Walter M. Egbert III of Foley Hoag writes: Like software-related inventions, patent claims directed to wearable technologies run the risk of being considered invalid under 35 U.S.C. §101 as being directed to patent-ineligible subject matter. Thus, practitioners should be thoughtful when claiming wearable devices that provide data gathering and analysis. This article provides some considerations for practitioners drafting claims for wearables.
Andrew P. MacArthur and Ralph A. Dengler of Venable discuss recent U.S. cases that have created benchmarks of patent, trademark, copyright, and trade secret liability for foreign activity. Businesses should take heed.
Milton Springut of Springut Law PC analyzes a recent Federal Circuit decision—MPHJ Technology Investment v. Ricoh Americas—which highlights some of the traps that can arise with provisional patent applications. He discusses the legal requirements of provisional practice, the implications of this new case, and best practices for such applications.
A. Antony Pfeffer and K. Patrick Herman of Orrick, Herrington & Sutcliffe write: While 35 U.S.C. §315(e)(1) has been interpreted relatively narrowly, the decision in Verinata Health v. Ariosa Diagnostics provides patent owners with a new avenue to argue—in certain circumstances—that an IPR petitioner should be estopped from asserting non-instituted IPR grounds in district court.
Daniel B. Moar of Goldberg Segalla writes: The propriety of using the family name as a trademark to promote a business is often taken as an article of faith. After all, if your family has operated a winery for many years, why wouldn’t you be allowed to use the family name as a trademark to identify your wine? The answer lies in the Lanham Act, the federal statute that governs trademark law. As with many legal issues, there are no absolute answers as to whether a family name can be used or registered as a trademark.