Print Page


[08/22/17] Celebrity Patent Inventor: President Abraham Lincoln

How many U.S. presidents have been granted patents in the U.S.? ONE.

[08/22/17] Summer in Washington, D.C.

The glorious days of summer have finally arrived in D.C.

[08/22/17] Staas & Halsey Attorney Presents at The Knowledge Group Trademark Webinar

On June 21, 2017, Staas & Halsey trademark attorney Alexander Butterman was a panelist in a trademark law webinar sponsored by The Knowledge Group which was entitled, Best Practices in Protecting Your Brand and the Fundamentals of Trademark Law: A 2017 Perspective.

[08/22/17] Staas & Halsey Attorneys Speak at the 3rd Annual IP Strategy Summit

This past May 2017, Staas & Halsey partners Richard A. Gollhofer and Mehdi Sheikerz and senior associate Stephen McClure presented "Drafting Patent Claims to Avoid 35 U.S.C. §101 Rejections" at the 3rd Annual IP Strategy Summit in Seattle, Washington on May 3, 2017.

[08/21/17] Staas & Halsey LLP Summer Newsletter 2017

Staas & Halsey LLP Summer Newsletter 2017

[06/06/17] Secure Axcess, LLC v. PNC Bank National Association

On February 21, 2017, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its opinion in Secure Axcess, LLC v. PNC Bank (“PNC”), holding that, to be eligible for covered business method (“CBM”) review under the America Invents Act (“AIA”), a patent’s claims must contain some financial activity element.

[06/06/17] SCA Hygiene Products v. First Quality Baby Products

On March 21, 2017, the United States Supreme Court (“Supreme Court”) issued its opinion in SCA Hygiene Prods. V. First Quality Baby Prods., holding that laches, an equitable defense to infringement damages based upon unreasonable delay in commencing suit, cannot be a defense against infringement damages where the infringement occurred within the six year period established in 35 U.S.C. §286.

[06/06/17] Life Tech. Corp. v. Promega Corp.

On February 22, 2017, the United States Supreme Court (“Supreme Court”) issued its opinion in Life Tech. v. Promega, holding that the export of a single component of a patented article does not give rise to infringement liability under 35 U.S.C. § 271 (f)(1).

[06/06/17] Staas & Halsey LLP Spring Newsletter 2017

Staas & Halsey LLP Spring Newsletter 2017

[05/02/17] Staas & Halsey LLP Winter Newsletter 2017

Staas & Halsey LLP Winter Newsletter 2017

[12/22/16] Amdocs (Israel) Limited v. Openet Telecom, Inc.

On November 1, 2016, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) held that four of Amdocs’ patents, US 7,631,065, US 7,412,510, US 6,947,984, and US 6,836,797, were directed toward patent-eligible subject matter. Unlike previous subject matter eligibility cases, the Federal Circuit evaluated Amdocs with an examination tailored to the specific facts of the case, comparable to traditional common-law.

[12/22/16] McRO, Inc. v. Bandai Namco Games America Inc.

On September 13, 2016, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) held in the case of McRo, Inc. v. Bandai Namco Games America Inc., that “the ordered combination of claimed steps, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible subject matter.” The Federal Circuit focused its analysis of the Alice test on the second step, looking for (1) specific limitations that help avoid preemption and (2) more than merely automation of existing human activity.

[12/22/16] Lee v. Tam : Disparaging Trademarks versus Freedom of Speech

On September 29, 2016, the Supreme Court of the United States (“Supreme Court”) granted certiorari in Lee v. Tam to consider whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which says that no trademark shall be denied registration on account of its nature unless it “consists of … matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

[12/16/16] Staas & Halsey LLP Fall Newsletter 2016

Staas & Halsey LLP Fall Newsletter 2016

[09/28/16] Staas & Halsey LLP Summer Newsletter 2016

Staas & Halsey LLP Summer Newsletter 2016

[08/05/16] Staas & Halsey LLP Spring Newsletter 2016

Staas & Halsey LLP Spring Newsletter 2016

[03/24/16] Staas & Halsey LLP Winter Newsletter 2015

Click to view PDF Staas & Halsey LLP Fall Newsletter 2015

[01/06/16] Staas & Halsey LLP Fall Newsletter 2015

Staas & Halsey LLP Fall Newsletter 2015

[06/24/15] SPRING SEASON IN WASHINGTON, D.C.

With spring comes the National Cherry Blossom Festival to the Washington, D.C. metropolitan area. Every year, Washington, D.C. hosts a number of events celebrating the grandeur and beauty of the Cherry Blossoms that line the shores of the Tidal Basin.

[06/24/15] SUPREME COURT ISSUES CVSG ORDER IN ORACLE v. GOOGLE

On January 12, 2015, the Supreme Court of the United States (“Supreme Court”) invited the U.S. Solicitor General to file a brief expressing the United States’ views on the copyright infringement case between Oracle and Google.

[06/24/15] SUPREME COURT ISSUES CVSG ORDER IN ORACLE v. GOOGLE

On January 12, 2015, the Supreme Court of the United States (“Supreme Court”) invited the U.S. Solicitor General to file a brief expressing the United States’ views on the copyright infringement case between Oracle and Google.

[06/24/15] PARTNER RECOGNIZED FOR 2015 UAB EXCELLENCE IN BUSINESS TOP 25

The University of Birmingham National Alumni Society awarded the 2015 UAB Excellence in Business Top 25 to James Randall Beckers, a partner with the firm for more than 25 years.

[06/24/15] SUPREME COURT DIFFERENTIATES “ULTIMATE QUESTION” OF THE CLAIM CONSTRUCTION AND “RESOLUTION OF SUBSIDIARY FACTUAL MATTERS” IN TEVA PHARMACEUTICALS USA, INC. v. SANDOZ, INC.

On January 20, 2015, the Supreme Court of the United States (“Supreme Court”) held that an appellate court should use a “clear error” standard of review, and not a de novo standard, when reviewing a U.S. district court’s “resolution of subsidiary factual matters” in the construction of a patent claim.

[06/24/15] SUPREME COURT DIFFERENTIATES “ULTIMATE QUESTION” OF THE CLAIM CONSTRUCTION AND “RESOLUTION OF SUBSIDIARY FACTUAL MATTERS” IN TEVA PHARMACEUTICALS USA, INC. v. SANDOZ, INC.

On January 20, 2015, the Supreme Court of the United States (“Supreme Court”) held that an appellate court should use a “clear error” standard of review, and not a de novo standard, when reviewing a U.S. district court’s “resolution of subsidiary factual matters” in the construction of a patent claim.

[06/24/15] STAAS & HALSEY LLP RANKED IN TOP 20 U.S. PATENT FIRMS FOR 2014

Staas & Halsey LLP was recently ranked in the top 20 U.S. patent firms for 2014 by Intellectual Property Today magazine.

[06/24/15] SUPREME COURT REVIEWS PATENT LICENSING IN KIMBLE v. MARVEL ENTERPRISES

The Supreme Court of the United States (“Supreme Court”) heard oral arguments in Kimble v. Marvel Enterprises in March and is expected to issue its opinion within a few months. The Justices split on whether or not to overturn the fifty-year-old precedent Brulotte v. Thys.

[06/24/15] SUPREME COURT REVIEWS PATENT LICENSING IN KIMBLE v. MARVEL ENTERPRISES

The Supreme Court of the United States (“Supreme Court”) heard oral arguments in Kimble v. Marvel Enterprises in March and is expected to issue its opinion within a few months. The Justices split on whether or not to overturn the fifty-year-old precedent Brulotte v. Thys.

[06/24/15] FEDERAL CIRCUIT CLARIFIES THAT SERVICE MARK “USE IN COMMERCE” REQUIRES MORE THAN MERE ADVERTISING IN COUTURE v. PLAYDOM, INC.

On March 2, 2015, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board’s (“TTAB”) decision to cancel David Couture’s (“Couture”) “PLAYDOM” service mark registration, holding that mere advertising of the PLAYDOM name or mark does not constitute “use in Commerce”[1] and was therefore not sufficient for the grant of a U.S. service mark registration

[06/24/15] FEDERAL CIRCUIT CLARIFIES THAT SERVICE MARK “USE IN COMMERCE” REQUIRES MORE THAN MERE ADVERTISING IN COUTURE v. PLAYDOM, INC.

On March 2, 2015, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board’s (“TTAB”) decision to cancel David Couture’s (“Couture”) “PLAYDOM” service mark registration, holding that mere advertising of the PLAYDOM name or mark does not constitute “use in Commerce”[1] and was therefore not sufficient for the grant of a U.S. service mark registration

[06/24/15] UNITED STATES & JAPAN JOIN 62 OTHER JURISDICTIONS IN HAGUE SYSTEM MEMBERSHIP FOR INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS

The United States and Japan have joined the Hague System for International Registration of Industrial Designs. The nations acceded by depositing official instruments at the World Intellectual Property Organization (‘WIPO”) headquarters in Geneva.

[06/24/15] UNITED STATES & JAPAN JOIN 62 OTHER JURISDICTIONS IN HAGUE SYSTEM MEMBERSHIP FOR INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS

The United States and Japan have joined the Hague System for International Registration of Industrial Designs. The nations acceded by depositing official instruments at the World Intellectual Property Organization (‘WIPO”) headquarters in Geneva.

[06/24/15] UNITED STATES CONGRESS PROPOSES PATENT REFORM (AGAIN)

Representative Goodlatte (R – VA) reintroduced his patent reform bill: the Innovation Act1 on February 5, 2015. The previous version successfully passed the U.S. House of Representatives in 2013, before it stalled in the U.S. Senate. Commentators predict that the outlook for this legislative reform is not whether it will pass, but what scope the resulting reform takes on.

[06/24/15] UNITED STATES CONGRESS PROPOSES PATENT REFORM (AGAIN)

Representative Goodlatte (R – VA) reintroduced his patent reform bill: the Innovation Act1 on February 5, 2015. The previous version successfully passed the U.S. House of Representatives in 2013, before it stalled in the U.S. Senate. Commentators predict that the outlook for this legislative reform is not whether it will pass, but what scope the resulting reform takes on.

[06/24/15] STRATEGIC CLAIM DRAFTING: CONSIDERATIONS FOR POTENTIAL REDUCTION OF PENDENCY & COST OF PATENT PROSECUTION

A patent is not enforceable until it is issued and the patent application is prosecuted during the potentially enforceable period. As a result, a reduction in application pendency can increase the value of a patent by effectively increasing the enforceability period. Patents are also expensive to obtain and a reduction in pendency may also reduce costs.

[06/24/15] STRATEGIC CLAIM DRAFTING: CONSIDERATIONS FOR POTENTIAL REDUCTION OF PENDENCY & COST OF PATENT PROSECUTION

A patent is not enforceable until it is issued and the patent application is prosecuted during the potentially enforceable period. As a result, a reduction in application pendency can increase the value of a patent by effectively increasing the enforceability period. Patents are also expensive to obtain and a reduction in pendency may also reduce costs.

[06/24/15] USPTO PROVIDES 8 EXAMPLES OF ABSTRACT IDEA ANALYSIS FOR PATENT ELIGIBLE SUBJECT MATTER

On December 16, 2014, the United States Patent and Trademark Office (“USPTO”) issued the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Guidance”) in light of decisions by the U.S. Supreme Court (“Supreme Court”), including Mayo, Myriad, and Alice Corp. The USPTO also issued Examples on January 27, 2015. There are eight (8) examples of USPTO’s interpretation of subject matter eligibility under 35 U.S.C. 101 with regard to evaluating whether a patent application claim is directed to an abstract idea.

[06/24/15] USPTO PROVIDES 8 EXAMPLES OF ABSTRACT IDEA ANALYSIS FOR PATENT ELIGIBLE SUBJECT MATTER

On December 16, 2014, the United States Patent and Trademark Office (“USPTO”) issued the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Guidance”) in light of decisions by the U.S. Supreme Court (“Supreme Court”), including Mayo, Myriad, and Alice Corp. The USPTO also issued Examples on January 27, 2015. There are eight (8) examples of USPTO’s interpretation of subject matter eligibility under 35 U.S.C. 101 with regard to evaluating whether a patent application claim is directed to an abstract idea.

[06/24/15] NAUTILUS ON REMAND TO FEDERAL CIRCUIT IN BIOSIG INSTRUMENTS, INC. v. NAUTILUS, INC.

Last summer, Staas & Halsey LLP reported that the Supreme Court of the United States (“Supreme Court”) had issued its opinion in the Biosig Instruments, Inc. v. Nautilus, Inc. patent case. In that opinion, the Supreme Court rejected the prevailing United States Court of Appeals for the Federal Circuit (“Federal Circuit”) standard for definiteness. 35 U.S.C. § 112 (b) (AIA, ¶2 for pre-AIA) mandates that a patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” Formerly, the legal catch-phrase was whether the patent claim terms were not “amenable to construction” or that they were “insolubly ambiguous.”

[06/24/15] NAUTILUS ON REMAND TO FEDERAL CIRCUIT IN BIOSIG INSTRUMENTS, INC. v. NAUTILUS, INC.

Last summer, Staas & Halsey LLP reported that the Supreme Court of the United States (“Supreme Court”) had issued its opinion in the Biosig Instruments, Inc. v. Nautilus, Inc. patent case. In that opinion, the Supreme Court rejected the prevailing United States Court of Appeals for the Federal Circuit (“Federal Circuit”) standard for definiteness. 35 U.S.C. § 112 (b) (AIA, ¶2 for pre-AIA) mandates that a patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” Formerly, the legal catch-phrase was whether the patent claim terms were not “amenable to construction” or that they were “insolubly ambiguous.”

[06/24/15] FEDERAL CIRCUIT SIDES WITH USPTO ON FIRST PTAB APPEAL IN IN RE CUOZZO SPEED TECHNOLOGIES, LLC.

On February 4, 2015, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its opinion In re Cuozzo Speed Technologies, LLC, the first appeal of a U.S. Patent and Trademark Office (“USPTO”) Inter Partes Review (“IPR”) final decision. Affirming for the USPTO, the Federal Circuit held that (1) the court is precluded from reviewing any decision to institute IPR, and (2) the USPTO Patent Trial and Appeal Board (“PTAB”) may apply the broadest reasonable interpretation standard in IPR proceedings.

[06/24/15] FEDERAL CIRCUIT SIDES WITH USPTO ON FIRST PTAB APPEAL IN IN RE CUOZZO SPEED TECHNOLOGIES, LLC.

On February 4, 2015, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its opinion In re Cuozzo Speed Technologies, LLC, the first appeal of a U.S. Patent and Trademark Office (“USPTO”) Inter Partes Review (“IPR”) final decision. Affirming for the USPTO, the Federal Circuit held that (1) the court is precluded from reviewing any decision to institute IPR, and (2) the USPTO Patent Trial and Appeal Board (“PTAB”) may apply the broadest reasonable interpretation standard in IPR proceedings.

[06/24/15] EN BANC FEDERAL CIRCUIT REVIEW OF ITC EXCLUSION ORDER BASED ON INDUCED INFRINGEMENT IN SUPREMA v. INTERNATIONAL TRADE COMMISSION

The U.S. International Trade Commission (“ITC”), while it applies patent law often, derives its power from the Tariff Act, 19 US.C. § 1337. Section 337 is a trade statute, designed to protect United States economic and business interests from unfair trade practices. One of those unfair trade practices is defined under 19 U.S.C. 1337(a) (1) (B) as: “The importation into the United States …of articles that infringe a valid and enforceable United States patent.”

[06/24/15] EN BANC FEDERAL CIRCUIT REVIEW OF ITC EXCLUSION ORDER BASED ON INDUCED INFRINGEMENT IN SUPREMA v. INTERNATIONAL TRADE COMMISSION

The U.S. International Trade Commission (“ITC”), while it applies patent law often, derives its power from the Tariff Act, 19 US.C. § 1337. Section 337 is a trade statute, designed to protect United States economic and business interests from unfair trade practices. One of those unfair trade practices is defined under 19 U.S.C. 1337(a) (1) (B) as: “The importation into the United States …of articles that infringe a valid and enforceable United States patent.”

[06/24/15] FEDERAL CIRCUIT SAYS THE ISSUE OF PATENTABLE SUBJECT MATTER CAN QUICKLY BE DECIDED ON MOTION TO DISMISS IN ULTRAMERCIAL, INC. v. HULU, LLC.

On November 14, 2014, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the decision of the United States District Court for Central District of California (“District Court”) in favor of Hulu, LLC. (“Hulu”), noting that the District Court properly granted the motion to dismiss when Ultramercial’s patent was invalid for claiming an abstract idea that is not transformed into a patent eligible, specific application, even when “merely novel or non-routine components” are added.

[06/24/15] FEDERAL CIRCUIT SAYS THE ISSUE OF PATENTABLE SUBJECT MATTER CAN QUICKLY BE DECIDED ON MOTION TO DISMISS IN ULTRAMERCIAL, INC. v. HULU, LLC.

On November 14, 2014, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the decision of the United States District Court for Central District of California (“District Court”) in favor of Hulu, LLC. (“Hulu”), noting that the District Court properly granted the motion to dismiss when Ultramercial’s patent was invalid for claiming an abstract idea that is not transformed into a patent eligible, specific application, even when “merely novel or non-routine components” are added.

[02/13/15] USPTO Provides 8 Examples of Abstract Idea Analysis for Patent Eligible Subject Matter

In December 16, 2014, the United States Patent and Trademark Office ("USPTO") issued the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Guidance”) in light of decisions by the U.S. Supreme Court, including Mayo, Myriad, and Alice Corp.  The USPTO also issued Examples on January 27, 2015.  There are eight (8) examples of USPTO’s interpretation of subject matter eligibility under 35 U.S.C. 101 with regard to evaluating whether a patent application claim is directed to an abstract idea. 

The U.S. Supreme Court decision in Alice Corp vs. CLS Bank,issued on June 19, 2014, invalidated a computerized method of managing risk in financial trading.  The Examples provide fact patterns tracking recent cases after the Alice Corp decision, with claims that are indicated as patent eligible and ineligible.

The USPTO Guidance and Examples should aid Examiners as well as Applicants in determining whether a patent application could be directed to an abstract idea in light of these recent court decisions.  The USPTO also provides examples analyzing claims reciting or involving laws of nature, natural phenomena and/or natural produces. 

Applicants may consider referencing the USPTO Guidance and Examples when drafting patent application claims as well as during prosecution of pending patent applications, with the caveat that recent court decisions continue to change the landscape of patent eligible subject matter.

For more information, an Intellectual Property Attorney at Staas & Halsey LLP can be contacted at info@s-n-h.com.

[01/06/15] Fall-Winter 2014 Newsletter

Supreme Court

 

Federal Circuit

VirtualAgility Inc. v. Salesforce.com, Inc.

Tyco Healthcare Group LP v. Mutual Pharmaceutical Co.

X2Y Attenuators, LLC v. International Trade Commission

VirnetX, Inc. v. Cisco Systems, Inc.

Interval Licensing LLC v. AOL, Inc.


USPTO 

U.S. Patent Application Filings Continue to Grow Healthy, According to Recent USPTO Statistics

USPTO & SIPO Announce New Electronic Priority Document Retrieval Method

USPTO & KIPO Announce KIPO's Full Expansion of the Cooperative Patent Classification System

 

Patent Trial and Appeal Board

Recent  AIA Trial Statistics Show Exploding Popularity of the New USPTO Post-Grant Trial System

Board Expands Inter Partes Review to Include Determination of Priority Support

SAP America, Inc. v. Pi-Net International, Inc.

First Derivation Proceeding on the Merits is Denied Institution

Catapult Innovations Pty Ltd. V. Adidas AG

 

Trademarks

Newly Updated Statistics Uncovers Recent Trends in U.S. Trademark Registration

USPTO Updates the Examination Guide for Service Mark Specimens

Congressional Trademark Caucus

Trademark Protections & Options in the gTLD Expansion

Google, Inc.  Keeps Trademark Protection, Even Though  People Use"google" as a verb

Elliot v. Google, Inc.

Supreme Court to Decide: Is Trademark Tracking a Question of Law or Fact?

Hana Financial v. Hana Bank

Supreme Court to Decide: Does TTAB Determination Yield Issue Preclusions

B.B. Hardware v. Hargis Industries

Supreme Court Denied Certiorari To Review eBay's Applicability to Lanham Act Cases

Herb Reed Enterprises v. Florida Entertainment Management


 Other

Federal Trade Commission Green Lighted to Study PAEs

 

Firm News

Staas & Halsy LLP Sponsorship of AIPLA Annual Conference Event

Staas & Halsey LLP at the AIPPI Conference

Fall and the Christmas Holiday Season in Washington, D.C.

[09/18/14] Summer 2014 Newsletter

Table of Contents

 

Supreme Court

USPTO Rules and Practice

Federal Circuit

Trademarks

Other News

Firm News

[06/11/14] USPTO Director, Michelle Lee, Proposes New Set of Rules to Identify the True Patent Owner

The new de facto United States Patent and Trademark Office ("USPTO") director is proposing a new set of rules that would enhance the transparency of patent ownership. The proposal was published in the Federal Register and appeared to be complex, but the general idea is that the information regarding the owner of patents and applications should be available to the public; some rights holders have been hiding their true identities. 

Click Here to read the full article.

[06/11/14] USPTO Director, Michelle Lee, Proposes New Set of Rules to Identify the True Patent Owner

The new de facto United States Patent and Trademark Office ("USPTO") director is proposing a new set of rules that would enhance the transparency of patent ownership. The proposal was published in the Federal Register and appeared to be complex, but the general idea is that the information regarding the owner of patents and applications should be available to the public; some rights holders have been hiding their true identities. 

Click Here to read the full article.

[06/11/14] Benefits of Pre-Appeal Brief Conference Program Following Final Rejection

First instituted in 2005 by the U.S. Patent and Trademark Office ("USPTO"), the Pre-Appeal Brief Conference Program gives an applicant an additional option of challenging the examiner’s  final rejection.  Previously, the available options were limited to filing: (1) a Request for Continued Examination; (2) an After Final Response; or (3) a Notice of Appeal.  Under the Pre-Appeal Brief Conference Program,  applicant has an inexpensive alternative to reverse the final rejection by filing a Pre-Appeal Brief Request along with its Notice of Appeal.  

Click Here to read the full article.

[06/11/14] Benefits of Pre-Appeal Brief Conference Program Following Final Rejection

First instituted in 2005 by the U.S. Patent and Trademark Office ("USPTO"), the Pre-Appeal Brief Conference Program gives an applicant an additional option of challenging the examiner’s  final rejection.  Previously, the available options were limited to filing: (1) a Request for Continued Examination; (2) an After Final Response; or (3) a Notice of Appeal.  Under the Pre-Appeal Brief Conference Program,  applicant has an inexpensive alternative to reverse the final rejection by filing a Pre-Appeal Brief Request along with its Notice of Appeal.  

Click Here to read the full article.

[06/11/14] Proposed Changes to the American Invents Act: Innovation Act of 2013

The Innovation Act of 2013, introduced in October 2013 in Congress, offers a new set of proposed legislative patent reforms.  The bill is intended to fix, among other things, the problem with patent trolls whose abusive litigation practice has exploded in recent years and has adversely affected the U.S. economy.  The proposed bill includes a number of provisions that would have substantial impacts on patent ownership, procurement, and enforcement.

Click Here to read the full article.

[06/11/14] Proposed Changes to the American Invents Act: Innovation Act of 2013

The Innovation Act of 2013, introduced in October 2013 in Congress, offers a new set of proposed legislative patent reforms.  The bill is intended to fix, among other things, the problem with patent trolls whose abusive litigation practice has exploded in recent years and has adversely affected the U.S. economy.  The proposed bill includes a number of provisions that would have substantial impacts on patent ownership, procurement, and enforcement.

Click Here to read the full article.

[06/11/14] Staas & Halsey LLP Announces David J. Cutitta and Aaron C. Walker as Partners with the Firm

Staas & Halsey LLP is pleased to announce that David J. Cutitta and Aaron Walker have become Partners with the firm.

[06/10/14] Staas & Halsey LLP Recently Ranked in Top 15 U.S. Patent Firms for 2013

Staas & Halsey LLP was recently ranked in the top 15 U.S. patent firms for 2013 by Intellectual Property Today magazine. 

[01/22/14] Staas & Halsey LLP Trademark Attorney Alexander Butterman Is Appointed to the Enforcement Committee of the International Trademark Association

Alexander H. Butterman, a trademark attorney with Staas & Halsey LLP for the past eight years, has been appointed to the Enforcement Committee of the International Trademark Association (“INTA”) for INTA’s 2014–2015 committee term. The term runs from January 1, 2014 until December 31, 2015. 

Click Here to read the full article.

 

[01/22/14] Staas & Halsey LLP Hosts AIPLA Annual Fall Conference Hospitality Event

The American Intellectual Property Law Association (AIPLA) Annual Conference was held in the fall in Washington D.C.

Click Here to read the full article.

 

[01/22/14] Supreme Court Will Review Federal Circuit Standard for Awarding Attorneys’ Fees

The U.S. Supreme Court recently granted writs of certiorari to hear two-patent related cases: Octane Fitness, LLC v. Icon Health and Fitness, Inc. and Highmark Inc. v. Allcare Health Management Systems, Inc., which deal with awarding of attorney fees in patent infringement lawsuits.

Click Here to read the full article.

[01/22/14] USPTO and KIPO Announce Launch of Cooperative Patent Classification System Pilot

Earlier this year in June 2013, the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) announced the launch of a new pilot program in which KIPO will begin classifying some of its patent documents using the Cooperative Patent Classification system (CPC).  The CPC system is a new classification system jointly managed by the USPTO and the European Patent Office (EPO).  With this new pilot program, KIPO will be the first foreign patent office to begin classifying patent documents in this new system.

Click Here to read the full article.

 

[01/22/14] Fall/Winter 2013 Newsletter

Find links to articles on USPTO Patent Rules and Practice, Supreme Court, Federal Circuit, USPTO Trademark Rules and Practice and Firm News.

[11/20/13] Supreme Court Finds Human Genes Patent Ineligible in Association for Molecular Pathology

On June 13, 2013, the United States Supreme Court (the "Court") decided an important case involving patent eligible subject matter in Association for Molecular Pathology, Inc. v. Myriad Genetics, Inc. By a vote of 9-0, the Court held that human genes are not eligible for patents. However, the Court also held by the same vote that synthetic DNA, also known as cDNA, could be patent eligible under certain circumstances.

Click Here to read the full article.

 

[10/16/13] Summer 2013 Newsletter

Find links to articles on USPTO Patent Rules and Practice, Supreme Court, Federal Circuit, USPTO Trademark Rules and Practice and Firm News.

[07/01/13] Federal Circuit En Banc Decision on Software Patent Eligibility CLS Bank Int’l v. Alice Corp.

Decided May 10, 2013

            On May 10, 2013, the United States Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion that further muddied the waters of Section 101 patent eligibility (35 U.S.C. § 101). In CLS Bank In’tl v. Alice Corp, a majority of the Federal Circuit held that respondent Alice’s method and medium claims were ineligible for a patent. However, the Federal Circuit was split as to whether Alice’s system claims were patent eligible. This case exposed a growing divide among the judges over patent eligibility, manifesting itself in the case’s multiple concurring and dissenting opinions. 

Click Here to read the full article.

[07/01/13] USPTO First-To-File Effective March 16, 2013

On March 16, 2013, the first-to file system provisions of the American Invents Act (AIA) take effect.  The United States Patent and Trademark Office (USPTO) predicts a substantial increase of application filings before the effective date from those seeking to file under the first-to-invent system.  The number of applications, according to the USPTO, may increase to 80,000 for utility-plant-reissue applications and 40,000 for provisional applications. These levels are significantly higher than the monthly average filings of about 44,000 and 13,000 respectively. 

Click Here to read the full article.

[07/01/13] USPTO Fee Increases Effective March 19, 2013

The United States Patent and Trademark Office (USPTO) published a new fee schedule effective March 19, 2013.  Most of the fees are now be subject to “small” or “micro” entity discounts to reflect changes brought by the American Invents Act (AIA).  The new schedule increased some fees substantially, while others were reduced. 

Click Here to read the full article.

 

[07/01/13] Staas and Halsey LLP Welcomes Attorneys Brian Avery and Patrick Koren

Staas & Halsey LLP is pleased to welcome attorneys Brian Avery and Patrick Koren. 

Click Here to read the full article.

[07/01/13] Staas & Halsey LLP Announces Paul F. Daebeler, Gregory W. Harper, and Thomas E. McKiernan as Partners with the Firm

Staas & Halsey LLP is pleased to announce that Paul F. Daebeler, Gregory W. Harper, and Thomas E. McKiernan have become Partners with the firm effective January 1, 2013. 

Click Here to read the full article.

 

[07/01/13] Spring 2013 Newsletter

Find links to articles on USPTO Patent Rules and Practice, Supreme Court, Federal Circuit, USPTO Trademark Rules and Practice and Firm News.

[01/03/13] Fall 2012 Newsletter

Find links to articles on USPTO Patent Rules and Practice, Supreme Court, Federal Circuit, USPTO Trademark Rules and Practice and Firm News.

[10/26/12] Summer 2012 Newsletter

Find links to articles on USPTO Patent Rules and Practice, Supreme Court, Federal Circuit, USPTO Trademark Rules and Practice and Firm News.

[10/25/12] Staas & Halsey LLP Summer Associates

This summer, Staas & Halsey LLP hosted two summer associates to give law students valuable experience in U.S. patent preparation and prosecution. The firm is pleased to have had Kevin Lieu and Rohit Krishna as summer associates.

[10/25/12] Staas & Halsey LLP Enjoys Baseball Nationals Hot Summer

It has been a pleasure to watch the Washington Nationals baseball team turn into a National League (NL) contender. Currently on top of the NL with an impressive record of 90 wins and 58 losses and with the third best record in the MLB, the Nationals will look to continue their success this fall. Since June 1st, the Nationals have racked up a strong record of 70 wins and 37 losses. Their pitching, including a stellar starting rotation, led by all-stars Steven Strasburg (1st time all-star) and Gio Gonzalez (1st time all-star), has been a major factor in their ability to grind out close games.

[09/16/12] NEW USPTO INVENTOR’S APPLICATION DECLARATION AND RELATED FORMS EFFECTIVE SEPTEMBER 16, 2012

With last year’s passage of the “America Invents Act” (AIA), U.S. patent laws have been
undergoing significant changes. While some of these changes were immediate, others are
being implemented on a rolling basis. In particular, beginning September 16, 2012, new rules
are in effect for (1) who can be the Applicant of a U.S. patent application, and (2) what is
required of the Inventor Oath or Declaration (hereinafter “Declaration”).

[09/01/12] Newsletter Archive

Archived newsletter.

[07/30/12] The USPTO is Considering and Requesting Comments on Shortening the Time Period for Registrants to File the Mandatory Section 8 Declaration of Continuing Use

In another effort of the U.S. Patent and Trademark Office (“USPTO”) to attempt to
reduce “deadwood” registrations for marks on its Register which apparently may no longer be used in U.S. Commerce (interstate or foreign commerce as defined in U.S. statutes and the Constitution), the USPTO is considering lobbying Congress to shorten the deadline by two years for filing the mandatory Declaration of Continuing Use under Trademark Act Sections 8 and 71 (“Section 8 Declaration”). The Section 8 Declaration presently is required between the fifth and sixth anniversary dates of the U.S. registration date with a grace period of six months from the 6th anniversary date to file the declaration with an additional filing fee. The USPTO is suggesting that this date should be moved to between the third and fourth anniversary dates of the registration issue date, plus the six-month grace period after the fourth anniversary.

[07/26/12] AIA: Overview of USPTO Proposed Rules for First-To-File System

On July 26, 2012, the United States Patent and Trademark Office (USPTO) published
proposals on how they intend to implement the first-inventor-to-file provisions of the America Invents Act (AIA). The proposals provide some needed clarity on how the USPTO plans to treat disclosures made before a patent application is filed, once the system takes effect in March 2013.

[07/09/12] CLS Bank v. Alice Corporation Decided July 9, 2012

The U.S. Court of Appeals for the Federal Court (“Federal Circuit”) decision of CLS Bank
v. Alice Corporation demonstrates yet another problem in cleanly drawing a distinction of what should be considered patent eligible subject matter. However, unlike previous decisions which tend to broach the issue through a narrow, case-specific lens, the current decision by the majority highlights a broader approach which could potentially lead to conflict with Supreme Court precedents.

[07/03/12] Interim Guidance on Process Claim Subject Matter Eligibility

On July 3, 2012, the United States Patent and Trademark Office (USPTO) issued a
memorandum to provide Interim Procedures for patent examiners following the decision of
Mayo v. Prometheus. The memorandum provides specific guidance on how to determine the eligibility of a process claim that involves laws of nature or natural correlations. Although a more comprehensive guidance will be issued once the case is resolved in the Federal Circuit, the current memorandum will provide some direction as to how the USPTO intends to apply the decision.

[06/26/12] Latest USPTO Trends in Patent Prosecution

Latest USPTO Trends in Patent Prosecution

[06/25/12] Already, LLC v. Nike Inc.

On June 25, 2012, the United States Supreme Court granted certiorari in the Already,
LLC v. Nike Inc. case. The case began in 2009 when Nike sued Already for trademark
infringement, false designation of origin, unfair competition and dilution under Federal as well as New York state law. Already counterclaimed for a declaratory judgment that the Nike registration was not in fact a “trademark” under federal and New York law and that the registration should be cancelled. Specifically, the dispute arose over the resemblance of Nike’s trademark registration number 3,451,905 of the Air Force 1 shoe and shoes produced by Already. Already has appealed from the Second Circuit’s decision affirming a district court holding that a covenant-not-to-sue ended the case between the parties.

[06/21/12] Changes in the USPTO’s Examination of Specimens of Use in Use-Based Trademark Applications and Registrations and Possible Additional Requirements for Same

Effective as of June 21, 2012, the U.S. Patent and Trademark Office (USPTO) is
instituting both a policy change in its examination of specimens in use-based applications and declarations maintaining registrations; and issuing an additional requirement to submit
additional specimens in the examination of certain randomly selected post-registration
declarations during the next two years. The USPTO reported its implementation of these final rules and responded to various comments from members of the public about the proposed rules in the May 22, 2012 issue of the Federal Register.

[06/14/12] AIA: Details on New Post-Grant USPTO Review

In a novel shift, the AIA provides a new procedure that allows for post-grant review of
U.S. patents by the U.S. Patent and Trademark Office (“USPTO”), in which other reasons for
unpatentability besides prior art under § 102 or 103 can be considered. These provisions
comprise Section 6(d) of the law and will become applicable to any U.S. patent application
having an effective filing date on or after March 16, 2013.

[06/13/12] Update on the gTLD Expansion

On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN)
released a list of the Generic Top Level Domains (gTLDs) that have been applied for as a part of its ongoing program to open the Internet to an unlimited number of gTLDs. The application period for the first round of new gTLDs was open from January 12 to May 30 of 2012. During this period, ICANN received 1930 applications and a total of 1409 strings; multiple applications were expected for TLDs such as .app, .shop, and .music.

[06/11/12] Toshiba Corp. v. Imation Corp. Decided June 11, 2012

Dissenting U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) opinions in
patent cases often highlight disagreement over the proper methodology or execution in claim construction. In Toshiba Corp. v. Imation Corp., the two parties and dissenting Judge Dyk have presented three different methods for claim construction. The patents at issue are U.S. Patent No. 5,892,751 ("751") and U.S. Patent No. 5,831,966 ("966"), which deal with DVD recording technology.

[06/11/12] Bard Peripheral Vascular Inc. v. WL Gore & Assoc. Decided June 11, 2012

In Bard Peripheral Vascular Inc. v. WL Gore & Assoc., the U.S. Court of Appeals for the
Federal Circuit (“Federal Circuit”) has set forth a heightened standard on the law of willful patent infringement. Prior to this decision, the Federal Circuit had never set standards on the objective-risk portion of the willfulness analysis. With this decision, this objective-risk portion is now a separate question of law. It will be the trial court’s duty to determine whether the defendant’s actions were objectively reckless, subject to de novo review on appeal.

[05/30/12] AIA: USPTO Proposed Rules for Micro Entity Status

On May 30, 2012, the United States Patent and Trademark Office (USPTO) has
published proposed rules to implement micro entity status, resulting in a discounted patent fee payment. If an applicant qualifies as a micro entity under the America Invents Act (AIA), the applicant would be eligible to pay reduced fees of up to a discount of 75% for the fees set or adjusted related to filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. The USPTO has stated that the reason for this discount is to make the patent system more accessible for smaller innovators so that they can move their ideas into the marketplace and accelerate U.S. economic growth. The new rule is likely to become effective during the first quarter of 2013.

[05/30/12] Mintz v. Dietz & Watson Inc. Decided May 30, 2012

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit") decision in Mintz v.
Dietz & Watson Inc. held that the U.S. district court erred finding for patent invalidity.
Specifically, it ruled that the district court erred in its groundless reliance on a common sense view in its obviousness analysis. The patent at issue was U.S. Patent No. 5,413,148, which claimed a particular casing structure for encasing meat products. The method integrates a stockinette into a knitted netting to form an arguably innovative meat encasement technique. The invention resolved previous issues where netting would become hard to remove from meat because the meat would bulge and cook around the netting strands.

[05/16/12] Overview of Current USPTO Programs to Accelerate Examination

For standard patent applications, the U.S. Patent and Trademark Office (“USPTO”) has a
fairly long total pendency time of over 40 months. As this is often unacceptable for more
important applications, the USPTO has established a number of different procedures under
which the examination of a patent application may be accelerated. Some of the newer
programs include the Patent Prosecution Highway 2.0 (PPH 2.0) program, Track 1 prioritized examination, and the Quick Path IDS (QPIDS) program.

[05/13/12] Merial Ltd. v. Cipla, Ltd. Decided May 31, 2012

In Merial Ltd. v. Cipla, Ltd., the U.S. Court of Appeals for the Federal Circuit (“Federal
Circuit”) issued a decision which places significant consequences on foreign companies that
willfully ignore injunctions related to infringing, misappropriating or misusing the intellectual property of U.S. companies. The Federal Circuit upheld a finding of contempt against Indiabased Cipla, Ltd. that had actual notice of the underlying case but elected not to appear. As international patent disputes become more inevitable due to evolving technology, the decision attempts to protect the interests of U.S. companies by requiring foreign parties to contest jurisdiction sooner or face contempt.

[05/10/12] Quick Path Information Disclosure Statement (QPIDS) Pilot Program

On May 10, 2012, the United States Patent and Trademark Office (USPTO) announced
plans to implement a new pilot program called Quick Path IDS (QPIDS). The QPIDS pilot
program is part of ongoing efforts to compact prosecution and to reduce pendency times, and will run from May 16, 2012 until September 30, 2012. Specifically, the program aims to reduce the need to file a Request for Continued Examination (RCE) after an issue fee is paid in order to have an IDS considered. This is accomplished by permitting an examiner to consider an IDS after payment of the issue fee without the need to reopen prosecution. If the examiner determines that nothing in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowability.

[05/08/12] In re Montgomery Decided May 8, 2012

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) decision of In re
Montgomery provides some illustration on the issue of anticipation by inherency in the
therapeutic context. With its decision, the Federal Circuit sheds some light on the difficult
doctrine of inherency, specifically on the potential importance of claim language and
construction to an inherency analysis.

[03/22/12] New Website! PaperStreet launches staasandhalsey.com re-design!

PaperStreet Web Design's development team just wrapped up the brand new re-design of staasandhalsey.com.

[01/03/12] Contradictory Statements During Prosecution Lead to Patent Claim Invalidity: Teva Pharm. USA v. Sandoz, Inc.

In Teva Pharmaceutials USA, Inc. v. Sandoz, Inc., the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) reversed the U.S. district court’s finding of patent validity with respect to a set of claims because of indefiniteness, and remanded the case for further proceedings.

Click Here to read the full article.