July 2010 Newsletter
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.
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.
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.
“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.
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.
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.
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.
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.
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 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.
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.