AEON Law’s IP Haikus
How to Sue Foreign Patent Infringers in the US
Foreign infringers Can be sued in the US If they have contacts In general, the jurisdiction of US courts ends at the borders of the US. However, there are situations in which US patent owners can reach foreign defendants or acts of infringement that take place outside...
USPTO Increases Trademark Proof-of-Use Audits
USPTO Cracks down on unused trademarks; More audits coming The US Patent and Trademark Office (USPTO) is cracking down on unused registered trademarks. Unused marks “clutter up” the trademark registry and make many potentially valuable marks unavailable for others to...
WIPO Panel Refuses to Cancel Domain Name Registration
Domain name bad faith Isn’t shown when respondent Registered name The Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) has refused to cancel a challenged domain name, finding that the Complainant failed to prove that the name had...
Commercial Success Isn’t Relevant to an Alice Analysis of Patentability
Commercial success Doesn’t mean you can patent Something that’s abstract The Federal Circuit has held that the commercial launch of a product is irrelevant to an analysis of whether the product is eligible for patent protection. The plaintiff, Mark Greenstein,...
How to Satisfy the Written Description Requirement
Written description Must allow a skilled person To carry it out A recent Federal Circuit decision explores the challenges involved in properly describing a claimed invention in a patent application. Quake v Lo involves shared claims in an issued patent and a patent...
Patent for Testing Circuits with Laser Survives Challenge
Using a laser To check semiconductors Is patentable A patent for testing electronic circuits using a laser has survived a challenge that the subject matter was patent ineligible under 35 U.S.C. § 101. Section 101 states: Whoever invents or discovers any new and...
Physical Check-Processing Doesn’t Pass § 101 Test
Federal Circuit Finds patent claims are abstract Though checks are for real The Federal Circuit has ruled that patent claims can still be “abstract” even though the claimed invention involves the processing of physical checks. Solutran, Inc. v. Elavon, Inc. involves a...
Can a Robot be an Inventor?
Can robots invent? Patent filing challenges Traditional rules Who – or what – can be considered an “inventor”? 35 U.S.C. § 100(f) defines “inventor” as: the individual or, if a joint invention, the individuals collectively who invented or discovered the subject...
“Work-for-Hire” Agreement Must Be Signed Before Work Starts
Work-for-hire doctrine Requires a signed agreement Before the work starts The “work-for-hire” doctrine allows the employer or client of the actual creator of a work of authorship to be deemed the “author” (and thus the owner) for purposes of copyright law. Normally,...
Congress to Expand Patent Eligibility for Computer-Implemented Inventions?
Bill would remove “new” From patent act language; Witnesses object Earlier this year, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) of the Senate Judiciary Committee, along with three members of the House of Representatives, released a draft patent reform bill...