More Firm News
Supreme Court Decides on Bilski
On June 28, 2010, the United States Supreme Court handed down a much anticipated decision relating to business method patents in the case of Bilski v. Kappos. The Court affirmed the decision of the Court of Appeals for the Federal Circuit, rejecting Bilski's claims as non-statutory.
The Bilski case involves a patent application with claims to a purely mental business method of hedging commodity prices. The application was initially rejected by the USPTO as being outside the scope of subject matter that can be protected by a patent, under the limits of patentable subject matter defined by the Patent Statute and prior Supreme Court cases. The Federal Circuit affirmed the USPTO’s rejection. The Supreme Court then took the case in order to review the legal test used by the Federal Circuit in deciding whether the claims in the Bilski application were directed to proper patentable subject matter, determine whether the test was the correct test, and if so, decide whether Bilski’s claims passed or failed that test.
While the Supreme Court was unanimous in rejecting Bilski's claims as failing to define patentable subject matter, the Justices split 5-4 on the path to that result. The majority of the Court found Bilski's claims were directed to an abstract idea and therefore ineligible for patent protection as a statuatory process. The Court stated that, while the machine-or-transformation test is a useful and important clue to patentability, it should not be the exclusive test. Four members of the Court, led by retiring Justice Stevens, would have excluded business method patents entirely from patent eligibility.
In the end, the decision in Bilski countinues the current state of uncertainty regarding the proper conditions under which abstract ideas can be legally patented. By resorting to the old adage that you can't patent abstract ideas, the Supreme Court resolved this case, but left very little guidance for future cases. For now, it means that existing and future patent claims that touch on abstract ideas and laws of nature will continue to be decided on a case-by-case basis.
If you have questions or concerns about the Bilski decision, contact Brad Pedersen.
USPTO Director David Kappos Meets With Minnesota IP Community
April 2010
Patterson Thuente, along with William Mitchell College of Law, was fortunate to host David Kappos, Undersecretary of Commerce for Intellectual Property and Director of the United States Patent & Trademark Office for an inventors luncheon and public lecture on April 6, 2010. Kappos shared his vision for the future of the USPTO to a crowd of more than 200. Earlier in the day, he solicited ideas from inventors and business leaders at an exclusive inventors luncheon hosted by Patterson Thuente.
View webcast of Kappos public address
Patterson Thuente Names New Partners
January 2010
Patterson Thuente named J. Paul Haun and Kyle T. Peterson partners effective January 1, 2010. Haun has been a patent attorney with the firm since 2002 and works with clients in the areas of healthcare, fluid components and processing systems. Peterson represents significant brand owners in the management of their global trademark portfolios and the selection, clearance and registration of new brands.
Patterson Thuente Welcomes New Associate Attorney
October 2009
Patterson Thuente welcomes patent attorney Justin Woo to the firm. Justin’s technical background is in chemistry and chemical engineering. As an associate at Patterson Thuente, he focuses on prosecuting patents in the areas of biotech, biochemistry and polymer chemistry, as well as in medical device, mechanical arts, and materials-related technologies.
USPTO Rescinds Controversial Patent Rules
October 2009
The saga of the United States Patent & Trademark Office’s controversial rule changes have come to a close. On October 8, 2009 the Patent Office announced that it is rescinding the proposed rule changes and will file a motion to dismiss and vacate the federal district court decision in the related lawsuit, Tafas v. Kappos. For more inforamation on the US Patent Reform movement, see our Patent Reform News section.
Super Lawyers Recognizes Patterson Attorneys
August 2009
Patterson Thuente is honored to announce that two of the firm’s attorneys were included in 2009 Minnesota Super Lawyers®. Super Lawyers' selection process is designed to identify attorneys who have attained a high degree of peer recognition and personal achievement. Only five percent of lawyers in Minnesota are recognized by Super Lawyers.
Facebook Change Could Cause Trademark Infringement
June 2009
On June 13th, social networking site Facebook began allowing users to create personalized URLs for their profile pages (facebook.com/yourname). In an effort to address trademark infringement issues, Facebook proactively restricted some well-known company and product names, and provided an online form for trademark owners to register their marks and have them blocked. Trademark owners had four days to register their marks with Facebook and could do so for free.
More recently, Facebook sent out communications to trademark owners who took advantage of the advance reservation process, inviting them to now sign up for usernames that include their registered trademark.
As of June 28, 2009 Facebook users with pages registered after May 31, 2009 and new page holders have been able to register usernames. However, Facebook states that it cannot guarantee the username request will be granted in the event that multiple users have claimed rights to the same mark.
If you are a trademark owner and have reserved your brand name, the username may be requested so that you can take advantage of the personalized URL. If you are not interested in requesting the username of a reserved brand name, you can still reserve the trade mark(s) and have it taken out of the pool of possible usernames. Facebook, however, notes that if a username is not requested for a reserved trademark, it may be possible for another entity to request that username in the future if they also claim rights. If reservation was missed, trademark owners can still object to a conflicting username by engaging Facebook's complaints process. The form to do so can be accessed here: Username Infrigement Form
Amy Salmela Rejoins Firm
March 2009
After a two year stint in-house at Infineon in Munich, Germany, former Patterson attorney, Amy Salmela has rejoined the firm. Amy's experience will assist her as she develops global IP strategies for the firm's clients. Her practice focuses on patent prosecution for clients int he semi-conductor, computer hardware, software and electronics industries. Learn more about Amy
Aaron Davis Named Partner
January 2009
Patterson Thuente has named Aaron W. Davis as partner. Davis is a member of the firm’s growing litigation department and also leads its arts and entertainment practice.
A skilled litigator with important trial successes, Davis is recognized among his peers for his skills in the courtroom. Davis’ practice focuses primarily on litigation of intellectual property disputes. He has assisted clients with disputes regarding patents, copyrights, trademarks, trade secrets, trade dress, entertainment contracts, rights of publicity, and other business torts.
Our 2009 Rising Stars
December 2008
Minnesota Law & Politics' 2009 list of "Minnesota Rising Stars" included three Patterson Thuente attorneys:
J. Paul Haun
Bradley Thorson
Attorneys are selected through peer nominations and must be 40 years old or younger or licensed to practice for less than 10 years. The list was published in the magazine's December/January issue.
Clients Consider PTSC a Go-To® Law Firm
October 2008
In a recent survey by Corporate Counsel magazine, which asked Fortune 500 companies to identify their key firms in specific practice areas, Patterson Thuente was identified as a go-to firm for intellectual property. The firm also made the list in 2008
The 2009 Go-To Law Firms are included in Corporate Counsel's 2009 In-House Law Departments at the Top 500 Companies guide.
Delegates From Chinese Supreme Court Visit Minnesota
December 20, 2007
Six delegates from the Chinese Supreme Court were recently in Minnesota and made Patterson Thuente's offices among their stops. The group met with our attorneys to learn about the operation of an American law firm.
Attorney John Fonder Visiting Professor in Beijing
December 10, 2007
Patterson Thuente attorney John Fonder was invited by China University of Political Science and Law to teach several classes to law students in December. The university is considered one of the top law schools in China and is the largest legal education institute in the world.
Erstling Special Guest at China Trademark Association Meeting
November 2, 2007
Jay Erstling was a keynote speaker at the China Trademark Association Annual Meeting 2007. He delivered a speech on international trademark law. Erstling serves as a special advisor to the expert committee of the China Trademark Association.
International Business Attorney, Jay Erstling, Helping Clients Think Globally
August 2007
International business attorney and William Mitchell College of Law professor
Jay Erstling recently joined Patterson Thuente as of counsel. As someone who has helped shape international patent law policy through his work as director of the Patent Cooperation Treaty (PCT) and advisor to the director general of the World Intellectual Property Organization (WIPO), Erstling brings a dynamic presence and global perspective to the array of services the firm offers its clients. He will advise clients on the many changes in international patent law and assist with their patent strategy.
Erstling began his career with WIPO, an agency of the United Nation that promotes IP protection throughout the world and is working to develop a balanced and accessible international IP system. Erstling served as a WIPO staff lawyer from 1976 to 1986 and it was in this position that he developed his interest in international patent law. Throughout his career, Erstling has served as counsel on international issues and taught at several universities. Prior to his directorship at PCT (treaty that allows inventors to preserve the right of their inventions in 135 countries around the world) he represented the American Intellectual Property Law Association at PCT meetings.
"I think I have worked with patent offices and patent practitioners in more countries (and countries at all levels of development) than the majority of people in this profession," remarked Erstling. "That gives me a great appreciation for the differences, as well as the similarities, that make up the international patent system today."