07/26/2011 - Conformity is a Virtue: The U.S. Patent and Trademark Office Proposes Changes to the Duty of Disclosure to Match the Therasense Standard
The U.S. Patent and Trademark Office (“PTO”) has proposed changes to two rules that are designed to streamline the obligations of innovators and their patent practitioners to disclose information to the PTO in patent applications and reexamination proceedings.

06/28/2011 - Patent Reform 2011: It Could Happen to You
On June 23, 2011, the U.S. House of Representatives passed House Bill H.R. 1249 (the “Leahy-Smith America Invents Act”) by a vote of 304-117. This follows on the Senate’s 95-5 passage of bill S. 23 (the “America Invents Act”) back on March 8, 2011.

06/29/2010 - The Supreme Court Rules on Bilski: Business Method Patents Survive
On June 28, 2010, the United States Supreme Court announced its decision on Bilski v. Kappos regarding what inventions are eligible for patent protection. The decision affirms that business methods are patentable, although the specific business methods at the center of the case are not.

06/28/2010 - Accelerated Patent Examination Plan Extended
Most patent applicants can now accelerate the examination of a select number of patent applications in exchange for abandoning an equal number of unexamined, pending applications, according to an announcement issued by the U.S. Patent and Trademark Office (“PTO”) on June 24, 2010. The PTO’s official notice, titled “Expansion and Extension of the Patent Application Backlog Reduction Stimulus Plan” (the “Plan”), eliminates the requirement whereby only small entity applicants could participate in the Plan.

06/23/2010 - U.S. Patent and Trademark Office Proposes Three-Track Patent Examination Initiative
The United States Patent and Trademark Office (“USPTO”) is seeking public comment on a proposed three-track patent examination initiative that would provide applicants with greater control over the speed at which their applications are examined.

05/10/2010 - Management (and the Federal Circuit) Torched Our Patent: What Should We Have Done Differently?
Just one day after the U.S. Court of Appeals for the Federal Circuit indicated that it would consider the current state of the inequitable conduct doctrine en banc in Therasense, Inc. v. Becton Dickinson and Co., a split panel of the Federal Circuit issued a decision in the case of Avid Identification Systems, Inc. v. Crystal Import Corp. affirming a lower court’s finding of inequitable conduct.

02/22/2010 - Don’t Rely on Reissue to Fix Your Patent Claims
Reissue is a post-issuance procedure that enables the correction of certain limited types of errors in a patent, but cannot be used merely for precautionary claim improvements. The Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent & Trademark Office recently decided in a precedential opinion that reissue cannot be used to add a dependent claim “simply as a hedge against possible invalidity of the original claims.” Ex parte Yasuhito Tanaka, Appeal No. 2009-000234 (BPAI, Dec. 9, 2009) (per curiam).

01/27/2010 - Litigation Risk and Liability Danger from False Patent Marking in View of Forest Group, Inc. v. Bon Tool Co.
In a case arising from the Southern District of Texas, the Federal Circuit recently issued an opinion that highlights the risks associated with marking products with patent numbers. See Forest Group, Inc. v. Bon Tool Co., No. 2009-1044 (Fed. Cir. Dec. 28, 2009) (slip opinion). 

10/01/2009 - Software Licenses: Permission vs. Forgiveness and the Law of Unintended Consequences
In a case that may prove to be as serendipitous for struggling software companies as anything else, the United States Court of Appeals for the Sixth Circuit wrote another chapter in the law of unintended consequences with its ruling in Cincom Systems, Inc. v. Novelis Corp. (published September 25, 2009 pursuant to Sixth Circuit Rule 206: File Name: 09a0346p.06).

Intellectual Property Audits: Conflicts and Ethical Issues