When One Patent Application Begets 10
April 02, 2004
In last month's newsletter, we discussed the financial burdens pharmaceutical and biotech firms face due to the Patent and Trademark Office's (PTO) policy of restriction practice -- the restriction of a patent application to prosecution of a single claimed invention per filing fee. Now we look at ways potential patentees can economically work with these restrictions.
Arbitration Gains Acceptance as a Means of Resolving IP Disputes
April 01, 2004
Intellectual property disputes typically have been resolved through litigation rather than arbitration. Litigators have seen arbitration as a dispute resolution method geared at matters of private contract. Because intellectual property's very existence has been a product of public policies supporting invention, branding and creativity, the courts have seemed to be the more appropriate locale to handle these disagreements. In the last 20 years, however, arbitration has received increasing attention as an acceptable method of resolving intellectual property disputes.
IP News
April 01, 2004
Highlights of the latest intellectual property news and cases from around the country.
Supreme Court Will Decide Whether Fair Use Defense Survives a Showing of Likely Confusion
April 01, 2004
On Jan. 9, 2003, the U.S. Supreme Court granted certiorari to decide whether a fair use defense to trademark infringement can trump a finding of likely confusion. <i>KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.</i>, 328 F.3d 1061 (9th Cir. 2003), <i>cert. granted</i>, 124 S. Ct. 981 (2004). The decision to grant certiorari in this case is especially interesting in light of other recent cases also from the Ninth Circuit in which certiorari was denied.
A Trade Secret By Any Other Name is Still a Trade Secret: Why UTSA Pre-emption Matters
April 01, 2004
Trade secret plaintiffs sometimes couch their claims under other, alternative titles, such as "common law misappropriation," "unfair competition," or "breach of confidence." The tactic is often a deliberate ploy to avoid complying with state Uniform Trade Secrets Act (UTSA) statutes and case law governing trade secret litigation — a body of law that favors former employees in many respects.
China's IP Is Not Entirely Out of the Haze Yet
March 01, 2004
When China first bid for WTO membership, its intellectual property-related laws were one of the main obstacles to its joining the organization, as WTO membership required China to comply with the Agreement on Trade-Related Intellectual Property Rights (TRIPS). In its WTO accession documents, China declared its commitment to bringing its legal system in conformity with the TRIPS Agreement. Since then, China has come a long way. Nevertheless, not all problems have been resolved.
Buyer Beware IP Issues in Corporate Purchasing
March 01, 2004
Every year, large multinational corporations purchase billions of dollars of goods and services for both internal use and for resale. While seemingly unrelated to traditional disciplines of patent, trademark, trade secret and copyright law, corporate purchasing is surprisingly replete with a myriad of intellectual property related issues. Such purchasing can include a combination of goods and services. For example, computer hardware and software may be purchased/licensed in conjunction with professional services, such as software consulting. While corporate purchasing has been relegated traditionally to the back burner, especially when considering issues related to intellectual property, the purchasing of goods and services does involve significant issues in all the major intellectual property law disciplines.
