Foley Hoag LLP

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Patenting: A Guidebook For Patenting in a Post-America Invents Act World

by Beth E. Arnold

Patenting generally offers a superior means for legally protecting most inventions, particularly since:

• Copyright, when available, does not provide a broad scope of protection; and 
• The ability to effectively protect an invention as a trade secret is in constant jeopardy, due to publication or oral disclosure.

Unfortunately, the patenting process can be complicated, time-intensive and costly. However, costs can often be minimized and opportunities to establish value in products and technology maximized if professionals with an understanding of the patenting process are actively involved throughout. This book is intended to provide the necessary perspective.

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Good news for patent applicants: the U.S. Patent and Trademark Office (USPTO) is pilot-testing a relaxation in patent examination procedures that could significantly reduce the cost of pursuing a patent application, and pave the way to quicker patent grant.  [more...]

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Foley Hoag’s Trademark, Copyright & Unfair Competition group releases “The Best of the Blog Trademark Posts - 2011 Edition.”

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Effective tomorrow, January 10, 2012, applicants filing international patent applications under the Patent Cooperation Treaty (PCT) in the U.S. Patent and Trademark Office (USPTO) will be able to designate the Russian Federal Service for Intellectual Property (Rospatent) as the International Search Authority (ISA) and pay a Search Fee of only $415.  [more...]

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On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (the "AIA"). The law makes the most sweeping reform of the United States patent system in at least 60 years. The changes under the AIA will be phased in over the next eighteen months. While a number of significant changes will not take effect until late 2012 and early 2013, patent applicants can optimize their positions under the new law by taking certain steps now:  [more...]

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Today President Obama signed into law the Leahy-Smith America Invents Act, considered by many to be the most sweeping reform of the United States patent system in 60 years. Among many changes, one which takes immediate effect is the creation of a new “Micro-entity” status which offers qualified applicants a 75% reduction in many Patent Office fees. The Micro-entity status is available to universities as well as to some very early stage companies and individual inventors.  [more...]

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In Microsoft Corp. v. i4i Limited Partnership, a unanimous Supreme Court held last week that an accused infringer must prove the facts underlying any challenge to the validity of a United States patent by clear and convincing evidence.

Under 35 U.S.C. § 282, “[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity . . . rest[s] upon the party asserting” such invalidity. Writing for the Court, Justice Sotomayor interpreted this language as codifying not only the burden of proof to establish invalidity, but also a heightened standard of proof rooted in the common law and recognized in Supreme Court jurisprudence dating back to the 19th century. [more...]

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After a lengthy and contentious approval process, the Internet Corporation for Assigned Names and Numbers (ICANN) recently entered into an agreement with ICM Registry to delegate the new .xxx top-level domain (TLD). The .xxx domain, intended to serve as an Internet "red light district" (despite being strongly opposed by many in the adult entertainment community itself), will likely go live later this year. In the meantime, ICM Registry has opened a "pre-reservation period" for interested members of adult entertainment industry, and for trademark owners in other industries.

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The Federal Circuit yesterday issued a ruling in In re BP Lubricants USA, Inc., available here, that is likely to have a significant impact on the recent spate of lawsuits claiming “false marking.” In these lawsuits, a plaintiff alleges that the defendant is marking a product with a patent that does not, in fact, cover the product, and that the defendant is doing so “for the purpose of deceiving the public.”

SUMMARY

Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 08-1403, (December 17, 2010), available here.

In the first case to consider the patentability of a life sciences invention since the U.S. Supreme Court decided Bilski v. Kappos, the Federal Circuit held that medical treatment claims asserted by Prometheus Laboratories were eligible for patent protection.

SUMMARY

This volume summarizes related bodies of law – false advertising, commercial disparagement, and defamation – that govern the conduct of business communications. It sets forth elements, damages, and related defenses for each of these causes of action and suggests ways to reduce the risk of liability in business communications, advertising, and marketing. Related claims, such as trademark infringement, copyright infringement, and interference with contractual relations, are also addressed. Risk management procedures, a checklist for compliance training, and a sample complaint, answer and jury instructions are provided.

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The Supreme Court today affirmed the Federal Circuit’s holding that Bilski’s business method was unpatentable subject matter because it sought to claim patent protection on an abstract idea. But the Court rejected the Federal Circuit’s bright-line “machine or transformation” test as the sole test for determining whether an invention is eligible for patent protection.  [more...]

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On March 8, 2010, the Federal Circuit affirmed a ruling of the International Trade Commission invalidating the asserted claims of two U.S. patents for failure to meet the best mode requirement. Ajinomoto Co., Inc. v. ITC, available here. Foley Hoag represented the prevailing party, Global Bio-Chem Technology Group Company Limited (GBT), a Chinese biotechnology company. The patents covered the production of lysine using genetically modified bacteria.

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On Monday, the U.S. Court of Appeals for the Federal Circuit overruled a six year-old case setting forth the standard for finding fraud in trademark registrations. In re Bose Corp., No. 2008-1448, slip op. (Fed. Cir. Aug. 31, 2009).

SUMMARY

Included in this Issue:

• Get Your Pole Vaults Out - Mark Haddad
• The Numbers - Amanda Vendig
• Selected New England Series A Round Transactions: First Quarter 2009
• Selected New England Series B and Later Round Transactions: First Quarter 2009
• Terms of Selected New England Series A Rounds 2009
• Terms of Selected New England Series B and Later Rounds
• The Activity Level Summary
• New England Series A and First Round Transactions by Industry
• New England Series B and Later Round Transactions by Industry
• National Series A and First Round Transactions by Industry
• National Series B and Later Round Transactions by Industry
• Size of New England 2009 Series A and First Round Transactions by Industry
• Size of New England 2009 Series B and Later Round Transactions by Industry

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Trade secrets can be a valuable component of an intellectual property (IP) portfolio, whether as a complement to patents or as an alternative. Companies benefit from an IP portfolio that matches the unique benefits of trade secrets and patents to the types of information they seek to protect. Trade secret protection can be available immediately, without going through a government agent, whereas a patent is available only after an application to and approval by the government. And unlike patents, trade secrets provide IP protection of potentially infinite duration. Trade secret protection is also available for a broad array of information for which patents are not available.

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Included in this Issue:

• The End of Doom and Gloom by Dave Broadwin
  
• The Numbers by David Pierson
  
• Selected New England Series “A” Round Transactions: Fourth Quarter 2008
  
• Selected New England Series “B” and Later Round Transactions: Fourth Quarter 2008
  
• Terms of Selected New England Series A Rounds 2008
  
• Terms of Selected New England Series B and Later Rounds
  
• The Activity Level Summary
• New England Series A and First Round Transactions by Industry
• New England Series B and Later Round Transactions by Industry
• National Series A and First Round Transactions by Industry
• National Series B and Later Round Transactions by Industry
  
• Size of New England 2008 Series A and First Round Transactions by Industry
  
• Size of New England 2008 Series B and Later Round Transactions by Industry

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Included in this Issue:

• A Market Perspective – Justin J. Perreault, General Partner, Commonwealth Capital Ventures

• Selected New England “Series B” and Later Round Transactions
  Commentary from David Pierson

• Terms of New England Series B and Later Rounds
  Commentary from Bruce Kinn

• The Activity Level Summary - New England Series B and Later Round Transactions by Industry

• Size of New England 2008 Year to Date Series B and Later Round Transactions by Industry
  Commentary from Amanda Vendig

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Included in this Issue:

• A Market Perspective by Carl Stjernfeldt

• Selected New England “Series A” Round Transactions - Third Quarter 2008
  Commentary from John Hancock

• Terms of Selected New England "Series A" Rounds 2008
  Commentary from Alex Aber

• The Activity Level Summary: New England "Series A" and First Round Transactions by Industry

• National "Series A" and First Round Transactions by Industry

• Size of New England 2008 Year to Date "Series A" and First Round Transactions by Industry
  Commentary from Dave Broadwin

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Included in this Issue:

• A Market Perspective by Vinit Nijhawan

• Selected New England “Series B” and Later Round Transactions
  Commentary from David Pierson

• Terms of Selected New England Series B and Later Rounds
  Commentary from Amanda Vendig

• The Activity Level Summary: New England Series B and Later Round Transactions by Industry

• National Series B and Later Round Transactions by Industry

• Size of New England 2008 Year to Date Series B and Later Round Transactions by Industry
  Commentary from Jerry O’Connor