22 October

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Amici Urge Supreme Court to Grant UMN Petition on Sovereign Immunity for IPRs

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On October 15, 12 state universities and state university systems filed an amicus brief in support of the University of Minnesota in its appeal to the U.S. Supreme Court of the June 2019 Federal Circuit (CAFC) ruling in Regents of the University of Minnesota v. LSI Corporation. In that decision, the CAFC said that the University of Minnesota (UMN)—an arm of the state of Minnesota—is not protected by state sovereign immunity from a number of inter partes review (IPR) petitions filed against UMN patents by LSI Corporation (LSI). The court relied heavily on its 2018 decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., 896...

22 October

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WIPO Report Validates Fears About U.S. Patent Decline

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Each year the World Intellectual Property Organization releases a report titled World Intellectual Property Indicators. The latest edition of the report, the 2019 version, is a look back on the filing statistics for 2018. The report is eye-opening and should be mandatory reading for policy makers and legislators in the United States. For the first time since 2009, the United States saw a decline in the number of patent applications filed. This remarkable statistic comes at a time when patent applications are growing in number across the rest of the world. And let’s not forget that 2009 was a time of particular...

21 October

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This Week in Washington IP: America’s Innovation Leadership, Facebook’s Financial Industry Impact and Personal Data Ownership

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This week in tech and innovation hearings in Washington D.C., the House of Representatives explores issues related to emerging cyber threats, Facebook’s cryptocurrency and its impact on the financial sector, space weather research and supporting clean automobile developments. House committees will also hold two field hearings outside of D.C. on improving Internet connectivity in rural communities and community initiatives in smart mobility programs. In the Senate, committee hearings will focus on ownership of personal data, international energy efficiency efforts and the reauthorization of compulsory copyright licenses for satellite broadcasts under STELAR. Elsewhere, Cato Institute will host an event looking at...

21 October

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Petition Seeks Rare En Banc Review to Clarify Whether PTAB Can Overrule Article III Courts

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Chrimar Systems, Inc. filed a petition for en banc rehearing with the Federal Circuit on October 21 asking the full Court to review the so-called Fresenius-Simmons preclusion principle. The petition has a high hurdle to meet, as the underlying Federal Circuit decision was nonprecedential, but the petitioners argue that the case qualifies as a rare exception warranting en banc review. In Chrimar Systems, Inc. v. ALE USA, Inc. FKA Alcatel-Lucent Enterprise USA, Inc., a jury initially found U.S. patent No. 8,942,107 for A Piece of ethernet terminal equipment valid and infringed by ALE in 2016, and the Federal Circuit affirmed that decision in May 2018. The case was remanded on...

13 July

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Submission to The Senate IP Subcommittee for Entry Into the Record

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We believe that the proposed amendment fixes most of the problems battled by the courts, the USPTO and the patent community in general in the past years. However, the proposed amendment does not address two categories of claims that should be patent eligible under 35 USC Section 101, which the courts have deemed patent ineligible. These categories are: (1) the so-called signal claims and (2) software claims. ...

12 July

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What Is a “Kit” Patent?

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New Jersey and New York Patent Attorneys Serving Clients Nationwide If an inventor wants to patent selling two or more items together that are brought together at the time of use (as a “kit”), they will often patent what is known as a “kit” claim. You will frequently see kit claims used in biotechnology industries, for example. However, figuring out whether something should be patented as an individual component or as a kit claim can be complex, and requires the analysis and advice of an experienced patent and intellectual property attorney in order to figure out what will provide you with...

04 July

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House Subcommittee Discusses Section 101 and Fraudulent Trademarks

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The House subcommittee on intellectual property convened a meeting to oversee the U.S. Patent and Trademark Office. Among two of the most important discussions were Section 101 regarding patent eligibility and registration of fraudulent trademarks. 35 USC 101 establishes who is and is not eligible for a patent under U.S. law. In other words, Section 101 establishes what kinds of innovations are patentable. Under Section 101, in order for an invention to be patentable, it must meet four criteria. Those are: No similar patent has been issued before (one patent per invention); The patented technology must serve some useful function; Patents are reserved for processes, machines,...

26 June

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Supreme Court Says Law Banning Registration of ‘scandalous’ Trademarks Violates First Amendment

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On Monday, June 24, 2019, the U.S. Supreme Court in a 6-3 ruling, struck down a provision of federal law that prohibits the registration of “immoral” or “scandalous” trademarks as a violation of the First Amendment. The ruling, which unanimous in part and 6-3 in part, could open the flood gate to trademark applications seeking to register words or phrases that were considered vulgar, a concern that the court’s minority feared.Justice Elena Kagan wrote the majority opinion stating: “[w]e hold that this provision infringes the First Amendment,” because it “disfavors certain ideas.” ...

13 June

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Who Owns Marilyn Monroe’s Image

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Court have held that Section 43(a) of the Lanham Act entitles celebrities to sue for trademark infringement when others use their persona, without permission, to suggest a false endorsement or affiliation with goods or services. This may seem quite similar to the right of publicity, but there is a salient difference. In order to prevail under the Lanham Act, a celebrity has to prove that the consuming public is likely to be confused and mistakenly believe there is an endorsement or affiliation where none exists. Under the right of publicity, the celebrity must show that the use is unauthorized, but...

09 June

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Small Businesses Lose Millions Every Year in Unclaimed Tax Benefits

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Most small businesses fail to take advantage of various tax benefits available to them, most notably in the area of tax credits. For example, Jane runs a small laundry and dry-cleaner business. She plans on hiring three (3) new employees. The list of potential candidates includes: a supplemental security income (SSI) recipient, an ex-felon and a SNAP (Supplemental Nutrition Assistance) Recipient. She also plans to become more energy efficient by investing in solar power and an electric vehicle. Jane also wishes to offer her employees health insurance benefits. Jane plans to spend $20,000 to develop a software app and $5,000 to...