IP News
January 01, 2004
Highlights of the latest intellectual property news and cases from around the country.
File Sharing: A Problem for Congress or the Courts?
January 01, 2004
Online digital file sharing enjoys massive popularity. Its wide use, however, threatens to destroy the interests of copyright owners. Yet, its broad consumer support and touted technological potential have raised questions about who should bear the risks of such activity, and who — <i>ie,</i> Congress or the courts — should make such determinations.
When One Patent Application Begets 10: Today's Hyperproliferative U.S. Restriction Practice
January 01, 2004
Restriction practice (<i>ie</i>, the restriction of a patent application to prosecution of a single claimed invention (per filing fee)) has been around since the mid-1800s. In recent years, hyperproliferation of restriction requirements, especially in the biotechnology, chemical and software arts, has occurred. It has not been uncommon for the U.S. Patent and Trademark Office (PTO) to assert that a patent application contains 10, 20, even 100 distinct inventions. In fact, the PTO itself recently stated that there had been an application in which the PTO had determined that there were 400,000 distinct inventions. Excessive use of restriction requirements has the potential to stagger a corporate patent budget, because multiple divisional applications must be filed to prosecute all claims, and hence, all "inventions" of the original application. If a company has budgeted for one patent application, it is then faced with filing multiple applications to receive the complete patent coverage that was envisioned. This leads to increased costs of the filing, prosecution and maintenance; multiplication of patents with overlapping subject matter and related claims; shortened statutory patent terms (depending on the timing of filing of the divisional applications), and a question of whether complete patent coverage is truly achieved by compartmentalizing the "invention" into many patents.
FTC Recommendations Seek Balance Between Competition and Patent Law
January 01, 2004
As has been widely reported, this past October the Federal Trade Commission (FTC) released a 300-page report titled "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy." The report, including its 18-page executive summary, is available on the FTC Web site at <i>www.ftc.gov.</i> It is the end product of 24 days of hearings.
Selling 'Free and Clear': Will It Continue?
January 01, 2004
Section 363(f) of the Bankruptcy Code provides an extraordinary tool to trustees and debtors in possession -- the ability to sell property "free and clear." This unique power, unavailable to a seller outside bankruptcy, not only facilitates the tasks of liquidation or reorganization, but it may even be the critical incentive for entering bankruptcy in the first place. It has now become the principal focus of many Chapter 11 cases.
IP News
December 01, 2003
Highlights of the latest intellectual property news from around the country.
Whether to Cancel National Trademark Registrations in Favor of a CTM
December 01, 2003
Why maintain national trademark registrations in Europe? Your biggest client, the hypothetical Copsi-Cola, Inc., a U.S. beverage manufacturer, with a 95-year-old U.S. trademark registration for the popular POWERSWEET drink, a high-sugar soda, is attempting to expand its trademark rights in the European market and needs your advice. Copsi-Cola has also owned registrations in three of the 15 European Union ("EU") member countries for more than 50 years: France, Spain and Portugal. Copsi-Cola has begun market research in advance of selling its POWERSWEET drink in five more EU member countries, including the United Kingdom, Germany and the Benelux countries, and has asked you to file applications in the national trademark offices in those countries. Copsi-Cola also wants the option of using its mark in all EU member countries.
Is Used Better than New? Evaluating Trademark Use for Gray Goods, Diverted Goods and Altered Goods
December 01, 2003
Importers Inc. buys used HEAVY WEIGHT motorcycles in Japan and sells them in the United States. Heavy Weight Inc., the owner of the HEAVY WEIGHT trademark in the United States and Japan, seeks to enjoin their sale. Heavy Weight proves that the imported HEAVY WEIGHT motorcycles are materially different from their domestic counterparts because, among other things, they have smaller tires and a lower maximum speed. Although Importers Inc. includes a disclaimer at the point of sale, the court rules for Heavy Weight.
