obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for June, 2011


"The true sign of intelligence is not knowledge but imagination."
Albert Einstein

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The beginning of a new chapter: House approves their version of patent reform

by Orlando Lopez

On June 23, 2011, the House approved their version of the America Invents (Patent Reform) Act. The Senate had previously approved their version.  Both the Senate and the House versions move the US patent system to a first to file system, which in the U.S. is called “first inventor to file.” The House version does not completely ensure that the fees collected by the Patent Office are not diverted (“cannibalized”) for other users.  The Manager’s Amendment, which was also approved, included the formation of a Patent and Trademark Fee Reserve Fund; however, there is not much to prevent the “raiders” of the Patent Fund from going back to their usual ways.  Another difference between the House version and the Senate version is the formalization of the “practicing the prior art” defense to patent infringement. Read the rest of this entry »

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"If at first, the idea is not absurd, then there is no hope for it."
Albert Einstein

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Stanford v. Roche: The Return of “Talismanic Incantations”

by Orlando Lopez

In reviewing the manner in which Miranda warnings are given, the Supreme Court has stated that there are no “talismanic incantations;” however, as the case of Stanford v. Roche indicates, the language used in employment/contractor/consultant agreements can have a very large impact on the interpretation and effect of the agreement.

Cetus, a small research company, had collaborated with Stanford on the efficacy testing of new AIDS drugs.  In the process of the collaboration, a Stanford researcher, Holodniy, conducted research at Cetus in order to learn the technique known as PCR.  PCR is a Nobel Prize winning technique which was developed at Cetus.  Stanford eventually obtained three patents on the process for measuring the amount of HIV in a blood sample and Holodniy was listed as an inventor in the three patents.  Roche Molecular Systems acquired Cetus and commercialized the HIV measurement method developed there.  Stanford sued Roche for infringement of the three patents.  Roche claims that Stanford had no standing to sue. Read the rest of this entry »

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When Companies Behave Like False Marking Trolls

by Orlando Lopez

When companies behave like false marking trolls, courts may treat them as trolls.  Recently, in Juniper Networks v. Shipley, the Court of Appeals for the Federal Circuit (CAFC) upheld the dismissal of a false marking suit brought by Juniper Networks against Shipley for failure to state a claim.  The patent statute allows an individual to bring a suit on behalf of the government for falsely marking an unpatented article (these suits are referred to as qui tam actions).  Ever since the CAFC clarified that a penalty could be charged per sold article, there have been a large number of false marking suits brought against corporations by individuals (the individuals bringing the suits are sometimes referred to as false marking trolls). Read the rest of this entry »

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