Category: Patents

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How to Avoid Having Your Patent Interpreted as a Covered Business Method (CBM) Patent

Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent?  The … Continue Reading

U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement

Bottom Line:  The Supreme Court’s decision sets the bar higher for design patent holders to recover for infringement and opens the door to apportionment of damages. Parties looking to file for design patents will likely consider claiming their patents more broadly, in order to avoid the specter of reduced damages in the event the design … Continue Reading

Industrial Design Protection in Canada: Changes Before the Office January, 2017

Industrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US.  They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, … Continue Reading

PLEADING PATENT INFRINGEMENT IN THE UNITED STATES?

How do you plead patent infringement in the United States?  Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint?  What should you do? Let’s say your client has a United States patent that is believed to be infringed by another party.  You do not rely on the client … Continue Reading

Supreme Court Reverses Apple v. Samsung Design Patent Damages Award

On December 6, the Supreme Court reversed Apple’s $399 million patent infringement verdict against Samsung.  The decision – the first from the Supreme Court to interpret design patent damages since 1886 – arguably raises more questions than it answers. In a series of widely-publicized cases around the globe, Apple and Samsung have been battling over … Continue Reading

Provisional applications and licensing of unregistered patents may appear in Russia

In August 2016 Rospatent has initiated a public discussion on provisional applications and licensing of unregistered patents in Russia. In Rospatent’s view, provisional applications are designed to establish an effective 12-month term, within which applicants may file their non-provisional (“ordinary”) applications. In order to register a provisional application an applicant should disclose a technical decision … Continue Reading

WITHOUT PATENT PROTECTION, CAN YOU PROTECT THE DESIGN OF A PRODUCT IN THE UNITED STATES?

Suppose that you have a unique design for your product but no patent protection in the United States?  Can you protect your product design to prevent a competitor from producing the same or similar design?  Is there anything you can do? Let’s say you created a unique design for a product such as a smart … Continue Reading

IP HOUSEKEEPING – A CANTER THROUGH EU REFORMS COMING YOUR WAY DURING 2016

Here’s a quick “heads up” of what I see as the key reforms of IP laws in the pipeline at the European Union (EU) level that are likely to affect EU regional registrations of IP, as well as the national laws of each and every EU Member State.  You will no doubt be reading more … Continue Reading

What Judith Grubner is Saying About the Next Big Thing in IP Law for 2016

ILN IP Insider is starting a new series – we’re featuring interviews with ILN IP lawyers, asking them questions on the state of IP Law in 2016. These will typically be one to two-question interviews with our practitioners from around the world. Our first interview is with Arnstein & Lehr lawyer, Judith Grubner: What’s the … Continue Reading

MAKING HEAVY WEATHER OF THE UK’S UNJUSTIFIED INFRINGEMENT THREATS RULES

The UK has for a long time had laws in place that make it illegal for IP owners to make “unjustified threats” to bring proceedings for infringement of registered IP rights.  In recent years, this prohibition has been narrowed to exclude threats made in respect of primary infringement (i.e. manufacturing, importing or supplying services), but … Continue Reading

Australian Full Federal Court rules on rights of an exclusive licensee

A recent decision of the Full Federal Court of Australia (Bristol Myers Squibb Company v Apotex Pty Ltd [2015] FCAFC 2) has resolved uncertainty about the requirements for an exclusive licence of a patented invention. Legislation The Patents Act 1990 (Cth) provides that an exclusive licensee holds a licence from the patentee to exploit the … Continue Reading
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