Lessons in licensing: the definitions matter

When drafting and negotiating a license agreement, it’s tempting for the parties to simply use definitions and so-called “standard” paragraphs that are taken from previous agreements. This can be risky. Even paragraphs that might be considered boilerplate need to be carefully reviewed to ensure that they are consistent with the parties’ intent

The Licensing Journal recently published my article “Defining ‘Affiliate': Pay Attention to the Boilerplate“, in which I describe two examples in which boilerplate terms led to unintended consequences.  For more details, click the hyperlink above for the full article.

Software patent-eligibility after Alice: where are we now?

Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the vast majority of district court decisions, Federal Circuit decisions, and Patent Trial and Appeals Board (PTAB) decisions that considered the issue have overturned software and business method patents under the new patent-eligibility standard of Alice.  In the first quarter of 2015 alone, when considering a motion to dismiss or a motion for judgment on the pleadings on the basis of patent-eligibility under §101, U.S. district courts have granted the motions and ruled the patents to be invalid over 66% of the time.

In November 2014, I published a post that summarized court and PTAB decisions that bucked this trend and found software to be patent-eligible. Since then, a small but growing number of cases refused to overturn patents that involved software, and the USPTO issued an Interim Guidance document describing actual and hypothetical claims that could survive post-Alice scrutiny.

To track the activity since then, I have updated my original post. It’s still available via this link. I intend to keep it updated on a periodic basis, so feel free to bookmark it or simply check back for future updates.

New Supreme Court Decision Expected To Influence Trademark Opposition Strategy

A recent United States Supreme Court decision is likely to affect the way that parties approach trademark opposition proceedings before the Trademark Trial and Appeal Board (TTAB).

My colleagues Bill Hansen and Suzi Morales recently published an article describing the decision and its potential effects. For more details about the Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc. follow this link for the full article.

Comparing the Innovation Act and the STRONG Patents Act: competing proposals for patent reform

2015 could 37444451_sbe a pivotal year for U.S. patent reform, with two significant — and very distinct — patent reform bills pending before Congress.  This article compares the two bills, the Innovation Act and the STRONG Patents Act, the forces behind the bills, and the next steps in the U.S. patent reform debate.

Introduced in February 2015 by Rep. Bob Goodlatte as a measure to “curb abusive patent litigation,” the Innovation Act picks up where the America Invents Act of 2011 (AIA) left off by proposing additional reforms to patent litigation procedures. The Innovation Act would also streamline some of the AIA’s mechanisms for challenging patents.

In March 2015, Senator Christopher Coons and others introduced the STRONG Patents Act as a way to “reduce abuse while sustaining American leadership in innovation,” The STRONG Patents Act includes some reforms that are similar to those of the Innovation Act, along with several other sections that are designed to protect the positions of patent holders.

Significant provisions of each bill include: Continue reading

White House Consumer Privacy Bill of Rights provokes debate

In February 2015, Privacy Imagethe White House proposed a draft “Consumer Privacy Bill of Rights” that the Obama administration believes will provide a baseline of clear protections for consumers, as well as greater certainty for companies who currently have to navigate a patchwork of state privacy laws across the country.

The Consumer Privacy Bill of Rights is part of a policy memo titled “Consumer Privacy in a Networked World:  A Framework for Protecting Privacy and Promoting Innovation in the Global Digital Economy.” The document calls on Congress to pass legislation that adopts the Consumer Privacy Bill of Rights. The document also asks Congress to give both the Federal Trade Commission (FTC) and individual state attorneys general authority to enforce the Bill, although only the FTC could seek financial penalties.

The Consumer Privacy Bill of Rights proposes specific obligations on companies who collect data from individual considers that will preserve the consumers rights to:

  • Individual Control (the right to exercise control over what personal
    data companies collect from consumers and how the companies use it);
  • Transparency (the right to easily understandable and accessible
    information about privacy and security practices);
  • Respect for Context (the right to expect that companies will collect, use, and disclose personal data in ways that are consistent with the context in which consumers provide the data);
  • Security (the a right to secure and responsible handling of personal
    data);
  • Access and Accuracy (the right to access and correct personal
    data in usable formats);
  • Focused Collection (the right to reasonable limits on the personal
    data that companies collect and retain); and
  • Accountability (the right to have personal data handled by companies with appropriate measures in place to assure they adhere to the Consumer Privacy Bill of Rights).

The Consumer Privacy Bill of Rights has been criticized by consumer advocacy and industry groups alike, as well as by the commissioner of the FTC. Nonetheless, it has provoked a discussion that may help establish a uniform standard for protecting consumer data across the United States. Just days after the administration released the proposal, a group of senators who criticized it re-introduced a bill that would regulate data brokers who collect and sell personal and sensitive information about consumers.

USPTO retires SAWS: will it have an effect on the USPTO’s effort to screen out poor quality patents?

The USPTO sealUSPTO’s recent announcement that it is retiring its Sensitive Application Warning System (SAWS) yielded mixed reactions from the patent community. While many noted that the announcement was a win for transparency and accountability in government, others (including some patent applicants) found little comfort after they incurred substantial time and expenses resulting from the USPTO’s delay of patent applications that were assigned to the secret program.

With roots dating to 1994, SAWS first came to light in 2006 after a leaked memo revealed that the USPTO was flagging certain patent applications that could be considered “controversial or noteworthy.” SAWS applications could not be allowed before the Examiner prepared a memo to the USPTO Deputy Commissioners for Patent Operations and Patent Examination Policy.

Some of the criteria for SAWS designation were straightforward:  applications covering perpetual motion machines, anti-gravity devices, and technologies that violate laws of physics were included in the list. Other criteria were more fuzzy: Continue reading

The trademark balancing act: Protecting your rights without enraging your customers

Trademarks symbolize the character and reputation of their owners and the quality of those finished products offered to the consumer. It typically takes years of careful cultivation to build a valuable trademark. This cultivation can include registering the mark with the U.S. Patent and Trademark Office, using the mark in a consistent and continuous manner, and taking action to prevent others from using the mark without permission. However, trademark owners often need to walk a thin line between strong enforcement and overly aggressive enforcement tactics (sometimes called “trademark  bullying”). One mis-step (or overstep) can quickly tarnish a mark’s goodwill and inflame consumers. Within days, the reputation of a strong brand built over decades can be destroyed by one over-zealous demand letter or lawsuit that finds its way from the recipient or courtroom to the Twittersphere.

AnLagunitas IPA example of this is the recent case of Lagunitas Brewing Co. v. Sierra Nevada Brewing Co.  In the case, Lagunitas alleged that Sierra Nevada’s new Hop Hunter IPA used a label that infringed on Lagunitas’ family of registered trademarks that each incorporate a stylized image of the acronym “IPA.” The complaint asserted that Sierra Nevada’s label used similar fonts to those of the Lagunitas mark, with the phrase “IPA” appearing in “prominent all-capital, large, bold, black, centralized” letters. The case included Continue reading