In This Section
Innovate is a special compendium of articles written by and for AIPLA members. Designed as an online publication, INNOVATE features magazine-like articles of 500-1,500 words in length on a wide variety of topics in IP law today.
Any current AIPLA member in good standing may submit an article for inclusion in INNOVATE throughout the year. IP law students, in particular, are strongly encouraged to submit articles for publication.
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Global Protection For Cannabis Trademarks: Real Or Smoke And Mirrors?
Written by Clark W. Lackert on July 22, 2019With the meteoric growth of the cannabis (hemp and marijuana) businesses, much has been written about the divergent treatment of trademarks for these products, as well as parallel routes of protection, in the United States. However, hemp products incorporating cannabidiol (CBD), which is not psychoactive, are gaining wider acceptance more quickly than marijuana products incorporating tetrahydrocannabinol (THC), which is psychoactive.
Taking On Amazon: Unauthorized Dealers of "Genuine" Products
Written by Robert W. Payne on July 22, 2019The online retail marketplace bedevils major brand owners. It provides a vast, new market channel; it destroys brand owners’ exclusive channels. Amazon.com is not only a major force in the former but also the prime mover in the second. Take, for example, Versace’s “Bright Crystal” eau d’toilette. As shown in the accompanying pictures, multiple sellers are linked to the product page on Amazon, offering the same, new product, often at reduced prices which may compromise Versace’s authorized dealer network’s profitability and stability.
AIA Supplemental Examination Nuts & Bolts: Get it in your toolbox and don’t leave home without it!
Written by Adriana L. Burgy; Amanda K. Murphy, Ph.D.; Sneha Nyshadham, Stacy Lewis, Edited by Thomas L. Irving on July 22, 2019Effective September 16, 2012, the America Invents Act allows a patent owner to request Supplemental Examination of a patent by the U.S. Patent and Trademark Office (“USPTO”). Supplemental Examination (“SE”) gives patent owners a proactive tool to have the USPTO consider, reconsider, or correct information that the patent owner believes is relevant to the patent. 35 U.S.C. § 257(a). Such information may include issues raised in inequitable conduct or unclean hands challenges against the patent during litigation.
Controlling Costs of a Patent Portfolio: The Little Things Do Matter
Written by Peter Gordon on July 22, 2019In this article we will discuss the importance of managing patent-related costs and will provide recommendations on how to improve cost efficiency and provide some tips for "clean" cost management.
From Black & White to Technicolor to RGB/CMYK: Should the USPTO Implement RGB/CMYK Color Codes in the USPTO Application Process?
Written by Damian B. Hunt on July 22, 2019Any intellectual property attorney that deals with the United States Patent and Trademark Office (USPTO) will tell you that while they have modernized in many ways, they are partially operating out of the 1950’s. Employee’s aren’t going around in leather jackets and drinking phosphates but turn a corner and you will see a “black and white” world.
PCT National Phase Steps in the Russian-Speaking Region
Written by Slobodan Petošević and Olga Kudoyar on July 22, 2019Most companies with an international patent portfolio have to consider protecting their patents in the so-called “Russian-speaking” region, namely in Russia, Ukraine and other post-Soviet countries, these markets being of interest for nearly all businesses which operate globally. However, it is not rare for foreign applicants to be unfamiliar with basic prosecution steps in this region, due to a language barrier, a lack of clear information readily available online, or their local counsel’s incomplete advice. This is why we will try to elucidate a few general prosecution do’s and don’ts before the Ukrainian and Russian PTOs and before the Eurasian Patent Office (EAPO), as it provides an alternative way to obtain patent protection in Russia and in other post-Soviet countries, such as Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Turkmenistan.
Licensing Intellectual Property 101: What Every Entrepreneur and Business Owner Should Know
Written by Heather Bowen on July 22, 2019Licensing intellectual property increases a company’s ability to grow its business, launch new products and services, and expand into a wider range of geographic markets. Companies are willing to pay substantial sums of money to use another company’s intellectual property in their own products and services. Licensing can therefore serve as an additional source of revenue for many companies.
USPTO’s Work Sharing Efforts: Increasing Certainty of IP Rights While Reducing Stakeholder Costs
Written by Jessica Patterson on March 5, 2019The United States Patent and Trademark Office (USPTO) established the Office of International Patent Cooperation (OIPC) in 2014 to support and improve the international patent system. The office leads efforts to assist U.S. inventors and businesses in protecting their patent rights worldwide and supports the global innovation community.
Avoiding Confusion of Phosita
Written by Gordon K. Hill and A. John (Jack) Pate on March 5, 2019A major confusion persists in applying patent law, exhibited by judges, attorneys, and scholars alike. This confusion is based on the conflation of a totally hypothetical, legal construct with an actual human being.
So, When Can I Start Selling My Idea?
Written by Matthew Moldovanyi on March 5, 2019Did the Leahy-Smith America Invents Act (AIA) change when a sale becomes a sale? Prior to the AIA, under U.S. patent law a person was entitled to obtain a patent unless the invention was “on sale in this country, more than one year prior to the date of the application for patent in the United States.”
CHILE: Bill seeks to intervene in the commercialization of pharmaceuticals drugs.
Written by Francesca Rodriguez Spinelli on March 5, 2019The Chilean Congress is currently discussing the so-called Bill “Drugs II” (2015), which seeks to amend the Health Code (1967) and update the regulations concerning bioequivalence, while preventing the vertical integration between pharmacies and pharmaceutical laboratories.
The Patent Landscape for Autonomous Vehicles in Singapore
Written by Gladys Mirandah on March 5, 2019Self-driving or Autonomous Vehicles (“AV”) are set to be a reality, and no longer the stuff of science fiction. In Singapore, pilot trials are ongoing at the one-north district, a business park located in Queenstown, an area recognized for innovation, with the likes of Exploit Technologies (the commercialization arm of the government body Agency for Science, Technology and Research) and NUS Enterprise based there.
Pharmaceutical Patents In Russia
Written by Kirill Osipov on March 5, 2019The imposition of sanctions by Western countries has affected Russia’s economy and compelled Russian officials to support domestic manufactures to promote their products. Nevertheless, Intellectual Property rights are respected in modern Russia, which results in an incessant search for an optimal balance of interests.
Practical Tips For Protecting Your "Secret Sauce"
Written by David M. Fortunato on March 5, 2019How do you compete? Certainly, you compete by doing things better, faster and cheaper. You compete by offering goods/services that are superior to your competition. You compete through continuous improvement. Yet asking “How do you compete” begs another question – Are you using every tool, resource, etc. at your disposal to improve your competitive stance?
How much is that trademark worth online? A Model for Valuing a Trademark’s Ad Positional Right
Written by Robert M. DeWitty on March 5, 2019Many trademark owners are not aware that their trademarks (or “marks”) possess value as keyword search terms (or “keywords”). Unawareness by trademark owners juxtaposed against high online advertising revenues, valued at over US$30 billion in 2017, means many trademarks are being undervalued in the marketplace.
Programmatic Patent Searches Using Google’s BigQuery & Public Patent Data
Written by James H. Moeller on March 5, 2019Google’s combination of its BigQuery data warehouse service along with its public patent datasets is providing a new type of patent information resource that’s better positioned for the growing trend of integrating patent information together with data science programmatic analysis for more customized solutions by data-savvy practitioners.
The DNA of an NDA
Written by James L. Young & Z. Peter Sawicki on March 1, 2019Recently, the acronym NDA (non-disclosure agreement) has been tossed around in the news and in some highly publicized settlement agreements both political and otherwise. Such agreements to keep information secret in a business setting are common and may come in many forms.
Another Record Year for Seizures of Knock-Offs Entering the US, And How to Try to Stop More Knock-Offs
Written by Stephen G. Janoski on November 16, 2018The economic, health and safety impact of counterfeits is a persistent global problem.
Weaponizing Follow-On Petitions to Defeat IPR Estoppel
Written by Nicholas Marais on November 16, 2018Under §315(e), a petitioner is estopped from bringing a claim before the PTAB or district court that it “raised or reasonably could have raised” during a previous inter partes review. Now, under General Plastic, the PTAB may also deny a claim when the seven-factor test is met.
Joint Development and Background Intellectual Property
Written by James Arnold, Jr on November 16, 2018As innocuous as the term “Background IP” may sound, there are potential pitfalls for the drafter of Background IP provisions in Joint Development Agreements (JDAs).