Another Banner Year For Trademarks

By Debby Winters

Below is a link to USPTO Director David Kappos’ blog on Trademarks.

He feels that the USPTO is improving and working for the end-user. He states “All the while, and for the sixth year in a row, quality and pendency results have met and exceeded targets. The Trademarks performance dashboard has been updated to showcase our record 2012 performance results, and I invite you to take a look at how the Trademarks team is working to serve you.”

I agree with him that the trademarking process has gone smoothly for all that I have filed. Please let me know if you have any experiences with filing Trademarks and what those experiences are.

Who Wins and Who Loses in the Myriad Genetics Latest Court Ruling?

By: Debby Winters

The legal battle over patents on a pair of genes linked to breast and ovarian cancers, the BRCA1 and BRCA2 genes, took a twist recently with a ruling from a U.S. appeals court. This closely watched case for the health care and biomedical research industries signified a biotech industry partial victory when the court ruled that Myriad Genetics’ patents on the genes that are from mutations associated with a higher risk of cancers are valid.
To understand what this case is all about, let’s take a look at the real crux of the case, which is whether the genes represent natural occurring sequences.
A gene patent is a patent on a specific isolated gene sequence, its chemical composition, the processes for obtaining or using it, or a combination of such. Gene patents may claim the isolated sequences of genes, the use of the sequence for purposes such as diagnostic testing, or a sequence that has been altered by making changes to make it more useful.
The landmark case determining what is patentable is the 1980 case of Diamond v. Chakrabarty. Here the U.S. Supreme Court upheld the first patent on a newly created living organism, a bacterium for digesting crude oil in oil spills. The patent examiner had rejected the patent because it was from a living organism since, as a rule, raw natural material is generally rejected for patent approval. But Chakrabarty appealed this decision all the way to the Supreme Court, which ruled that as long as the organism is truly “man-made,” such as through genetic engineering, then it is patentable. Because the DNA of Chakrabarty’s organism was modified, it was patentable. Ever since this 1980 case, we’ve been struggling with what is naturally occurring and what is made-made.
The current case started in 2009 when the Association for Molecular Pathology, the American Civil Liberties Union, the Public Patent Foundation (and others) sued Myriad Genetics of Salt Lake City challenging the validity of Myriad’s patents on the two genes saying the genes were naturally occurring. The suit alleges that Myriad’s sole rights to the genes and its diagnostic analysis of them leaves women unable to get a second opinion or to confirm their test results elsewhere. Additionally, many cannot afford Myriad’s $3,000 screening.
In 2010, a lower court in New York invalidated the patents, ruling that they were barred by laws preventing the patentability of natural phenomena. Myriad then appealed to the U.S. Court of Appeals. This court ruled that the patents on the genes themselves are valid “because each of the claimed molecules represents a nonnaturally occurring composition of matter.” This reasoning assumes that the patents are based on “nonnatural” segments of DNA extracted from cells, not on the DNA itself as it occurs in the nucleus. Contrary to the view of a lower court, this court ruled that a method of screening for potential cancer therapeutics by tracking their effects on cell growth rates is patentable. However, the company’s claims on testing for cancer risk by comparing or analyzing DNA sequences was deemed invalid. The reasoning behind this is that the methods are based on “abstract, mental steps” of logic that are not “transformative.”

Wide-reaching impact

The decision means a victory for both sides. While it  is not likely to fully satisfy either of the battling parties, most biotech companies may be relieved to learn that the court did not completely wipe out the gene patents. Myriad’s attorney said “It’s a win because much of the value associated with DNA-based or -implicated inventions, ranging from diagnostics to therapeutics, would be eviscerated if the court determined that the DNA claims were not patentable.”  On the other side an ACLU attorney said “Human DNA is not a manufactured invention, but a natural entity like air or water. To claim ownership of genetic information is to unnecessarily block the free exchange of ideas.”
Others against the ruling claim that Myriad’s exclusive control over the gene sequences precludes improved genetic tests while those in favor of the ruling claims that gene patents promote innovation and lead to more scientific discoveries.
The case is far from over. The plaintiffs have the option of asking the panel for reconsideration, requesting a review by the entire appeals court or appealing the case to the U.S. Supreme Court. Like Diamond v. Chakrabarty, I expect to see this one go all the way to the Supreme Court.

Why File A Provisional Patent Application?

By: Debby Winters

I have written posts on what a provisional patent application is, what happens after you file one, and why you should file one. Here are some point worth mentioning or repeating:

  1. A provisional application can be a good way to establish an early filing date and to give additional time to perfect the invention or work on improvements.
  2. A provisional application can be a good way to determine whether there is a market for the product or process.
  3. A provisional application can be a good way to delay filing and prosecution costs until a later date.
  4. A provisional patent application can be a good way to permit the applicant to mark a product as “patent pending.”
  5. A provisional application should not be filed until the invention includes sufficient details to reduce the invention to practice.
  6. Provisional patent applications should include sufficient detail to support claims in a later-filed non-provisional application.
  7. A quick provisional application can be filed to protect against public disclosure provided that a complete non-provisional application is filed shortly thereafter.

Was The Jury Confused When They Decided The Apple/Samsung Verdict?

By: Debby Winters

It is now coming to light that the jury in the Apple/Samsung patent case may have not only been confused in making their decision, but Samsung is hoping there was misconduct/bias, which they have used to request a new trial. Samsung is claiming that the jury foreman may have used extraneous material when making his points to the jury. Extraneous material is not allowed in the jury room. Whether the huge verdict will be overturned remains to be seen.

Notehall: Helpful Study Aid or Threat to Copyright Law?

By: Debby Winters

Wouldn’t it be great if you could just buy the notes from class and you wouldn’t even have to go to class? For decade people have been borrowing notes from each other, and some schools have even paid students to be “note takers” and sold the service to other students. But now, there’s a whole new concept of students selling their notes for profit. The problem with the concept is that it may be a copyright infringement.

Sites like, which was acquired by (a textbook-rental company) last June, allows users to buy and sell class notes and study guides to each other. Notehall gained recognition after appearing on the ABC reality show Shark Tank in October 2009. Since that time other competitors, such as Course Hero and Koofers, have sprung up.

Here’s how it works: Users buy “credits” for materials, and around half of the profits go to the sellers. The other half of the profits go to N

Supporters of the site highlight that Notehall buyers benefit from using the notes to save time for studying while the sellers benefit from the process of compiling those notes to be sold. For sellers, the potential profits and recognition for creating the notes are additional incentive to make thorough material that they themselves will benefit from using.

Proponents say it encourages the seller to think through the material while explaining it to others, while it allows the buyer to get a different perspective on how the material is presented.

However, many of these sellers just take the notes from class and may be profiting from the intellectual property of the professor, in violation of copyright laws.

What can the universities and professors do about it? Some universities have policies against such activities. The University of California system has policies standing against the commercialization of class notes. Selling notes is also a violation of California state law, regardless of whether or not the student took the notes themselves.  But they may be able to do even more since buying and selling notes from class not only brings up copyright but also ethical issues. Posting a copy of the instructor’s Powerpoints and summaries online without permission falls under copyright infringement be it for profit or not. Introducing commercialization into this equation makes the violation of intellectual rights even more serious. In the Colorado State University guide to Notehall, Course Hero, and Koofers it explains, “Uploading an instructor’s work product is a copyright violation issue. Examples are a PowerPoint presentation or study guide prepared by the instructor, even if it has been distributed to the class. Students may not profit from another’s work.”

Notehall terms and conditions are that class notes “must be substantially rewritten after class and include independent thought and analysis, research and information.” However, the line between what constitutes violating these terms or not is rather vague. And how many students really spend the time to include independent thought and analysis. The next question in this commercialization of notes is how long will it be before we have ‘note farmers’ – people who go to class just to take notes and sell them?

Samsung Claims that Apple’s IPhone 5 Infringes Its Patents

By Debby Winters

Not surprisingly, now that the iPhone 5 is out, Samsung has added the iPhone 5 to the list of patents Samsung claims Apple has infringed. As you recall, Apple won a $1.05 billion jury verdict against Samsung on Aug. 24 in a separate patent case in August.

“As soon as the iPhone 5 was available for purchase, Samsung began its investigation of the product,” the company said in its court filing yesterday. The iPhone 5 infringes two standards patents and six features patents, Samsung said.

The U.S. District Judge who is presiding over the litigation in California rescinded a ban on U.S. sales of the Galaxy Tab 10.1 that she imposed in June saying there were no grounds for keeping the preliminary injunction in place after jurors concluded in their Aug. verdict that Samsung didn’t infringe the Apple design patent, which was the basis for the injunction.  But Apple contended the ban should remain in place because the jury found the Galaxy Tab infringed other patents at issue in the case. Apple has won a preliminary order blocking U.S. sales of Samsung’s Nexus smartphone. In Aug., Apple added the Galaxy S III smartphone to its list of products that it says infringe its patents. Apple is expected to add infringement claims about other Samsung products, including the Android 4.1 Jelly Bean operating system and the Galaxy Note 10.1 device.

The case in which Samsung added the iPhone 5 claims is scheduled for trial in 2014. Samsung’s original complaint identifies the same eight patents as the basis for alleging infringement by earlier iPhone models, as well as the iPad and iPod Touch.

“SHOULD I patent this idea?”

By: Debby Winters

Just because you CAN patent an idea, does not always mean you SHOULD patent the idea. From a business perspective, always ask the questions “SHOULD I patent this idea?”

The answer to this question relies on both solid legal and business principles.

  1. What’s the market size?
  2. What’s the demand?
  3. Who are your competitors?
  4. How do your competitors try to compete with you?
  5. Can someone reverse engineer this product?
  6. Can you easily figure out if someone is copying you?

All of these business questions should be factored into your decision to file a patent.

Although filing a provisional patent application is not expensive, if the patent won’t help with your business, then to go through the entire patent process can easily turn into a much larger investment. Does this does make any sense for a product that has a very small market? Does it make sense for an idea where it would be impossible to tell if someone was copying you? These are the things to contemplate before you file.