By Stephen P. Scuderi Provisional patent applications (PPAs) were authorized in the United States in 1995. PPAs have a one year life span whereupon they will expire if they are not converted into a non-provisional patent application (a regular application). For a variety of reasons, PPAs are often used as an alternative to initially filing…
By Stephen P. Scuderi This paper will present an overview of some of the issues pertaining to the disposition of patent rights to inventions made under a government R&D contract. As will be seen, without careful adherence to the statutes and regulations governing such patent rights, it is possible for a contractor to unintentionally lose…
By Victor A. Cardona The Good- -Granted patents provide a monopoly for the claimed invention. A patent holder can stop another from making, selling, using or importing a product, method, widget, composition of matter, etc. that meets every word of a patent claim. -A patent is a property right. Venture Capital firms look for potential…
By Alana M. Fuierer What do barbecue sauce, wine and law firms have in common? Each frequently find themselves at the center of legal disputes over the right to use and/or register one’s family name (or “surname”) as a trademark.[1] Indeed, our region is no stranger to this controversial issue. See The Taylor Wine Company,…
By Stephen P. Scuderi The timing and sufficiency of an assignment document can become critical for protecting the rights of the assignee. These rights include the assignee’s right to sue for infringement, ownership right and right to claim priority. Right to Sue for Infringement In the recent case of Diamond Coating v. Hyundai, 823 F….
By Wayne F. Reinke 35 U.S.C. §101 states that: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” In the first part of the two-part test set out…
By Kristian E. Ziegler Last month, David Slater and the People for the Ethical Treatment of Animals (PETA) finally settled their two-year legal battle over the intellectual property rights of a rare Indonesian crested macaque monkey named Naruto, who took pictures of himself in the wild with Slater’s camera. The story began in 2011, when…
By Kristian E. Ziegler The St. Regis Mohawk Tribe, whose Akwesasne territory straddles the U.S.-Canadian border in Franklin County, New York, and the provincial boarder between Ontario and Quebec, recently parlayed its sovereign immunity into several valuable pharmaceutical patents and a significant revenue stream. Allergan PLC, a leading global pharmaceutical company headquartered in Dublin, Ireland,…
By Alana M. Fuierer and Shanna K. Sanders The surge of user-generated e-commerce and social media platforms has provided individuals, regardless of location, experience or financial status, the power to become a commercial artist, author, designer, musician or photographer. For emerging entrepreneurs, traditional barriers to entry have been removed by e-commerce websites such as Zazzle,…
By John W. Boger The second most frequent question I get from people (after “How much does it cost to get a patent?”) is, “I am going to talk to So-and-so; what should I do beforehand?” In response, I have come up with five easy rules to follow. The purpose of this article is to…