Technology Law Blog

Showing 17 posts in Patents.

Trade Secrets: The Big Thing for Tech Companies

What do Google and WD-40 have in common? They can both attribute their continued success to trade secrets. It may be relatively easy to build a search engine or an aerosol can that sprays lubricant, but it is practically impossible to replicate the success of Google and WD-40. The two companies do not have patents on their products, precisely because that would require public disclosure of how to produce the product that has made them so successful. The benefit of a trade secret is that it continues in perpetuity. Coca-Cola's trade secret for its formula is over 120 years old. If Coke had decided to patent its formula instead, the patent would have expired over a century ago and the company would not be the giant it is today.

In order to qualify as a "trade secret," the information must have economic value and must be kept confidential by the company. This can be done through legal documents, compartmentalizing information, physical and digital security, and enforcement actions against leakers of information. Tech companies should consider the use of trade secrets if a product is one that is not easy to develop independently. Software code and chemical formulas are two prime candidates. Importantly, trade secrets are governed by state law, which can vary as to confidentiality requirements. Read More ›

Categories: Intellectual Property, Patents, Trade Secrets

Design Patents

It is time that we talk about design patents. Generally, when I mention design patents to potential clients, they invariably protest that they have an “invention” and not a “design.” However, most “inventions” at least contain ornamental elements that have the potential for design infringement in the marketplace. In those cases, pursuing a design patent, by itself or in combination with a utility application, can be an effective and affordable way to secure valuable intellectual property protection.

To help you decide if a design patent might be right for you, I have devoted this post to answering the most common questions I get regarding design patents. Read More ›

Categories: Intellectual Property, Patents

Beware of the Statutory Bars

So you had one of those “Eureka!” moments a while ago and your epiphany is going to make millions as soon as it hits the shelves. This blog is about making sure you don’t lose your right to patent that million dollar idea by waiting too long to file a patent application.

Generally, an invention can only be patented if a patent application is filed within one year of the invention's first disclosure. A public disclosure can take the form of: 1) a publication, 2) a public use, or 3) an offer for sale. In the patent world, these events are called the statutory bars because they bar you from filing a patent on the idea if one year has elapsed since the event. Read More ›

Categories: Intellectual Property, Patents

Provisional Patent Applications

I get a lot of questions from clients about “provisional patents." Let me just start this blog by clarifying once and for all that there is no such thing as a “provisional patent” anywhere in the Patent Act. However, since 1995 the USPTO has offered inventors the option of filing a provisional patent application under §11(b) of the Patent Act. Provisional applications have some interesting advantages of which you should be aware. Read More ›

Categories: Patents

Why do I have to mark my product with the patent number?

We have all seen patent numbers marked on all kinds of products. In fact as I sit and write this article I can report that there are several items in my office with patent markings including my hole punch, stapler, Dictaphone and the insoles in my shoes.

So why is that? There has got to be a reason, right?

The reason is that if products are not appropriately marked before they enter the stream of commerce, the damages that the manufacturer can receive in a patent infringement action against someone that has copied that product are reduced. 35 USC §287(a) provides: Read More ›

Categories: Intellectual Property, Patents

Why Can't I Plant My Own Seeds?

Soybean fieldAmong the many recent Supreme Court decisions, one decision regarding patents and self-replicating technology has a huge effect on farmers and the agricultural industry. 

Monsanto is an agriculture company headquartered in St. Louis, Missouri. Specifically, Monsanto genetically engineers seeds to yield herbicide-resistant plants that produce higher yields for farmers. One of its more popular products is its "Roundup-Ready" line of soybeans, which has been planted in over 50 million acres to date. The seed is attractive to farmers because it is herbicide-resistant.  Monsanto was recently challenged on its Roundup-Ready product patent ›

Categories: Intellectual Property, Patents

Is the End Near for Patent Trolls? Vermont Passes New Law Targeting Patent Trolls

Patent stampPatent-trolling is a growing nuisance for business owners, particularly start-ups. Patent trolls will buy numerous patents – or buy struggling businesses just for the patents – for the sole use of threatening infringement claims on businesses. Most of the time, the threats are unfounded and rarely state which patents are being violated or how the target's use of that patent amounts to infringement.

Vermont has passed a new law that targets these patent trolls and allows their targets to pursue lawsuits against them. The law allows for a cause of action against "bad faith assertions of patent infringements," but does not define what this phrase means. Instead, it provides the courts a list of characteristics to consider when determining if an infringement assertion was made in bad faith. Read More ›

Categories: Intellectual Property, Patents, Regulatory

Did Newegg Save Online Retail?

Online shopping cartIn 2007, Newegg adopted a strategy to deal with patent trolls: Never settle – ever.

One of the first times it applied this new strategy was against Soverain Software. While Soverain's website appears legitimate, it has never made a sale. Instead, it targets large, online retailers that use shopping cart checkout technology. Soverain claimed that through two patents, numbers 5,715,314 and 5,909,492, it owned the "shopping carts" present in nearly every online retailer's website. Read More ›

Categories: Intellectual Property, Patents

Intellectual Property Rights and the Crowdfunding Platform

Intellectual Property words graphicCrowdfunding, some would say, is the new social networking platform of raising money from people online.  While crowdfunding is a relatively new term and concept, traditional principles of law still apply.  Artists, startups and online creators using this new platform are governed by Intellectual Property principles.

Intellectual Property (IP) refers to the creations of the mind; and most commonly include ideas or inventions, literary and artistic works, symbols that identify your brand, names, logos and/or competitive business ideas or information.  Under this broad umbrella of Intellectual Property, there are generally four categories that govern the use of Intellectual Property:

  1. Trademarks
  2. Patents
  3. Copyrights
  4. Trade Secrets

Before pitching or disclosing your concept to an online crowdfunding community to raise money these four categories of protection and the potential resulting consequences should be thoroughly examined.  Failure to do so could result in the inadvertent theft, infringement or forfeiture of your IP rights.  Let's take a deeper look at these four categories. Read More ›

Categories: Copyright, Crowdfunding, Intellectual Property, Patents, Trade Secrets, Trademarks, Venture Capital/Funding

Supreme Court Holds that a Patent of the Process of Administering a Drug is Invalid

Recently in the case of Mayo Collaborative Services v Prometheus Laboratories, Inc., the Supreme Court of the United States found two patents invalid because they claimed subject matter that was not patentable.  The patents in this case covered processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage was too high or too low. Read More ›

Categories: Patents