Open source software code is publicly available and enables users to modify and disseminate new code including their modifications. Those who incorporate modifications into commercial software should consider both the patentability and infringement aspects of their efforts. Read the rest of this entry »

Perfecting a security interest in intellectual property involves determining the appropriate filing venue. In general, Article 9 of the Uniform Commercial Code (“Article 9”) applies to transactions intended to create a security interest.  However, Article 9 can be preempted by certain federal laws authorizing other procedures for recording liens. Read the rest of this entry »

Invention involves conception of a useful idea coupled with its reduction to practice. In determining conception, more than a bare idea is required. Conception is the formation in the mind of a definite and permanent idea of the complete and operative invention as it is to be thereafter applied in practice. Reduction to practice is the realization of the idea through the making a of new device or product (or developing a new method of making or using something) or merely developing viable plans or formulas for doing so. In the alternative, “constructive” reduction to practice is achieved by filing a patent application with the United States Patent and Trademark Office. Read the rest of this entry »

A provisional patent application is designed to provide a low cost initial patent filing in the United States. Provisional patent applications have become a popular way for applicants to secure early patent application filing dates for their inventions in the U.S. They have become widely used in rapidly evolving spheres of technology such as the Internet, telecommunications, software and biotechnology, although they are routinely used for all types of inventions. Currently, the U.S. government filing fee for a provisional application is $100.00 for individuals, non-profit organizations, universities and for-profit corporations of less than 500 employees, including affiliates (“small entities”) and $200.00 for for-profit corporations of 500 or more employees, including affiliates (“large entities”). Read the rest of this entry »

On April 30, 2007 the U.S. Supreme Court delivered a unanimous decision in a case that appears to raise the bar for establishing patentability of inventions in the U.S. The case, KSR International Co. v. Teleflex Inc., suggests that it is now more difficult to obtain patents from the United States Patent and Trademark Office (USPTO) and to enforce patents in federal courts. Read the rest of this entry »

Patents protect the utility of new and useful inventions as well as ornamental designs of articles of manufacture. In particular, utility patents cover machines, products and processes (including methods of doing business), and design patents protect the visual impression or “look” of an article of manufacture. A patent enables its holder to prevent others from making, selling or using the subject matter covered by the claims of the patent. Read the rest of this entry »

The law governing ownership of invention, trade secret and patent rights between employers and employees is premised on a few well-settled principles. As a general rule, an employee retains ownership of any invention or trade secret conceived and/or reduced to practice while in the course of his or her employment. Read the rest of this entry »

The Supreme Court’s decision in MedImmune v. Genentech, 127 S.Ct. 765 (2007), permitted MedImmune to challenge Genetech’s drug patent before breaching its patent license with Genentech.

Historically, breach of a patent license restrained licensees from challenging patents on invalidity grounds since patent holders could retaliate against those who willfully breached a patent license with an injunction and seek money damages. The new standard in MedImmune removes that risk. However, this new threat to patent holders is offset by the expense of challenging a patent in court.

The International Trade Commission (ITC) was created under the 1930 Tariff Act to prevent U.S. merchandise knockoffs from entering the country in violation of patent rights. U.S. companies with foreign manufacturing operations can fall into the commission’s jurisdiction. Read the rest of this entry »

A Texas federal district judge recently denied Z4 Technologies Inc.’s request to enjoin Microsoft from selling, making and using its infringing Windows and Office products. The ruling appears to be the first case to apply the holding in eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837 (2006).  The U.S. Supreme Court’s decision in eBay ended the presumption that an injunction should be issued almost automatically when a patent infringement is found.  Read the rest of this entry »