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Category Archives: Intellectual Property

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Turning The Tide on “Trolls”

When a non-practicing entity (NPE) accused 16,000 small businesses of violating its patent by merely emailing scanned documents, the New York attorney general cracked down, forcing a settlement. Then the FTC threatened to sue for deceptive trade practices—prompting the NPE to file a preemptive suit against the FTC. ¶ As NPEs (sometimes known as patent… Continue Reading

Patent Quality: Shining Through

A New Review Process Shows the Importance of a Good Application The newly available procedure for challenging patent validity known as inter partes review, or IPR, is forcing patent players to raise their game—from application through litigation. More than 800 petitions for IPR— many more than the Patent Office itself had expected—have been filed since… Continue Reading

No Patent for You

Patent eligibility restrictions hit life sciences and tech After years of issuing rulings limiting what can be patented, the Supreme Court turned its attention squarely toward patent eligibility in the life sciences and technology fields. Overturning a 30-year practice by the U.S. Patent & Trademark Office of awarding patents on isolated DNA sequences, the court… Continue Reading

Far Beyond the Valley

Global tech hubs are a source of technology, talent, and funding While media coverage of the technology industry focuses largely on Silicon Valley, savvy tech and life sciences executives have been looking much farther afield, well beyond American borders. Americans are engaging with overseas companies in more diverse ways, fueling our thirst for knowledge about… Continue Reading

What’s in Your Product?

New law may force companies to reveal trade secrets As new regulations on the use of toxic chemicals are implemented in California, companies may need to re-evaluate their strategies to protect their intellectual property. The largest market in the U.S., California has taken the first step to implement its Green Chemistry Initiative, a bold new… Continue Reading

For Whom the Bell Trolls

Government efforts to block patent troll activity gained momentum this summer, as the White House issued five executive orders and members of Congress fielded no fewer than five bills aimed at such issues as patent quality and frivolous patent litigation. The executive orders are effective immediately. But their impact won’t be known until the PTO issues rules… Continue Reading

One-Two Punch

Stop imitators by combining design patents and trade dress Design patents have gained popularity in recent years among inventors looking to protect their market share.  But they shouldn’t forget trade dress–the distinctive physical appearance or packaging of a product–as a way to ward off copycats as well, says Morrison & Foerster partner Jennifer Lee Taylor. … Continue Reading

The FCC Defends an “Open Internet”

Much of the glamour of technology today rests on the amazing things one can do on the Internet. The Federal Communications Commission plays a big role in deciding how affordable and accessible those wonders will be for Americans. Case in point: Internet service providers are imposing usage caps and pricing tiers based on the amount… Continue Reading

Call the Patent Police!

Time to monitor competitors’ filings More companies will likely begin closely monitoring their competitors’ patent filings with the aim of opposing them under new procedures established by the America Invents Act, which went into full effect on March 16. The sweeping patent reform legislation—under which the U.S. switches to a first-to-file from a first-to-invent system—also… Continue Reading

3-D Printing: New Dimension for IP Law?

Just as inkjet printers deposit drops of ink to create a document, 3-D printers lay down bits of plastic, metal, or other material to build an object. But as 3-D printers enter the consumer market, they may also fashion new challenges for intellectual property law. Commercial 3-D printers, which can cost $50,000, are already being used… Continue Reading

Figuring FRAND

In our December post “A FRANDlier Realm” we discussed emerging law relating to patents that are essential to technological standards, like 3G wireless telecommunications. What happens when patent owners and product makers cannot agree on fair, reasonable and nondiscriminatory (FRAND) terms? We said then that, rather than issuing injunctions, American courts “are more likely to attempt… Continue Reading

Sharing an Umbrella

Big Pharma and academia cement big deals in the quest for bigger prizes With the patents of many highly profitable blockbuster drugs expiring over the course of a few years, the search is on for new drugs to fill large pharmaceutical companies’ shrinking product portfolios. For years, Big Pharma has turned to smaller biotech companies… Continue Reading

Patent Reform: The Process Is New, But Is It Improved?

In 2011, the sweeping patent reform legislation sought to reduce litigation by creating a new process for challenging patent validity. But the new process will look more like litigation than the old process, says Matthew Kreeger, chair of Morrison & Foerster’s Patent Interferences Group. Under the old opposition proceedings, challenges were decided by U.S. Patent & Trademark Office patent examiners based on the parties’… Continue Reading

Watch That Incubator

Make sure you’re protected before diving into academic collaboration Today, many universities operate business incubators, and some are seeing significant success. Since 2006, for example, the University of California’s QB3 bioscience incubator program has helped launch 65 companies that have raised more than $230 million in capital. Tapping into university resources can be a big… Continue Reading

A FRANDlier Realm

Europe’s courts take sides in standards patent disputes When a patent becomes essential for a product to operate according to industry standards—say, for a cellphone to connect to a 3G network—patent protection can start looking a bit like monopoly power. To avoid antitrust trouble, holders of these patents regularly pledge to license them on fair,… Continue Reading

Jumping the Line

Generic drug makers aren’t waiting until patents expire Since passage of the Hatch-Waxman Act in 1984, generic drug companies have used its Abbreviated New Drug Application (ANDA) process to bring cheaper versions of brand-name drugs to market after their patents expire. In the past decade or so, generic drug companies have commonly applied for the… Continue Reading

A Breed Apart

Crop inventors are seeking to protect their work, even if they don’t use GMOs When international seed supplier Enza Zaden bred a delicious and juicy new tomato in the 1990s, the world was introduced to the now famous Campari. The globe-shaped vegetable soon became a supermarket staple, but the Dutch company did not patent its… Continue Reading

Read Before Clicking

Click-wrap agreements, where the user has to click “I Accept” prior to downloading software, accessing information, or performing any number of tasks online, are typically approached with casualness in consumer-to-business transactions. But with B2B click-wrap agreements increasing, Morrison & Foerster partner John Delaney cautions against such a nonchalant approach. “These are take-it-or-leave-it agreements,” he warns…. Continue Reading

What Do Yoga Poses and Big Data Have in Common?

The U.S. Copyright Office recently issued a policy statement clarifying its approach to examining registrations of compilations, including claims for the selection and arrangement of independently uncopyrightable subject matter. Going forward, the Copyright Office will no longer register compilations of uncopyrightable subject matter—for example, “a compilation of yoga poses” or a “compilation of rocks.” While… Continue Reading

ICANN’s gTLD Protection Policies

As we wrote about previously, the Internet Corporation for Assigned Names and Numbers (ICANN) accepted applications during the first part of 2012 for the next generation of Internet domains – customized extensions, known as generic top-level domains, or gTLDs. Until this time, gTLDs have been limited to the ICANN-approved gTLDs, including .com, .org, and .edu as well as several… Continue Reading

To Catch a Thief

Trade secrets: now more enforceable— and more important When Bloomberg released its list of the 10 biggest intellectual property verdicts of 2011, the most noteworthy thing about it may have been that the jury award total was twice that of 2010.  The second-most noteworthy: the two largest verdicts weren’t for patent infringement but trade secret… Continue Reading

The End of Fishing Season

For companies daunted by the high cost of intellectual property litigation, some relief may be at hand in the form of proposed limits on the discovery process. A council that advises the U.S. Court of Appeals for the Federal Circuit last year decried the use of discovery as a “tactical weapon.”  It pinpointed the increasing… Continue Reading

From .com to .younameit

As a semiconductor manufacturer, how would you—or your competitor— like the exclusive right to the Web domain suffix “.chip”?  The Internet Corporation for Assigned Names and Numbers is accepting applications for new generic top-level domains that can be comprised of virtually any name or number string.  Top trademarks and brands have taken notice.  “Some trademark… Continue Reading