Patents

Patent Reform Act Brings U.S. in Line with Other Industrialized Nations

By Lena Mualla *

Gentleman with his inventionThe America Invents Act, signed into law on September 16, 2011, comes after years of attempted reform of our patent system.  Although it passed in Congress by an overwhelming majority, the patent reform legislation generated significant controversy for a variety of reasons.

What does the bill do?

The most fundamental and sweeping provision of the Act is the switch from a “first-to-invent” approach, where whoever invents first gets priority to the grant of a patent, to a “first-to-file” system, where whoever files with the United States Patent and Trademark Office (PTO) first gets priority, regardless of who put the patent into practice first.  This key provision will be effective in 2013.  Hailed because it will put the U.S. in line with all other industrialized countries, the first-to-file approach would afford more predictability for corporations dealing at the international level. Continue reading »

Wham-O! America Invents Act Slams Door on False-Marking Cases

By Jason Weber *

Pat. Pend. imprint on metalSince 2009, so-called “false-marking trolls” have been suing manufacturers of everything from lip balm and bowties to superballs and Solo cups under a federal law that had been previously infrequently used – the False Marking Statute.  However, consumer product manufacturers can breathe a sigh of relief now that President Obama has signed the Leahy-Smith America Invents Act (AIA) into law.  While most of the commentary surrounding passage of the AIA revolves around its changes from a “first-to-invent” to a “first-to-file” patent system, the AIA also includes substantive changes to the False Marking Statute that represent a major victory for manufacturers and retailers.

The original False Marking Statute, 35 U.S.C. 292, made it illegal for manufacturers to label their products with false or expired patent numbers “for the purpose of deceiving the public.”  If guilty, manufacturers could be fined up to $500.  The statute also created a private right of action through a qui tam provision that allowed any private individual to sue for the penalty, regardless of whether or not they had suffered any harm.  If the plaintiff won the lawsuit, he would split the penalty or settlement proceeds with the Feds. Continue reading »

Patenting Isolated Human Genes: The Obvious Force Behind the Success of BRAC Analysis

By Sarah Riedl *

human genesThe Court of Appeals for the Federal Circuit recently reinforced previous holdings allowing patents on human genes, which has been the rule on gene patents since 1980.  The Court of Appeals reversed the District Court’s decision, which reasoned that the isolated DNA was no different from the natural DNA because of its function as an information carrier.  The Court of Appeals stated that the function of the chemical was immaterial to its patentability, only the chemical structure is relevant.  Since the gene was isolated to exist outside its natural state in the human body, the chemical structure had been altered warranting patentability. Continue reading »

Much Ado About Nothing: Is the Clock Ticking on Gene Patents Regardless of the Myriad Case?

By Mark Vaders *

Human GenesShould unaltered genes be patentable as compositions of matter?  Chief Justice Warren Burger, in Diamond v. Chakrabarty, wrote that Congress “[R]ecognized that the relevant distinction [between patentable and non-patentable] was not between living and inanimate things, but between products of nature whether living or not, and human-made inventions.”  Patentable subject matter is restricted to “product[s] of human ingenuity ‘having a distinctive name, character [and] use.’”  This language made clear that “products of nature” do not constitute “manufactures” or “compositions of matter” as meant within 35 U.S.C. § 101, and thus no party “may obtain a patent therefor.”  The question remains, however–are isolated genes products of nature or of human ingenuity? Continue reading »

3-Dimensional to 3-Disruptive

By Dana Mullen *

The Penrose triangleMost people can grasp the concept that scanning a copyright protected drawing to make copies is a clear violation of copyright law.  Consider, on the other hand, a scenario made possible by the technology of 3D printing, an additive process which deposits material layer by layer until a three dimensional model is formed.  The Penrose triangle originated as a two dimensional drawing, creating the illusion of a three dimensional object.  However, it is an impossible object from which no true three dimensional replica can be formed.

Nonetheless, Netherlands-based designer Ulrich Schwanitz recently was successful in printing a three dimensional model of the illusion.  Schwanitz did not share his design secret but, rather, offered the “impossible triangle” for sale through the fabrication company Shapeways for $70 each.  Within weeks, 3D modeler Arture Tchoukanov had recreated the shape and uploaded instructions to the website Thingiverse.  Schwanitz demanded that the instructions infringed on his copyright and should be taken down.  But what exactly could Schwanitz assert copyright in: the design file, the image, or even the printed structure?  Could artists who used the triangle in previous pieces have a claim against Schwanitz?  The answers may depend on how U.S. copyright law defines limitations on exclusive rights and the applicability of the fair use doctrine, which includes factors such as the purpose and character of use, the nature of the copyrighted work, the effect of use upon market value, etc. Continue reading »

If you don’t have an iPhone, well, you don’t have an iPhone

By Leslie Daniel *

iPhoneThe catchy and not least bit modest tagline from Apple’s latest commercials relates closely to its latest legal battle.  Apple is suing Samsung for “slavishly” copying the “look and feel” of the iPad and iPhone 3G/3GS with its Galaxy S 4G.  Apple’s intellectual property infringement claim is as follows: “Rather than innovate and develop its own technology and a unique Samsung style for its smart phone products and computer tablets, Samsung chose to copy Apple’s technology, user interface and innovative style.”  Apple’s spokeswoman Kristin Huguet did not hold back in the company statement calling the copying “blatant” and “wrong.”

The lawsuit focuses on “Galaxy’s design features, such as the look of its screen icons” and alleges Samsung violated Apple’s patents and trademarks, including the look, product design, packaging and user interface of the iPad and iPhone.  Samsung is not going to go down without a fight, though.  A Samsung representative, Kim Titus, said Samsung “would protect its intellectual property and ‘actively’ respond to the lawsuit: ‘Samsung’s development of core technologies and strengthening our intellectual property portfolio are keys to our continued success.’” Continue reading »

From Cradle to Grave: Panelists Discuss a Spectrum of Intellectual Property Issues

By Alayna R. Ness *

On March 25, 2011, the Wake Forest Journal of Business and Intellectual Property Law held a symposium titled Creative Capital: Intellectual Property Creation and Venture Capital.  The morning panel, entitled “Intellectual Property – Cradle to Grave,” was interesting and covered a variety of topics.  Each panelist was given an opportunity to speak for fifteen minutes about his or her respective topic or experiences with intellectual property law.

Robert Rehm

Robert Rehm

First up was Robert Rehm, a partner at Smith, Anderson, Blount, Dorsett, Mitchell & Jennigan, L.L.P. in Raleigh, North Carolina.  He spoke about the practical aspects of intellectual property (“IP”) transfers, including whether IP transfers by operation of law or by written agreement.  He described the different mindsets companies have towards intellectual property issues at the various stages of development.  For example, companies in the early stages of development are faced with the temptation to take shortcuts with their IP, such as paying a person to write the code for their website without a written agreement in place.  The real lessons learned from Mr. Rehm’s presentation include the importance of (1) getting a written agreement in place (even if you think you have an IP transfer by operation of law) and (2) resisting the temptation to cut IP corners, either because you are just starting up or because you are trying to remain competitive. Continue reading »

Google Street View v. Vederi, LLC: A Lesson on Provisional Patent Applications

By Alayna R. Ness *

Google Maps Street View of the Colosseum in Italy
Google Street View is an incredible tool.  It’s so useful!  When I was helping my clinic partner prepare for oral argument, we looked up the neighborhood on Google Street View to get an idea of the layout.  We were able to see that the street was really narrow and the houses were close together.  This helped with our argument that, in an area where everything is so close together, it should have been easy to find a witness to the crime.  But I’m not the only one who has put Google Street View to good use – it even led one British man to lose 100 pounds after seeing a picture of his overweight self on Google Street View.  Continue reading »

Will Proposed Bill Offer Much Needed Patent Reforms or Merely Placate Large Corporations?

By Rob Abb *

The Senate recently passed a bill that, at least in its current form, would revolutionize the U.S. patent system.  Senate bill 23, or the “America Invents Act,” was passed with the bipartisan support of 95 Senators.   President Obama praised the bill that he argues will not only “increase transparency and certainty for inventors, entrepreneurs and businesses, but help grow our economy and create good jobs.”

                    Fee Diversion

In addition to a number of technical and procedural changes to the patent application process, the America Invents Act would allow the USPTO to keep all of the fees that it collects.  As discussed in one of my previous blogs, the USPTO diverts its fees to other governmental agencies.  This bill would end the “fee diversion” and mandate that all fees the USPTO collects from its patents stay in that office.   Further, the USPTO would have the authority to adjust its fees in a way that “in the aggregate” will recover the estimated costs of issuing and reviewing patents.  Proponents of the bill argue that the additional fees will help clear the backlog of patents and spur job creation. Continue reading »

Punishing Culpable Infringement: Contribution and Indemnification in Co-Infringement Claims

By Luke MacDowall *

Henry Ford’s model of streamlined production through the specialization and division of labor revolutionized capitalist production forever. The full effect of it is being felt today with the increasing globalization of international commerce such that products are quite literally compilations of various parts produced in different parts of the world. This global-Fordist model has a unique impact on intellectual property disputes:  downstream manufacturers are at risk of intellectual property infringement claims even though the original infringing act occurred in upstream production.  In other words, a downstream manufacturer who incorporates (knowingly or not) an infringing gadget into its ultimate product faces possible infringement litigation. This risk is created due to the variety of claims expressly and impliedly created by the intellectual property statues that allow intellectual property owners to target actors all along the stream of commerce.

Facing this form of liability, many infringers have sought to shield themselves from these claims by seeking indemnification or at least contribution from co-infringers. However, neither federal common law nor the statutory patent scheme provides any cause of action for indemnification or contribution from co-infringers.

We will examine the Patent Act and its various statutory causes of actions that allow patentees to sue not only those directly responsible for infringement but also those who “induced” or “contributed” to the ultimate infringement. Continue reading »