Publications

Section Newsletter Articles on Intellectual Property

Intellectual improbabilities™ By Daniel Kegan Intellectual Property, June 2019 An eclectic gathering of recent intellectual property developments.
The Music Modernization Act, the Mechanical Licensing Collective, and the Open Music Initiative: The need for collaboration By Steven L. Baron and Adam Farag Intellectual Property, June 2019 With the advent of digital service providers like Spotify and Apple Music, the laws governing mechanical licensing were in need of a significant overhaul.
Quick Takes for Your Practice: Intellectual property basics—patents By Kenneth Matuszewich Intellectual Property, June 2019 Attorney Kenneth Matuszewski discusses the basics of utility and design patents, and how the two differ.
Intellectual improbabilities™ By Daniel Kegan Intellectual Property, April 2019 An eclectic gathering of recent intellectual property developments.
Privatization problems at public colleges and universities By Monica Owens Intellectual Property, April 2019 American Association of University Professors chapters need expert legal support in their work to defend faculty IP rights.
Intellectual Improbabilities™ By Daniel Kegan Intellectual Property, January 2019 An eclectic gathering of recent intellectual property developments.
Data transparency label Intellectual Property, November 2018 Marketing and media trade groups have issued a beta version of a proposed new data transparency label modeled after the nutritional label.
Five steps you can take starting today to get ready for new noncompete legislation (Massachusetts) By Sonia M. Steele Intellectual Property, November 2018 New restrictions and requirements for noncompete agreements in Massachusetts draw no distinction between employees and independent contractors.
Intellectual improbabilities™ By Daniel Kegan Intellectual Property, November 2018 An eclectic gathering of recent intellectual property developments.
Locking PDPA’s floodgates: My Digital Lock Pte. Ltd. By Jonathan Liang Intellectual Property, November 2018 An overview of a recent case that clarified the application of the Personal Data Protection Act.
New Massachusetts trade secret laws effective October 1, 2018 By Andrew T. O’Connor Intellectual Property, November 2018 Massachusetts recently enacted the Massachusetts Trade Secrets Act, and retailers should take this opportunity to revisit their trade secret protocols as well as their employee handbooks, and future employment agreements.
USPTO gives patent examiners new subject matter eligibility guidelines following Vanda By Michael J. Weil Intellectual Property, November 2018 The U.S. Patent and Trademark Office issued new guidelines to patent examiners in June 2018 following the ruling in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals.
Canada looks to foster innovation, business growth with new IP strategy By Anthony Turco International and Immigration Law, July 2018 The Canadian government recently unveiled its long-awaited intellectual property strategy, which is designed to increase intellectual property awareness and foster an ecosystem that supports business growth, innovation, and competition.
Canada looks to foster innovation, business growth with new IP strategy By Anthony Turco Intellectual Property, June 2018 The Canadian government recently unveiled its long-awaited intellectual property strategy, which is designed to increase intellectual property awareness and foster an ecosystem that supports business growth, innovation, and competition.
Hold the Mayo: Vanda ruling reviews patent subject matter eligibility By Michael J. Weil Intellectual Property, June 2018 The recent Vanda v. West-Ward decision cut a distinct path through the controversial Mayo and Alice rules for evaluating subject matter eligibility of patents.  
Intellectual improbabilities™ By Daniel A. Kegan Intellectual Property, June 2018 An eclectic gathering of recent intellectual property developments.
Seventh Circuit: Personal jurisdiction over a defendant cannot be established merely by an allegation of deliberate infringement of a trademark owned by a forum entity By Steven L. Baron and Dale R. Kurth Intellectual Property, June 2018 The U.S. Court of Appeals for the Seventh Circuit recently rendered a decision that reminds the holders of trademark rights that, when suing for infringement, the need to establish personal jurisdiction over the allegedly infringing defendant must not be overlooked.
Intellectual Improbabilities By Daniel Kegan Intellectual Property, March 2018 An eclectic gathering of recent intellectual property developments.
“Pomodoro” is a trademark: Consumer perception prevails over dictionary definition By Filipe Fonteles Cabral Intellectual Property, March 2018 Trademark registration for POMODORO (Tomato in English) for tomatoes is upheld in Brazil, with the appellate court explaining since the public perceives the mark as indicating source and not meaning tomato—only 1% of the Brazilian population know the meaning of the Italian word Pomodoro—this foreign language generic term developed court-recognized secondary meaning.
Ready, Illinois? Cracking the code on eSports By Kenneth Matuszewski Intellectual Property, March 2018 Multiplayer video games played competitively for spectators, eSports, are increasingly popular, increasing both acceptance and legal challenges. While Chicago has a professional eSports team, most eSports developments in Illinois occur in universities and high schools.
Stop the music? Spotify sued for $1.6 billion By Michael J. Weil Intellectual Property, March 2018 Wixen Music sued music streamer Spotify for not obtaining required composition and mechanical licenses, and not publishing the required Notices of Intent. The Congressionally pending Music Modernization Acts, H.R. 4706, S. 2334, may reduce such suits, eliminating some legal remedies for music publishing copyright infringement suits, while creating a blanket license and new database, and changing current royalty rate setting practices.
Brief summary of precedential patent case law for October 2017 (13 Sept-11 Oct) By Rick Neifeld Intellectual Property, November 2017 Relevant points of law briefly summarized from patent cases between September 13 and October 11, 2017.
Helsinn v. Teva: The America Invents Act on “sale” By Michael J. Weil and Andrew C. Warnecke Intellectual Property, November 2017 In 2017, the Court of Appeals for the Federal Circuit (“CAFC”) rendered an impactful decision regarding what constitutes the sale of an invention under the America Invents Act (“AIA”). The decision, Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356 (Fed. Cir. 2017), is already shaping subsequent patent law decisions in the district courts and altering the U.S. Patent Office’s (“PTO”) evaluation of AIA patents.
Intellectual Improbabilities By Daniel Kegan Intellectual Property, November 2017 An eclectic gathering of recent intellectual property developments.
The new rule for privilege in PTAB trials By Rick Neifeld Intellectual Property, November 2017 The Patent Trial and Appeal Board issued a new rule for Privilege for Patent Practitioners, effective December 12, 2017. Here’s the rule and a synthesis of PTO comments, and changes from the proposed rule.
Pirate Joe sails away By Margo Lynn Hablutzel Intellectual Property, November 2017 Pirate Joe’s buys lots of goods at retail from Trader Joe’s in Bellingham, WA and resells them at Pirate Joe's Vancouver, Canada store. Trader Joe’s stores are located only in the USA. Trader Joe’s Lanham Act complaint claimed reputation, health, and safety concerns because perishable items were subject to varying temperatures, creating a health risk. Ninth Circuit, following precedent that the Lanham Act’s “use in commerce” requirement is separate from the jurisdictional grant, as they appear in different sections of the Act, and thus the federal courts unquestionably have subject matter jurisdiction over Lanham Act cases, decided only “some effect” on USA commerce was required for jurisdiction, and remanded to address the case merits. Then the parties settled.
Mohawk sovereign immunity tactic vs. inter party review By Daniel Kegan Intellectual Property, September 2017 Can an asset transfer to a sovereign, here an Native American Indian tribe, in the midst of an Inter Party Review (IPR) deprive the PTO of jurisdiction? Allergan Plc transfer to the Saint Regis Mohawk Tribe for billion-dollar annual sales drug Restasis.
A ruse by any other name: Normalizing trademark infringement by domain name sabotage By Phillip R. Van Ness Intellectual Property, September 2017 Increasingly, Internet domain names orchestrate trademark collision and confusion. Law firms O’Keefe Lyons & Hynes LLC v. O’Keefe Law Firm Ltd. Discovered the disharmony. The elaborate dispute resolution process adopted by ICANN might sometimes be a sham, losing trademarks their vitality.
Sandoz v. Amgen: The Supreme Court makes its first decision on biosimilars By Michael J. Weil and Steven L. Baron Intellectual Property, September 2017 In its first major biosimilar case, Sandoz v. Amgen, the US Supreme Court held that under federal law the BPCIA's provision requiring applicant (Sandoz) to provide sponsor (Amgen) with its application and manufacturing information could not be enforced by injunction; that applicant’s failure to provide the information was a question of state law; and that an applicant (Sandoz) is not required to wait until the FDA licenses its biosimilar to provide notice of commercial marketing to the sponsor (Amgen). The decision eliminates at least 180 days of exclusivity from brand name biologics.
Simple IP evaluations By Daniel Kegan Intellectual Property, September 2017 Perspectives on evaluating intellectual property, prompted by Internet elist queries: Breach of non-compete damages, Internet domain and associated trademarks, and Seeking accountant with IP experience.

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