IP News
September 02, 2004
Highlights of the latest intellectual property news and cases from around the country.
The Importance of Defining Novel Terms in Patenting Nanotechnology Inventions
September 02, 2004
Descriptive terminology is essential to providing effective patent protection for nanotechnology inventions, particularly from the perspective of future licensing and litigation activities. One of the key difficulties in patenting nanotech inventions, however, arises from the absence of established terminology. Failure to clearly define one's invention can lead to a number of unfortunate consequences, ranging from an overly narrow patent covering a limited scope of subject matter to a vague or overly broad patent susceptible to invalidation. This article will discuss: 1) recent decisions from the Federal Circuit that reveal how the use of descriptive terminology is essential to patenting nanotech inventions effectively, 2) how those decisions pose special problems for nanotech inventions, and 3) how those problems can be addressed through nanotech inventors acting as their own lexicographers and defining key terms in their patent specifications.
Community Patent: The EU Stuck Again?
September 02, 2004
The European Union ("EU") has once again failed to come to an agreement regarding a single unitary Community patent. At the May 18, 2004 Competitiveness Council meeting, the Council of the European Union ("Council") could not reach a unanimous agreement on the proposal for a Council Regulation on the Community patent. The only outstanding issue that has been a stumbling block all along, <i>ie,</i> languages and translation costs of the patent claims, remained unresolved. The EU's main decision-making body concluded that all conceivable compromise solutions had been tried. Accordingly, it stated its intent to refer the matter to the Presidency of the European Council.
From Cradle to Grave
August 31, 2004
Bankruptcy lawyers may not get involved in their clients' transactions until it is too late. They may be called in only upon the occurrence of a default, litigation, or the commencement of a bankruptcy case. At that point, they are faced with deals that have been "set in stone" -- drafted and structured by lawyers specializing in the front-end, who may have looked at the transaction from an overly optimistic viewpoint, especially in the case of a long-term deal with another party that presently is in good financial health.
Spyware: Courts and Legislatures Respond
August 09, 2004
Most find it to be a nuisance. Advertisers consider it to be cutting edge. Either way, spyware (or adware) is receiving a lot of attention recently in the press, in the courts and in legislatures around the country.
European Community Trademark: Two Tracks, One Destination
August 09, 2004
In late June 2004, the European Community acceded to the World Intellectual Property Organization (WIPO) Madrid Protocol on the international registration of trademarks. This development is likely to have a long-standing effect for U.S. trademark owners who wish to obtain trademark protection in the European Community. Indeed, since the inception of the European Community Trademark (CTM) system, U.S. applicants have positioned themselves as leaders in filing new CTM applications. According to recent statistics of the Office for Harmonization in the Internal Market (OHIM), U.S. trademark owners filed approximately 90,000 CTM applications, which constitutes close to 25% of all applications filed. For comparison, the second and third places taken by Germany and the United Kingdom, with 62,000 and 47,000 applications, respectively, are markedly behind the United States in CTM filings.
IP News
August 09, 2004
Highlights of the latest intellectual property news and cases from around the country.
Interpreting Patent Claims: Patent Drafters Say What They Mean, But Do They Mean What They Say?
August 09, 2004
What exactly does it mean to interpret claims "in light" of the specification? Do the descriptions and examples in a patent specification affect the interpretation of the patent's claims where there is no express statement that a specialized definition is being given to claim terms? Absent a specific glossary section, is it even necessary to read the specification or should the public be free to read and interpret the claims in a vacuum? Within 4 days, two separate panels of the Federal Circuit delivered seemingly conflicting answers to these questions, highlighting a growing rift regarding the significance of the specification and prosecution history to claim interpretation.
Knorr-Bremse and the Potential Modification of the Adverse-Inference Rule
July 12, 2004
The near future may bring fundamental changes to patent practice in the United States. On Sept. 26, 2003, the Federal Circuit ordered, <i>sua sponte,</i> the <i>en banc</i> consideration of the Eastern District of Virginia's decision in <i>Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp,</i> 344 F.3d 1336 (Fed. Cir. 2003). In its order, the court sought answers to questions that analyze its current precedent that authorizes the trier of fact to impose an adverse inference of willful patent infringement where accused infringers invoke the attorney-client privilege. On Feb. 5, 2004, the Federal Circuit heard arguments in the appeal. A decision is pending.
