Publications: Intellectual Property


  • The United States Patent and Trademark Office Post-Prosecution Pilot Program Has Ended

    February 10, 2017

    On January 12, 2017, the United States Patent and Trademark Office (USPTO) let expire one of its pilot program initiatives meant to improve the patent application process at the USPTO. Under the Post-Prosecution Pilot Program (P3), after an application had been refused, the applicant was given an opportunity to make their case, not only before the same patent examiner who already refused the application, but before a panel of three examiners. The applicant was allowed 20 minutes to present an argument before the panel. The panel then provided a Notice of Decision with a brief written summary of its ruling. Programs...



  • Attention Business Owners: Are Your Marks Protected?

    February 10, 2017

    One of its most obvious, but often overlooked, assets that a business has is the very name that the business uses to hold itself out to the public. That name, including the names of various products and services it may market, are valuable assets of that business and need to be treated as such. Most business owners do not realize it, but the names ASPIRIN, CELLOPHANE and ZIPPER each started out as a name associated with a business that marketed a very successful product. The products were so successful, however, that the unique name given to each of the products...



  • Social Media Presence Is a Factor When Assessing Trademark Strength

    February 10, 2017

    The Sixth Circuit Court of Appeals recently turned to the social media presence and marketing of a DJ when evaluating the DJ’s claims of trademark infringement and dilution. In Kibler v. Hall, et al (6th Cir. Dec. 13, 2016), the court affirmed summary judgment for Robert Hall, a rapper performing under the name “Logic” since 2009, in a trademark suit brought by Lee Kibler, a DJ performing under the name “DJ Logic” since 1999. Kibler previously registered his name as “DJ Logic” as a trademark in 2000 and again in 2013, after a lapse in registration. In 2012 attorneys for Kibler...



  • Protecting Your Business Assets: Nationalized Trade Secret Protection Has Arrived

    May 11, 2016

    Today marks a day of success for inventors across the United States. From recipes and formulas to processes and design, U.S. businesses now have a new method of defense in the quest to safeguard their valuable trade secrets from would-be thieves and rogue employees. President Obama signed the Defend Trade Secrets Act of 2016 ("DTSA") into law, creating a new federal cause of action for the misappropriation of trade secrets. Until today, the owners of trade secrets had to rely on state-by-state protections for their trade secrets – and not all protections were created equal. The DTSA has been a long...



  • Beware of Suspicious Patent and Trademark Solicitations

    February 8, 2016

    A rash of unsolicited patent and trademark related mailings to clients has prompted this news alert. Specifically, there has been a dramatic increase in the number of mailings to clients with pending patent or trademark application matters. The sources of the mailings are companies that hold themselves out as governmental agencies, or companies associated with such agencies. The mailings are typically very official looking and are in the form of an invoice asking for payment of some sort of registration fee. The sources of the mailings target individuals and companies whose trademark or patent applications have appeared in official journals, such...



  • Intellectual Property Attorney Joe Heino Discusses Cybercrimes in New North B2B Publication

    February 1, 2016

    Joseph Heino of Davis & Kuelthau’s corporate, and intellectual property teams authored an article, Cybercrime – Costly Threats to Your Intellectual Property, for New North B2B's February 2016 publication. To read the article, please click here....



  • Cybercrime – Costly Threats to Your Intellectual Property

    December 29, 2015

    For most people, the terms “cybersecurity” and “cybercrime” conjure up visions of futuristic and rather ill-defined or abstract activities. But the trending attacks on businesses — of all sizes — are neither futuristic nor abstract. They are clear and present dangers to your intellectual property. First, definitions – “Cybersecurity” is the state of being protected against the criminal or unauthorized use of electronic data, or the measures taken to achieve this. “Cybercrime” is any crime or criminal activity that is conducted via the Internet or some other computer network. Second, a question – Is the threat real? The simple answer is...



  • Businesses Can Lower Domain Name Acquisition Costs Via Amortization

    November 19, 2015

    The IRS recently concluded that certain domain names have to be capitalized as intangible assets and amortized over a 15-year period under Section 197 of the Internal Revenue Code. This means that a business that acquires qualifying internet domain names will be able to realize financial benefits by recapturing 100% of the purchase price through amortization, but will not be able to immediately expense the acquisition. Because domain names are valuable business assets and often command significant prices when purchased and sold on the secondary market, this guidance will enable business owners to substantially reduce the applicable net acquisition costs. For a...



  • Take Heed Before Launching New Products and Processes – Supreme Court to Review Enhanced Patent Infringement Damages Standard

    November 19, 2015

    The Supreme Court announced that it accepted Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 and Stryker Corp. v. Zimmer, Inc., No. 14-1520, two cases that could lower the bar for awarding enhanced damages to patent owners upon a finding of infringement. Either way, the court’s decision will have a significant impact in determining whether to bring infringement claims and deciding whether to risk a claim of infringement. Under federal patent law, a court “may increase damages awarded in a patent case by up to three times the amount found or assessed.” Under the current Federal Circuit test, in order...



  • Businesses and Inventors Should Consider Design Patent Protection Due to Right to Recover Infringer’s Profits

    November 4, 2015

    Because design patents provide for significantly greater damages when infringed than utility patents, inventors and businesses should always consider seeking a design patent to better protect their interests and ward off potential infringers. Unlike utility patents which protect the functional aspects of an invention, design patents cover the ornamental designs of articles of manufacture (see Recent Design Patent Cases Clarify Scope, Expand Protection of Design Patents). Although design patents share many provisions of the federal patent statute with utility patents, the damages available for infringement of a design patent are different. Under federal patent law, the owner of a utility patent...



  • U.S. Supreme Court Extends Reach of Administrative Decisions Issued By the Appellate Branch of the United States Patent and Trademark Office

    April 10, 2015

    On March 24, 2015, the Supreme Court issued a rare opinion in a trademark matter. In B&B Hardware v. Hargis Industries, the Court held that findings made by the Trademark Trial and Appeal Board (“TTAB”) of the Patent and Trademark Office can have a “preclusive effect” in subsequent infringement proceedings in federal court. The case arose out of an ongoing dispute between B&B Hardware (“B&B”) and Hargis Industries (“Hargis”) over the mark SEALTITE. In 1993, B&B federally registered the mark SEALTIGHT for its fasteners used in the aerospace industry. Later, in 1996, Hargis applied for federal registration of the mark...



  • A Craft Without a Brand Is a Recipe for Disaster. Is Your Brand Protected?

    October 8, 2014

    At a recent Food & Beverage CEO Roundtable hosted by the Milwaukee Business Journal, Giacomo Fallucca of Palermo Villa, Inc. succinctly and effectively offered this advice to attendees: “Build your brand.” Say no more. In three words, he nailed it. To your company, its brand is its lifeblood. To everyone else, it is an indicator of source and quality. From either perspective, it needs to be protected. But how is this best accomplished? Below are a few initial best practices to consider for building and protecting your brand, which can include trade names, trademarks and service marks, collectively “marks.” These...



  • Federal Circuit Reverses $368 Million Damages Award

    September 19, 2014

    The Court of Appeals for the Federal Circuit, in VIRNETX, Inc. v. Cisco Sys. Inc, recently reversed a $368 million dollar patent infringement verdict because the plaintiff calculated its damages as a portion of the entire market value of the product as opposed to apportioning its damages to the infringing software component of the product. In its ruling, the Federal Circuit confirmed the general rule that a patentee cannot use the value of an entire device to calculate a royalty when the device consists of several non-infringing features with no relation to the patented feature unless the patented feature creates the...



  • U.S. Supreme Court: Patentable Methods Require More Than Generic Computers Performing Generic Computer Functions

    June 20, 2014

    On June 19, 2014, the U.S. Supreme Court issued a decision that further clarified the patentability of computer-implemented methods. In Alice Corp. v. CLS Bank International, the Court addressed the validity of patent claims drawn to a method which amounted to nothing more than an “abstract idea.” It concluded that the method, which merely required generic computer implementation, failed to “transform” the abstract idea into a patent-eligible invention. In short, the claimed method did no more than require a generic computer to perform generic computer functions. To be patentable, the Court suggested that the method claims in question should (i)...



  • Supreme Court Confirms That Patent Owners Bear Burden of Proving Infringement

    February 3, 2014

    On January 22, 2014, a unanimous Supreme Court held that a patent owner bears the burden of persuasion on the issue of patent infringement, reversing a decision of the Court of Appeals for the Federal Circuit. Medtronic, Inc. v. Mirowski Family Ventures, LLC, No. 12–1128. Mirowski Family Ventures, LLC licensed several patents related to pacemakers to Eli Lilly & Co., which then sublicensed the patents to Medtronic, Inc. The dispute arose when Medtronic introduced several new products that Mirowski believed infringed claims in two of its pacemaker patents. Medtronic disagreed and brought a declaratory judgment action asserting that its products did...



  • Federal Circuit Sets Friendlier Standards for Attorneys' Fees in Patent Suits

    January 21, 2014

    On December 26, 2013, the Court of Appeals for the Federal Circuit (which has exclusive jurisdiction over appeals in patent infringement cases) issued a decision effectively making it easier for a wrongly accused patent defendant to recover its attorneys' fees. In Kilopass Technology, Inc. v. Sidense Corp., that court effectively lowered the burden for proving that a patent infringement suit is objectively baseless. For the patent owner, the decision supports the notion that the patent owner should have an "objective and well-reasoned" basis for its claim of patent infringement. If it doesn't, the patent owner is at risk for the...



  • Obama Administration Issues Strategy to Mitigate the Theft of U.S. Trade Secrets

    April 2, 2013

    Far too many U.S. businesses know first-hand the implications of trade secret theft and have been combatting this costly issue for years. In a recent effort to protect American innovation globally, the Obama Administration issued a strategy for mitigating the theft of U.S. trade secrets. While it's possible that this effort could discourage some would-be thieves, the burden remains on the businesses to protect themselves or else risk losing their intellectual property. The question for many is whether this strategy may help or instead hinder a business' efforts to self-protect. The five general mandates issued by the Administration for implementation...



  • Final AIA Changes Are Now In Effect

    March 4, 2013

    The First-Inventor-to-File rules, the final changes to the U.S. patent system under the America Invents Act ("AIA"), are scheduled to go into effect on March 16, 2013. If you currently have any applications "on hold," are considering converting provisional patent applications to non-provisional applications or filing continuation-in-part applications, you may want to consider doing so before March 16, 2013 to avoid the anticipated implications of the new system and its corresponding increased fees. Likewise, you should consider paying any outstanding maintenance fees prior to their scheduled increase on March 19, 2013. First-to-File On March 16, 2013, the United States is changing from...



  • The Patentability of Computer Software to be Revisited

    October 11, 2012

    On October 9, 2012, the Court of Appeals for the Federal Circuit issued an Order that will allow it to revisit the patentability of computer software. ...



  • Are You Ready For The Next Round of Changes Under the America Invents Act?

    July 1, 2012

    Although nearly a year has passed since President Obama signed the America Invents Act ("AIA") into law, the next round of changes will take effect Sept. 16, 2012. The Act's next phase of changes are relevant when considering any patent enforcement actions and in defending patent infringement actions. As discussed in my article last fall entitled "Big Changes Coming to Patent Law", several changes have already taken effect, with the second round happening on Sept. 16, and a third round slated for March 2013. The important aspects of this second round of changes are those directed to procedures for third...



  • Use Trademark Audits to Identify and Protect Your IP Assets

    April 12, 2012

    Trademarks, including your company and brand names, are among the most valuable assets of your business. They can contribute directly to revenue generation through royalty or licensing payments, and by building your brand and market identity as well as the goodwill of your company. An easy and cost-effective way to help ensure that you are protecting these valuable assets is to have experienced trademark counsel perform periodic trademark audits. A trademark audit will, among other things: Help you identify the trademarks your business uses (including those possibly overlooked by management) as well as any federal and state registrations and applications...



  • New Top Level Domains Will Increase Risk of Online Trademark Infringement

    September 12, 2011

    The Internet Corporation for Assigned Names and Numbers (“ICANN”), the organization responsible for overseeing the world's domain name system, recently made hundreds of new generic Top Level Domains (gTLDs) available for registration, a significant expansion of available Internet addresses and an increased risk of online trademark infringement. Companies should follow developments in the gTLD rollout to determine whether any of the proposed gTLDs infringe their trademark rights. Additionally, once the new gTLD registries are operating, they will require additional trademark policing. Currently, the most popular gTLDs are those with the extensions.com,.net, and.org. There are also nineteen other generic extensions available for...



  • Big Changes Coming to Patent Law

    September 12, 2011

    On September 16, 2011, President Obama signed the America Invents Act (the "AIA") into law. The AIA makes the most sweeping changes to U.S. patent law in many years, including moving the United States towards a first-to-file system, creating new Patent Office proceedings for post-grant review, essentially eliminating false marking actions, raising patent fees and establishing a new fee-based fast track patent examination process.Move to First to File SystemThe most significant change brought about by the AIA is to move the United States to a first-to-file system, which is the system used in most other countries. Currently, the United States...



  • Europe Moving Towards a Single Patent System

    September 11, 2011

    On 27 June 2011, 25 member states of the European Union entered into an Agreement which paves the way for a unitary patent system in Europe. Currently, patent applicants who wish to obtain patent protection in multiple European countries must bear the cost of preparing and filing multiple translations in order to have their patents validated in each European country of interest. According to the Agreement, an application for a unitary patent can be filed in English, French or German. Any patent which is granted will have effect throughout the 25 member states without the need to file multiple translations, which...



  • Choosing a Strong Trademark

    September 11, 2011

    One of the most common mistakes brand owners make when they have an idea for a name that they want to "trademark" is that the trademark of choice is merely descriptive of the goods or services that the brand owner wants to identify with the trademark. Descriptive marks to help consumers to identify their products and services. However, if an infringement situation arises, the descriptive nature of such trademarks may make them weak trademarks because, absent a showing of acquired distinctiveness, a trademark owner cannot prevent others from using descriptive terms to describe such goods or services. Trademark laws do not...



  • Licensing A Trademark - Even To A Family Member

    May 11, 2011

    In a case that came down earlier this month, the Court of Appeals for the Seventh Circuit reiterated an old saw of trademark law, namely, that trademark owners who fail to control the quality of their licensee’s goods or services stand to lose their trademark. Trademark law requires that decision-making authority over the quality of the goods or services provided remains with the owner of the mark. Why is this important? As happened in Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., to the extent a trademark owner fails to include such provisions in a license agreement or fails to have a...



  • Supreme Court "Punts" on Standard for Business Methods

    April 11, 2011

    In perhaps the most anticipated patent case of the term, Bilksi v. Kappos, the Supreme Court relied on its precedent to find the claimed method in the Bilski patent unpatentability abstract without setting forth any new standard for evaluating patentable subject matter. The Patent Act offers patent protection for "any new and useful process, machine, manufacture, or composition of matter." Here, the Supreme Court’s focus was on the definition of a "process" because Bilski's patent application was written to claim a method of hedging risk in commodities trading. In evaluating the Bilski patent, the lower court, the Court of Appeals...



  • Google is Doing What With My Trademark?

    April 11, 2011

    Google is making money off your trademarks and letting your competitor's direct business to their websites via its AdWords program. As more than 70% of U.S. internet searches use Google's search engine, Google directs a significant portion of consumers to the products and services they seek. Nearly everyone is familiar with Google's search engine. Web users simply type in a few words, hit enter and Google generates a list of hyperlinks to web pages identified as relevant to the search requested. What is less understood is that Google also displays paid advertisements above or alongside the search results. To offer...



  • No - It Probably Isn't a Work Made for Hire

    April 11, 2011

    So you hired a third party to develop software for your company or to put together your website or even to write a company newsletter. You paid them for those services. You now assume that you own the copyright to the work because it was a "work made for hire." Not so fast. While it is true that, in an employer-employee setting, the employer or other person for whom the work was prepared is typically considered the author and owns all of the rights in the copyright, most works created by third-party independent contractors don't qualify as a work made...



  • District Court Awards $180 Per Falsely Marked Item

    July 11, 2010

    In our recently issued Client Alert regarding the rash of False Marking lawsuits, we advised that the Federal Circuit had reinterpreted the False Marking statute in the Forest Group v. Bon Tool case to permit damages on a "per article" basis. Forest Group originally sued Bon Tool for infringement of its patent on stilts used by drywallers. Forest's claims were dismissed on summary judgment for lack of infringement. However, Bon Tool counterclaimed for false marking. The District Court then held that Forest was liable for a $500 fine for false marking.Bon Tool appealed and the Court of Appeals for the Federal...



  • News from the United States Patent and Trademark Office (the "PTO")

    July 11, 2010

    It's that time of year again - PTO Set to Increase FeesIn addition to the comprehensive Patent Reform Act which is winding its way through Congress, Rep. John Conyers (D – Mich) and Rep. Lamar Smith (R – Tex) recently introduced the "Patent and Trademark Office Funding Stabilization Act of 2010" (the "Stabilization Act"). The bill combines provisions that would (a) authorize the PTO Director to set or adjust all patent and trademark fees; (b) establish a temporary 15 percent surcharge on patent fees; and (c) eliminate the diversion of PTO fees to other government programs. As indicated above, the...



  • Recent Design Patent Cases Clarify Scope, Expand Protection of Design Patents

    July 11, 2010

    Two recent decisions by the Court of Appeals for the Federal Circuit provide new tools for design patent holders and new hazards for those attempting to design around products covered by design patents. What are Design Patents? Design patents are directed to a non-utilitarian or non-functional design that is embodied in or applied to a product or a portion thereof and not the utility or function of the product itself. Design patent protection includes ornamental designs of all kinds including surface ornamentation as well as the configuration of a product. Design patents are increasingly viewed as strategically important for innovators...



  • Thinking About Becoming a Franchisee?

    May 11, 2010

    If your place of employment has recently down-sized and you have lost your position, or if you want to make a pre-emptive strike before that happens, you may have toyed with the notion of owning your own franchised business. Most prospective franchisees have the notion that, by owning a franchised business, they will, in fact, be their own boss. While owning a franchise can be rewarding and profitable, the prospective franchisee needs to understand that he or she is accountable to a new boss or supervisor – the franchisor....



  • What Is Software Licensing?

    April 11, 2010

    Simply put, a license is nothing more than permission given to do something that would otherwise be considered illegal absent that permission. In the licensing of computer software, what permission is given, how is it given and to whom? In the real world, software licensing arises in one of two very different situations....



  • So Who Really Owns The Design And Design Documents For Your Construction Project?

    March 11, 2010

    Your new construction project is off to a great start. Site selection and assessment has cleared through all of the usual red tape. Your financial backers are committed. You even have a “hand-shake” deal with a new architect who comes highly recommended. This person has already provided you with some exciting concepts and a vision as to what your final project will look like....



  • I Paid For That Software To Be Developed, So Why Don't I Own It?

    February 11, 2010

    Suppose that your company is fortunate enough, or substantial enough, to have one or more software developers who are also employees of the company. Suppose also that one of your software-developing employees has written the code for a new computer program that you would like to market....



  • So You Think You Have A Patentable Idea - Now What?

    January 11, 2010

    An idea for a new and useful product has been looming in your thoughts for quite some time. Perhaps you have doodled some drawings showing how the product works. Perhaps you have even built a working model. Better still, you have perfected your working model and have given thought as to how you are going to manufacture the product, market it, and build a successful business based upon that product....



  • Are You Keeping Your Business Secrets To Yourself?

    October 11, 2009

    So, you have some company secrets. What business doesn’t? You may have a confidential marketing strategy that your most aggressive competitor would covet, if only it knew that your strategy has been reduced to a private inter-office memo. Perhaps you have a closely veiled manufacturing method that an up-and-coming entrepreneur would salivate over, if only he or she could gain access to your facility and videotape the process....



  • What Aspects Of Intellectual Property Should Entrepreneurs Consider When Starting A New Business Or Expanding An Ongoing Business?

    June 11, 2009

    Entrepreneurs know that starting a new business or expanding an ongoing business into new areas is the stuff that dreams are made of. To keep those dreams alive, serious thought has to be given to protecting the business in all of the usual ways – a sales network is firmly in place, the lease is iron-clad, the business liability insurance is bound....



  • If One Of Your Employees Invents Something, Who Owns What?

    April 11, 2009

    The general rule on this subject is that an employee who invents something as part of his or her job duties probably has a legal duty to assign his or her entire interest in the invention and any patent that may be obtained on that invention to his or her employer. If the employee invents something apart from his or her normal job duties, then the invention, and any patent that may be obtained on that invention, will probably belong to the employee....



  • Are Your Marks Protected?

    April 11, 2009

    One of its most obvious, but often overlooked, assets that a business has is the very name that the business uses to hold itself out to the public. That name, including the names of various products and services it may market, are valuable assets of that business and need to be treated as such. Most business owners do not realize it, but the names ASPIRIN, CELLOPHANE and ZIPPER each started out as a name associated with a business that marketed a very successful product...



  • Using Expired Patent Numbers with Your Products Could Lead to Devastating Financial Losses

    April 1, 2009

    Businesses now face potentially devastating financial penalties for false patent marking of mass produced products thanks to a 2009 U.S. Court of Appeals decision. Under this decision, businesses that falsely mark an unpatented product can be liable for up to $500 per item....



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