Intellectual Property

Expert Analysis

• 5 Traits Tech Startups Should Look For In Their First GC

  

  As up-and-coming technology companies begin to scale their businesses, it is critically important for CEOs to find the right general counsel to manage the company's legal affairs. Alon Rotem of Rocket Lawyer Inc. outlines five key traits to keep in mind when considering GC candidates.

• A Quick Guide To Patent Damages Discovery

  

  In nearly every patent damages analysis, a standard set of documents that most businesses routinely maintain in the ordinary course of business can provide valuable information. Kevin Neels and Pallavi Seth of The Brattle Group Inc. and Jeffrey Metzcar of Thompson Hine LLP share the eight discovery items that appear on their standard “wish list.”

• Tips For Avoiding Olympic Committee Enforcement Letters

  

  As press for the Olympics heats up, companies may find themselves targets of unwanted publicity from the Olympic Committee. There are several ways to decrease your company's chances of receiving an intellectual property-related enforcement letter, says Chanel Lattimer of Cozen O’Connor.

• Pre-AIA And Post-AIA Issues Presented By The On-Sale Bar

  

  The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The America Invents Act, which altered the language in the statutes that apply to the on-sale bar, has made it difficult to determine what actions might constitute a “sale” or an “offer for sale” under current law, say Joseph Herndon and James Korenchan of McDonnell Boehnen Hulbert & Berghoff LLP.

• PTAB Is Inconsistent On Qualifications For CBM Review

  

  A comparison of several recent decisions indicates that conflicting approaches exist within the Patent Trial and Appeal Board for assessing a patent’s eligibility for covered business method review and for what is to be considered in making this determination, say Brian Mudge and Andrew Kasnevich of Kenyon & Kenyon LLP.

• Writing Arbitration Clauses To Get The Arbitration You Want

  

  Agreeing to arbitration clauses can be complicated because you may risk locking in a factually incorrect judgment. Merril Hirsh and Nicholas Schuchert of Troutman Sanders LLP explain the mechanics of the Federal Arbitration Act and how to ensure you find the right arbitration laws for your case.

• What Courts Are Saying About Software Patents Post-Enfish

  

  In May, the Federal Circuit gave software patent owners a ray of hope with Enfish v. Microsoft. Twenty-seven district court and Federal Circuit decisions have cited Enfish already, but all but seven decisions found ineligibility under both steps of the Alice inquiry. We reviewed these cases and found several themes, say attorneys with Wiggin and Dana LLP.

• 9th Circ. And German High Court Weigh In On Music Sampling

  

  Setting up a potential U.S. Supreme Court battle, the Ninth Circuit recently sided with Madonna in emphatically rejecting the Sixth Circuit’s rule that all unlicensed sampling constitutes copyright infringement. Just days earlier, Germany’s highest court went further by expressly protecting the artistic freedom of samplers and rejecting the requirement — which the Ninth Circuit embraced — that the sample not be recognizable as comi... (continued)

• OPINION: DOJ Got It Right On ASCAP, BMI Consent Decrees

  

  The ASCAP and BMI consent decrees are a good deal for music creators, owners and users. The changes proposed by the performing rights organizations and music publishers were unnecessary at best, and at worst would cause significant harm to the market, says David Balto, a former policy director at the Federal Trade Commission.

• Thoughts On Patent Damages Landscape Post-Halo

  

  After the U.S. Supreme Court's Halo decision, patent litigation has seemingly reached an inflection point. At the center of this is the relaxing of the test to determine willfulness and whether to award enhanced damages, and the dismissal of certain defenses activated to avoid the financial penalty associated with willful infringement, say Gauri Prakash-Canjels, Matthew Harrison and Alex Mann of Brewer Attorneys and Counselors.