At-a-glance:
United States Patent and Trademark Office
PO Box 1450, Alexandria, VA 22313-1450
Tel: +1 800 786 9199 (in US or Canada), +1 571 272 1000
Email: usptoinfo@uspto.gov
Website: www.uspto.gov
United States Copyright Office
101 Independence...
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At-a-glance:
United States Patent and Trademark Office
PO Box 1450, Alexandria, VA 22313-1450
Tel: +1 800 786 9199 (in US or Canada), +1 571 272 1000
Email: usptoinfo@uspto.gov
Website: www.uspto.gov
United States Copyright Office
101 Independence Ave SE, Washington, DC 20559-6000
Tel: +1 202 707 3000
Website: www.copyright.gov
While the legal market seems poised for economic recovery, the US IP community is cautiously optimistic that it has made the necessary adjustments to sustain momentum. Lawyers reported seeing a more sophisticated clientele that, unlike in years past, demanded detailed strategies and billing arrangements before choosing representation. "I think buyers of legal services now not only want to know what it's going to cost, but they want some degree of control," said a partner. Portfolios warranted increased scrutiny, and the cases that made it to trial were likely hard-fought disputes with billions at stake. Observed one partner: "The cases that aren't settling are really going to be litigated to the end." The patent community also wondered how Judge Randall Rader, now the chief judge of the Court of Appeals for the Federal Circuit, will help to shape US patent law.
The highest profile IP cases are normally handled by the patent bar, and this year was no different. Controversy over the patentability of business methods, as in Bilski v Kappos, and the strength of the presumption of validity, as in Microsoft v i4i, has reached the nation's highest court. Labelled by one partner as a "snoozer", the Supreme Court decision in Bilski denied the patentability of the business method in question without making a definitive ruling in any direction. "I think the Supreme Court didn't go as far as some wanted it to go," the partner said.
Attorneys spoke of their frustration regarding what they perceived as an anti-patent sentiment adopted in recent years by the judicial and legislative branches, as well as the USPTO. It is now much harder, they lamented, to get and to uphold patents, as standards to prove validity and to obtain injunctions have been raised. "The sense of some clients and IP owners is that what they thought was patentable five years ago, they're not so sure about now," said a partner. "The pendulum is starting to swing back."
In the meantime, the ITC has become the preferred venue for many, particularly for the parties involved in the so-called smartphone wars. "They like the powerful remedies available at the ITC," said one attorney. The federal agency's speedy process and the availability of automatic injunctions have attracted the biggest brands in the telecommunications industry, backed by the world's finest firms.
Elsewhere in patents, companies in the electronic, wireless, and financial services sectors are still being targeted in infringement suits brought by non-practicing entities (NPEs). Referred to by many practitioners as "nuisance cases", these matters increasingly involve multiple defendants and are filed in typically plaintiff-friendly jurisdictions. To defray costs, more defendants have banded together to select a handful of firms, encouraging a new kind of competition among legal service providers. "Sophisticated defendants have come to the realisation that these cases are just about money, and often not that much money," said a partner. "They're becoming less significant than a few years ago."
In the same vein, the influx of false marking cases drew the ire of many practitioners. The Federal Circuit's decision in Forest Group, Inc v Bon Tool Co established a new standard for imposing fines for falsely marking products with patent numbers, supplanting the former "per occurrence" basis with a "per article" rule. Parties found liable for false marking can now be charged up to $500 per unmarked article, rather than per product line. "That's ridiculous," said a partner. "There are a fairly large number of opportunist plaintiffs who have brought hundreds of cases against companies on that claim because there are lots of patent numbers out there with numbers expired." While some expressed optimism that Congress would address the matter, one partner was sceptical: "It's going to sit there. There are more important things for them to do".
In trade mark and copyright disputes, courts likewise left it to Congress to resolve lingering questions involving the liability of ISPs when infringement occurs. "The online world is still the number one headache," said a partner. In Tiffany v eBay, the jeweller was unable to convince the US Second Circuit Court of Appeals to shift the burden of policing its marks to the online retailer. A New York district court came to the same conclusion in Viacom v YouTube, ruling that it was up to content owners to notify YouTube of specific infringement. "Because of the rapid changes in technology, the law lags somewhat behind what's going on in the marketplace," remarked one attorney.
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