Posts in Guest Contributors

It is already a criminal act in the United States to intercept and/or decode an encrypted satellite signal. See 18 U.S.C. §2511. Many in the United States may not realize that similar provisions criminalizing interception of an encrypted program-carrying satellite signal are included in Free Trade Agreements already concluded by the U.S., including the North American Free Trade Agreement. With Article QQ.H.9, one might be tempted to read Paragraph 1 as permitting the possession and use of a device which can receive and de-crypt a program-carrying satellite signal (without authorization of the signal’s lawful distributor), although any of the nefarious activities enumerated in Paragraph 1(a) would be criminal. However, Footnote 153 makes clear that receipt and use, or receipt and decoding of the signal are also distinct, criminal activities.

Globally there are approximately 7,000 medicines in development to treat and cure a wide variety of diseases. Of these, more than 5,000 are in development in the United States. It’s difficult to argue that the strength and success of the U.S. biopharmaceutical industry is uncorrelated with the IP protection available here. It is, therefore, disappointing that the recently negotiated Trans-Pacific Partnership (TPP) Trade Agreement fails to deliver sufficient IP protection for biologics. Much of the continuing controversy plaguing the TPP Agreement surrounds data exclusivity protection for biologic medicines and the future of the agreement may hinge on precisely this issue.

The Supreme Court recently decided to review a pair of cases that challenge the Federal Circuit’s willful infringement test. The two cases, Halo Electronics, Inc. v. Pulse Electronics, Inc, (14-1513) and Stryker Corporation v. Zimmer, Inc. (14-1520), are drawing comparisons from commentators to the Court’s Octane Fitness, LLC v. ICON Health and Fitness, Inc. ruling last term based on the similar structure of the tests and statutory language reviewed in both cases. However, another recent SCOTUS case dealing with induced infringement, Commil USA, LLC v. Cisco Systems, Inc., may also shed some light on how the Court will think about willful infringement, since both doctrines center around the defendant’s intent.

To compete in our new innovation ecosystem — no matter big or small — there are a handful of competencies that an organization should master when it comes to their patent operations. At the risk of over generalizing, these are (1) sound portfolio development, (2) sound portfolio management, (3) building the right team and (4) smart patent deal-making. Although it is nearly impossible to condense actionable wisdom into a multi-part series on the subject, what follows is my attempt to do just that.

The engine that made America a greatest economic power was a patent system that led to tremendous innovation by incentivizing entrepreneurial inventors.

The idea of reducing drug prices through more government control is always simmering on the backburner and doesn’t require much to bring it to a full boil. Two recent actions turned up the heat to full blast. The response is often calls for more regulation, but ever increasing regulation benefits established players, which while inconvenienced, can afford to play the game. Start-ups can’t survive in endless oceans of red-tape that increase their costs while restricting market entry. Before rushing to impose more federal control, it might be wise to ask if government regulations inadvertently contribute to the problem.

When measuring the overall success and efficiency of a law firm’s patent prosecution practice, there are several metrics available, including overall allowance rate, time to disposition, and average number of office actions. Allowance rate is one of the most common metrics, but allowance rate merely tells us how many applications received NOAs, and nothing of the quality of those applications. Besides merely getting an application allowed, clients are also concerned about the quality and scope of their claims. One way to determine this is by measuring how well a law firm preserves claims through prosecution. This article shows a ranking of the top 10 firms that lose the fewest independent claims in prosecution among IP Today’s top patent firms for 2015.

Employers often assume that they have the same weapons in their arsenal to prevent theft of virtual trade secrets as they have against other types of loss. As the prosecution of Sergey Aleynikov in Federal and New York courts showed, however, that simply isn’t true. Even though juries in both courts found him guilty of downloading confidential computer code from his employer, judges ultimately found that the laws under which he was prosecuted did not cover the acts he committed. A careful employer should therefore make sure it puts precautions in place that prevent theft of computer code, rather than relying on the threat of criminal prosecution.

Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code. In 2009, he accepted a job offer to join a potential competitor, where he would create a new high-frequency trading platform from the ground up. Before he left Goldman, however, he sent portions of Goldman’s high frequency trading code to a German server for his own future use. After Goldman found out, it went to the FBI; Aleynikov was then arrested on a flight home from a visit to Chicago. With that arrest began his circuitous journey through the U.S. legal system, governed by two different sovereigns and under two different legal regimes.

Covenant Not to Challenge clauses are common in patent licenses, including licenses that are part of post-litigation settlements. clause is seen as a benefit bargained for under a license agreement and constitutes part of the consideration obtained by the licensor for the license. The intended effect of such a clause is to allow the licensor to make an estoppel argument in the event that licensee does challenge the patent, in spite of its agreement not to do so. However, the PTAB thus concluded that without an express grant from Congress, it did not have the authority to recognize contractual estoppel as a bar to an inter partes review.

The Court expressly held that concrete and particularized reputational injury alone can give rise to Article III standing to correct inventorship under § 256. Recognition as an inventor of an important patent is as significant to an inventor’s career as is authoring a scientific paper. Further, pecuniary consequences may flow from being designated an inventor, particularly for professionals employed as inventors. Here, Dr. Shukh presented numerous questions of material fact concerning whether his omission from the contested patents caused him a reputational injury.

The issue on appeal was whether a mixture comprising at least 92% of the (6S) isomer of leucovorin would have been obvious when both the 50/50 mixture of isomers and the pure (6S) isomer were known in the art. Affirming the district court, the Federal Circuit agreed that “one of skill would have been motivated to modify the prior art 50/50 mixture to make the claimed mixture,” especially when it was known that the desired activity lies with the (6S) isomer. The Court found no evidence indicating that the claimed mixture “possess[ed] unexpected advantages over the prior art pure material” so as to overcome obviousness.

Critics argue that intellectual property is bad for innovation in part because it allows for “monopolies” that prevent the public from using certain creations without permission for a period of time. As a preliminary matter, the use of the misleading scare-term “monopolies” to describe property rights in inventive and creative labor is clearly an attempt to skew the debate from the outset. After all, you wouldn’t call property rights in hard-copy creations, like the crops a farmer harvested, “monopolies” in those creations. Furthermore, if public access is the concern, a system that fails to provide inventors and creators the economic freedom to create things to market to the public in the first place will be far more harmful than a system that secures justly-earned property rights in inventors’ and artists’ productive labors.

An October 5, 2015 version of the Trans Pacific Partnership (TPP) Intellectual Property (IP) Chapter is now available on WikiLeaks. This article includes the entire text of the WikiLeaks-referenced TPP Section C: Trademarks. This article offers accompanying commentary together on the TPP’s trademark provisions together with thoughts on portions of the TPP text regarding Geographical Indications (GIs).

The ownership of ideas and creations are among the most valuable assets to any company. Businesses invest in these ideas and rights and use the value they create to help promote and grow business for years to come. Printer manufacturers, for example, invest heavily in new ink and toner technologies and realize a return over the life of the device through the sale of supplies and consumables. When third-party supplies manufacturers, particularly manufacturers of new build ‘cloned products’, violate IP rights and take products to market, they are effectively stealing from the original equipment manufacturer (OEM) – reducing the ability of the OEM to realize the full potential of their investment and, through their sale, securing financial benefit from the OEM who receives no compensation for this lost revenue. These organizations effectively take a ‘free ride’.