Filed under: Licensing
This week’s court decisions include two cases in which courts highlighted the importance of specific phrases or terms that the parties used in IP license agreements. One decision (Sunstar Inc. v. Alberto-Culver Company) highlights the importance of understanding non-English terms, or phrases that may have different meanings in different countries. The other (Imation Corp. v. Kononklijke Philips Electronics N.V.), focuses on what business entities are actually entitled to the benefits of a license. (more…)
Filed under: Patents
When patent applicants receive a final rejection from the USPTO, they currently have three options: (1) appeal the final rejection, (2) abandon the application, or (3) amend the claims and file a request for continued examination (RCE). Currently, many applicants file an RCE because it receives priority over new applications, with USPTO review occurring within two months of filing.
The USPTO recently issued a notice stating that it will change that procedure. The change will delay action on (and this remove some of the benefit of) RCEs. (more…)
Filed under: Electronic Communication
On November 10, 2009, the Pennsylvania Bar Institute will host a CLE course on the issues that attorneys and clients face when we (and when our clients) use social media such as Facebook, Twitter, and . . . yes . . . blogs. The course will be presented in two locations: Pittsburgh and Philadelphia.
The agenda for the CLE includes the following topics:
- Introduction to social media: how lawyers can use blogs and social networks for marketing and research
- Intellectual property and social media: privacy, copyrights, trademarks, and other rights
- Employment law and social media: policies and procedures for handling employees who tweet, blog, text, and post
- The in-house counsel perspective: a panel discussion with practical tips on how companies are dealing with the legal issues relating to social media
- Social media and litigation: what to do when lawyers, judges, witnesses, and jurors become “friends”; how to use social media to help win your case; how to manage data generated by social media in discovery
- Legal ethics: ethical questions facing lawyers who blog, tweet, and “friend” online.
Details and sign-up information about the course are available at the PBI website by clicking here. (Full disclosure: I am a course planner and faculty member for this CLE.)
Filed under: Patents
On October 8, after more than two years of controversy and litigation, the USPTO announced that it will rescind the proposed rules that sought to limit the number of claims and continuations that patent applicants may file. In a press release, USPTO Director David Kappos stated:
These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.
Based on this action, the USPTO and GlaxoSmithKline – one of the two plantiffs in a lawsuit against the USPTO which sought to prevent the rules from taking effect – will file a motion to dismiss and vacate the federal district court decision in that case.
Filed under: Trademarks and Brands
The Pennsylvania Trademark Counterfeiting Act, codified at 18 Pa.C.S. 4119, established trademark counterfeiting as a crime under Pennsylvania state law. Violations of the law could result in penalties of up to three times the retail value of goods sold with a counterfeit mark.
On October 6, 2009, the Pennsylvania Supreme Court overturned the Pennsylvania anti-counterfeiting law in the case of Commonwealth of Pennsylvania v. Omar. Affirming the decision of the trial court, the Supreme Court found the language of the statue unconstitutionally overbroad. (more…)
Filed under: Patents
Two recent court decisions involving interpretation of patent assignments may have a significant effect on companies, research institutions, and others who acquire intellectual property rights. The first decision illustrates the importance of indicating whether or not the assignment is immediate. The second suggests that patent assignments for which the parties intend to include “continuations in part” should expressly say so — or at least they should unless the Federal Circuit says otherwise when it reviews the appeal of the second case. (more…)
Filed under: Patents
On September 20, the USPTO announced a proposal to overhaul its patent examiner “count” system — which is the system on which examiners’ evaluations and compensation are largely based. The USPTO’s goal is that the changes will help reduce patent application backlogs by having examiners resolve issues with applicants early in the examination process. The proposed changes include: (more…)
Filed under: Electronic Communication
My colleague Andrew Siegel recently wrote an article discussing important legal issues facing health care providers who use blogs, Facebook, YouTube, and other social networking tools to distribute health care-related information. As Andrew writes:
Hospitals and health care professionals have quickly embraced social networking as a way to interact with patients, market their practices and share information with the health care community. . .. However, when using such technology, health care providers must be aware of certain legal risks. The most obvious challenge for networking providers is compliance with the Health Insurance Portability and Accountability Act (HIPAA) Privacy Rule.
The article provides tips for health care providers who are using or plan to use social networks to communicate with actual or potential patients. For the full text of the article, click here.
Filed under: Business Law
The 3 Rivers Venture Fair returns to Pittsburgh this week on September 15 and 16, 2009. This year’s 3RVF promises to be an exciting opportunity for innovative companies and strategic investors to meet, network, and learn how to help each other grow. Tuesday begins with a panel discussion featuring Mark Heesen, President of the National Venture Capital Association. Wednesday’s events include presentations from over 25 companies who are located in a 10-state region, along with a lunch session featuring Keynote Speaker Steve Forbes.
Past 3RVF featured companies have gone on to raise nearly $300 million, collectively, since their participation in this investment showcase. For more information about the 3RVF, visit www.3rvf.com
Filed under: Trademarks and Brands
Malaysia’s highest court has ended an eight-year trademark dispute between fast food giant McDonald’s and local restaurant McCurry. In April, Malaysia’s appeals court overturned a lower court decision and ruled that McCurry did not infringe the MCDONALD’S trademark. Significant to the court’s findings were features used alongside the names: specifically, McDonald’s uses a yellow “golden arch” logo while McCurry uses a smiling chicken alongside its name. The court also noted that McCurry offers a menu of Indian food rather than Western food, and that none of McCurry’s food items were named with the “Mc” prefix. Based on these and other factors, the court stated that “”McCurry’s Restaurant signboard would not result in reasonable persons associating McCurry with the McDonald’s mark.”
This month (September 2009), the court denied McDonald’s request to contest the decision.
Would a United States court have reached the same decision?
