Posts in Podcasts

Inventors and practitioners alike are continually trying to push the bounds of protection on innovations. Whether it’s describing a telegraph as a means for communication or a lightbulb as a means for lighting an environment, using broad language, like “means for” language, to cover all the possible workarounds might seem more advantageous than disadvantageous, at first glance. In patent law, this broad language or “means for” phraseology is called functional language because it describes the device or system in terms of what it accomplishes rather than the actual structure. However, using functional language has lost favor over time. For example, a blog published by Patently-O in 2011 shows that the use of “means for” language has dropped precipitously from about 1990 to present day. What has turned this seemingly advantageous practice into a disadvantageous one?In this episode of Patently Strategic, the panel walks through several court cases that either: invalidated a patent for failing to define structures in the specification for the all the means-plus-function claim terms or maintained validity of the patent because the specification provided sufficient structure for all the means-plus-function claim terms.

National Science Foundation research shows that many R&D-oriented companies believe that trade secrets are more important than patents and copyrights. How did this happen, and why are trade secrets growing in importance? Bruce Berman, host of the “Understanding IP Matters” podcast, sought out trade secrets expert Jim Pooley to find out why. Pooley is the world’s foremost expert on trade secrets, a mysterious area of the law that has been the focus of employer disputes. A successful Silicon Valley trial lawyer, Pooley served for five years as Deputy Director General of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. His commentary pieces on the controversial COVID vaccine patent waiver and other topics have appeared in The Wall Street Journal and The Financial Times, and he is a regular contributor on IPWatchdog.

Just when we thought things couldn’t get worse, the state of patent law around eligible subject matter has fallen further into limbo with court decisions that dissenting opinions have said will “lead to insanity,” can only be the product of “result-oriented judicial activism,” have moved the system from its once reliable incentive to innovate “to a litigation gamble”, and could “threaten most every invention for which a patent has ever been granted.” Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the U.S. Court of Appeals for the Federal Circuit, IP bar associations, and the Patent Office, the Supreme Court refused to hear American Axle’s recent bid to overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings.

The Copyright Claims Board (CCB), established by the CASE Act passed in December 2020, is now up and running and taking cases. The CCB is an alternative to federal court. Just like patents, copyrights are bound by federal law. Previously, a copyright owner would have to take their case to federal district court to in order to seek damages or relief. But the CCB allows a claimant to bring a copyright suit before a tribunal at the Copyright Office instead.

This week on IP Goes Pop! co-hosts Michael Snyder and Joseph Gushue are joined by fellow intellectual property attorney and Volpe Koenig Shareholder, Randy Huis, to once again visit the town of Springfield in the fictional, but full of real fun, world of The Simpsons. Patents on candy, robots, and other inventions that may sound more like they are out of a writer’s room rather than based on an inventor’s technical notebook get filed with the Patent Office every day. In this episode listeners will get a taste of just how much intellectual property can come out of, or be inspired by, popular culture.

You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce. How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins. The end goals are a great product and clean asset separation. You’ll want your IP and any newly created devices, infrastructure, etc. – and the engineering firm will want to not be inhibited from doing their job with other clients going forward.

Did you know that the examiner bears the initial burden of proving a prima facie case of obviousness? You, the applicant, do not have any duty or burden to prove nonobviousness. Therefore, initially, the applicant has no obligation to present any secondary evidence of nonobviousness. It is only when the examiner has proven a prima facie case of obviousness that the burden shifts to the applicant.

Young or “prodigy” inventors. We see them fictionalized in movies and we hear about the real child inventors and entrepreneurs who make it onto Shark Tank each season. But in the real world, what programs are in place to encourage young inventors, new entrepreneurs, and small businesses to create and protect their ideas? Where can they turn for reliable information and assistance on available protections for an idea, invention, or a revolutionary business venture, and how to go about securing those protections? This episode of IP Goes Pop! virtually visits the United States Patent and Trademark Office (USPTO) for an inside look at the many available resources, World Intellectual Property (IP) Day, and how inventors of any age can bring their ideas into the world.

The USPTO recently announced a new pilot program directed at accelerating examination procedure for applications claiming cleantech technology. Under the Climate Change Mitigation Pilot Program, qualifying nonprovisional utility patent applications involving technologies that reduce greenhouse gas emissions will be advanced out of turn for examination, or accorded special status, until a first action on the merits. Typically, applicants wait up to a year and a half after initial filing of a patent application for a first office action on the merits. It looks like applicants do not have to wait that long under the new pilot program. In the USPTO’s press release, the agency states that this pilot program is part of their commitment to explore accelerated review of patent applications that pertain to environmental quality, energy conservation, development of renewable energy, greenhouse gas emission reduction, or other climate related topics.

The life sciences are currently facing at least two major plagues in our patent world. The first is that many life science innovations have been deemed ineligible in terms of patentable subject matter. In other words, the courts and the patent office believe that the patent laws are not meant to protect these innovations. The second plague is that the courts believe that many life science patents are not enabled. In other words, they are not described in sufficient detail to enable one of skill in the art to make and use the invention.

In the latest episode of IP Practice Vlogs, we will explore design patents, which protect the ornamental features of a functional item. Apple’s AirPods are functional but have a distinctive look that is identifying of its brand and maker, making them a great subject. The first thing you do when patenting anything, including a design, is to decide the scope of your claim. In design patents, your scope is determined by what you claim, what you show and what you describe. Claimed features are depicted by solid lines. Dashed lines depict unclaimed features that provide environmental context for your claimed features that are in solid lines.

Volpe Koenig intellectual property attorneys and IP Goes Pop! co-hosts, Michael Snyder and Joseph Gushue team up once again, traveling to where worlds collide, taking us into the complex legal negotiations that bring together beloved pop-culture characters from different franchises or “universes”. Such crossovers can mix movie or TV characters or stories to the delight of fans. But can super heroes like Batman and Spider-Man crossover to team up and fight crime together? And who will they fight?

“Metaverse” is the buzziest of the buzzwords in tech and will soon be joining the ranks of “AI” and “ML” as requisite keywords in the next generation of pitch decks and patent applications. But what are the core components of the Metaverse? And what are their implications in the world of intellectual property? The Patently Strategic Podcast will be exploring this topic over the course of several upcoming episodes.

A blockchain is a digital ledger comprised of so-called “blocks.” Every piece of new information uploaded to the digital ledger is a block having a set of data. Once these blocks are linked – that is, every time that new information is uploaded via a block – it becomes part of the digital ledger for forever and all time; the blocks cannot be edited, deleted or modified, even by the company or person who initially created the blockchain. Because the history and genesis of blockchain data cannot be altered or deleted, blockchains are a valuable tool for identifying the provenance of an item and tracking the path from its original source to its ultimate destination.

There are several ways to claim foreign priority for a patent application. The first option is filing an international application under the Patent Cooperation Treaty (PCT). In order to utilize this option, at least one of the applicants has to be a national or a resident of a country that is a PCT Contracting State. Upon filing, the applicant picks a receiving office, which is a national patent office designated for receiving the PCT application. A competent receiving office belongs to a location in which one of the PCT applicants is entitled to file a PCT application. Each PCT member state has a competent receiving office for its residents and nationals. The International Bureau of the World Intellectual Property Organization (WIPO) also acts as a receiving office in which all applicants are entitled to file PCT applications. In that case, the applicant can file directly with WIPO. Thirty to 31 months after initial filing, the application then enters the national stage and the applicant can select the countries in which it would like to file.