ORACLE V. SAP SUIT HIGHLIGHTS RISKS OF IP INFRINGEMENTS FOR MERGERS & ACQUISITIONS

John Harris

On October 28, 2010, SAP admitted contributory liability in a court filing in a case brought against it in 2007 for copyright infringement arising from SAP’s acquisition of a company called TomorrowNow. The case highlights the IP risks that acquiring companies face from actions taken by their target companies and knowledge of such actions. The case also suggests the advisability of additional levels of IP due diligence before and during the M&A activities, and the possible need for fast action post-acquisition.

An article in InformationWeek discussing the recent

Read More

USPTO and European Patent Office Team Up on Classification System

Daniel Sineway

On October 22, 2010, the U.S. Patent & Trademark office (USPTO) and European Patent Office (EPO) announced that the two agencies plan to create a common patent classification system for classifying patents and other prior art according to common subject matter definitions.  The common classification scheme will be primarily based on the EPO’s standard, but will include best practices of both agencies.  The goal of the unified classification system is to help the two agencies begin to eliminate unnecessary duplication of effort in examining patent applications, thereby promoting more efficient

Read More

by Daniel Sineway

On October 5, 2010, the U.S. Patent & Trademark Office (USPTO) issued its 168,000th utility patent for 2010. This number has already eclipsed the total number of patents issued for 2009 (i.e., 167,350). The record for highest number of patent grants issued in any year was set in 2006 at 173,772 utility patents. At its current pace, the USPTO will break that record within the next couple of weeks.

It is not entirely clear what has caused this spike in patent issuances. Perhaps the USPTO’s recent efforts to improve the quality of examination, reduce patent backlog, hire additional examiners,

Read More

INNOVATION AND “THE ADJACENT POSSIBLE”:   OPEN INNOVATION MODELS VS. INTELLECTUAL PROPERTY

Book alert and essay by John R. Harris

September 29, 2010

Practice tip:  Prospective investors in technology ventures must carefully consider the intellectual property ramifications of companies with products developed in open, collaborative models vs. proprietary models that require strong intellectual property protections.

* * * * *

Steven Berlin Johnson’s forthcoming new book, Where Good Ideas Come From: The Natural History of Innovation, discusses the idea of the “adjacent possible.” Based on excerpts from the book, I think this means that many inventions and innovations (not the same thing) seem to occur incrementally

Read More

Highlight: The U.S. Patent & Trademark Office recently announced that it is seeking public comments on proposals to incentivize the creation and distribution of technologies that address humanitarian needs.  Under a proposed pilot program, patent holders who make their technologies available for humanitarian purposes would be eligible for a voucher entitling them to accelerated re-examination of their patent(s).  Some proposed examples of such “humanitarian technologies” include diagnostic medical tools, treatments for sanitation or water purification/cleansing, crops with higher yields or better nutritional value, etc.  Participants could qualify for the proposed pilot program by either making their patented technologies available to impoverished nations, or by making

Read More

Legal news sources report that a group of 25 senators wrote a letter to Sen. Reid on September 15, 2010, asking him to bring the bill (S. 515) to a vote quickly.  As we reported in the MMM IP NewsFlash last year (May 2009), patent reform has been unsuccessfully proposed about every two years for more than a decade.   Passage of reform in the past has been difficult due to disagreements between two very different stakeholders:  the pharmaceutical industry (with their strange bedfellows of small business and individual inventors) are pitted against the so-called “big IT” and other large companies, which

Read More

One of the major unanswered questions following the U.S. Supreme Court’s decision in Bilski v. Kappos is the extent to which lower courts will apply the rationale of the decision in assessing the patentability of computer software, Internet-enabled, and other computer-implemented processes. A recent court decision from California expressed a somewhat hard line view.

On June 28, 2010, the U.S. Supreme Court in its Bilski v. Kappos decision held that the “machine-or-transformation” test is a good test, but not the sole test, whether a process is considered eligible for a patent. In the machine-or-transformation test, if a process is tied to a

Read More

 Comment:  A recent article by Paul R. Michel, former Chief Judge of the U.S. Court of Appeals for the Federal Circuit, and Henry R. Nothhaft, a chief executive at a technology miniaturization firm, discusses how reduction of backlog at the U.S. Patent & Trademark Office (USPTO) could help create jobs and spur economic recovery.  An interesting quote from the article indicates that “[t]hree-fourths of executives at venture capital-backed startups say patents are vital to getting financing. . .”  The USPTO has initiated several new efforts in recent months to improve patent processing and reduce backlog, including hiring new patent examiners, unveiling

Read More