Publications

Mar 20, 2019

By Stephen P. Scuderi On January 7, the USPTO published its new “2019 Revised Patent Subject Matter Eligibility Guidance” (the 2019 PEG), which became “effective” on that same day. However, the 2019 PEG “applies to all applications, and to all patents resulting from applications, filed before, on or after January 7, 2019.” Therefore, the 2019…

Feb 21, 2019

By Annette I. Kahler Signed into law on October 11, 2018, the Orrin G. Hatch-Bob Goodlatte Music Modernization Act (MMA) reforms U.S. Copyright law in significant ways that will affect the licensing of digital music. Pursuant to pre-MMA copyright law, “mechanical” licenses for reproduction and distribution of musical works in phonorecords were obtained by licensees…

Jan 14, 2019

By Philip E. Hansen The start of a new year provides the opportunity for a highly subjective retrospective on 35 years of patent law — where we’ve been and where we might be going. Supreme Court Justice Abe Fortas (1965-1969) was reputed to have said that a typical judge’s reaction to a patent is like…

Jun 12, 2018

By Wayne F. Reinke About five months have gone by since my last update on the state of patentable subject matter after the 2014 Alice Supreme Court decision and its progeny. A number of important developments have taken place during this time, mostly positive in the sense of rebalancing the outcomes Alice patentable subject matter…

Apr 30, 2018

April 30, 2018 – David P. Miranda, Esq. A company is about to introduce an innovative new smartphone and is engaged in negotiations to license a software platform for the new mobile devices. But the licensing negotiations fail, and the smartphone is about to go to market. If you’re Google, you include Oracle’s Java software…

Apr 23, 2018

By Wayne F. Reinke People around the world enjoy craft beers. IP attorneys do too, so much so that my firm, Heslin Rothenberg Farley & Mesiti (HRFM), sponsored a recent Brewers Association Craft Brewers Conference. You can’t help but admire the enthusiasm and dedication of craft brewers. The industry has been growing at a rapid…

Apr 19, 2018

By Wayne F. Reinke I have come across several smaller gaming companies that say they have never explored Intellectual Property (IP) protection. Typically, I respond with some examples of things they could be protecting. The reactions run the gamut from panic to interest to a glassy-eyed stare. This article will address the various types of…

Apr 12, 2018

By Stephen P. Scuderi Provisional patent applications (PPAs) were authorized in the United States in 1995. PPAs have a one year life span whereupon they will expire if they are not converted into a non-provisional patent application (a regular application). For a variety of reasons, PPAs are often used as an alternative to initially filing…

Feb 16, 2018

By Stephen P. Scuderi This paper will present an overview of some of the issues pertaining to the disposition of patent rights to inventions made under a government R&D contract. As will be seen, without careful adherence to the statutes and regulations governing such patent rights, it is possible for a contractor to unintentionally lose…

Feb 13, 2018

By Victor A. Cardona The Good- -Granted patents provide a monopoly for the claimed invention. A patent holder can stop another from making, selling, using or importing a product, method, widget, composition of matter, etc. that meets every word of a patent claim. -A patent is a property right. Venture Capital firms look for potential…