LJN Newsletters

A recent search of Amazon.com generated more than 2200 publications related to intellectual property. The publications covered a broad array of subjects including law, valuation, licensing, finance, management, and globalization. While this finding is illustrative of an expanding interest in intellectual property, the area of IP finance in particular is rapidly evolving and has the potential for significant growth.

A patent may not be obtained ... if the ... subject matter [sought to be patented] as a whole would have been obvious at the time the invention was made." 35 U.S.C. '103(a). Establishment of prima facie obviousness requires satisfaction of three separate criteria. First, there must be some suggestion or motivation to one of ordinary skill in the art to modify a reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Third, the prior art reference (or references when combined) must teach or suggest each and every limitation in the claim under examination. In re Vaeck, 947 F.2d 488, 20 U.S.P.Q.2d 1438 (Fed. Cir. 1991). With respect to chemical compounds, a prima facie case of obviousness may be made based on structural similarity of the claimed compound to other known compounds since "one skilled in the art [would be motivated] to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313 (CCPA 1979).

Motions for preliminary injunctions have become effective weapons in patent infringement litigation. One of the most important benefits to a patentee is quick relief, since a motion for preliminary injunction may be heard within weeks after a patent lawsuit is filed. Preliminary injunctions may also promote settlement, since if the injunction is granted, the effect can be devastating to a defendant. If the accused device or method is a central part of the defendant's business, an injunction may ruin the defendant financially. On the other hand, if the motion for preliminary injunction fails, a defendant may be much less willing to settle, since the defendant's invalidity and/or non-infringement positions may have been bolstered by denial of the preliminary injunction, not to mention the fact that the defendant's success was likely obtained at significant expense.

Recent news in e-commerce law and in the e-commerce industry.

As part of states' efforts to shield their residents against the fraud and other crime that might be perpetrated against them in the name of a sham charity, most charitable organizations must register within the state in which they are domiciled. Thirty-eight states and the District of Columbia, for instance, require charities to register in-state, and to file financial and other information prior to soliciting in those states. States, however, also routinely impose their registration requirements on out-of-state charities that solicit in state in traditional ways (eg, by having solicitors enter the state) or over the Internet. Charitable organizations that use the Internet to solicit contributions must register if they use their Internet solicitation specifically to target people in that state, or receive Internet contributions from the state on a repeated, ongoing basis, or what's defined as "a substantial basis."

The recent report of a possible compromise of information among as many as 40 million MasterCard customers demonstrated in frightening clarity the potential for digital data breaches as more and more information is stored and manipulated electronically by more and more people. For many companies, the issue has an impact on operations and marketing, quite aside from the dangers of potential legal liability.
More than ever, e-commerce firms are vulnerable to such problems and would do well to heed counsel's advice to take steps to avoid compromises and legal liability.

Whether investigating new product-name availability or domain-name squatters and cybershysters, fee-based Web trademark search services do corporate legal departments' legwork. They also provide attorneys and staff with slick online tools to review and act on the information uncovered.

Information technology has become an invaluable business tool around the world. With it, businesses ' the traditional kind and those that operate over wires (and wirelessly) ' including law firms are able to increase efficiency and lower costs. After all, information technology is the gateway to one of the e-commerce sector's most important assets: Information.
But what happens when information cannot be trusted? When it is vulnerable and exposed to Internet threats? When information is secure, it is trustworthy; anything less than that, and it simply loses its value.