Myths About Avoiding Prosecution History Estoppel
In the recent Federal Circuit case <i>Honeywell, Int'l. Inc. v. Hamilton Sundstrand Corp.</i>, 370 F.3d 1131 (Fed. Cir. 2004) (en banc), the court held that a presumption of prosecution history estoppel arises when a patent applicant cancels an independent claim and rewrites its first dependent claim in independent form. Since then, patent attorneys and industry watchdogs have repeatedly misinterpreted the cause of this estoppel. Worse, many have advocated the dangerous strategy of initially writing dependent claims in independent form as a means of avoiding the estoppel. Such a strategy is useless in avoiding estoppel and highly counterproductive. Patent prosecutors should leave dependent claims in dependent form and, instead, avoid estoppel by using the strategies suggested below.
Calculation of Lost Profits Damages in Patent Cases
Upon a finding of patent infringement, a court is to award the patentee "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court." 35 U.S.C. '284. In most cases, the patentee will be entitled to a larger damage award if it can recover damages based on lost profits. Lost profits are not, however, available in all cases. This two-part article will review the current state of the law governing the availability of lost profits damages in patent infringement cases in the first part and the calculation of these damages based on diverted sales in the second part.
Recovery of Damages for Use of the Invention Claimed in a Published Patent Application
For about 200 years, the United States kept all patent applications confidential prior to issuance of a patent. Sabra Chartrand, <i>A New Law Removes Some Secrecy From the Applications</i>, N.Y. Times, Dec. 4, 2000, at C6. However, as the Director of the U.S. Patent and Trademark Office ("USPTO") noted, secrecy eventually gave way to global harmonization. <i>Id.</i> Under the American Inventors Protection Act of 1999 ("AIPA"), patent applications are published by the USPTO 18 months after the earliest claimed filing date. 35 U.S.C. '122(b) (2004). This change in U.S. patent practice presented a risk that a patent applicant's invention, once publicly disclosed, would be vulnerable to unrestrained use until the patent, with its associated intellectual property protections, actually issued. To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the AIPA.
When a UK Franchise Termination Struck Back
On Nov. 16, 2004, Justice Richards of the Chancery Division of the High Court in England handed down judgment in <i>(1) Total Spares & Supplies Limited (2) Antares Ltd v. (1) Antares SRL (2) European Plumb Direct Ltd,</i> 16 November 2004 EWHC 2626 (Ch). It is rare that a franchise dispute proceeds to trial in England, and this case is a reminder of the dangers associated with terminating a franchise agreement.
<b>Meyerowitz on Marketing</b>Strutting Your Stuff: The Advantages Of Seminar Marketing
Seminars, which were "the way to go in the 1990s," remain hot. That makes a great deal of sense. After all, a seminar provides lawyers with the opportunity to strut their stuff for existing clients (reminding them why they hired the lawyers in the first place and subtly suggesting that the initial retention decision was correct) and in front of prospective new clients (to whom the message is, "Look what these people know. I should ask them to help when our company has a problem."). In short, "seminars bring clients and contacts into your office."
Letter From The Editor
Editor-in-Chief Betiayn Tursi introduces a new feature, a new book and a new Web audio conference.
P.R. Professional Inside and Out: How To Get the Most Value From Your P.R Dollar
LJN's Web Audio Conference Division presented a Web audio entitled "P.R. Professional inside and out: How to Get the Most Value from your P.R. Dollar." The program focused on topics including the advantages of an inside public relations (PR) person, what outside public relations firms have to offer and how their services are impossible to duplicate.
Internet Boosts Business Of Marriage Law
The impact the Internet has had on growing revenues, increasing profit and strengthening businesses' bottom line ' whether electronic or brick-and-mortar ' has been tremendous. <br>And just as in the general business sector, matrimonial attorneys have recognized the Internet as promoting a variety of goals for themselves and their clients
