obvIPat - Obviously Patentable

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

Archive for May, 2014

Second Round of Patent Reform Goes to the Judiciary

by Orlando Lopez

The second round of patent reform in the Senate, the Patent Transparency and Improvements Act, which follows from a similar House bill (already passed by the House), has been taken off the Senate Judiciary Committee’s agenda.

As a result, we will not see the second round of patent reform until maybe next year. Those of us who fear that the second round of patent reform constituted some movement of the legislative branch into the judiciary branch welcome this change.

There are a number of actions and movements that are closing the gap in patent litigation, that the second round of patent reform was trying to close. In the recent Supreme Court decisions in the Octane Fitness, LLC v. Icon Health & Fitness, and Highmark Inc. v. Allcare Health Mgmt. Sys cases, the ability to shift the fees improved. The proposed amendment to the Federal Rules of the Civil Procedure would, if enacted, eliminate the use of forms and make the pleading requirements the heightened pleading requirement presented by the Supreme Court in Iqbal and Twombly. With increased ability to shift the fees, and heightened pleading requirements, two of the issues that the second round of patent reform was trying to resolve are already being solved by the judiciary. The judiciary could also move forward streamlining discovery which would reduce the cost of litigation. The one issue left for consideration is the harassment of end users, which can be resolved at the state level.

Maybe we will not see the second round of patent reform next year.




Protecting Your IP Under Government Contracts, Part 1

by Jesse Erlich

It is evident that dealing with the government has many advantages; however, if certain rules and regulations are not followed, particularly those found in The Federal Acquisition Regulations (FARs), this procedure can also be hazardous. For example, a contractor or subcontractor may believe it is entitled to certain rights, both with respect to inventions as well as data, and yet by not following the appropriate procedures those rights may be lost.

In the coming months I will present through a series of blog posts a brief overview of intellectual property rights with respect to government contracts. However, it should not be relied upon as the sole source of information when entering such government contracts. It is highly recommended that prior to entering any government contract, or any contract for that matter, a lawyer familiar with such contracts be consulted for review of the contract prior to execution of the contract by the parties.

Let’s get started.

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