Thought Leadership

Intellectual Property Report: October 2019

Client Updates

Designing For Damages
Hill Brakefield
Design patents are an often-overlooked method for protecting the value of your products. Under 35 U.S.C. § 289, patent owners can potentially recover the “total profit” made by sales of an infringing product. A properly developed design patent portfolio can also be used to control the market for replacement parts for a product. However, the tests for determining whether an infringer’s “total profit” should be calculated based on the end product sold or some smaller element of that end product potentially forces manufacturers to choose between exclusivity in the repair market and the potential of large infringement awards. This article reviews recent case law relevant to design patent damages and provides practical tips for developing a portfolio that best aligns with your business model.
To read the full article, click here.

Reevaluating Corporate IP Strategies in Light of the U.S.-China Trade War
Robert Maier, Albert Boardman
The trade war between the United States and China has had far-reaching effects on international trade and the global economy. The dispute is slowly developing into a battle of attrition, without any immediate resolution on the horizon despite ongoing trade talks. As businesses change the way they operate in response to this unpredictable trade environment, corporate counsel should consider the risks and potential impacts on corporate IP strategy.
To read the full article, click here.
*This article was first published in the New York Law Journal's September 25th Issue.

USPTO Seeking Comments on Patenting of Artificial Intelligence Inventions
Dr. Michael Sartori
The U.S. Patent and Trademark Office (USPTO) recently requested written comments from the patent community on patenting of artificial intelligence (AI) inventions. The USPTO has provided a number of thought provoking questions on which they are seeking input. For example, can AI itself be an inventor of an invention? If AI can be an inventor, who is the owner? Consider, perhaps, the developer of the AI, the trainer of the AI, or the owner of the database used to train the AI?
To read the full article, click here.

Cleaning Up the CCPA Part 2: CCPA Amendments Moving to Governor Newsom’s Desk
Cynthia J. Cole, Sarah Phillips
The California Consumer Privacy Act (“CCPA”) is on the move. The CCPA takes effect on January 1, 2020. The California legislature ended its 2019 legislative session on September 13 by passing five out of the six pending bills to amend the CCPA: AB-25, AB-874, AB-1146, AB-1355 and AB-1564 (we previously discussed these proposed amendments in our article here). The California Assembly of Privacy and Consumer Protection Committee introduced these bills addressing several issues with the CCPA, and they are now headed to Governor Newsom’s desk. Governor Newsom will have until October 13 to sign these bills into law.
To read the full article, click here.

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