Heslin Rothenberg Farley & Mesiti, P.C.
Intellectual Property
Law Bulletin
 
Spring 2012
 
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In This Issue
CLIENT ALERT: Mayo v. Prometheus
@Employer_vs._Employee_Trade_Secret_Lawsuit: "Wait, that's my Twitter account!"
The Winklevosses Did Not "Like" the Facebook Lawsuit Settlement
The Unfolding Impact of Therasense on Patent Prosecution and Inequitable Conduct Jurisprudence
No Registration For You: TTAB Refuses Governmental Entities' Attempts to Register Their Insignia
Clean Energy Patent Growth Index - Year End 2011
USPTO Updates
Nano 2012

CLIENT ALERT: Mayo v. Prometheus 

U.S. Supreme Court Finds Certain Medical Diagnostic Process Claims to Lack Patent Eligibility 

 

 

On March 20, 2012, the U.S. Supreme Court, by unanimous decision, handed down its opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (No. 10-1150), which addressed the issue of patent eligibility of certain types of medical diagnostic patent claims.

The Prometheus decision concerned U.S. Patent Nos. 6,355,623 and 6,680,302, both of which relate to diagnostic tests for determining the appropriate dosages for a given patient of a thiopurine drug used to treat gastrointestinal autoimmune diseases such as Crohn's disease and ulcerative colitis. In an opinion written by Justice Breyer, the Supreme Court reversed the Federal Circuit and held that the contested diagnostic process claims were not patent eligible under 35 U.S.C. � 101.


Learn more  >>

@Employer_vs._Employee_Trade_Secret_Lawsuit: "Wait, that's my Twitter account!"

by Shanna K. Sanders

 

As social media networks become an integral part of the lives and daily routines of more and more people and companies, the line between work life and personal life becomes more and more blurry.  This disintegrating line creates potentially significant legal implications regarding the rights of employers versus employees vis-�-vis ownership and intellectual property associated with social media accounts.  A recent case pending before the United States District Court for the Northern District of California, PhoneDog v. Noah Kravitz,  deals with the familiar trade secret issue (ownership and appropriation of customer lists), but "tweets" it in a new context related to social media.

 

Read Article>>

The Winklevosses Did Not "Like" the Facebook Lawsuit Settlement

by Rachel Leah Pearlman 

 

Aaron Sorkin's movie, The Social Network, immortalized the case ConnectU v. Zuckerberg.  Although the case dealt with many complex intellectual property issues, in the end, it came down to one thing: discovery.  The short, now famous, story, as alleged by ConnectU, i.e., Tyler and Cameron Winklevoss and Divya Narenda, is that they hired Mark Zuckerberg, now the world's youngest billionaire, then a lowly sophomore at Harvard, to finish a website that they had envisioned after their two previous programmers had to stop work.  After explaining their idea and giving Zuckerberg access to the code, ConnectU alleged that rather than delivering a completed site as promised,  Zuckerberg stole the idea and launched The Facebook. 

 

According to the Complaint filed by ConnectU, three days after claiming to have finished the ConnectU website (then called HarvardConnection), Zuckerberg registered TheFaceBook.com domain.  Within two weeks, the  website, thefacebook.com (now facebook.com) launched.  After the launch of TheFacebook, ConnectU hired another programmer to finish their site, which launched almost four months after TheFacebook.

  

Read Article>>

The Unfolding Impact of Therasense on Patent Prosecution and Inequitable Conduct Jurisprudence

by Teige P. Sheehan  

 

In May 2011, the Federal Circuit issued an en banc decision in Therasense v Becton-Dickenson (649 F.3d 1276) with major implications for patent prosecution and litigation and whose effects are only beginning to be felt.  The court's intention was to limit the viability of claims of inequitable conduct in patent litigation, which it had long characterized as a plague upon the patent system yet whose contagion it had nevertheless stoked with numerous panel decisions issued over the past several decades.

 

Not since 1988 had the Federal Circuit issued an en banc decision targeted at corralling the inequitable conduct defense, which, when successful, can render an entire patent unenforceable, possibly taint other members of a patent's family, and have dire disciplinary consequences for the agent or attorney who prosecuted the patent's application.  In Kingsdown v. Med. Consultants, Ltd. v. Hollister Inc., the court had reiterated that a patent is not found unenforceable for inequitable conduct absent sufficient proof of an intent to deceive the patent office in obtaining the patent.  In that regard, mere evidence of gross negligence, such as that a patentee should have known that it was materially misleading the patent office, is insufficient to demonstrate a specific intent to deceive.

 

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No Registration For You: TTAB Refuses Governmental Entities' Attempts to Register Their Insignia

by Caroline B. Ahn

 

May a government entity register its own flag, coat of arms, or other insignia as a trademark or a service mark under the U.S. Trademark Act?  In its first two precendential decisions of 2012, the Trademark Trial and Appeal Board (TTAB) addressed two such issues of first impression with respect to 2 applications.  In both cases, the TTAB affirmed the Examining Attorneys' decisions to refuse registration of a mark comprising the official seal of the District of Columbia, in In re The Government of the District of Columbia, Serial No. 77643857 (T.T.A.B. January 18, 2012), and a mark including a governmental insignia of the City of Houston, in In re City of Houston,  Serial No. 77660948 (T.T.A.B. January 18, 2012).  

   

         DC Mark         Houston Mark 

  

Read Article >>

Clean Energy Patent Growth Index - Year End 2011  

by Victor A. Cardona

 

Clean Energy Patents hit a record high in 2011, up over 20 percent relative to 2010, according to the Clean Energy Patent Growth Index.  GE took the yearly Clean Energy Patent Crown from General Motors (GM) in 2011, while also leading the Wind and Solar sectors and making the annual top ten in hybrid/electric vehicles. U.S. patent owners hold more U.S. patents than any other country. Also, solar and wind patents continued their rise.  For full analysis of the 2011 Clean Energy Patent Race, please see www.cepgi.com. 

 

CEPGI _ YearEnd2011                                 

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USPTO Updates 

 

Since the enactment of the Leahy-Smith America Invents Act (AIA) last September, the USPTO has been busy creating new rules, procedures, and guidelines as required under the Act.  It has also established a helpful AIA implementation website, where updates on its ongoing efforts are continually presented and which also contains a link offering an email subscription to related updates.  Following are some recent noteworthy developments in this regards that may impact your business or practice.

  • The USPTO announced that "Track One" prioritized examination is now available in accordance with the AIA.  Under this mechanism, "final disposition" of an application is targeted to occur within 12 months from filing.  "Final disposition" may be defined in several ways including mailing of a Notice of Allowance, mailing of a final Office Action, abandonment of an application, filing of an appeal, or filing of a Request for Continued Examination.  The fee for entry into the program is $4,800 ($2,400 for small entities) in addition to all normal fees.   The USPTO also announced that Track I Prioritized Examination is now also available for Requests for Continued Examination (RCEs).
  • The USPTO announced that the $400 fee for non-electronic application filing required by the AIA has been implemented.
  • The USPTO announced that it had "published four Notices of Proposed Rulemaking regarding implementation of various provisions of the" AIA:

Read Article>>

 

                                 

 


Link to More Articles

 

An Introduction to Patent Opinions

by John Boger

  

Patenting antibodies: You get what you ask for, or do you?

by Kathy Smith Dias

 

   

 

Mighty Proud of the Company We Keep   

by Jeff Rothenberg  

From startups to industry giants, from nanotechnology to towering wind turbines, from around the corner to across the globe, our firm helps clients to protect and prosper from their ingenuity and creativity.

 

For more than 40 years, our goal has been to provide outstanding intellectual property law services and strategic advice to enable our clients to achieve their business objectives. Over time, business goals may change, but our mission remains constant: to leverage IP for client success. Accordingly, we are proud to represent: the No. 1 recipient of granted US patents for many years running; the world's leading manufacturer of premium crystal lighting; the world's largest generic drug manufacturer, the most advanced nanotechnology research center at a university in the world, the world's leading internet search engine provider, the world's oldest and largest private cancer center, the longest established technological university in the U.S., the nation's largest and most comprehensive state university system, and many other industry leaders.

Read Article >>

 
Attorney Spotlight:
Seve Falati


Shahrokh Falati is an associate with an internationally diverse background and works from the firm's Albany, New York Office.  Shahrokh focuses his law practice on patent and trademark law, representing many U.S. based and foreign based clients with interests in new and emerging technologies.  He helps clients obtain protection in the U.S. on their latest technologies / discoveries, and manages prosecution of foreign counterpart applications.  His clients range from University faculty and researchers, to start-up companies developing new technologies, and large corporations with developed products and services. 



 

 

Announcements
  

Shahrokh Falati has been elected as the President of the Eastern NY Intellectual Property Law Association (ENYIPLA).  

Annette I. Kahler has joined the Advisory Board for SAGE INVEST incubator.
 
Shahrokh Falati is leading efforts as Co-Chair of the Bioconnex Committee, organizing a Capital Region Commercialization of Life Sciences Innovation Day on June 1, 2012 at the Life Sciences Research Building at SUNY at Albany.

  

Upcoming Events

 

On April 23, 2012,   Heslin Rothenberg Farley & Mesiti P.C. will be a  Sponsor of the 10th Anniversary Nano 2012 conference at Rensselaer Polytechnic Institute.  Annette I. Kahler will be speaking at the conference on "Intellectual Property and Nanotech."

 

On April 23, 2012, Annette I. Kahler will be a guest lecturer at Rensselaer Polytechnic Institute on the Intellectual Property Aspects of Marketing High Tech Products.

 

On April 26, 2012,   Heslin Rothenberg Farley & Mesiti P.C. will be a Silver Sponsor of the 2012 New York State Business Plan Competition, to be held at the College of Nanoscale Science & Engineering (CNSE) in Albany, New York.   

 

From May 6-8, 2012, Nicholas Mesiti,  David Miranda, Victor Cardona and   Melvin Li will be attending the International Trademark Association (INTA) conference in Washington D.C.

 

On May 8, 2012, HRFM will be hosting a reception at INTA for clients and friends at The Madison in Washington D.C.  

   

Recent Events

  

From March 21-25, 2012, David P. Miranda served as a faculty member of New York State Bar Association (NYSBA) Trial Academy, held at Cornell Law School, in Ithaca, New York.

On March 20, 2012, Jeff Rothenberg moderated a panel discussion focusing on "Accelerate 518" presented by the UVANY Capital District Capital Forum.

On March 7, 2012, Susan E. Farley served as a featured panelist on the subject 'Attorneys for StartUps: When, Why and How to Engage', presented by Rensselaer's Lally School of Management and Technology, in Latham, New York.

On March 4, 2012, David P. Miranda was a featured speaker at the Tech Valley StartUp Weekend that took place March 2, 2012 to March 4, 2012, in Troy, New York.  Mr. Miranda spoke on the topic of "Intellectual Property Issues for Startups."

On March 2, 2012 and March 9, 2012, HRFM was one of the sponsors for the PreSeed Workshop held at the Tech Garden in Syracuse, New York, with six professionals participating.

On February 2, 2012,  John W. Boger presented "What a Physician Needs to Know to Protect Their Ideas" at the 2012 Selby Spine Meeting held in Deer Valley, Utah.

In January,  Susan E. Farley and Annette I. Kahler presented "2011 Patent Law Updates: A review of the most significant cases and trends in Patent Law in 2011", at the New York State Bar Association's (NYSBA) Annual Meeting. 

 

Contact Us
 
Heslin Rothenberg Farley & Mesiti P.C.
5 Columbia Circle
Albany, NY 12203
(518) 452-5600

Western New York:

100 Meridian Centre

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Rochester, NY 14618

(585) 288-4832

 

www.hrfmlaw.com

 

 

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Heslin Rothenberg Farley & Mesiti P.C. is the largest law firm in New York's Tech Valley

devoted  exclusively to intellectual property law. Since 1970, we have been helping clients

advance their business and protect new ideas, from concept to commercialization.

 

The Heslin Rothenberg Farley & Mesiti IP Law Bulletin summarizes recent IP law news

and noteworthy developments at our firm. Its contents do not constitute legal advice. 

 

Disclosure required pursuant to U.S. Treasury Department Circular 230:

This written advice is not intended or written to be used, and cannot be used by any

taxpayer, for the purpose of avoiding penalties that may be imposed on the taxpayer.

 

We welcome your comments.

Annette I. Kahler
 
Caroline B. Ahn

Kathryn K. Frederick