Braden R. Duffin

Indiana Farmer Loses U.S. Supreme Court Seed Patent Case

May 14, 2013

In a recent case arising out of Indiana, the United States Supreme Court addressed the patent exhaustion doctrine in the context of seed patents. Monsanto sued Indiana farmer Vernon Bowman alleging infringement of its patents covering its Roundup Ready seed. Bowman purchased and planted the Roundup Ready seeds and then saved seeds he recovered from that crop to use in future plantings. As a defense, Bowman argued that his actions were protected under the doctrine of patent exhaustion.

The exhaustion doctrine limits a patentee’s right to control what others can do with an article embodying or containing an invention. Under the doctrine, the initial authorized sale of a patented item terminates all patent rights to that item. By exhausting the patentee’s monopoly in that item, the sale confers on the purchaser, or any subsequent owner, the right to use or sell the item as desired. As the purpose of the patent law is fulfilled when the patentee has received money from the sale, the patent law affords no further basis for restraining the use and enjoyment of the thing sold. However, the doctrine does not extend so far as to allow a purchaser to make copies of the thing sold against the wishes of the patentee.

Despite Bowman’s argument that he used the seeds in a way that is normal for farmers, the Court decided that harvesting seeds from a planted crop was akin to making a copy of the patented seeds. The Court unanimously held that a farmer who buys patented seeds may not reproduce them through planting and harvesting without the patent holder’s permission. As noted by the Court, the applicability of the decision is limited and does not involve every situation with a self-replicating thing.

For more information on potential impacts of this case or patent law in general, feel free to contact the attorneys at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


How to Speed Up Issuance of a Patent at the United States Patent and Trademark Office

October 23, 2012

While obtaining a patent can be a rather lengthy process, the US Patent and Trademark Office (USPTO) does in fact provide a number of tools and procedures for speeding up prosecution of a patent application. Potential procedures for speeding up prosecution include petitions to make special, accelerated examination, prioritized examination, the first action interview pilot program, and the patent prosecution highway (PPH) program.  Below is a presentation summarizing the options available as well as the benefits and disadvantages of these various options. To download a copy of this presentation click here.


July 2012 Prosecution Group Luncheon

August 6, 2012

Topics covered in this month’s Trademark Group Luncheon include balancing of first amendment interests and trademark rights as applied to sports uniforms as well as a licensing debacle between Apple and the owner of the “iPad” trademark in China. The group delved into the copyright realm by discussing the protectability of a hookah base shape when that shape is a useful article that cannot be separated from its utilitarian elements. To download a copy of this presentation click here.


First Ever Satellite Patent Office Opened in Detroit

July 20, 2012

The United States Patent and Trademark Office (USPTO) opened the first ever satellite patent office in Detroit, Michigan amid fanfare on July 13, 2012. USPTO Director David Kappos swore-in the office’s first seven USPTO Board Judges who will preside over patent appeals cases and help speed up patent prosecution. In addition to the judges, approximately 25 patent examiners and other staff began work on Monday, July 16. The Detroit office is expected to create approximately 120 highly-skilled jobs in its first year of operations, which should help to reduce the backlog of patent applications and appeals. Three additional satellite offices are set to be opened in or around Dallas, Texas, Denver, Colorado, and Silicon Valley, California, as the USPTO announced July 2, 2012.

This is good news for inventors and entrepreneurs because it will help them to move their innovation to market more quickly, saving critical time and resources. In some cases the new office could allow for more economical prosecution by allowing Indianapolis attorneys to conduct Examiner interviews at the new office.

Go here to learn more about the opening of the new Patent Office. If you wish to learn more about how this can impact you as an inventor or entrepreneur, feel free to contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


A New Way to Obtain your Patents Faster

October 12, 2011

The America Invents Act creates a new way for inventors to shorten the time it takes to obtain a patent.  This is called Prioritized Examination.  Under the PE program, an applicant pays an extra $4800 fee ($2400 for small entities) and the USPTO commits to mailing the first office action within 4 months.  Once the applicant receives the first office action, it is up to the applicant to continue to speed up the process by responding quickly.  No extensions of time are permitted under the PE program, and the program is not available for Reissue or Reexam applications.   The USPTO commits to final disposition of the application within 12 months.  The program is also available immediately.  However, there is a catch.  The PE program is limited to the first 10,000 requests during the fiscal year. 

Accelerated Examination is also still an option, as the America Invents Act does not change the AE program.  The AE program also promises results within 12 months.  Under the AE program, the turnaround time is one month for non-final office actions.  The AE program includes an extra fee of only $130.  However, under the AE program, an applicant must submit a pre-examination search document and an accelerated examination support document.  These documents are comprehensive and illustrate how the claims of an AE application are allowable over known related art.  Accordingly, the AE program requires significant time searching and analyzing the prior art before filing the application.   

Both the PE program and the AE program are viable options, and strategic reasons could exist for pursuing either option.  The PE program, even with the increased filing fee is probably a cheaper option due to the added time which must be spent by the practitioner preparing to file under the AE program.  The PE program prioritizes examination (four months to first office action and three months to respond) while the AE program prioritizes and accelerates examination (application taken up within two weeks and one month to respond to non-final office actions), however, both the PE program and the AE program promise results within 12 months of filing.  Additionally, the AE program could result in claims of an issued patent which are stronger and won’t easily be invalidated during litigation because they were thoroughly reviewed against the most relevant prior art.

For more information or answers to any questions you may have, please contact us at Woodard, Emhardt, Moriarty, McNett, & Henry LLP.


Do you work with copyrights? If so, do not forget about an author’s rights to terminate transfers and licenses.

August 29, 2011

The copyright act provides the authors of transferred or licensed works the opportunity to recapture his or her rights.  This means that after waiting a specific period of time, an author, or an author’s estate, can terminate a prior transfer or license.  Such terminations can have a dramatic impact on a company’s rights to use certain intellectual property or the rights to revenue from certain copyrighted works.  Terminating transfers and licenses also gives authors an opportunity to make additional revenue by retransferring or relicensing their work.

The rules surrounding the terminations of transfers and licenses are quite complicated, and the opportunity to recapture one’s rights is only available for a limited period of time.  A new window is opening in 2013 for the recapture of works subject to post-1978 grants.  For works transferred or licensed after 1978, the five-year termination period can begin at one of three times: (1) the end of thirty-five years from the date of execution of the grant; (2) thirty-five years from the date of publication of the work; or (3) forty years from the date of the execution of the grant.

To download a copy of this presentation please click here.

If you are an author, assignee, or licensee of a work that may soon enter a termination window and have questions, feel free to contact our experienced patent, trademark, and copyright attorneys here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


Could Your Business Benefit From a Federal Trademark Registration?

October 25, 2010

Trademarks are often the most valuable piece of a business’s intellectual property portfolio.  For example, consider the marketing value of the marks Coca-Cola® and the Nike swoosh.  The potential tremendous marketing value of trademarks combined with substantial legal benefits make obtaining a federal trademark registration a wise move for most businesses. 

A trademark can be any word, phrase, symbol, product shape, logo or other identifier which distinguishes a business’s goods and services from those made or sold by another.  Certain trademark rights attach when a business uses even an unregistered trademark to distinguish it’s goods or services.  However, those rights are generally limited in scope to the business’s geographic region such that any future expansive use of the trademark can be blocked by a later user of the trademark or even an applicant of a federal trademark registration who has an intent to use the mark in the United States.  In contrast, the federal trademark statute prescribes nationwide rights to federally registered trademark owners, allowing those trademark owners to enforce their trademark rights against any later user of the trademark and anywhere in the United States.  This effectively creates the opportunity for relatively unfettered future expansive use of the trademark.

Additional benefits of federal trademark registrations include increased damage awards for willful infringement of registered trademarks, constructive notice to all competitors that the owner of the trademark has the right to use the mark throughout the United States, access to federal courts for litigation involving federally registered trademarks, and the right to use the symbol ®, which can deter potential infringers. 

Attorneys at Woodard, Emhardt have extensive experience helping both large and small businesses secure and protect their trademark rights.  Please contact us for more information on the benefits of federal trademark registrations and how you can obtain them.


Patent Office Considers Program to Fast-Track Reexamination of Humanitarian Technologies

October 18, 2010

The United States Patent and Trademark Office (USPTO) is seeking public comments through November 19, 2010, about a proposal to incentivize the creation and wider distribution of technologies that address humanitarian needs.  Under the proposed pilot program, accelerated reexamination of a patent would be available for patent holders who donate their technology for humanitarian purposes. 

Technologies eligible for the program would include treatments for tropical diseases, diagnostic medical tools, crops with higher yields or better nutritional value, and treatments for sanitation or clean water.  Patent owners could qualify for the program by either making their patented technology available to impoverished populations for humanitarian use, or by making their patented technology available to researchers who are developing technologies that address humanitarian needs. 

Further information about the proposed fast-track ex parte re-examination pilot program including how to submit comments can be found in the Federal Register notice here.


Woodard, Emhardt Attorney Teaching PubWEST Patent Searching Class At Indianapolis-Marion County Public Library’s Central Library

October 14, 2010

Patent searching is typically the first step in determining whether to pursue patent protection for an invention.  Woodard, Emhardt patent attorney Chuck Schmal will present classes on October 15 and 22, 2010, covering techniques for conducting patent searches using the US Patent & Trademark Office’s Search Tool (PubWEST) System.  Law students, practitioners, library staff, and anyone with an interest in patent searching is welcome to attend.  The PubWEST System allows the public to access the same computer databases used by Examiners at the U.S. Patent and Trademark Office in Alexandria, Virginia.

The hour-long program includes a general overview of the PubWEST System and a tutorial on conducting patentability searches.  Topics include basic search concepts and recommendations for organizing a search, recommendations for which PTO databases to use, specific techniques for conducting various types of searches (word, party, citation, and classification), and the various ways of viewing the information using PubWEST.

This program will be conducted in conjunction with Woodard, Emhardt’s donation of upgraded PubWEST search terminals at the Library.  The class is provided as a companion resource to patent searchers as part of Woodard’s effort to improve patent searching capabilities at the Central Library.  For more discussion on the search terminals, please see Dedicated Patent Searching Terminals Available at the Central Library.   

For information on attending the class, please contact Chuck Schmal


Midwest Intellectual Property Summit, Nov 16, 2010

October 8, 2010

Woodard, Emhardt is excited to be participating in this year’s Midwest Intellectual Property Summit, building on the 2009 Symposium that featured a broad range of intellectual property topics.  To begin the Summit, Woodard, Emhardt patent attorney TJ Cole will offer an overview of key federal court decisions from the past 12 months.  Attendees will also enjoy an interactive question and answer session with a panel consisting of a European patent attorney, an in-house U.S. patent attorney, a European patent examiner, and Woodard, Emhardt patent attorney Ken Gandy.  Other presentations include an in-depth analysis of the state of Seventh Circuit law on product design trade dress, a presentation on the varying degrees of experience of federal judges in handling patent cases and how you can obtain and use targeted information about the judges hearing your cases, and a presentation concerning the rules for accelerated examination and best practice suggestions for implementing them and discussion regarding the differences between patent drafting for U.S. examination and patent drafting for European examination from the perspective of a European private practice patent attorney and a European Patent Office examiner working in the Vaccines and Antibodies art area.  This event presents an unparalleled opportunity to gain insights into European Patent Office practice directly from an EPO representative and to hear from other patent practitioners concerning their best practice suggestions, particularly as they relate to the pitfall-laden transition of a U.S. application to fit European standards. Click here for more information on the Summit.

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