Articles by AIPPI-US Members Published in the AIPPI e-News

Edition 13, July 2010

• The Long-Awaited Bilski Decision
  Last week, the U.S. Supreme Court issued the long-awaited Bilski decision, with a 5-4 vote affirming the lower courts' decisions to reject the Bilski application which fueled the debate about whether business methods and software would remain patentable in the United States. While at least some business methods and software remain patentable for now, the decision disappointly fails to provide the guidance that the USPTO and patent practitioners were seeking.
  (Article by Mark J. Deboy, Sughrue Mion PLLC)
  
  

• Expanding Standards of Inequitable Conduct:
  Increased Burden of Disclosure on Patent Applicants
  Recent cases in the United States have increased the burden on patent applicants to disclose even more information to the United States Patent and Trademark Office in order to avoid a charge of inequitable conduct. Here's a discussion of these cases, as well as what type of information you need to disclose and why.
  (Article by James W. Edmonson, partner, Finnegan LLP, Ming-Tao Yang, associate, Finnegan LLP and Raymond M. Gabriel, associate, Finnegan LLP)
  
  

• Does Your Family Heirloom Infringe
  This Fall, the U.S. Supreme Court will decide a copyright case that may have substantial impact on imports of foreign-made goods bearing copyrighted works. The case involves important policy issues regarding the scope of the “first sale doctrine.”
  (Article by Patrick J. Coyne, Finnegan LLP )
  
  

• In the Matter of Certain Coaxial Cable Connectors: the U.S. International
  Trade Commission clarifies the domestic industry requirement
  in patent infringement actions
  On April 14, 2010, the United States International Trade Commission (“ITC” or “Commission”) , issued a decision in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, holding that litigation activities (including patent infringement suits) related to licensing may qualify to meet the economic prong of the domestic industry requirement in patent-enforcement proceedings before the ITC. The decision provides clarity into what is required to meet the domestic industry requirement in ITC proceedings insofar as licensing activities are concerned.
  (Article by Kenneth R. Adamo, David M. Maiorana, and Jonathan A. Muenkel)
  

Edition 12, May 2010

• For A New Wave Of Suits By “Marking Trolls”
  Section 292 of the U.S. patent law prohibits false marking of patent numbers on unpatented products if marked “for the purpose of deceiving the public.” If violated, a penalty of up to $500 per offense may be assessed, half which goes to the U.S. government. For the last century, courts assessed the statutory penalty on a per–marking–decision or periodic basis. But on December 28, 2009, the U.S. Court of Appeals for the Federal Circuit pronounced that the penalty should be measured on a per–article basis. Since that decision, suits for false marking suits have grown exponentially and will likely continue.
  (Report by Kenneth R. Adamo, David M. Maiorana, Susan M. Gerber and John C. Evans )
  
  

• Patent Term Extensions in Light of Wyeth v. Kappos
  In Wyeth v. Kappos decided earlier this year, the Court of Appeals for the Federal Circuit effectively changed how patent term adjustment (PTA) is determined by the USPTO, in patentees´ favor. As a result of this decision, additional PTA is expected not only for prospective patentees, but also for patents that issued previously. While there is now a mechanism to recapture additional PTA for recently granted patents, it remains uncertain whether any additional PTA can be recouped for patents issued more than 180 days ago. The availability of additional PTA in these cases will be determined in additional future litigation.
  (Report by Joshua Goldberg, The Nath Law Group, USA )