case requiring proof of bona fide intent to use a mark, a case finding user manuals are not goods, and a case where a single local pizza restaurant did not prove interstate commerce.
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Simon Tam filed to register the trademark "THE SLANTS" but was rejected by the US Patent and Trademark Office under Section 2(a) which prohibits disparaging marks. The Federal Circuit took the case en banc and held Section 2(a) unconstitutional as a violation of free speech rights. The court found the provision was not viewpoint or content neutral, regulated expression rather than commercial speech, and significantly chilled protected expression. This ruling calls into question the pending Redskins trademark case and suggests Section 2(a) restrictions are an unconstitutional limitation on free speech.
January 2016 Patent Prosecution Lunch
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CLE - Introduction to IP Law
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1) IP is likely the most valuable asset of many businesses, as the value of intangible assets like trademarks, patents, and copyrights makes up the majority of market value for S&P 500 companies.
2) All businesses, not just technology companies, rely on some form of IP like trademarks, copyrights, and trade secrets.
3) Failing to properly protect and manage IP can kill business deals and leave companies vulnerable to lawsuits. Proper ownership and licensing of IP is important.
August 2015 Patent Prosecution Lunch
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July 2015 Trademark Update
July’s practice group lunch included an overview of recent news from the U.S. Patent and Trademark Office (USPTO) and decisions from the Trademark Trial and Appeal Board (TTAB). The USPTO continues to revise its manuals for trademark practice (TMEP and TBMP) on a rolling basis, and has issued new rules and guidance on certain specific types of trademarks, such as collective marks and repeating patterns. The TTAB has decided that it will presume that, between a manufacture and an exclusive distributor, the manufacture owns the mark, subject to rebuttal (UVeritech v. Amax Lighting). Another TTAB case addresses the interaction between the courts and the USPTO, where the TTAB refused to vacate a decision even though the parties later settled the case while on appeal (University of Alabama v. Pitts).
Patent Prosecution Lunch of July 2015
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1) By the 16th month, the International Searching Authority will prepare an International Search Report and Written Opinion on the patentability of the claimed invention.
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