Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors and attorneys to appreciate the boundaries of the attorney-client privilege, as applied to inventor-attorney communications, to determine which communications can be privileged, and thus sheltered from discovery, and those that will remain discoverable. As in other areas of law, the attorney-client privilege attaches to confidential communications between a client and an attorney made for the purpose of seeking legal advice or services. The Court of Appeals for the Federal Circuit (CAFC) has applied this principle to patent law and found that the privilege attaches to confidential invention disclosure communications between an inventor and an attorney made for (1) seeking advice on patentability or (2) for obtaining legal services of preparing a patent application. See In re Spalding Sports Worldwide, Inc., (Fed. Cir. 2000). Thus, the attorney-client privilege attaches to invention disclosures submitted or communicated to an attorney to assist the attorney in evaluating patentability or in prosecuting a patent. Additional inventor-attorney communications which may fall within the attorney-client privilege include draft patent applications prepared for or received by an attorney and communications between a named inventor and a patent attorney about patent prosecution.
Over the years, patents have issued on numerous games, including iconic favorites such as Monopoly® (1935), Battleship® (1935), Rubik’s Cube® (1983), Rock'em Sock'em Robots® (1966), Twister® (1969), and Simon® (1979). Although there is no per se rule under current U.S. patent law against the patenting of games, it may be more challenging today to obtain patents on certain games due to the patent eligibility requirements of 35 U.S.C. § 101.
Steve Saunders, co-chair of Nutter’s Intellectual Property Department, recently contributed an article to IPWatchdog that analyzed how the pendulum continues to slowly drift toward patentees in this post-Alice world. In the article, “Ancora v HTC: Why You Should Draft Patents That Emphasize Technical Solutions,” Steve addressed the recent ruling Ancora Technologies v HTC America, in which the Federal Circuit reversed a lower court’s invalidity ruling under 35 USC §101 by concluding that Ancora’s claimed subject matter was concrete—not abstract—because it assigned specific functions to specific parts of a computer to improve computer security. According to Steve, this case is yet another in a string of post-Alice cases suggesting that patents should be drafted with an emphasis on the technical problem and technical solution delivered by the claims.
Taking into account what constitutes a disclosure, we can see the following guiding principles and trends emerging:
The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.
You don’t need to register a trademark to establish and assert trademark rights in the U.S. Merely using a mark commercially so that consumers come to view the mark as identifying a source is enough to qualify for protection. So, given the prospect of enforceable unregistered rights (known as “common law” rights), why bother with federal trademark registration expense and effort? There are number of good reasons beyond the most obvious one – use of the ® symbol alongside your mark.
Since the Supreme Court’s decision in Alice Corp. v. CLS Bank in 2014, there has been an increasing trend in district courts granting pretrial dispositive motions to effect early dismissal of patent infringement cases under 35 U.S.C. § 101. Last month, however, the Federal Circuit issued two patent-friendly decisions that preclude such early dismissal when there are factual disputes that underlie the ultimate legal conclusion of patent eligibility under 35 U.S.C. § 101.
In a case that has received significant attention over the past several months, a United States Patent Trial and Appeal Board (PTAB) panel recently concluded that the Saint Regis Mohawk Tribe’s claim of tribal immunity did not prevent the PTAB from reviewing patents held by the Tribe. As an alternative basis for proceeding with the review, the panel found that, despite the assignment to the Saint Regis Mohawk Tribe, the Tribe was not essential to the proceedings because the original patent owner, Allergan, effectively still owned the patents.
The word “brand” has come to be used broadly as a business buzzword, and with good reason. A brand often is comprised of a company name or a product name - but it is much more than that. It is a projection and reflection of goodwill. It is a promise, a feeling, an ethos, a lifestyle statement. It acts as a reassuring signpost for consumers in a busy marketplace, signaling a trusted source and a consistent level of quality.
Successful brands are not attention-grabbing gimmicks. A product or service name, however clever, merely is a shell, and hopefully that shell is filled with and overflows with positive consumer sentiment that results from a consistently good user experience – whether that experience is eating a taco, using a travel booking website or interacting with an accounting professional.
This blog post is an introduction to a series of posts that address legal brand protection. Legal measures cannot provide the most fundamental underpinnings for a successful brand, such as quality, consistency, authenticity and good timing in terms of meeting a market demand. Legal measures can, however, position businesses to stake out, defend and protect their brands. Legal brand protection measures include pre-filing and pre-use diligence, registration and policing, and each of these categories involves an array of nuanced considerations that this blog series will address.
The District of Massachusetts is poised to overhaul its local patent rules with the objective of making the Commonwealth a more attractive venue for patent litigation. The new proposed rules aim to streamline patent cases by focusing on efficiency, reaching outcomes more quickly, and achieving consistency across the entire bench. The prior version of Local Rule 16.6 acted more like a guide, suggesting issues that the parties should consider and offering a template for a schedule. That template, however, was not mandatory and resulted in a case-by-case approach by both the bench and the bar. In contrast, the proposed local patent rules require a schedule that, absent extraordinary circumstances, will apply. In addition, the proposed rules bring this district in line with several other courts around the country that have adopted patent-specific rules.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.