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November 2011

Intellectual Property Newsletter

Welcome to Gordon & Rees's Intellectual Property Newsletter. On a periodic basis we will provide important information about the latest legal developments in the ever-changing realm of intellectual property. 

TABLE OF CONTENTS

  1. Domain Name Protection Strategy

  2. The America Invents Act:  What Remains of Best Mode?

  3. Apple Awarded Second Patent Disclosing iPhone's "Slide-to-Unlock" Feature

  4. Recent Successes

  5. About Gordon & Rees's Intellectual Property Practice

I.  Domain Name Protection Strategy

Neil Martin

Neil Martin

For many companies, making it easy for customers to find them, their products and services on the Web is increasingly important to business success.  Many client inquiries follow the same pattern.  The typical inquiry and responses may save clients from following an unproductive strategy.   

To read the complete article, click here.

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II.   The American Invents Act:  What Remains of Best Mode?

Bron D'Angelo

Bron D'Angelo

On September 16, 2011 the Leahy-Smith America Invents Act ("AIA") was signed into law by President Obama, and lauded as a way to increase American jobs.  The AIA presents the largest change to United States patent law since the Patent Act of 1952.  For most changes, the effect on patent prosecution and litigation appear on their face to be straightforward.  Much of the discussion surrounding the changes created by the AIA have revolved around the abolishment of the first-to-invent system in favor of a system resembling the first-to-file system.  However, elimination of the failure to disclose the best mode as a means for challenging patent validity may have a greater immediate effect on patent law. 

To read the complete article, click here.

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III. Apple Awarded Second Patent Disclosing iPhone's "Slide-to-Unlock" Feature

 
 

Robert Uriarte

On October 25, 2011, the United States Patent and Trademark office granted Apple, Inc. a patent for the familiar "slide to unlock" feature emboided in its various hand-held touch-screen devices.  United States patent no. 8,046,721 is the second patent disclosing the slide to unlock method Apple has obtained based on an application it filed in December 2005. 

To read the complete article, click here.

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IV. RECENT SUCCESSES

Secrets to Successful Patent Prosecution

Gordon & Rees IP attorneys have found that a good relationship with the Patent Examiner assigned to a client's application is important in getting prompt and fair treatment for a client's invention.  We recently obtained a patent for a client despite the fact that, late in the prosecution, Gordon & Rees discovered a relevant publication that had not been reported to the Examiner.  The Gordon & Rees attorney had previously interacted with the Examiner and quickly provided the changes he requested. 

It is important that an Examiner consider all of the relevant references (prior art).  A patent that issues with all of the relevant references considered is much more likely to be held valid in litigation, because the full force of the "presumption of validity" will still be in effect.

References should be reported on an Information Disclosure Statement as early as possible.  In this case, Gordon & Rees IP attorneys did not discover until very late in the process of the application that a relevant reference had a publication date prior to our client's date of invention, making it "prior art."   A Notice of Allowance had already been issued.  We called the Examiner and forewarned him of the new reference. The Examiner immediately agreed to consider the reference, issue a new "Reasons for Allowance," and a new Notice of Allowance.  This process protected the presumption of validity.  Thanks to the Examiner's responsiveness, there was very little delay in the issuance of the patent. 

 


On behalf of Firm client BIC, Richard Sybert and Benni Amato successfully beat back a motion for preliminary injunction sought by plaintiff competitior Marketquest in federal court in San Diego against BIC's use of the phrase ALL-IN-ONE, which the plaintiff had registered as a federal trademark.  Despite the fact that the registrations had achieved "incontestable" status, Gordon & Rees successfully argued that BIC's use was descriptive and therefore a "fair use."  The Court denied the motion on the papers without a hearing. 

To read the Court's decision, please click here. 


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V. ABOUT GORDON & REES'S INTELLECTUAL PROPERTY ATTORNEYS

The IP Group assists clients in identifying, securing, asserting and defending all aspects of IP rights at home and abroad. Our attorneys can also conduct IP audits and provide advice and counseling for strategies to maximize IP assets. In addition to the traditional IP components of patents, trademark and trade dress, and copyright, Gordon & Rees's Intellectual Property Group is expert in trade secrets, internet-related issues, rights of privacy, and issues of unfair competition and antitrust as well as regulatory compliance. Our attorneys are also highly experienced at negotiating and drafting development agreements, licenses, distribution, joint venture, strategic alliance, and vendor services agreements, and have extensive experience crafting and implementing cost-efficient enforcement programs to protect IP rights including seizures, injunctions, anti-counterfeiting and gray market enforcement. Click here to meet our lawyers.

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Intellectual Property


Intellectual Property