From “Schiess All That,” the 2009 musical produced by Assault & Flattery at the University of Texas School of Law.
Summer clerkin’, had me a blast
Summer clerkin’, went by so fast

Met a judge who ruled for me
Met a partner who does IP

Summer days, no work all play
Then uh-oh, those summer nights

Well-a well-a well-a oomph!
Tell me more, tell me more

Man they filled me with booze

Tell me more, tell me more

Took us all on a cruise

Uh-huh uh-huh uh-huh uh-huh

Had a Starbucks on the first floor
Venti lattes made us work more

Billing hours; watching the clock
My first paycheck was such a shock

Summer fools, we worked like mules,
but uh-oh those summer nights

Well-a well-a well-a oomph!
Tell me more, tell me more

But you dont gotta brag

Tell me more, tell me more

‘Cause it sounds like a drag

Shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, shoo-bop bop, YEAH

Wrote a memo, they said its crap
Five mimosas, then got the clap

Deposed a witness; I had no clue!
Really effed up; our client’s screwed

Summer jobs, not qualified
But uh-oh, those summer nights

Woah oh oh

Tell me more, tell me more

Went on weekend retreats

Tell me more, tell me more

Bonded under the sheets!

How debauchrous law firms can be!
Can’t believe that they’re hiring me

We’ll enjoy our last year of class
Cause next year they own my ass

Summer clerks, now we’re 3Ls
A-nd oh, this year will be hell

We’re so screwed, we’re so screwed

As you consider the value of patenting your invention, take a look at some of these patent related blogs, they’re great resources:

• Patently-O
• IP Watchdog
• Patent Baristas
• Peter Zura’s 271 Patent Blog

As in all areas of Law, Patent Law evolves over time and is molded by cases decided in the Supreme Court and the Federal Circuit Courts.  According to “Patent Law and Practice, Sixth Edition” by Herbert F. Schwartz and Robert J. Goldman, here are the major cases currently impacting patent law:

• In re Bilski (2008, Fed. Cir. en banc), in which the Federal Circuit established a new standard for the patentability of business method processes and algorithms.
• eBay, Inc. v. MercExchange, LLC (2006,S.Ct.), in which the Supreme Court overturned the test applied by the Federal Circuit relating to the availability of permanent injunctions in patent litigation
• MedImmune, Inc. v. Genentech, Inc. (2007, S.Ct), in which the Supreme Court expanded the availability of declaratory judgment jurisdiction for companies seeking to challenge the patent of another
• KSR Int’l v. Teleflex, Inc., (2007, S.Ct), in which the Supreme Court revisited the law of invalidity for obviousness for the first time in a generation, revising the standard applied by the Federal Circuit since the 1980s
• In re Seagate Tech., LLC (2007, Fed. Cir. en banc), in which the Federal Circuit reversed 24 years of decisions and established a new standard for assessing willful infringement, a precursor to an award of increased damages and attorneys’ fees Critical new issues addressed.

I’m pleased to announce that I’ve launched Suarez|IP Law for your patent prosecution needs. Click the link or call me at 1.305.600.2460 for more information.

Officially known as the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office,  the Patent Bar Exam is a 100 question, six-hour long behemoth with a 50% pass rate.  Having passed it, I am now “pending registration” by the USPTO.  Basically, there is an oath and some money that I own them, but in approximately 7 weeks I should receive my registration number, then I can officially represent clients before the USPTO in patent cases.  Since I have not passed a state bar exam yet (pending graduating with my JD around 2011), I will be classified as a Patent Agent.

Protect American Intellectual Property Abroad

The Motion Picture Association of America estimates that in 2005, more than nine of every 10 DVDs sold in China were illegal copies. The U.S. Trade Representative said 80 percent of all counterfeit products seized at U.S. borders still come from China. Barack Obama and Joe Biden will work to ensure intellectual property is protected in foreign markets, and promote greater cooperation on international standards that allow our technologies to compete everywhere.

Protect American Intellectual Property at Home

Intellectual property is to the digital age what physical goods were to the industrial age. Barack Obama believes we need to update and reform our copyright and patent systems to promote civic discourse, innovation and investment while ensuring that intellectual property owners are fairly treated.

Reform the Patent System

A system that produces timely, high-quality patents is essential for global competitiveness in the 21st century. By improving predictability and clarity in our patent system, we will help foster an environment that encourages innovation. Giving the Patent and Trademark Office (PTO) the resources to improve patent quality and opening up the patent process to citizen review will reduce the uncertainty and wasteful litigation that is currently a significant drag on innovation. As president, Barack Obama will ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration.

Restore Scientific Integrity to the White House

Good policy in Washington depends on sound advice from the nation’s scientists and engineers and decision-making based on the needs of all Americans. Obama and Biden will restore the basic principle that government decisions should be based on the best-available, scientifically-valid evidence and not on the ideological predispositions of agency officials or political appointees.

Edit (10-29-08) Link to McCain’s full plan.

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John McCain has a broad and cohesive vision for the future of American innovation.

His policies will provide broad pools of capital, low taxes and incentives for research in America, a commitment to a skilled and educated workforce, and a dedication to opening markets around the globe. He’s committed to streamlining burdensome regulations and effectively protecting American intellectual property in the United States and around the globe.

John McCain Will Push For Greater Resources For The Patent Office.

The increased workload at the United States Patent and Trademark Office threatens to undermine the quality of our patent examinations. New resources to hire and train quality examiners are needed to ensure timely, predictable and effective patent review.

John McCain Will Pursue Protection Of Intellectual Property Around The Globe.

Intellectual property protection is increasingly an issue for U.S. innovators operating in the global economy. John McCain will seek international agreements and enforcement efforts that ensure fair rewards to intellectual property.

Provide Alternative Approaches To Resolving Patent Challenges.

For many important technologies, the only effective way to challenge a patent in the United States is through litigation, but litigation on patents is much too expensive. The lack of an affordable, reliable means to ensure that the Government only grants valid patents has led to overly broad, frivolous lawsuits designed to force innovative companies into big settlements.

John McCain Would Place A Priority On Science And Technology Experience.

As President, John McCain will be committed to bringing talented men and women of science into the federal government. He will strive to ensure that Administration appointees across the government have adequate experience and understanding of science, technology and innovation in order to better serve the American people.

John McCain Would Support The Federal Government As An Innovator.

John McCain as president would push for a renewed emphasis on innovation through Cooperative Research and Development Agreements (CRADAs) where industry and government enter into public/private projects, sharing in the cost, benefiting from solving real problems, accelerating the application of technology in the government. This way the government is a leader of the technology revolution and not simply a beneficiary.

John McCain Will Protect The Creative Industries From Piracy.

The entertainment industry is both a vital sector of the domestic economy and among the largest U.S. exporters. While the Internet has provided tremendous opportunity for the creators of copyrighted works, including music and movies, to distribute their works around the world at low cost, it has also given rise to a global epidemic of piracy. John McCain supports efforts to crack down on piracy, both on the Internet and off.

Image via Wikipedia

Take a look at your employment agreements, covenants not to compete, or non-disclosure agreements. Especially if you work in the tech sector, you can be sure that one, if not all, of these documents (which are typically signed as a condition of employment) include some sort of assignment of ownership of the invention. These assignments are usually of the form that say that anything and everything that the employee invents while employed at the company belongs to the company. Pretty straight forward, right? Maybe…

What do you do when you invent something and your employer thinks it’s theirs? What do you do when your employee invents something and they think it’s theirs?

Let’s say that the employee comes up with an invention during work hours, using company resources, in a field that the company does business in? I think that few would argue that the company has some rights to the invention.

Well, what about something that the employee invents at home on his personal time? What if it is related to the company’s business? What if it is not? Now, the topic gets a little murky. (This is where I’d say, “Please consult an attorney.” – but let’s discuss anyway!)

There is a case that was just decided this past February in the U. S. Court of Appeals for the Federal Circuit. From the opinion:

The ultimate question here is whether the interest of Dr. David Barstow (“Barstow”) in these patents was previously assigned to his former employer, Schlumberger Technology Corporation (“Schlumberger”). Barstow, a computer scientist, worked for Schlumberger from 1980 until 1994. At the start of his employment, Barstow entered into an employment agreement[...]

The bottom line of the ruling was that the CAFC didn’t actually decide who owns the patent… but it didn’t just let the company walk away with it either. Instead they remanded the case back down to the distric court for further discovery.

Because we hold that further jurisdictional discovery was warranted, we do not reach the issue of whether the district court correctly held on the previous record that the patents in suit fell within the scope of Barstow’s employment agreement with Schlumberger.

Whichever way this turns out, one thing is certain: No matter what side you are on… cover your assets!

Well, Creative Labs doesn’t think so. Apparently one of the forum posters got so fed up with the CL products not working that he wrote his own drivers… and now the products work great! Many other users downloaded the drivers and got their Creative Labs products to work. So what does Creative Labs do? Well, they issue a cease and desist!

Ouch! Wrong move.

Yes. The drivers in question are most certainly some sort of an infringement on Creative Labs’ IP. And, yes, Creative labs has every right to enforce the protection of that IP. But was it a good business decision? Probably not. Outrage on the forums is almost unanimously against Creative Labs’ tone and angle of attack. Many denounced the decision and some store owners claimed to pull the CL products from their stores.

What would I have done, if I was in Creative’s shoes? I would have offered that guy a job!

The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

Arguably, the most recent path of “innovation” has been to take available technologies, combine them in a novel way, and produce something new and useful. Remember the commercial from the 1970’s? Chocolate? Peanut Butter? Chocolate + Peanut Butter! Many patent applications rely on the combination of two or more different subject matter to create something new as the basis for their claims. Times may be changing, however, with a recent opinion from the Supreme Court. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR v. Teleflex, 127 S. Ct. 1727, 1739 (2007). This narrowing of the definition of obviousness will certainly lead to a lot more PTO rejections and will probably open up a lot of existing patents to challenges on obviousness. In fact, the Court of Appeals for the Federal Circuit (CAFC) has just appled the obviousness definition from KSR to overturn a patent that, upon de novo review, the court found to be an obvious combination of two familiar elements. Agrizap v. Woodstream Corp (Fed. Cir. 2008). Agrizap lost the obviousness claim because it combined one of its own commercial products with a switch commonly found in the cattle prod industry. The CAFC held that this was akin to 1+1=2 and, therefore, obvious.

What, then, is an inventor/company to do? How will the KSR decision affect future patent applications? I think that we’ll have to keep a watchful eye on this one.

No longer just a “blog”… we’re now a Blawg!

Defining IP
The World Intellectual Property Organization defines Intellectual Property as “creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.”

“creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce”

The most important part of that definition is the word “creations”. Until the invention, literary or artistic work, or symbol, name, image, or design takes some form outside of the creator’s mind it is intangible and, therefore, immaterial. When it is “created” it becomes “property” and may now be promoted and protected. It is the promotion and protection of these creations of the mind that most people associate with the term “Intellectual Property”.

Constitutional Power
The U.S. Constitution specifically enumerates, as a power given to the Legislative Branch, the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”. U.S. Const. Art. I, s8, cl8. The Legislature, by enacting various statutes pursuant to this power, created two Federal agencies that deal with Intellectual Property: the United States Copyright Office and the United States Patent and Trademark Office .

In the creation of these two distinct agencies, the Legislature seems to have drawn the distiction from the Constitution itself: “authors” and “inventors” – “writings” and “discoveries”. While technology has surpassed the original understanding of the framers of the Constitution, the intent is certainly evident. The distiction between something that is the fruit of intellectual creativity and that which is new and useful is being blurred by today’s technology (does software fall under the protections of copyright or patent?), but nonetheless, the two agencies stand today.

Defining Ownership
A major distiction between works that fall under copyright and those that fall under patent, or trademark is when ownership is recognized. For copyright, the creator of the work is said to have the rights to the work at the moment of creation. Works subject to patent and trademark protection, however, must be reviewed and accepted by the USPTO to be granted protections.

In the legal world, then, Intellectual Property discussions typically revolve around issues of Patent, Trademark, or Copyright. In one way or another, whatever you create should be considered property that has sprung forth from your intellect. Now, whether that Intellectual Property has value or is eligible for legal protections… that’s another story. (and, yes… that story is also eligible for protections under copyright)