Articles

Articles for attorneys and the IP-savvy about substantive IP topics

  • Willful Patent Infringement: Lingering Questions

    Willful Patent Infringement: Lingering Questions

    A version of this article previously appeared in Landslide magazine (Vol. 14, Issue 4, June/July 2022), published by the ABA Intellectual Property Law Section. Introduction What are the minimum requirements to establish enhanced damages for patent infringement after the passage of the America Invents Act (AIA) and the U.S. Supreme Court’s decision in Halo, and […]

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  • Conceptualizing Negative Limitations in Design Patents

    Conceptualizing Negative Limitations in Design Patents

    Is it possible for a U.S. design patent claim to include a negative limitation? It does not appear that courts have explicitly addressed this question. That is partly due to emphasis on design patent claims and infringement analyses revolving around the design as a whole, which can lead to rather conclusory decisions. But the question […]

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  • New and Upcoming Developments in U.S. Patent & Trademark Law for 2022

    New and Upcoming Developments in U.S. Patent & Trademark Law for 2022

    Important Developments to Note At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention. Patents “DOCX” filing format deadline extended The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January […]

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  • The Delicious Ironies of Food Product Configuration Protection

    The Delicious Ironies of Food Product Configuration Protection

    The Scope and Limits of Trade Dress and Patent Protection in Product Shapes: Food Product Case Studies Intellectual property (IP) protection for product configurations of comestibles, confections, foodstuffs, and the like have been a matter of dispute in courts for well over a century. A variety of distinct IP rights may be invoked in this […]

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  • Considerations for Patent Assignments After Minerva Ruling

    Considerations for Patent Assignments After Minerva Ruling

    By Austen Zuege & Benjamin Edlavitch A version of this article about patent assignments and assignor estoppel appeared in an online magazine on August 4, 2021 as intellectual property “expert analysis”. Introduction For many decades, the terms and content of patent assignments have been relatively uncontroversial.  However, the Supreme Court’s recent ruling in Minerva Surgical, […]

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  • Copyright Pitfalls: Ways to Avoid Copyright Infringement and Ownership Disputes

    Copyright Pitfalls: Ways to Avoid Copyright Infringement and Ownership Disputes

    A version of this article appeared in AIPLA’s Innovate Magazine in October 2021. Introduction — Avoiding Copyright Infringement and Ownership Disputes Mark Twain observed that “[o]nly one thing is impossible for God: to find any sense in any copyright law on the planet.”[i]  From the standpoint of individuals and small businesses, Twain’s observation might ring […]

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  • The Federal Circuit’s Standard for Enhanced Damages

    The Federal Circuit’s Standard for Enhanced Damages

    October 2021 Recent Federal Circuit cases highlight a confused standard applied to discretionary enhanced damages determinations in patent infringement cases. As will be shown, the Federal Circuit has elevated the statement of mind requirement for enhanced patent damages contrary to Supreme Court precedent. In Halo, the Supreme Court discussed how conventionally reckless conduct at the […]

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  • Patent Searching: (Almost) Everything You Need to Know

    Patent Searching: (Almost) Everything You Need to Know

    Reproduced here are materials presented at the AIPLA CLE webinar “Patent Searching: (Almost) Everything You Need to Know“ on September 14, 2021. The presentation slides, which include links to patent searching resources available online, are available for download below. Introduction Rather than a tutorial or “how-to” guide in the mechanics of searching, these program materials […]

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  • Strategic Third-Party Submissions Against Patent Applications

    Strategic Third-Party Submissions Against Patent Applications

    Here is a copy of an old article about pre-grant submissions (observations) that third-parties can submit to challenge or weigh-in on someone else’s pending patent application: “Strategic Third-Party Submissions Against Patent Applications,” Intellectual Property Today, Vol. 19, No. 12 (December 2012) This information is still timely, though the fee for submitting 4-10 documents has since […]

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