Intellectual Property News

July 2008 Newsletter

Patentability of Business Methods
In the latter part of the 20th century, there was a slow realization that business methods could be patented. Originally, the basis for rejecting business-method patent applications was because the subject matter of the application did not meet the fundamental requirements for patents such as novelty and non-obviousness. With the widespread use of computers and the development of business methods involving computers, courts were forced to reexamine the question of whether a business method could be patented or whether they were inherently unpatentable. In 1998, the U.S. Court of Appeals for the Federal Circuit ruled that business methods could be patented if they produce a "useful, tangible, and concrete result." In the landmark State Street decision, the court concluded that a system that used a computer to calculate a mutual fund share price from a complex set of parameters was not an abstract idea but rather a machine--embodied by the computer--that produced a useful result. If you believe you have a patentable business method, please contact our Patent Attorney to review possible patent coverage. More...

Analyzing Patent Claims
Patent claim interpretation is the process of giving proper meaning to the claim language. The Claim defines the scope of a patent. Therefore, the language of the claim frames, and ultimately resolves, all issues of claim interpretation. During a dispute, the meaning of disputed claim terms must be determined. However, to aid the Court's interpretation, the court may consider the written description, the drawings, the prosecution history, and extrinsic evidence related to the patent. These additional sources provide a context to illuminate the meaning of any disputed claim terms. Nonetheless, throughout the interpretation process, the focus must and does remain on the meaning of claim language itself. The construction of the disputed claim language will govern the court's validity and infringement analysis at all stages of the case, including trial. If you need help analyzing patent claims, please contact our Patent Attorney to help you through the patent process. More...

Trademark Fair Use
Trademark or Service Mark protection allows a first user of a mark to prevent consumer confusion as it relates to the business's goods or services. However, a third party may use a trademark without liability for infringement under certain circumstances. Trademark laws permits a non-owner of a registered trademark to make "fair use" or "nominative use" of a trademark under certain circumstances without obtaining permission from the trademark owner. Fair use or nominative use may be recognized in those instances where a reader of a given work is clearly able to understand that the use of the mark does not suggest sponsorship or association with the trademark owner's product or services and therefore is not being used in a manner to confuse the reader. If you believe your use of a mark is exempt from infringement, please contact one of our Trademark Attorneys to discuss your legal rights. More...

Protecting Generic Names under Trademark Law
A generic name is the common descriptive name of the product a trademark identifies. Generic names may not be protected under trademark laws. The intended trademark cannot be registered and the owner has no right to stop others from using a similar mark. Unlike descriptive marks, generic devices will not become a trademark even if they are advertised so heavily that secondary meaning can be proven in the mind of consumers. The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product. Therefore, if a company attempts to use the name of the goods themselves, such as "Lemonade" for a lemonade drink or "Bicycle" for a bicycle, that name will not be protected because it is generic. More...

Copyright and the First Sale Doctrine
An often misunderstood concept is that ownership of the physical item, such as a book or a CD, is not the same as owning the copyright to the work embodied in that item. As such, the right of a copyright owner is limited by the first sale doctrine, which states that once a copyright owner sells a copy of their work to another, the copyright owner relinquishes all further rights to the work. The first sale doctrine is a legal principle that limits the rights to control content after a work has been sold for the first time. More...

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