Imagine That IP Law Blog

Under 35 U.S.C. § 171 of the Patent Act, patent protection is provided for a “new, original and ornamental design for an article of manufacture.” Design patents cover the appearance of an article of manufacture. Design patents have been used to obtain patent protection on the appearance of articles including hair scrunchies, sneakers, paintball goggles, and almost any other consumer product one can think of.

Design patents are essentially comprised of a title, drawings, and a description of the drawings. In design patents, unlike utility patents, the claimed scope is defined ... Read More ›

Kaiser, K. et al. recently reported their synthesis of a brand new carbon molecule, cyclo[18]carbon. The structure and synthesis of cyclo[18]carbon, an 18 ring carbon chain with no substituents, is detailed in Kaiser et al. “An sp-hybridized molecular carbon allotrope, cyclo[18]carbon” (2019) Science Online.

Cyclo[18]carbon is an exciting development, as this molecule has never existed before now and some researches doubted that the molecule could be stably made in the lab. It provides important insights into the organic synthesis of complex carbon-based molecules ... Read More ›

While it is sometimes the case that intellectual property lawsuits involve subject matter that is overly technical or perhaps difficult to relate to, there are times when these lawsuits involve subjects from popular culture that capture the imagination. That is just the case with two recent lawsuits, one involving a beloved figure in Philadelphia sports, and the other focused on the Old Spice commercial jingle.

The subject matter of The Phillies, L.P. v. Harrison/Erickson, Incorporated et al, 1:19-cv-07239 (August 2, 2019), pending in the U.S. District Court for the Southern ... Read More ›

Does a generic term in one country render trademark protection unavailable in another? Not in the U.S.!

Under U.S. law, generic trademarks are common terms used to refer to products or services. What you’re using right now to read this blog post – a computer, a phone – no one can claim rights to these terms. Generic trademarks are not qualified for protection and cannot be registered.  Conversely, even the strongest of trademarks can, over time, become generic and lose their registration. Products like aspirin, linoleum, and yo-yo were once registered as federal trademarks ... Read More ›

The ever increasing speed at which information travels over social media and the expanding volume of information available on the internet has helped and hindered small and start up enterprises. It is easier to get recognition through social media but that recognition does not always translate into revenue. Likewise, it is easier to find information but the reliability of the information can be suspect. All of this matters because long term business success is often the result of the access to funds for the next phase of research, marketing and expansion. The concern here is the ... Read More ›

On March 20, 2019, the Federal Circuit Court of Appeals issued an opinion that may bring some long-awaited good news for wireless patent holders. In particular, in SRI Int’l, Inc. v. Cisco Sys., the Federal Circuit found methods for improving security of a computer communication network to be patent-eligible subject matter under 35 U.S.C § 101. SRI Int’l, Inc. v. Cisco Sys. Inc., No. 2017-2223, 2019 U.S. App. LEXIS 8249, *1, *4 (Fed. Cir. 2019). This news comes in the wake of Federal Circuit decisions in 2016 and 2018, respectively, that found methods of 3G authentication and ... Read More ›

Every aspect of day-to-day life is increasingly influenced by artificial intelligence and automation. Mundane household tasks such as setting the temperature on thermostats, brewing a pot of coffee to coincide with our morning routines, and other simple chores can now be performed by automation. (Google’s U.S. Patent 9,513,642: “Flexible functionality partitioning within intelligent-thermostat-controlled HVAC systems” and General Electric’s U.S. Patent 4,330,702: “Electronic control system for coffeemaker”).

Recently, more complex and ... Read More ›

On January 22, 2019, the United States Supreme Court ruled that the sale of an invention to a third party who is obligated to keep the invention confidential may place the invention “on sale” for purposes of the Leahy-Smith America Invents Act (AIA). The case is Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. With this decision, the Supreme Court answered a question about the “on-sale bar” to patentability that has lingered since the enactment of the AIA in 2011.

Prior to the AIA, it was settled law that a sale embodying an invention, whether public or private ... Read More ›

It is common for the parties to a commercial transaction or relationship to conclude that their circumstance requires more than a non-disclosure agreement. And it is frequently the case that certain privileged attorney client communications may need to be shared. The parties often seek to protect that information with what are known as common-interest agreements or joint defense agreements, depending on the circumstances. Both of the agreements fall under a broad legal umbrella known as the "Common Interest Doctrine" (Doctrine).  While the Doctrine is generally known, it is ... Read More ›

In a step toward consistent interpretation of patent claims before federal courts and the Patent Trial and Appeal Board (PTAB) during post-grant proceedings, today the United States Patent and Trademark Office (“USPTO”) published a final rule revising the claim construction standard used during proceedings established by the Leahy-Smith American Invents Act (“AIA”).

Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42)Read More ›