Archive for the ‘Intellectual Property’ Category

On September 8, 2011, the U.S. Senate passed the Leahy-Smith “America Invents Act,” which was signed into law by President Obama on September 16, 2011.  Certain provisions had immediate effect; others came into effect on September 16, 2012; and the significant “First to File” provisions came into effect on March 16, 2013.  Please click here to read an alert I wrote about the recent changes and practice tips to stay ahead in this “first-inventor-to-file” system.

For more information about U.S. patent laws, patent applications, and the process, please contact Andrew N. Parfomak at anparfomak@nmmlaw.com.

Last year, in Re-Invention: Major Changes to Patent Law, we shared an alert in which I summarized the major points of the Leahy-Smith “America Invents Act.” The Act, perhaps the most significant reform of U.S. patent law in living memory, was passed by the U.S. Senate on September 8, 2011, and signed into law by President Obama on September 16, 2011, which enacted its provisions.  Around that time, the Patent Office published for public comment proposed rules packages for implementing various provisions of the Act.

Fast forward, based on the public comments received, the Patent Office has now published final rules packages for most of the new provisions, the key points of which are summarized here by our Intellectual Property Group.

Jeanne Hamburg discusses the need for terms of use and privacy policies on company websites in “Why Does My Company Need Terms of Use and a Privacy Policy for Its Web Site?”  TOU govern the relationship between the user and the site owner.  A Privacy Policy advises users how their personal information will, and will not, be used. In the case of a web site with global users whose country’s laws may differ from those of the U.S., the Privacy Policy will take into account all applicable privacy laws. The TOU and Privacy Policy are important documents that govern the relationship between you, as site owner, and your site’s users and if they are well-crafted, you can avoid misunderstandings as well as liability to the user. Rather than giving these documents short shrift, you should invest some time and money into them. With minor updates, they will serve you well for many years to come.

Click here to read alert.

On September 8, 2011, the U.S. Senate passed the Leahy-Smith “America Invents Act” — perhaps the most significant reform of U.S. patent law in living memory. The Act was signed into law by President Obama on September 16, 2011 which enacted its provisions. Certain provisions have immediate effect, while others will come into effect at a later date, typically 12 months (September 16, 2012) or 18 months from (March 16, 2013) from the date of the President’s signature. Please click here for a summary of the major points of the Act. Note, the Act, however, does not include all of the final provisions and rules, as parts of the Act include authorizations for subsequent rulemaking to be made by the Commissioner for Patents. These are expected to be promulgated within the next several months, and are expected to be published in the U.S. Federal Register for public review and comment prior to their enactment.

On May 25, 2011, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) issued a long anticipated opinion in Therasense, Inc. v. Becton, Dickinson and Co.  Sitting en banc, the Federal Circuit, with Chief Judge Randall Rader writing for the 6-1-4 majority, set forth a new framework for considering inequitable conduct claims, one that stresses separate determinations as to intent and materiality, and substitutes a “but-for” materiality standard for the existing materiality standard as embodied in the PTO’s Rule 56. Applying the new standard to the facts of the case, the court concluded that inequitable conduct had not been proven, and remanded the case to the district court for further proceedings consistent with the Federal Circuit’s opinion.

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You are a website owner and have just found out that another company has registered a domain name that is nearly identical to your website name. Many of your clients or potential customers are being diverted to this web site when they search for your company’s name on the web in search engines like Google or Yahoo. In fact, it was from one of your customers you found out about this. You believe this party is a “cybersquatter” —that is, the site owner has registered your trademark, or a name similar to it, for the purpose of diverting web traffic away from your site and making a commercial profit to your detriment.

What Can You Do?

Fortunately you are not without options. An organization called the Internet Corporation for Assigned Names and Numbers was charged with administering domain names on a global basis. ICANN, as it is known, in turn authorizes certain arbitral forums to decide domain name disputes. What is an “arbitral forum”? It is an organization that administers arbitrations, which are proceedings for deciding disputes. Some of the more common arbitral forums are WIPO (the World Intellectual Property Organization), based in Switzerland, and NAF (the National Arbitration Forum) here in the U.S.

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You have discovered that a web site contains content that uses original text, artwork, photography or software that you created or commissioned.  You dutifully do some research (including using a “WHOIS” search on the web) to determine who owns the web site, but the site owner has hired a third party (such as Domains By Proxy) to hold the domain name so that the owner’s identity is not publicly available. There is no other identifying information on the web site and it is therefore impossible as a practical matter to figure out who is responsible for copying your creative content.

What can you do?  Fortunately, U.S. copyright law provides a remedy, in the form of the Digital Millennium Copyright Act or “DMCA”, as it’s known.  The DMCA contains provisions, called “take-down” provisions, which provide a quick and easy remedy to copyright owners of content that is infringed (that is, copied) on the web.  Under these provisions, you, as the copyright owner or licensee of copyrighted content, may notify an “Internet Service Provider”, or “ISP”, such as the host of the web site containing the infringing material, of the infringement.  You may couple this notification with a demand for “take-down”, that is, removal, of the infringing material.

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