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
(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 )
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.
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