Congratulations to Woodard, Emhardt managing partner Thomas Henry on his 35th anniversary with the firm. Tom started with the firm on July 25, 1975. He was President of the Indianapolis Bar Association, and has served on the boards of the Indiana State Bar Association and the Indiana State and Indianapolis Bar Foundations. Tom is a past President of the Board of Alumni of the Indiana University School of Law – Indianapolis, and is a recipient of its Distinguished Alumni Award. Tom also serves on the boards of numerous other charitable and not-for-profit organizations.
Thomas Henry Celebrates 35-Year Anniversary with Woodard, Emhardt
July 30, 2010
John McNett Celebrates 40-Year Anniversary with Woodard, Emhardt
July 27, 2010
Congratulations to Woodard, Emhardt partner John McNett on his 40th anniversary with the firm. John started with the firm on July 20, 1970. John has been instrumental to and actively involved in the growth of the firm over the course of his career with the firm. John was selected for inclusion in Super Lawyer listings in Indiana each year from 2004 to 2009 and is rated A+ by Martindale from 1975 to present. Before joining the firm, John had worked as a television engineer, as a microbiologist, and as a construction worker. John currently is an adjunct professor teaching intellectual property at Purdue University.
IRAQ – Trademark Office Publishes the Trademarks which their Records Have Been Damaged During the War
July 22, 2010
The Iraq Trademark Office posted in its official website, the list of trademarks which files have been lost during the war. The first group of the missing trademark files includes the files of trademarks (1 -16090). Trademark Owners are required to submit evidence of ownership- namely registration certificate- within 6 months starting from June 7, 2010, otherwise, the registration will be cancelled.
Douglas Gallagher Selected For Indianapolis Bar Association’s Bar Leaders Series
July 19, 2010
Woodard, Emhardt associate Douglas Gallagher was chosen to participate in the Indianapolis Bar Association’s Bar Leaders Series, Class VIII, 2010-2011. The mission of the Series is to prepare lawyers for future opportunities in leadership roles and service in professional, political, judicial, civic, and community organizations. Attorneys must submit an application to be considered by a selection committee and only 25 attorneys are chosen. Congratulations to Doug!
Patent Marking – Patent Owner Beware
July 12, 2010
How often have you noticed that a product bears a label of “patent pending” or “U.S. Patent No.”? But, what if that patent does not cover the product? Or maybe there is no “patent pending”? Well, anyone could have a “false marking claim” against that manufacturer and could recover up to $500 per article manufactured with such label. As one could imagine, the recoverable amount or damages could be very large. Therefore, it is recommended that businesses implement procedures to avoid potentially false marking their products and minimize potential risk for liability.
Many products or packaging are marked with the label “patent” or a variant such as “pat.” and a full patent number or “patent pending”. This “marking” provides notice to the public that the product is patented or has a patent pending. Notice to the public is required to ensure a patentee’s right to damages for a time period prior to notice to the offending party if the patent is ever litigated. In other words, failure to properly mark a patented product limits the time period by which one can recover damages.
There are three types of “marking” prohibitions. The first type includes “counterfeit marking” which is the use of a patent mark without the owner’s permission. The second type includes “false marking” which is the use of a patent mark on an unpatented article. The third type includes “false patent pending marking” which is the use of “patent applied for” or “patent pending” when no patent application covering the product is pending with the United States Patent and Trademark Office.
If an unpatented product is marked with a patent number and it can be proven that the party marking the product had the intent to deceive the public, then a penalty of up to $500 per article can be recovered. Any person can sue for this penalty, in which event one-half of the recovery goes to the person suing and the other half to the U.S. government. By permitting members of the public to sue on behalf of the government, Congress has allowed individuals to help control false marking.
However, for patents directed to process or method claims the notice provision or “marking” does not apply. The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus, i.e., product, and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to recover damages under the method claims prior to notice to the offending party.
Some recommendations that businesses may implement to avoid potentially false marking their products and minimize potential risk or liability include the following. One recommendation is to review all current patent marking to verify that a product is marked with at least one claim in a patent that covers the product. Also it is important to check for any expired patents and if there are any expiration dates approaching. If any expired patents are found, then it is recommended to stop marking with that number upon expiration. Similarly, if the maintenance fees have not been paid for a patent and the patent is no longer enforceable, then stop marking with that number.
Additionally it is suggested to avoid conditional marking, i.e., “product may be covered by one or more of the following patents”, unless the product is covered by at least one claim of every listed patent. Also avoid marking “patent pending” unless there is a reasonable belief that such marked products are covered by one or more claims in a pending patent application. If a patent application is no longer pending, i.e., abandoned, then businesses should stop marking products with “patent pending”.
In addition to reviewing products, it is recommended to review product literature, brochures, presentations, advertising, and other materials that may be marked. Businesses may also want to review any licensing programs for third party marking activities.
The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about patent marking or any other aspect of intellectual property law.
I Started Selling My Invention; Can I Still Get a Patent?
July 7, 2010
Clients often want to know if they can file a patent application after they started selling, offering for sale, or telling the public about their invention. In most circumstances, the answer is ‘yes’; however, it is not without some caveats.
One drawback is the loss of patent protection in some foreign countries. Therefore, a patent application should be filed in the U.S. before any public disclosure of the invention if the right to file foreign patent applications is to be preserved.
A U.S. patent application can be filed any time within one year of publicly disclosing, publicly using, selling or first offering to sell the invention to another. This “in public use or on sale” in the U.S. results in an inventor losing their right to a patent on their invention and is termed a “statutory bar”.
The “on-sale bar” applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. Second, the invention must be ready for patenting.
It seems very little use and very little publicity are required to constitute a “public use.” Typically public use is defined by its natural and intended way. However, private use of one’s own invention is permissible.
There is an exception to the “on-sale” or “public use” bars – an experimental use. The experimental use exception provides that an activity that would place an invention “in public use or on sale” would not trigger the statutory bar if the use or sale was incidental to experimentation.
The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about statutory bar dates or any other aspect of intellectual property law.
Long-Time Member of Indianapolis Legal Community Retiring
July 2, 2010
Ann Johnson's Retirement Party at The Columbia Club, July 1, 2010. From left to right, Managing Partner Tom Henry, Ann Johnson, Partner Jack Moriarty.
Ann Johnson is retiring after working approximately 38 years in the Indianapolis legal community. The firm celebrated Ms. Johnson’s retirement with a reception at The Columbia Club on July 1, 2010. Ms. Johnson first began as a legal secretary at the Indianapolis law firm of Ice Miller LLP (formerly Ice, Miller, Donadio and Ryan). From there, she worked her way to becoming a paralegal and eventually the firm’s Human Resources Manager over her 14 year tenure at the firm. Thereafter, Ms. Johnson served 14 years as the Director of Administration at Locke Reynolds (now Frost Brown Todd).
Woodard, Emhardt, Moriarty, McNett & Henry LLP was fortunate to have Ms. Johnson join as Director of Administration beginning in 2000, and she has served in this capacity until her retirement today after a long and distinguished career.
During her time in the Indianapolis legal community, Ms. Johnson was active in the Indiana Association of Legal Administrators, was an associate member of the American Bar Association, and was involved with the Indianapolis Bar Association in matters related to law firm management.
We wish Ann well in her retirement and hope that she stays in touch. We know she is looking forward to spending more time with her family and beginning to work as an author in whatever free time she may have.
July 2010 Newsletter
July 1, 2010
Patents
Supreme Court Issues Long-Awaited Bilski Decision
At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices Breyer and Stevens, the Court, instead of relying on the Federal Circuit’s “machine-or-transformation” test, relied on prior precedent to conclude that the claimed method was an “abstract idea” and thus not patentable.
Fast-Track Examination
A pilot program of the Trilateral Patent Cooperation Treat (“PCT”)-Patent Prosecution Highway began January 29, 2010, and is planned to run for two years. The program fast-tracks patent examinations in the European Patent Office (“EPO”), the Japan Patent Office (“JPO”) and the United States Patent and Trademark Office (“USPTO”) for PCT applications receiving a positive written opinion of the International Searching Authority or the International Preliminary Examinating Authority from the EPO, JPO or USPTO.
Clock Ticking on European Patent Office Divisionals
The European Patent Office (“EPO”) has changed its rules for filing Divisional applications. Previously, divisional applications could be filed from any pending European application. Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication by the Examining Division.
File Now, Pay Later
The United States Patent and Trademark Office (“USPTO”) is considering a proposal which would make a change to missing parts practice in nonprovisional applications. The proposed change, if adopted, would somewhat extend the existing 12 month decision-making time provided by a provisional application to 24-months. The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period.
All Aboard for “Project Exchange”
“Project Exchange” is a program initiated by the United States Patent and Trademark Office (“USPTO”) allowing applicants having more than one application currently pending at the USPTO to receive expedited review of one application in exchange for withdrawing an unexamined application.
Case Law Update: Biotech Patents Invalidated for Failing to Disclose the Best Mode
The Federal Circuit has affirmed an International Trade Commission (ITC) decision finding two asserted patents invalid because they did not satisfy the best mode requirement of 35 U.S.C. §112.
Patent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?
Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage? The short answer is “yes”. But as you probably guessed, it requires a little more than a simple phone call to the examiner.
Trademarks
Case Law Update: Enforcing a Judgment by Levying a Domain Name
The Ninth Circuit issued an ironic ruling last month regarding levying domain names to satisfy a prior judgment. In Office Depot, Inc. v. Zuccarini (9th Cir., Feb. 2010), the Ninth Circuit ruled that a creditor can levy a domain name of a debtor to satisfy a judgment.
Trademark Videos on Demand
United States Patent and Trademark Office (“USPTO”) launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos on its website that cover important topics and can teach you about the various phases of the trademark registration process.
Litigation
Case Law Update: Inequitable Conduct Law Continues to Evolve
In a recent decision, the Federal Circuit ruled a company’s patent unenforceable due to the inequitable conduct committed by the company’s non-inventor president. As background, Avid’s founder and president, Dr. Hannis Stoddard, hired three engineers to develop a product based on his idea of identifying and processing recovered animals.
Other Announcements
Indiana Super Lawyers and Rising Star
We are pleased to announce that partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2010. Additionally, associate Marta Paul has been named a Rising Star for 2010. Congratulations to all!
Woodard, Emhardt Partner Presents at Phi Beta Kappa Initiation
Woodard, Emhardt partner Holiday W. Banta was a featured presenter at the Butler University initiation of students chosen for membership in Phi Beta Kappa on April 10, 2010. The President of Butler University, Dr. Bobby Fong, was also a featured speaker. Phi Beta Kappa is the nation’s oldest and most respected academic honor society, of which Ms. Banta is a member. Ms. Banta is President of Alpha Association of Indiana, the first Phi Beta Kappa alumni association in Indiana. Congratulations to all Phi Beta Kappa initiates for 2010!
Christopher Brown Celebrates 15-Year Anniversary with Woodard, Emhardt
Congratulations to Woodard, Emhardt partner Christopher Brown on his 15th anniversary with the firm. Chris started with the firm as a clerk on March 28, 1995, and continued working with the firm as a clerk throughout his last year of law school at Indiana University School of Law – Indianapolis. Chris became an associate attorney with the firm in May of 1996, and was elected to the partnership in April of 2002.
Most Successful Wine Auction To Date in Support of the Indianapolis Zoo
Partners Holiday W. Banta and T.J. Cole celebrated their 5th year as chairs of the 12th Annual Elegant Vintages International Wine Auction, which was a total sell-out and raised over $130,000 for the Indianapolis Zoo. The event took place in downtown Indianapolis on Saturday, March 20, 2010, at the Conrad Hotel.
Woodard, Emhardt Partner Presents at “2009 IP Year in Review” CLE
Woodard, Emhardt partner Chuck Schmal was one of the featured speakers at a recent CLE reviewing interesting case law and other developments in the past year in the areas of patent, trademark, copyright and internet law. Mr. Schmal’s presentation focused on developments in patent law during 2009. The seminar was held at the new Indianapolis Bar Association (“IBA”) Education Center on April 27, 2010 and was hosted by the Intellectual Property Section of the IBA. Please contact us for more information on Intellectual Property CLEs sponsored by the IBA.
Mr. Schmal’s presentation materials can be accessed by clicking here.