January 25, 2010
Southern Cal beats up on South Carolina… in a trademark dispute
Those of you who know me know that I am a sports junkie. GO JETS – sorry, I had to find a way to subtly get that one in there. If you are reading this and thinking that you are about to hear me rant and rave about coaching changes or NCAA violations at Southern Cal, you are in for a surprise. This is a true intellectual property dispute between two schools with teams that I don’t particularly appreciate and with football coaches that are not on my top ten list (especially you Kiffin).
Anyway, the Trojans of Southern California have dealt a trademark blow to the South Carolina Gamecocks. This dispute revolves around the logos for each school and, more specifically, the logos that each school prints on their apparel. South Carolina appealed a decision from the Trademark Trial and Appeal Board refusing to register the school’s logo and also refusing to cancel a Southern California trademark. The Federal Circuit upheld both decisions.
November 25, 2009
Patent Language: “The Present Invention” versus “An Embodiment of the Present Invention”
If you spend any time reading patent applications, two things will probably become apparent to you: 1) you probably need to find a hobby or five to take up more of your time; and 2) sometimes it may seem like patent applications are written in some kind of strange, overly complicated, almost alien language. Usually, there’s a perfectly good explanation for why one would use a more complicated phrase, in a patent application, to say what could be said in a word or two anywhere else. It generally has something to do with legal precedent that would impact the protection granted by the patent. In our first of what will be another series of subject-specific posts about why we use the words we use in drafting a patent application, Tactical IP takes a look at one of the oft-inserted patent language twists – “an embodiment of the present invention,” used in place of “the present invention.”
When writing a patent application, there is a delicate balance that must be maintained, between describing an invention well enough to meet the statutory requirements and keeping your language general enough that the inventor’s competition can’t make a quick, easy design-around implementation that doesn’t infringe the patent. Patent protection is only worth as much as what you can prevent others from doing without paying you licensing fees or a royalty.
Luckily (or unluckily, depending on which way you look at it) decades of infringement litigation and appeals of patent office decisions give a roadmap for patent practitioners to follow when drafting a patent application. Unfortunately, the roadmap changes so often that the language you’re using today to draft a patent application may be no good by the time that application is used as the basis for an infringement suit – or even by the time it’s being examined by the PTO.
One patent drafting faux pas, which has developed in the last eight years or so, is stating that something is “the invention,” or stating that “the invention” includes something else. As the Court of Appeals for the Federal Circuit has demonstrated, such language can be used to narrow the protection that your patent would otherwise provide.
November 24, 2009
Why Did Chief Judge Michel “Pull an Oprah”?
by Philip Zies
You may have already heard that Chief Judge Paul Michel, of the US Court of Appeals for the Federal Circuit, announced that he will be stepping down as chief judge and will be retiring from the judiciary in March of 2010. Does it seem strange to anyone else that Chief Judge Michel’s announcement comes only a day after Oprah Winfrey announced that she will be leaving her show in 2011? While Tactical IP did not contact Chief Judge Michel for comment, a list of the top 10 reasons why Chief Judge Michel may have “pulled an Oprah” follows:
- 10: Didn’t want to be upstaged by Oprah.
- 9: Wanted some time off before the Mayan calendar ends December 21, 2012.
- 8: Wanted to form an exploratory committee for the Oprah/Michel ticket in 2012.
- 7: Wanted to vest in his health insurance coverage before healthcare reform is passed.
- 6: Didn’t want to preside over a possible appeal of the congressionally imposed BCS bowl schedule.
- 5: Wanted to show Oprah that he is available to take over her show in 2012.
- 4: Sending a child up in a weather balloon as a publicity stunt had already been done.
- 3: Wanted to be available for the Washington Redskins head coaching position.
- 2: Tired of carpooling to work with Arlen Specter
…and the number one reason why Chief Judge Michel may have “pulled an Oprah”
- 1: Two Words: Cosmetology School
If you can think of other reasons why Judge Michel “pulled an Oprah,” please let us know.
Actually, in all seriousness, we wish Judge Michel the very best. We also want to let him know that, with his qualifications, Zies Widerman & Malek can probably justify extending an offer of employment to His Honor, in either our D.C. area office or our Florida office.
November 16, 2009
What is Patentable? A Brief Background on Bilski and Where We Are Now.
Oral arguments before the United States Supreme Court In re Bilski were held on November 9, 2006. This case has been closely watched by the patent community because it can have some serious ramifications as to the type of subject matter that is patentable. The patent application filed by Bernard Bilski and Rand Warsaw is directed to a method of hedging risks in commodities trading. The Examiner issued a final rejection, noting that the invention was not directed to patentable subject matter, pursuant to Section 101 of Title 35, United States Code. Pursuant to 35 U.S.C. § 101, to be patentable, an invention must be directed to a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
The Applicants appealed the Patent Office’s decision to the Federal Circuit. The en banc Federal Circuit upheld the PTO’s decision and noted that patentable subject matter does not include “laws of nature, national phenomena, or abstract ideas.” The court went on to reiterate the “machine or transformation test” with respect to patentability. More specifically, patentable subject matter must be tied to a particular machine or apparatus, or it must transform a particular article into a different state or thing. Using that test, the Federal Circuit found that the method of hedging risks in commodities trading did not meet the requirements for patentability.
