Vol. 2 No. 3 January./February. 2010:
Supreme Court Reversal Rates

Supreme Court Reversal Rates:
Evaluating the Federal Courts of Appeals

By Roy E. Hofer

Up until 1998, the Federal Circuit had the final say in almost all patent-related cases. Now patent appellants have a greater chance of reaching the Supreme Court and an even greater chance of receiving favorable reversal. The Supreme Court seems to prefer fact-specific balancing tests over the Federal Circuit’s bright-line rules. Care to hazard a prediction about the possible outcome of Bilski v. Kappos?

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The following articles from
Vol.2 No.3 January./February. 2009
are available to Section members.

Preparing a Winning Case Before a USPTO
By C. Edward Polk Jr.

This article by a former USPTO counsel offers practical tips for practice before the agency: (1) incorporate the standard of review into your strategic thinking, (2) rely on issues of law, (3) communicate with the USPTO to narrow or eliminate issues, (4) proceed against the USPTO in APA and mandamus actions, and (5) use reexamination as part of your litigation strategy. read more...

Declaratory Actions Post- MedImmune—Can Patent Holders Ever Avoid Suit?
By J. Karl Gross

In declaratory judgment actions, courts declare “the rights and other legal relations of any interested party.” In the patent world, this means that a potential patent defendant may preemptively sue a patent holder to clear patent-related products and activities. MedImmune expanded declaratory jurisdiction. This article offers ways of minimizing the ensuing declaratory judgment risks. read more...

Patent Attorney Malpractice: What’s the Value of Nonexistent Patent Rights?
By Michael J. Lasinski and Richard M. Conroy

Evaluations of the gross value of a patent or patent portfolio can differ widely, especially during the appraisal of a patent that might have been issued but for the actions of a patent attorney. A solid approach to reducing value variances in the malpractice context involves market-based data drawn from patent transactions between unrelated parties. read more...

The Patent Prosecution Highway: Canada as Office of First Filing
By Etienne de Villiers

The PPH permits applicants to obtain allowable claims in a first patent office and submit requests for accelerated examination in a second office based upon the first’s results. Canada presents an attractive choice for U.S. applications because of the compatible patent practice, lack of any claim limit, and simple accelerated examination procedure. read more...

China and the WTO: Targeting China’s IPR Record
By Kevin C. Lacey

The lack of enforcement of IP rights within China cost U.S.-based copyright industries $2.7 billion in 2005. This article outlines the elements of the U.S. complaint currently before a WTO panel, summarizes the WTO panel’s rulings, and analyzes the implications for future IP rights enforcement in China. read more...

Curing Potential Trademark Fraud Through Voluntary Amendments
By Brian E. Banner

Make corrections to trademark applications or registrations as soon as possible in order to ward off the potential threat of an adversary’s claim of fraud on the USPTO. Three TTAB decisions suggest that curing defects in this way may give rise to a presumption against fraudulent intent. read more...

Capitol Records v. Thomas : The Debate over the “Making Available” Theory of Copyright Infringement
By Lynn B. Bayard and Darren W. Johnson

The notorious Napster and other file-sharing services have facilitated music piracy on a massive scale. Thomas was the first case against an individual P2P user to go to trial and final judgment. At an ensuing new trial, “actual dissemination” was deemed the basis of liability, rather than simply making an infringing file available for downloading. read more...

Contracting Around Copyright? An Introduction to Copyright Misuse
By Dale R. Kurth

The doctrine of patent misuse holds that a patent license may not restrain competition in unpatented products. A corollary exists for copyrights. A software copyright license, for example, cannot control the expression embodied in the software and all competing uses of the software idea as well. Misuse doctrine merits its rightful place in copyright law. read more...

By Judge Gerard F. Rogers

I2P Group News
By Samson Helfgott

Recent Developments in IP Law
By John C. Gatz

From the Hill
by Hayden W. Gregory

By Don W. Martens

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