February 7th, 2011
Hosts: Ernest Grumbles, Joe Bennett-Paris
Guest: Prof. Bill McGeveran, Univ. of Minnesota Law School
Alas, fair use - a doctrine grounded in common sense, the Constitution and statute. It shows up in the world of trademark and copyright as the noble defense to infringement - I was justified in using "x" because (fill in blank - I used the term descriptively; I used the term to analyze the brand; I used the song bit as a parody...). But can you afford the defense? Setting aside that troublesome question, let's look at the doctrine itself. Does it provide a clear, brightline rule to when you may and may not use another's trademarks or copyrighted materials? The answer is... sometimes. In reality, content and brand owners tolerate a lot of use, fair and otherwise, simply because it's not worth chasing down every over-the-line user. That's their decision to make. But of the would-be fair user, how can you make common sense decisions on when to go forward on a fair use? That's the question for our experts.
In this part 1 on Fair Use, we talk to Professor Bill McGeveran of the University of Minnesota. McGeveran (aka McG - well, not that McG) is a former trademark litigator from Foley Hoag who now teaches and writes on trademark law. We dig into the source of trademark fair use, its various species and some sensible ways to avoid conflicts on fair use issues. Next up: copyright fair use.
July 23rd, 2010
Hosts: Ernest Grumbles, Joe Bennett-Paris
Guest: Prof. Tom Cotter, Briggs & Morgan Professor of Law at the University of Minnesota
In an earlier podcast, we interviewed Profs. Tom Cotter (U of MN) and Carl Moy (William Mitchell) on the Federal Circuit's landmark Bilski decision. On June 28, 2010, the U.S. Supreme Court chimed in on Bilski and gave us new interview fodder (thanks to Prof. Cotter for the return visit). In re Bilski related to the patentability of business methods (steps in accomplishing a business task) and has been a lightning rod in the intellectual property world (and elsewhere) during its long path to conclusion. These business method patents, typically directed to financial, Internet commerce, data analysis and business processes, are often written such that the particular machine or system used to perform the method is irrelevant. Bilski himself had tried to get a patent on various methods of managing hedge fund risk.
In one view, the patent system is simply evolving to protect modern methods of technology, which may be platform neutral. Think of the iPod, which can replace several other physical hardware tools. In another view, such methods may not seem to require the perspiration of genius of physical hardware and seem to some to be too easy to create and protect. Thus the questions posed to the Supreme Court: (a) do patentable methods require use of a particular machine or the transformation of physical matter; and (b) are business methods outside the bounds of patentability; and (c) what of Bilski’s methods of managing hedge funds.
If you’re Bilski, you now have certainty. The Supreme Court unanimously rejected his claims as being “abstract” and unpatentable math formulas. As to the other questions, we only know what’s not true. Per the Court, methods or processes, to be patentable, don’t necessarily require the use of a particular machine or the transformation of matter. That is simply one of the ways of evaluating whether a claimed method is too abstract to be protected. Finally, the Court ruled that business methods are not per se unpatentable. However, the converse is not true either – business methods are not always patentable. Rather, each inventor’s claims will have to be evaluated individually as to whether they are too abstract.
On this last point, if the Court had offered a definitive rule of unpatentability, thousands of patents across the country would have died a silent death. Depending on your perspective, this was a good or bad thing. For example, in the software community, there are many companies with valuable patent portfolios such as IBM who breathed a sigh of relief at the Court’s ruling. And there are others in that community who believe there should be no patents on software inventions who were equally dismayed.
For the inventor community as a whole, the upshot of Bilski is that there is no strict test for determining patentability of methods and processes. Flexibility and creativity in patent protection still reign. But the lack of a bright-line test means that more cases will fall within the zone of uncertainty, which may increase the cost of patent protection and litigation. While the Supreme Court may have been properly cautious in not issuing a ruling that stifled patent protection for future technologies, it did little to change the current realities faced by inventors and industry. They will keep working and keep inventing, and the Patent Office will continue to sift the wheat from the chaff.
Listen while we try to sort it all out. Comments and diatribes welcome.
(Adapted from post on StarTribune.com as "Bilski, Business Methods and the Uncertainty Principle)
April 30th, 2010
Guest: Daniel Eisenberg, Beveridge & Diamond, PC
How many patents and file histories have you printed out this week? Did you just make a trip to meet with a client that you could have easily handled with a videoconference? How long did you sit in traffic today on your way to work? How many boxes of papers did you take to your last deposition? Maybe it’s time for your IP practice to Go Green.
Our special guest, Daniel Eisenberg can help you do that. An attorney in the Washington, DC office of Beveridge & Diamond, P.C., Eisenberg practices in the area of environmental law and litigation. He also heads up the American Bar Association (ABA)-Environmental Protection Agency (EPA) Law Office Climate Challenge. The ABA-EPA Law Office Climate Challenge is a program that encourages law offices to take simple, practical steps to become better environmental and energy stewards. Your law office (including law firms, government offices, citizens groups, courts, law schools and other law-related entities) can participate by implementing best practices for office paper management or by joining at least one of three EPA partnership (voluntary) programs that encourage better office paper management, the use of renewable energy, and good energy management. The ABA Law Practice Management Section (LPM) is co-sponsoring this initiative.
Law firms, and especially tech-oriented IP firms, need to be leaders on these issues. Listen and learn from Daniel Eisenberg about the Climate Challenge, the Green Power Partnership, ENERGY STAR ratings and how going GREEN can benefit your law marketing efforts and client relations. So take the challenge and Go Green!
March 5th, 2010
Guest: Bjorn Andersson, Strom & Gullikson
Patents, or patent procedures, need to be reformed (like a bad child?). At least some people think so. The U.S. Congress is debating various proposals that would, among other things, modify reasonable royalty and willful infringement analyses and let the USPTO set its own fees. Meanwhile USPTO Director David Kappos is working mightily to unblock the patent backlog. So what's going in Europe? The European Patent Office (EPO) is working to "Raise the Bar" for patent quality and prosecution. Specifically, the EPO has been acting to limit the number of patent claims prosecuted and divisional applications filed. These seem procedural, but if process ultimately prevents you from getting full scope of patent protection, that's substantive.
We were fortunate to have Bjorn Andersson, Senior Patent Attorney of Swedish patent firm Strom & Gullikson in our offices for a brief chat. Bjorn, with S&G CEO Lars Schonbeck in tow, helped us dig in on the EPO reform efforts and figure out the big changes - some of which are going into effect next month. Along for the ride was fellow M&G lawyer, Dennis Daley with practical thoughts on impact on US patent filers. Give a listen and see whether the EPO can win the race for patent reform.