MIP Search | Managing Intellectual Property

Utynam's Heirs

A monthly column devoted to IP curiosities and controversies, named in honour of John of Utynam

Managing IP Correspondent, September 26 2014

US patents: buySafe patent called out under Section 101

A two-judge panel of the Federal Circuit recently held that buySAFE's patent directed to guaranteeing payment in an online transaction failed meet the post-Alice patent eligibility requirements of 35 USC § 101. In a short and direct opinion, the Federal Circuit found that the claims encompassed the "ancient" idea of ensuring transaction performance, and that the invocation of a generic computer failed to supply the requisite inventive concept.

Managing IP Correspondent, September 26 2014

US trade marks: Third Circuit rules on awarding attorneys’ fees

In April, in Octane Fitness, LLC v Icon Health & Fitness, Inc, the US Supreme Court issued a decision that established the parameters for when a district court may award attorneys' fees to a prevailing party under Section 285 of the Patent Act. In September, in Fair Wind Sailing, Inc v H Dempster et al, the US Court of Appeals for the Third Circuit became the first circuit court to apply the Octane Fitness holding regarding fee shifting in a patent case to a case involving claims under the Lanham Act.

Managing IP Correspondent, September 26 2014

Mexico: Strengthening the PPH

Since March 1 2011, when the Mexican Institute of the Industrial Property (IMPI) established with the United States Patent and Trademark Office (USPTO) a pilot programme for the Patent Prosecution Highway, the trend has continued with different offices.

Managing IP Correspondent, September 26 2014

Sirius, ukulele feud, YODA bill, Monster Energy, most-cited IP articles, Ecuador’s licences – the week in IP

The Turtles winning royalties in a case against Sirius, a trade mark dispute between two ukulele bands, the YODA bill’s introduction, Monster Energy being sued again for using Beastie Boys songs, a list of the most-cited IP articles, and Ecuador granting nine compulsory patent licences since 2009 were among the intellectual property stories hitting the headlines this week

September 25 2014

USPTO and KIPO expand cooperative patent classification system

The USPTO and the Korean Intellectual Property Office (KIPO) have announced an expansion of cooperation in classification activities between the two offices, with the USPTO urging IP5 offices follow KIPO’s lead and increase IP protection

September 25 2014

The Unitary Patent is a “wonderful tool” - Jean-Jacques Canonici, P&G

Jean-Jacques Canonici of Procter & Gamble urged patent owners to try the new Unitary Patent system, in an interview with Managing IP

September 25 2014

Strategies for speedy ends to patent litigation

It is often in the best interest of those involved in IP litigation proceedings to resolve the dispute early, argued several participants in a web seminar entitled Successful Early Resolution Strategies for IP Disputes, held by Managing IP in association with the law firm of McAndrews Held & Malloy

Managing IP Correspondent, September 25 2014

MARQUES Conference Day 2 report

At the end of the second full day of the annual MARQUES conference in Copenhagen, here are five more snippets

September 24 2014

PTAB proceedings – the most stay-friendly district courts

Trial schedules being trimmed, institution rates falling and judges not playing ball as expected over granting motions to stay are some of the lessons gleaned from a new report by Goodwin Procter on the first two years of PTAB proceedings

September 24 2014

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