Uncategorized

Uncategorized / 01.08.2014

A Supreme Court decision from this past June could mean that companies with patents on software-related inventions will lose that protection. The ruling in Alice Corp. Pty. Ltd v. CLS Bank International changes what is patent-eligible subject matter. That could leave some patents unenforceable, and will challenge companies to rethink how they draft patent applications. “Up until this decision, it was understood by the U.S. Patent and Trademark Office and patent attorneys in general that software-related patents were patent-eligible subject matter if they were sufficiently tied to a machine, such as a computer” says Christian Drago, a senior associate at Fay Sharpe LLP. “In essence, you’re not claiming the software, you’re claiming the computer that’s performing the function that the software is instructing it to do. After Alice, the court said adding a computer is not enough. They’re looking for something that tangibly affects the real world.” Smart Business spoke with Drago and...

Uncategorized / 01.07.2014

As businesses invest in new products or services, the importance of identifying and protecting their intellectual property (IP) may not be at the forefront of their thinking. “However, if you want to recoup your investment you have to be able to protect it, and IP is one way to do that,” says George Huang, an associate at Fay Sharpe LLP. “Most people are familiar with Chinese companies that knock off a product and can sell it much cheaper than the original manufacturer, because the Chinese company didn’t have to invest in developing the product and its market. Protecting your IP can keep others from harvesting the rewards of your work.” Smart Business spoke with Huang about how your IP attorney can help analyze IP, so you can protect your investments. What kind of IP needs to be protected and how can an IP attorney help? What product or service makes your business stand out...

Uncategorized / 01.06.2014

Businesses will want to plan ahead for changes to the patent system that are likely to be implemented across much of Europe. Continent-wide patent protection under the new system could introduce consistency and cost-effectiveness, making access to hundreds of millions of consumers more profitable. Smart Business spoke with Mark D. Klinko, an attorney at Fay Sharpe LLP, to learn more about the potential impact of Europe’s Unified Patent Court (UPC) and its affect businesses active in those countries. What is the UPC? Under Europe’s current system, a patent applicant must seek validation in each country where protection is sought. Validation can be prohibitively expensive if protection is sought in many different countries, particularly if the countries have different language requirements. Patent rights also are enforced on a country-by-country basis, which can mean inconsistent results and uncertainty. The European Union patent package (EUpp) was designed to streamline the validation process and address enforcement inconsistencies. It included...

Uncategorized / 01.05.2014

The U.S. Supreme Court’s Diamond v. Chakrabarty decision in 1980 held that a natural bacterium modified to digest different hydrocarbons in oil spills was patentable. Since Chakrabarty, the courts expanded on what types of modified natural products are patent eligible, which has led to significant growth in the biotechnology industry. However, the courts have recently reversed their direction. In 2012, the Supreme Court in Mayo v. Prometheus determined that a diagnostic method for altering the dosage of a drug based on a patient’s metabolite levels was not patentable. The next year, the Supreme Court in Molecular Pathology vs. Myriad Genetics found that an isolated human gene was not patentable, i.e., it was not “markedly different” than nature. After these decisions, the U.S. Patent and Trademark Office (USPTO) published its own guidelines interpreting these cases. “While not binding on the courts, the USPTO guidelines affect the patent prosecution process and extend the recent hard...

Uncategorized / 01.04.2014

As the availability and use of 3-D laser based printers proliferate, IP related issues need to be considered. The use of lasers for rapid prototyping has existed for a number of years as a process of making molds and models in the early stages of production. However, with improved technology 3-D printers are becoming used as a means to make finished products. For patent owners, the ability of large numbers of individuals (with 3-D printers) to produce products  will increase the difficulty of enforcing patent rights. Particularly, 3-D printer technology will act to fragment the target of potential patent enforcement, says Mark Svat, a patent attorney at Fay Sharpe LLP. For example, an infringer who produces 5 million patented widgets is a clear target for the patent owner. If, however, 5 million people can produce that widget on their own, the patent owner might need to target each individual infringer to put a...

Uncategorized / 01.03.2014

Global branding has become increasingly popular in the past few decades. Companies are more often seeking to expand overseas into tempting and lucrative developing markets. Furthermore, the Internet has given global branding a heightened importance as websites can be accessed from anywhere. This is why international trademarks have become a necessity for companies operating in the global marketplace to ensure as much protection for their brands as possible. Smart Business spoke with Namit Bhatt, an associate at Fay Sharpe LLP, about protecting brands when advertising abroad. What should a company consider before expanding internationally? One of the first steps is making sure the brand is protected at home. In the U.S., this means registering a trademark with the U.S. Patent and Trademark Office (PTO). Securing a federal trademark registration with the PTO offers the strongest protection by helping to fight dilution and infringement of the brand marks used on the company’s products and...

Uncategorized / 01.02.2014

You’ve just launched your product, which has taken months of research and development effort to bring to market. Soon after its debut you receive a notice that you’re infringing on an existing patent or trademark. You’re now left with a decision: License the technology that you’ve infringed, which you may or may not be able to do, or wind up with a costly infringement suit. You could fight the suit, retreat and try to design around the patent, or scrap the whole thing and start again. Any of those choices come with substantial costs. All the while knowing that with a little bit of due diligence up front all of it could have been avoided. “Don’t undervalue your business’s IP,” says Jeffrey N. Zahn, an attorney with Fay Sharpe LLP. “Do what’s required to make sure it’s protected and not potentially infringing a third party’s IP rights. This will help you protect...

Uncategorized / 01.01.2014

Companies invest significant resources developing products and services that are intended to generate revenue. The ability to prevent competitors from copying these new products and services utilizing intellectual property (IP) protection is essential. However, many companies fail to fully protect all of their resources. Or, by failing to educate their workforce on the vulnerability of unprotected assets, unintentionally spoil the outcome of products in development before they reach the market. Smart Business spoke with Sean M. Weinman, an attorney at Fay Sharpe LLP, to learn what companies at various stages of their lifecycle must do to protect their IP. What are some common mistakes young companies make when it comes to their IP? The most common mistake young companies make is failing to protect their intellectual property (IP). Some companies choose not to protect their IP because they don’t believe that IP protection is available. Others choose to protect IP but file for such...

Uncategorized / 01.12.2013

There’s a lot of opportunity for investors in Cleveland to fund up-and-coming technology companies. “There’s a growing sense of entrepreneurship and innovation,” says Steve Haynes, managing partner at Glengary LLC. “It has become the norm for colleges, universities, hospitals and other institutions to think about monetizing the technology developed in their facilities. They’re getting research dollars and they’re trying to convert science into something commercial. In addition to institutional technology transfer, incubators, accelerators, etc., are being formed to drive economic development.” Patrick R. Roche, a partner at Fay Sharpe LLP, adds that there are many companies in the area looking to assist the right companies with capitalization. “It’s very competitive — there are a lot of deals to be looked at,” he says. While the market is fertile with both investors and entrepreneurs, Roche and Haynes say there are many things entrepreneurs fail to account for when seeking funding, including the viability and...

Uncategorized / 01.11.2013

Some mistakenly believe that U.S. patents travel the world with universal protection, but countries work independent of each other when granting patents. That is why, when conducting business internationally, it is important to understand how intellectual property protections are procured in each country. According to the Paris Convention, a treaty signed by the U.S. and 174 other countries that protects industrial property, a patent granted in one signatory country does not mean it must be granted in another. “U.S. patents are independent from those granted by foreign countries, so protection is advisable in each market a patented product will be sold,” says John S. Zanghi, a partner at Fay Sharpe LLP. Smart Business spoke with Zanghi about acquiring international patent protection. How does the Paris Convention apply? National treatment and right of priority are two important clauses of the Paris Convention with which businesses should be familiar. National treatment says member countries must grant the...