DOCSLIB.ORG

Securing, Enforcing, and Avoiding Infringement Of

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text

Load more

SECURING, ENFORCING, AND AVOIDING INFRINGEMENT OF U.S., INTERNATIONAL, AND FOREIGN PATENTS, TRADEMARKS, AND COPYRIGHTS; SECURING TRADE SECRETS; AND AVOIDING UNFAIRUNFAIR COMPETITIONCOMPETITION This paper contains general information about patents, trademarks, copyrights, trade secrets, and unfair competition, and is intended to make the reader aware of issues in intellectual property law. Because there are exceptions to many, if not all, of the rules mentioned in this paper, and because laws and rules change frequently, the reader should discuss his particular situation with a patent attorney before making any decision regarding his intellectual property rights and responsibilities. Charles C. Garvey, Jr., Patent Attorney** Gregory C. Smith, Patent Attorney* Seth M. Nehrbass, Patent Attorney Brett A. North, Patent Attorney Vanessa M. D'Souza, Patent Attorney Julia M. FitzPatrick, Patent Attorney** Mackenzie D. Rodríguez, Patent Attorney Julie Rabalais Chauvin, Patent Attorney Mark N. Melasky, Patent Attorney GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. PATENT ATTORNEYS Three Lakeway Center, Suite 3290 3838 North Causeway Boulevard Metairie, LA 70002; U.S.A. Tel.: 504-835-2000; Fax: 504-835-2070 e-mail: [email protected] www.neworleanspatents.com Northshore Office: No. 7 Boston Commons 832 East Boston Street Covington, Louisiana 70433, U.S.A. Tel: (985) 635-6892; Fax: (985) 635-6972 *Northshore office **Northshore office also +not licensed in Louisiana US patent law has recently changed. Please check with us about first-inventor-to-file changes and the importance of filing patent applications early. © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. PATENT ATTORNEYS PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS CAVEAT: This paper contains general information about patents, trademarks, copyrights, and trade secrets, and is intended to make the reader aware of issues in intellectual property law. Because there are exceptions to many, if not all, of the rules mentioned in this paper, the reader should discuss his or her particular situation with a patent attorney before making any decision regarding his or her intellectual property rights 5 and responsibilities. CONTENTS: Patents ............................................................. 2 1. Deadline for Filing a U.S. Patent Application ............................ 2 2. Utility patents ..................................................... 3 10 (a) Ownership, Assignment, and Licensing ............................. 3 (b) Disclosure to the Patent Attorney .................................. 4 (c) Patentability Search and requirements for patentability ................. 4 (d) Patent Application.............................................. 7 (e) Duty of Disclosure.............................................. 9 15 (f) Publication of Applications and Provisional Rights .................... 9 (g) Claims ...................................................... 10 (h) Reissue Patents (Broadening Claims) .............................. 11 (i) Patent Prosecution............................................. 11 (j) Patent Issue .................................................. 12 20 (k) Small Entities and Micro Entities ................................. 12 (l) Patent Maintenance Fees........................................ 12 (m) Representation of Inventors...................................... 13 (n) Patent Enforcement ............................................ 13 (1) Marking.................................................. 13 25 (2) Infringement and Infringers .................................. 13 (3) Exception to Infringement ................................... 14 (4) Remedies................................................. 14 (5) Time Limit for Bringing Suit ................................. 14 (6) False Marking............................................. 14 30 (7) Avoiding Infringement ...................................... 14 (o) Foreign Patents ............................................... 15 (1) Filing Deadline ............................................ 15 (2) PCT Patent Applications..................................... 15 (3) Publication of Applications and Provisional Rights................ 16 35 (4) Request for Examination..................................... 16 (5) Costs of Obtaining Foreign Patents, including Annuities ............ 16 (6) Patentable Subject Matter and Obviousness Determinations......... 17 (7) Oppositions ............................................... 17 (8) Revalidation Patents ........................................ 17 40 (9) Marking.................................................. 17 (p) Provisional Patent Applications................................... 17 (q) Invention Marketing Companies.................................. 18 (r) Freedom-to-operate search ...................................... 19 3. Design patents.................................................... 20 45 4. Plant patents ..................................................... 20 Trademarks ........................................................ 20 Copyrights ......................................................... 26 Trade Secrets....................................................... 28 Unfair Competition .................................................. 30 © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -1- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS Miscellaneous ...................................................... 30 INTRODUCTION: A U.S. patent gives one the right to exclude others from making, using, offering to sell, or selling the patented invention in the United States, or importing the patented invention into the United States, for 5 a limited amount of time. A trademark is a word, name, phrase, design, smell, or sound used to distinguish one's goods or services from those of one's competitors. A copyright protects architectural, artistic, musical, and literary works, including computer software, against copying. A trade secret is information that derives independent economic value from not being generally known to and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use, and is the subject 10 of efforts that are reasonable under the circumstances to maintain its secrecy. Unfair competition includes false advertising, dilution of a famous trademark, conspiracy to restrain trade, and unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce. In general, a person or company should get all other persons and companies who might develop intellectual property of any kind on behalf of that person or company to sign an agreement to assign all 15 intellectual property created for the person or company to the person or company. We can prepare such an agreement for you. A. PATENTS There are three kinds of U.S. Patents: Utility patents (the most common, there are over eight million); 20 Design patents (over six hundred thousand); and Plant patents (over twenty thousand). 1. Deadline for Filing a U.S. Patent Application: In general, a U.S. patent application should be filed as soon as possible after an invention is made. A U.S. patent application should be filed before any non-confidential disclosure of the invention is made. 25 If foreign patent protection is desired, a U.S. patent application must be filed before any non-confidential disclosure of the invention is made. However, if one is not interested in foreign patents, there is a one-year grace period for filing a U.S. patent application on an invention measured from the time that the invention is first put on sale in the United States, put in public use in the United States, or is described in a printed publication anywhere in the world, but only if the activity involves the inventor filing the patent application 30 or someone who learned the invention from him. If the U.S. patent application is not filed within the one- year grace period, it will not be possible to obtain a valid U.S. patent on the invention. To minimize the potential harmful effects of the new law on inventions which existed and for which provisional patent applications were filed after 15 March 2012 and prior to 16 March 2013, one should consider filing two full patent applications - one substantially identical to the provisional and one with any 35 changes to the invention made since the provisional was filed, or with a better explanation of the invention. The first full patent application should be governed by the old law (first to invent, and with the ability to swear behind references with an effective date less than a year before the provisional patent application filing date). The second full patent application will be governed by the new law (according to the AIA, Section 3, the new law "shall apply to any application for patent, and to any patent issuing thereon, that 40 contains or contained at any time - (A) a claim to a claimed invention that has an effective filing date ... that is on or after" 16 March 2013; "or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim." (emphasis added)). A U.S. patent application can claim priority of a patent application filed in the U.S. or another 45 country if filed within 12 months of
Recommended publications
  • Update on Discovery of Patent Prosecution Communications by Jeffrey Thomas, Anne Brody and Pamela Lee

    Update on Discovery of Patent Prosecution Communications by Jeffrey Thomas, Anne Brody and Pamela Lee

    Portfolio Media. Inc. | 111 West 19th Street, 5th Floor | New York, NY 10011 | www.law360.com Phone: +1 646 783 7100 | Fax: +1 646 783 7161 | [email protected] Update On Discovery Of Patent Prosecution Communications By Jeffrey Thomas, Anne Brody and Pamela Lee Law360, New York (June 20, 2017, 5:19 PM EDT) -- In general, communications between an attorney and his client relating to the filing and prosecution of a patent application are privileged. Last year, the Federal Circuit found that such communications between a patent agent and his client are also privileged.[1] But under the joint attorney-client privilege or the common interest doctrine, communications between attorneys and two or more clients may not be privileged in a later dispute between these clients. This article discusses the challenges that courts and companies continue to face in determining whether a party can access these patent prosecution communications in disputes: (1) between two joint owners; (2) between an employer-owner and an employee- inventor; and (3) with respect to a patent agent, in other Circuits and state courts. Jeffrey Thomas Do Joint Owners Share a Joint Attorney-Client Privilege During Patent Prosecution? When a dispute arises between two joint owners, one owner may seek to access the other owner’s communications with the patent attorney relating to the patent prosecution process. In that case, a court would look at a few factors to decide. One factor would be whether the patent prosecution process was handled by only one attorney (e.g., an in-house attorney), or by two attorneys separately representing the two owners.
  • Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World

    Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World

    Washington University Law Review Volume 81 Issue 1 2003 Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World Jonathan G. Musch Washington University School of Law Follow this and additional works at: https://openscholarship.wustl.edu/law_lawreview Part of the Evidence Commons, Intellectual Property Law Commons, Legal Ethics and Professional Responsibility Commons, and the Legal Profession Commons Recommended Citation Jonathan G. Musch, Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World, 81 WASH. U. L. Q. 175 (2003). Available at: https://openscholarship.wustl.edu/law_lawreview/vol81/iss1/5 This Note is brought to you for free and open access by the Law School at Washington University Open Scholarship. It has been accepted for inclusion in Washington University Law Review by an authorized administrator of Washington University Open Scholarship. For more information, please contact [email protected]. ATTORNEY-CLIENT PRIVILEGE AND THE PATENT PROSECUTION PROCESS IN THE POST- SPALDING WORLD I. INTRODUCTION One of the oldest traditions of the Anglo-American judicial system is the concept of attorney-client privilege.1 This privilege and its much younger sibling, the work-product doctrine,2 limit the discoverability of private communications between attorney and client.3 Private communications4 between a patent attorney and a client, however, have not always enjoyed this protection.5 Due to a misconception of the role of a patent attorney within the patent prosecution process, courts denied attorney-client privilege first to all patent prosecution documents, and later to documents containing technical information. This effectively denied the privilege to most documents generated during a prosecution.6 More recently, courts afforded certain documents containing technical information protection, but under a patchwork of different standards.7 Frequently, a disagreement existed between different district courts within a circuit,8 as well as among different circuits.9 The exponential technology 1.
  • Patents on Tax Strategies: Issues in Intellectual Property and Innovation

    Patents on Tax Strategies: Issues in Intellectual Property and Innovation

    . Patents on Tax Strategies: Issues in Intellectual Property and Innovation John R. Thomas Visiting Scholar January 6, 2010 Congressional Research Service 7-5700 www.crs.gov RL34221 CRS Report for Congress Prepared for Members and Committees of Congress c11173008 . Patents on Tax Strategies: Issues in Intellectual Property and Innovation Summary Several bills introduced in the 111th Congress addressed the recently recognized phenomenon of patented tax strategies. These legislative initiatives would prevent the grant of exclusive intellectual property rights by the United States Patent and Trademark Office (USPTO) on methods that individuals and enterprises might use in order to minimize their tax obligations. Many commentators trace the rise of tax strategy patents to the 1998 opinion of the Federal Circuit in State Street Bank v. Signature Financial Group, which rejected a per se rule that business methods could not be patented. In recent years, the USPTO has issued a number of patents that pertain to tax strategies, and numerous other patent applications remain before that agency. At least one of these patents, the so-called SOGRAT patent, has been subject to enforcement litigation in federal court. The impact of tax strategy patents upon social welfare has been subject to a spirited debate. Some observers are opposed to tax strategy patents. These commentators believe that patent protection is unnecessary with respect to tax avoidance techniques due to a high level of current innovation. Others believe that patent-based incentives to develop tax avoidance strategies are not socially desirable. They assert that patents may limit the ability of individuals to utilize provisions of the tax code intended for all taxpayers, interfering with congressional intent and leading to distortions in tax obligations.
  • Can I Challenge My Competitor's Patent?

    Can I Challenge My Competitor's Patent?

    Check out Derek Fahey's new firm's website! CLICK HERE Can I Challenge My Competitor’s Patent? Yes, you can challenge a patent or patent publication. Before challenging a patent or patent publication, an analysis should be conducted by a registered patent attorney to determine if challenging a patent or patent publication is necessary, and to evaluate the legal grounds for challenging the patent or patent publication. As a registered patent attorney, I evaluate patents and patent applications to determine the risk of developing competing goods. Below are three important questions that must be answered by a registered patent attorney to evaluate the risk of competing against a patented good. 1. Does a particular good infringe on a patent? Typically, a registered patent attorney will conduct a “freedom to operate” opinion to determine if a business owner can commercialize a particular good without infringing on another’s patent. First, a patent attorney will determine if the patent is enforceable. Next, a patent attorney will perform an infringement analysis to determine if a particular good infringes on any of a patent’s claims. To perform an infringement analysis of a patent and a possibly infringing product, first, the patent’s scope must be analyzed. Second, the patent’s claim terms must be interrupted using the specification, prosecution history and extrinsic evidence to understand and construe the meaning of the claim terms. After the claim terms have been construed, then the elements of a particular good must be analyzed to determine if the particular good practices each and every claim element taught by a patent’s claim.
  • The Basics of Patents

    The Basics of Patents

    Patent Webinar Series The Basics of Patents March 25, 2021 Meet The Speakers Indranil Sarkar Sushil Iyer Principal Principal fr.com | 2 Overview • Topics – What is a patent? – How to get one? – Some practice tips • Housekeeping – CLE – Questions – Materials • http://www.fr.com/webinars fr.com | 3 Agenda • Background • Patent FAQs • Types of US Patent Applications • Anatomy of a Patent Application • Claims • Requirements for Patentability in US • Prosecution in the US fr.com | 4 Background Introduction The Congress shall have power . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. U.S. Constitution, Article I, section 8, clause 8 fr.com | 6 What is Intellectual Property? • Intellectual Property (IP) refers to creations of the mind: inventions; literary and artistic works; and symbols, names, images, and designs used in commerce. • Patents – protect inventions. • Copyrights – protect written or recorded expressive content. • Trademarks – protect words, symbols, logos, designs, and slogans that identify & distinguish products or services. • Trade Secrets – protect confidential business information. fr.com | 7 What is a Patent? • A grant from the government of the right to prevent others from making, using, offering to sell, selling, or importing the invention(s) claimed in the patent. • Personal property – can be bought, sold, licensed, bequeathed, mortgaged, assigned. • Limited Term – 20 years for utility and plant patents; 14 years for design patents. • Territorial – must obtain patent in every country where protection is desired. • United States Patent and Trademark Office (USPTO) – tasked with examining US patent applications and granting US patents.
  • Approaches to Patenting Alloys Before the Russian and the Eurasian Patent Offices

    Approaches to Patenting Alloys Before the Russian and the Eurasian Patent Offices

    The GLOBAL REACH, LOCAL KNOWLEDGE www.patentlawyermagazine.com January / February 2021 Approaches to patenting alloys before the Russian and the Eurasian patent offices DLE ID EA M S T Law firm RANKINGS A N D A A F R I C Anatoly Nistuk and Mikhail Samsonov, of Gorodissky & Partners, examine the patenting of alloys through history and give an evaluation of both the RUPTO and the EAPO approach to patenting. Pharmaceutical Ben Hoopes, HP Women patent Page 20 in IP litigation Leadership Page 15 Page 35 S TURING FEA LAWYER THE LIFE SCIENCEPG 45 IPC Renew - Preparing for Launch 2 - 240x340.pdf 3 23/06/2019 12:07:44 EDITOR’S WELCOME The AL KNOWLEDGE GLOBALGLOBAL REACH,REACH, LOCALLOC KNOWLEDGE January / February 2021 www.patentlawyermagazine.com Approaches to patenting alloys before the Russian and the Eurasian patent offices Editor’s LE DD EA I S M T Law firm RANKINGS A N D A A F R I C welcome Anatoly Nistuk and Mikhail Samsonov, of Gorodissky & Partners, examine the patenting of alloys through history and give an evaluation of both the RUPTO and the EAPO approach to patenting. Ben Hoopes, HP Women in IP Pharmaceutical Page 20 Leadership patent Page 35 hat features should define the patentability of a solution? litigation Page 15 A question Gorodissky & Partners experts examine in FEATURING LAWYER THE LIFE SCIENCESPG 45 23/02/2021 11:56 relation to alloys in our cover story this issue, with close dd 1 W examination of the treatment of alloys through time and what is THE PATENT LAWYER needed to successfully patent an alloy at both the RUPTO and EAPO.
  • What Makes a Good Patent Attorney?

    What Makes a Good Patent Attorney?

    ➤ IPINDEPTH by Michael Gzybowski | Counsel, Brinks Hofer Gilson & Lione What Makes a Good Patent Attorney? atent attorneys have unique educational backgrounds relative to attorneys in other legal specialty areas. For example, many patent attorneys have advanced sci- ence or engineering degrees. Those with engineering Pdegrees are engrained with an engineering problem-solving approach that focuses on analyzing known and unknown information, and finding very specific solutions. On the other hand, patent attorneys have legal backgrounds and are trained to logically and convincingly justify a predeter- mined position or outcome. The combination of these some- what contrary backgrounds sets patent attorneys apart from other types of attorneys and allows them to work closely and effectively with inventors. A good patent attorney must have strong technical, legal and communication skills. They must also understand that their job is not limited to obtaining patent protection for clients, but also involves leading or guiding clients through the patenting pro- cess and, ultimately, advancing a client’s business. delaying the application for patent protection while promoting Communication is Key or using their inventions and thereby extending the time period After gaining experience and confidence, a patent attorney can of exploiting their inventions. Being aware of this principle also become familiar with aspects of the patenting process that cli- leads to an understanding that patent applications have to pro- ents may find confusing or daunting. Being able to stand in a vide a full enabling disclosure of inventions (including the best client’s shoes and understand and explain what might be unfa- mode of practicing the inventions) so that, after the expiration miliar is an important characteristic of a good patent attorney.
  • Specialist List

    Specialist List

    GLOBAL LISTING Specialist List EUROPEAN PATENT AND TRADE MARK ATTORNEYS UK | FINLAND | FRANCE | GERMANY | IRELAND | ITALY | THE AMERICAS | SWITZERLAND CAPTURE Invention Capture IP Capture CREATE Innovation Support SECURE Registration IP Awareness Mentoring Opposition INTELLECTUAL Proceedings PROPERTY Appeals STRATEGY IP PROTECTION REGENERATE Restoration MANAGE Annuities IP Portfolio Management Renewals Landscape An ongoing cycle of innovation support. At Murgitroyd, we believe in ongoing support. We believe you need more than just patent and trade mark filings, renewals and nuts and bolts case prosecution. Our approach keeps your intellectual property and your business ahead of the competition. It’s based on a continuous process of innovation. It’s about planning, creating and developing IP, as well as responding to new opportunities as they arise. And it’s about helping you increase commercial return through a creative IP strategy that works in line with your objectives. We’ll help you build a strategy that identifies and acts on every opportunity to create meaningful, valuable IP. We’ll provide expert guidance whenever you need it. Our agile set-up means we’re responsive, flexible and dedicated to you. We’ll work side by side with you and your team to help you get ahead - and stay ahead. Discover how we can create value for you. Contact us: E: [email protected] W: murgitroyd.com EUROPEAN PATENT AND TRADE MARK ATTORNEYS UK | FINLAND | FRANCE | GERMANY | IRELAND | ITALY | THE AMERICAS | SWITZERLAND CONTENTS GLOBAL LIST Specialist List
  • Tax Patents: at the Crossroads of Tax and Patent Law

    Tax Patents: at the Crossroads of Tax and Patent Law

    TAX PATENTS: AT THE CROSSROADS OF TAX AND PATENT LAW Linda M. Beale† I. INTRODUCTION In the United States today, the tax practitioner community has belatedly become fully aware of the availability of patents for business method processes and financial transactions—including computer-driven processes that have tax- minimizing possibilities and even tax-advantageous methods of structuring transactions. The United States Patent and Trademark Office (“the Patent Office”) has been granting business method patents for a number of years.1 State Street Bank & Trust Co. v. Signature Financial Group, a seminal case for business method patents, was perhaps one of the earliest tax-related patent decisions: the Federal Circuit held that a computerized system for managing mutual funds’ pooling of investments through a tax partnership was patentable subject matter.2 In the decade since State Street, a number of business method patents with tax implications have been granted, and even more business 3 method tax patent applications are pending. † Visiting Associate Professor, Boston College Law School and Associate Professor, Wayne State University Law School. An earlier version of this paper was presented at the Boston College Tax Colloquium. The article covers developments concerning tax strategy and business method patents through March 2008. The author wishes to express her gratitude for comments of colleagues James Repetti, Diane Ring, David Olson, Alfred Yen and Joseph Liu. 1. See U.S. PATENT & TRADEMARK OFFICE, A USPTO WHITE PAPER: AUTOMATED FINANCIAL OR MANAGEMENT DATA PROCESSING METHODS (BUSINESS METHODS) (2000), available at http://uspto.gov/web/menu/busmethp/whitepaper.doc (discussing the history of business method patents) [hereinafter, WHITE PAPER].
  • When Worlds Collide: Tax Planning Method Patents Meet Tax Practice, Making Attorneys the Latest Patent Infringers

    When Worlds Collide: Tax Planning Method Patents Meet Tax Practice, Making Attorneys the Latest Patent Infringers

    WHEN WORLDS COLLIDE: TAX PLANNING METHOD PATENTS MEET TAX PRACTICE, MAKING ATTORNEYS THE LATEST PATENT INFRINGERS Richard S. Gruner† I. INTRODUCTION Tax planning patents have produced an uproar exemplifying the unexpected conflict that can result “when worlds collide.”1 Tax planning patents apply to methods of income and asset management that produce desirable tax results.2 These patents exist at the intersection of two specialized and previously separated legal worlds. The patent world is governed by intellectual property rules and the bedrock principle that certain types of non- obvious innovations are best encouraged by giving their originators broad controls over the innovations for limited periods.3 The tax world is governed by a complex set of tax law standards against which the affairs of clients must be evaluated and shaped to aid the clients in lawfully reducing their tax † Director of the Center for Intellectual Property Law and Professor of Law at the John Marshall Law School in Chicago. L.L.M., Columbia University School of Law, 1982; J.D. U.S.C. Law School, 1978; B.S., California Institute of Technology, 1975. 1. The original “When Worlds Collide” was a 1932 science fiction novel co-written by Philip Gordon Wylie and Edwin Balmer, both of whom also authored the sequel After Worlds Collide. See PHILIP WYLIE & EDWIN BALMER, AFTER WORLDS COLLIDE (1982); PHILIP WYLIE & EDWIN BALMER, WHEN WORLDS COLLIDE (1999). Perhaps more familiar to most readers is the 1951 film that won the 1951 Academy Award for Best Effects, Special Effects. When Worlds Collide (1951), Awards, http://www.imdb.com/title/tt0044207/awards (last visited May 13, 2008).
  • A Comparative Analysis of the Utility Model Patent Systems in Europe and China

    A Comparative Analysis of the Utility Model Patent Systems in Europe and China

    Creating a “model” utility model patent system A comparative analysis of the utility model patent systems in Europe and China WWW. IPKEY.ORG Creating a “model” utility model patent system: A comparative analysis of the utility model patent systems in Europe and China Dan Prud’homme December 2014 Abstract: Although it is difficult to create an optimal “model” of the exact types of every aspect of every country’s utility model patent system, this study illustrates that it is possible to create a useful legal, policy, and institutional framework based upon an understanding of the statutory, procedural, and institutional composition of utility model systems in Austria, China, the Czech Republic, Finland, France, Germany, and Italy; reasons behind the composition, including any revisions to, these systems; and usage of the systems. It also briefly discusses relevant experiences of Belgium and the Netherlands. Keywords: utility model patent systems, comparative analysis, Europe, China, substantive law, procedural law, institutions, patent quality, innovation ABOUT THIS STUDY, AND ACKNOWLEDGEMENTS This study is part of an ongoing activity on utility model patent (hereafter abbreviated as “utility model”) systems under the “IP Key” Project (short for “Intellectual Property: A Key to Sustainable Competiveness”) – a three-year project with multiple activities every year, running from 2013-2016. The project is funded by the European Commission and the Office for Harmonization in the Internal Market (OHIM), and implemented by OHIM with support from the European Patent Office (EPO). It serves as the vehicle for implementing the Administration Agreement on the New EU-China Cooperation on Intellectual Property signed in July 2013 between the European Union and the Government of the People’s Republic of China.
  • Is Bilski Likely the Final Word on Tax Strategy Patents?Coherence Matters,9 J

    Is Bilski Likely the Final Word on Tax Strategy Patents?Coherence Matters,9 J

    THE JOHN MARSHALL REVIEW OF INTELLECTUAL PROPERTY LAW il,!I I Is BILSKiLIKELY THE FINAL WORD ON TAx STRATEGY PATENTS? COHERENCE MATTERS LINDA M. BEALE ABSTRACT The Supreme Court's grant of certiorari in In re Bilski presents an opportunity to lay to rest the patent eligibility of tax strategies. A comparison of the core values of the patent and tax systems reveals fundamental conflicts that have gained the attention of tax practitioners, bar associations and Congress. These conflicts are identified by tracing both the development of patentable subject matter and the policy goals of the tax system. This article addresses the future of tax strategy patents in light of In re Bilski and analyzes the potential for the Court to deliver guidance that makes clear the ineligibility of tax strategies as patent subject matter. Copyright © 2009 The John Marshall Law School; Linda M. Beale M Cite as Linda M. Beale, Is Bilski Likely the Final Word on Tax Strategy Patents?Coherence Matters,9 J. MARSHALL REV. INTELL. PROP. L. 110 (2009). Is BILSKLIKELY THE FINAL WORD ON TAx STRATEGY PATENTS? COHERENCE MATTERS LINDA M. BEALE * Two decades ago, patents granted by the United States Patent and Trademark Office ("Patent Office") primarily dealt with routine industrial manufacturing processes and tangible machines.' The Federal Circuit's landmark 1998 decision in State Street Bank & Trust Co. v. Signature FinancialGroup, Inc.2 found a method for processing data to manage mutual funds through a "hub and spoke" system to be statutory subject matter under 35 U.S.C. § 101.3 The State Street decision appeared to remove any doubt that there ever was an exception to patentable subject matter for business methods that do not involve traditional industrial inventions: methods of conducting business can be patentable processes, the court held, so long as they produce a "useful, concrete and tangible result."4 The case revolutionized the types of claims before the Patent Office, resulting in an avalanche of business method and 5 financial transaction applications moving through the system.