intellectual property report
For more information about our Intellectual Property Practice, please click here.
Articles
U.S. Patent Office Establishes Mechanism For Public Review Of Patent Applications
In an effort to improve the quality of issued patents and to give patent Examiners access to better information for use in assessing the patentability of claimed inventions, the United States Patent and Trademark Office (the “PTO”) and the New York Law School’s Institute for Information Law and Policy, with corporate and academic support, have created a year-long pilot project that will allow the general public to submit information that may assist Examiners in determining the patentability of claims. The Community Patent Review Project (the “Project”) will make qualified patent applications from consenting applicants available to the general public through the Peer-to-Patent website. The general public will then be able to use this website to review the applications, communicate with other reviewers in the Peer-to-Patent community, and submit annotated prior art that will be considered by Examiners reviewing applications in the field of computer technology. This article will provide details of the Project, explain current law as it relates to a third party’s ability to participate in the review of all pending applications (i.e. not just those participating in the Project), and analyze provisions of the Patent Reform Act of 2007, currently pending before Congress, that would expand the public’s ability to comment on pending patent applications. Read More...
In The Wake Of In re Seagate Technology, LLC: The Federal Circuit Raises The Standard For Willful Infringement And Enhanced Damages And Heightens The Protection Of Attorney-Client And Work Product Privilege
On August 20, 2007, the Federal Circuit arguably took significant arrows from the quiver of patent owners in litigation and simultaneously provided a considerable new shield to alleged infringers with its ruling in In re Seagate Technology, LLC.[1] In a unanimous en banc decision, the Federal Circuit increased the standard of proof necessary to establish willful infringement, eliminated its previous willfulness standard based upon an affirmative duty of due care, and determined that the waiver of attorney-client privilege and attorney work product protection created by the assertion of an opinion of counsel defense does not extend to trial counsel. These questions in the Seagate case were previously discussed in an article in our January 2007 IP Report entitled Federal Circuit To Consider Extent Of Waiver Of Attorney-Client Privilege For Reliance On An Opinion Of Counsel In In re Seagate. As noted in that article, the standard for willful infringement matters a great deal because a finding of willful infringement can serve as a predicate for an award of enhanced damages and attorneys’ fees to the prevailing patentee. Read More...
The materials in this document are made available by Baker Botts L.L.P. for informational purposes only and are not legal advice. The transmission and receipt of information contained in the document do not form or constitute an attorney-client relationship. Persons receiving the information in this document should not act upon the information without seeking professional legal counsel. The materials in this document may not reflect the most current legal developments, verdicts or settlements, and should not be considered an indication of future results. If these materials are inconsistent with the rules governing attorney communications in a particular jurisdiction, and the materials result in a client contact in such jurisdiction, Baker Botts may be prohibited from assuming representation of the client contact.
UNSUBSCRIBE: If you would like to no longer be a member of this mailing list, please click here.
Under the rules of certain jurisdictions, this communication may constitute 'Attorney Advertising'.