The United States Patent and Trademark Office has appointed a former Google executive as its new Director.  Michelle K. Lee will take over in January 2014 as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO) after serving as head of the USPTO's Silicon Valley satellite office.  Lee replaces former USPTO Director David Kappos, who was a longtime IBM executive prior to his service as Director. 

For the full USPTO press release, click here.

One of a handful of patent cases accepted by the Supreme Court this term, Icon Fitness v. Octane Health and Fitness presents the question of whether Brooks Mfg. v. Dutailier, Inc., 393 F.3d 1378 (Fed. Cir. 2005) should be overturned to the extent that it “shoehorned” the rigid, two-part test for sham litigation into the Patent Act’s test for fee shifting. The petitioner, Octane Fitness, LLC, recently filed its brief arguing that the standard should be relaxed and raises several notable points.

The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under  35 USC § 101.  This case will provide a new test for the most basic provision of U.S. patent laws -- whether an invention is patent eligibile -- a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.

Friday, 06 December 2013 19:17

House Passes Innovation Act

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In a show of broad bipartisan cooperation, the U.S. House of Representatives passed the Innovation Act Thursday by a vote of 325-91.

Earlier this month, the District Court for the Southern District of New York, on remand from the 2nd Circuit, sided with Google in the copyright infringement proceedings that began in 2005 over the Google Books Library Project. Judge Chin, presiding over the case, agreed that Google Books provided "significant public benefit", and accepted Google's fair use defense for the scanning of more than 20 million books for an electronic database, and making snippets of the text available for online searches.

Friday, 15 November 2013 20:34

Leaked Trans-Pacific Partnership IP Chapter

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The Trans-Pacific Partnership (TPP) is a secretive, multi-national trade agreement that has been developing behind closed doors for the past several years. Bits and pieces of the text have leaked over time, but recently the entire draft chapter on Intellectual Property protection has been released by WikiLeaks. The TPP marks the largest economic treaty to-date, which encompasses nations including the U.S., Japan, Mexico, Canada, Australia, Malaysia, Chile, Singapore, Peru, Vietnam, New Zealand and Brunei.

Somewhat analogously to the nuances between the standards for trademark registration versus infringement, which are sometimes confused, the patentability standard for design patents is different from the design patent infringement test. In a recent Federal Circuit decision, High Point Design LLC et al. v. Buyers Direct, Inc., the Federal Circuit provided some helpful guidelines for evaluating patentability for design patents, particularly regarding “obviousness” (merely obvious ornamental designs are not patentable).

Wednesday, 06 November 2013 20:45

Twitter's IP Concerns Amid Public Offering

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In the days before its initial public offering, Twitter expressed a number of intellectual property woes in documents filed with the Securities and Exchange Commision.