Indianapolis Bar Association:
2009-2010 Year in Review
Patent Law and Practice
Chuck Schmal
Sponsored by the
Intellectual Property Law Section
Overview
• Patent Office Procedure
• Patent Term Adjustment
• Ownership
• Inequitable Conduct
• Ethics Rules
• Other Notable Cases
• Note: The following topics are just a small sample of
recent cases and procedures.
Patent Office Practice
Most Important Change of the Year
Bilski
Appeals Rules
Continuation & Claims Rules
Most Important Change of the Year
Bilski
Appeals Rules
Continuation & Claims Rules
August 13, 2009- David Kappos- New Director of the USPTO
Patent Office Highlights
• Change in Attitude
• Compact Prosecution
• Appeals
• Proposed Rules
Change in Attitude
•
Launches a Blog and Increases Town Hall Meetings
•
Claim and Con Rules Rescinded- October 8, 2009
•
Ombudsman Program- April 6, 2010
•
PKI Certificates- now can have multiple employees of your
firm e-file or access private PAIR on your behalf (even at
the same time)
– FAQs published.
Change in Attitude
On the subject of quality, there has been speculation
in the IP community that examiners are being
encouraged to reject applications because a lower
allowance rate equals higher quality. Let's be clear:
patent quality does not equal rejection. In some
cases this requires us to reject all the claims when no
patentable subject matter has been presented. It is our
duty to be candid with the applicant and protect the
interests of the public. In other cases this means
granting broad claims when they present allowable
subject matter. In all cases it means engaging with the
applicant to get to the real issues efficiently—what
we all know as compact prosecution.-- August 2009
email to Examiners
Rescinds Continuation and Claims Rules
The USPTO should incentivize innovation, develop
rules that are responsive to its applicants’ needs and
help bring their products and services to market...
...These regulations have been highly unpopular from
the outset and were not well received by the applicant
community. In taking the actions we are announcing
today, we hope to engage the applicant community
more effectively on improvements that will help make
the USPTO more efficient, responsive, and transparent
to the public. --October 08, 2009 Press Release:
USPTO Rescinds Controversial Patent Regulations
Package Proposed by Previous Administration
Ombudsman Pilot Program
•
Ombudsman- used when unable to resolve
application-processing issue through
USPTO's existing channels
– Example, Examiner and SPE do not
address new argument or amendment
and not returning phone calls.
– Recommended to contact the SPE
first.
– Has to concern a specific application.
Ombudsman Pilot Program
•
Fill out electronic form at:
http://www.uspto.gov/patents/ombudsman.jsp
•
When you first speak with Ombudsman, will be asked
whether or not you want it to be confidential
– Confidential- Ombudsman will simply log the
complaint (log used to look for trends)
Compact Prosecution
•
Expanded and Revised 1st Action Interview Pilot Program
•
Accelerated Examination
•
Revised Examiner Count System
1st Action Interview
• Had two versions- Original and Enhanced
• Sadly, ended April 1, 2010, but likely implement a similar
program in the future.
• Expanded to all art units but had differing filing date
requirements
1st Action Interview
•
E-File the request for the 1st Action Interview Program
•
Restriction- must elect
•
Examiner Conducts Prior Art Search and Sends a list of
prior art citation to the applicant
•
Afterwards, Applicant has to within 1 month or 30 days:
 File a request not to have a 1st Action Interview
 Schedule Interview and file proposed
amendments
1st Action Interview
1st Action Interview
Accelerated Examination
• Green Technology- still available until December 10, 2010
• Small Entity- still available until June 30, 2010
Accelerated Examination- Green Technology
• Green Technology Pilot Program
• Introduced just before United Nations Climate Change
Conference in Copenhagen, Denmark
• 1st 3,000 Green Technology Applications with petition
receive accelerated examination
Accelerated Examination- Green Technology
• Petition Must be filed before Dec. 10, 2010 (12 Month
Pilot Program)
• What is “Green” technology- application directed to:
• environmental quality,
• energy conservation,
• development of renewable energy
resources or greenhouse gas emission
reduction
• What you get- accelerated examination
• Advanced out of turn without all of the
requirements of accelerated examination
(e.g., ESD, etc.)
Accelerated Examination- Small Entity
• Program Apparently Extended to June 30, 2010
• Requirements
 Small Entity with 2 or more applications
 Applications filed before October 1, 2009
 Expressly abandon one of the applications
 File a petition for accelerated examination
- ($130 fee waived)
• What you got- accelerated examination
•
Advanced out of turn without all of the requirements
of accelerated examination (e.g., ESD, etc.)
Revised Examiner Count System
Old System
New System
February 18, 2010
Proposed Procedural Change- Comment
Requested
• Deferred Examination (light)
– PTO floating “extension” to provisional period through
missing parts procedural change
– After provisional, non-provisional filing receives notice
with 12-month non-extendable deadline
– Notice demands search/exam fees, surcharge
– Ideally, provides applicant with 24 months to decide
whether invention is commercially viable
Proposed Rules
• Non-provisional filing must
– Include “basic” filing fee ($330; $165 smallentity)
– Have executed oath/declaration (eventually)
– Be without or rescind nonpublication request
– Be in condition for publication (37 CFR
1.211(c))
• No “tolling” of 12-month period under Paris
Convention
Proposed Rules
• Asserted Advantages
– More publications, i.e. provisionals that would
not be filed otherwise, non-provisionals w/o
nonpublication requests
– Unneeded applications out of system, relieving
applicants’ financial, PTO’s workload burdens
– Focus applicant resources on commercialization
rather than non-provisional filing
Proposed Rules
• Potential Downsides
– No “tolling” of 12-month period under Paris
Convention
– Can get a longer period by filing a PCT
application
– Search & Examination Fees are small in
comparison to attorney costs
Appeals
•
Controversial Appeals Rules- reopened for comment
•
Streamlined Noncompliant Appeal Brief Review Process
•
Claims- how to handle appealed and non-appealed
rejections/claims
Appeals
• Controversial Proposed Appeals Rules- reopened
comments
• Streamlined Appeal Brief Review Process
• Chief Judge of BPAI (or his designee) has now sole
responsibility for determining whether appeal briefs
comply with regulations, and will complete the
• Hopefully, it will reduce the number of non-compliant
appeal briefs
• Use checklist at:
http://www.uspto.gov/ip/boards/bpai/procedures/guid
ance_noncompliant_briefs.jsp
Appeals
• Claims Reviewed During Appeal
• Proposed rule to treat non-appealed rejected claims
considered canceled.
• Ex Parte Frye: BPAI’s Standard of Review of Examiners’
Rejections
 “the Board reviews the particular finding(s)
contested by an appellant anew in light of all
the evidence and argument on that issue.”
 “[i]f an appellant fails to present arguments on
a particular issue – or, more broadly, on a
particular rejection – the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection,” and such
unasserted arguments may be deemed to have
been waived.
Patent Term Adjustment
Quick Patent Term Adjustment Refresher
• 35 U.S.C. §154(b)(1) Periods
• (A) Guarantee of prompt USPTO responses- 14 months for
USPTO to send an Office Action or Notice of Allowance (plus
various 4 month periods)- Examination Delays
• (B) Guarantee of no more than 3-year application pendencyUSPTO fails to issue patent 3 years after actual filing date
• No Double Counting When Periods Overlap
• § 154(b)(2)(A) "[t]o the extent that periods of delay attributable to
grounds specified in paragraph (1) overlap, the period of any
adjustment granted under this subsection shall not exceed the
actual number of days the issuance of the patent was delayed."
Wyeth v. Kappos (Fed. Cir. 2009)
• Issue: When does the overlap occur?
• USPTO
• 37 CFR § 1.703(f)- B guarantee period starts at the time
of the filing of the application, not 3 years after the filing
date.
• You only get the greater of the A or B periods
USPTO – 3 Years PTA
Overlap
Here
Overlap
Here
B Delay
A Delay
Filing
date
14 mo.
date
A Delay
Office
Action
issued
3 year
date
Issue
fee
paid
4 mos. from
issue fee
payment,
patent
should issue
Issue
date
Wyeth v. Kappos (Fed. Cir. 2009)
• Issue: When does the overlap occur?
• Wyeth
• A & B Overlap only occurs after 3 years from the filing
date. (A+B Formula)
USPTO – 3 Years PTA
1 Year
Overlap
Here
B Delay
A Delay
Filing
date
14 mo.
date
A Delay
26 mo.
Office
Action
issued
3 year
date
Issue
fee
paid
4 mos. from
issue fee
payment,
patent
should issue
6
years
issue
date
Wyeth v. Kappos (Fed. Cir. 2009)
• Federal Circuit Agrees with Wyeth
• "no 'overlap' happens unless the violations occur
at the same time," … "[b]efore the three-year
mark, no 'overlap' can transpire between the A
delay and the B delay because the B delay has
yet to begin or take any effect." However,
"[u]nder the PTO’s strained interpretation, B delay
can occur anytime after the application is filed,"
which the Court determined "cannot be reconciled
with the language of the statute" (emphasis by
panel).
Wyeth v. Kappos (Fed. Cir. 2009)
• Federal Circuit
• A & B overlap only occurs after 3 years from the filing
date. (A+B Formula)
USPTO – 3 Years PTA
1 Year
Overlap
Here
B Delay
A Delay
Filing
date
14 mo.
date
A Delay
26 mo.
Office
Action
issued
3 year
date
Issue
fee
paid
4 mos. from
issue fee
payment,
patent
should issue
6
years
issue
date
Wyeth v. Kappos (Fed. Cir. 2009)
• USPTO Response
• USPTO will be processing recalculation requests under
an interim procedure that is available to a patentee
whose patent issues prior to March 2, 2010, and who
requests it no later than 180 days after the issue date.
• This procedure is available only for alleged errors in
calculation that are specifically identified in Wyeth.
• Information on requesting a recalculation of patent term
is on the USPTO Web site at
http://www.uspto.gov/patents/announce/pta_wyeth.pdf.
Wyeth v. Kappos (Fed. Cir. 2009)
• USPTO Wyeth PTA Form PTO/SB/131
Japan Tobacco Petition
•
USPTO Miscalculating Period B for PCT 371 National Stage Applications
• Originally, USPTO considered the B Period filing date= when an international
applications fulfilled the requirements of 35 U.S.C. § 371 (e.g., filed signed
Oath/Dec.).
• BUT, 37 C.F.R. § 1.702(b) states that "the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to the failure of the
Office to issue a patent within three years after the date on which the
application was filed under 35 U.S.C. 111(a) or the national stage
commenced under 35 U.S.C. 371(b) or (f) in an international application.”
• Section 371(b) states that subject to § 371(f), "the national stage
shall commence with the expiration of the applicable time limit under
article 22 (1) or (2), or under article 39 (1)(a) of the [PCT].“ = 30
Month Chapter II Deadline
•
So the B-Period filing date for 371 national stages should be the 30-Month
Chapter II deadline (if filed under 371(b)-- more later)
Japan Tobacco Petition
• USPTO
• USPTO relents- B-delay should be calculated based on the
date on which the national stage commenced, not the date on
which the requirements of § 371(c) were fulfilled.
3-Year B-Period
Chap II
Deadline
(30 Months)
File Signed
Declarationsatisfy 371(c)
Japan Tobacco Petition
• PCT Patent Term Landmines
• B-Period Delay Landmine- Early 371 Nationalization
• If Nationalize under 371 before 30-month chapter II deadline and
satisfy 371(c) requirements (e.g., pay fees, signed Declaration,
etc.), you still need to expressly request early processing
under 371(f) to get the nationalization date for B-Delay filing date.
• If not, B-Delay filing date will be based on the Chapter II
(30-month) deadline & not the earlier nationalization date.
• Contrast regular utility or bypass CON- B-Period
filing date is the actual filing date of the application.
Japan Tobacco Petition
• B-Delay Period Landmine
• Nationalize PCT Application before the Chapter II Deadline
- Satisfy 371(c)- file signed declaration, etc.
- Expressly request early processing (check
the box on form)
3-Year B-Period
Nationalize
Chap II
Deadline
(30 Months)
B-Delay filing date starts
before Chapter II Deadline
Japan Tobacco Petition
• B-Delay Period Landmine
– Nationalize PCT Application before the Chapter
II Deadline BUT
 Fail to satisfy 371(c) OR
 Fail to expressly request early examination
3-Year B-Period
Nationalize
Chap II
Deadline
(30 Months)
B-Delay filing date starts
on Chapter II Deadline
File Signed
Declarationsatisfy 371(c)
Japan Tobacco Petition
• B-Delay Period Landmine- COMPARE
• Instead file via the bypass CON route BUT
- Fail to file signed declaration OR
- Fail to expressly request early
examination
B-Delay filing date starts
3-Year B-Period
before Chapter II Deadline
Bypass CON Chap II
Filing Date Deadline
(30 Months)
File Signed
Declaration
Japan Tobacco Petition
• PCT Patent Term A-Delay Landmines
• A-Delay Date is still based on fulfillment of national requirements
under 371(c).
• For example, if you do not file a signed declaration when
the PCT application is nationalized, you lose A-term until
you file the signed declaration.
• Contrast to a regular utility or bypass CON- where you do
not lose A-term so long as you file the signed declaration
within 3-months of Notice to File Missing Parts
Japan Tobacco Petition
• A-Delay Period Landmine
• Nationalize PCT application under 371
- Fail to file signed declaration with
nationalization
A-Period
A-Delay- lose term- until
Lose Term
file signed Declaration
Nationalize
Chap II
Deadline
(30 Months)
File Signed
Declaration
Japan Tobacco Petition
• A-Delay Period Landmine- COMPARE
• Instead file via the bypass CON route
• Fail to file signed declaration when application filed
• File signed declaration 1-month after missing parts deadline
A-Period
2 Month Deadline DO NOT LOSE ANY
For Missing Parts
A-TERM!
Bypass CON Chap II
Filing Date Deadline
(30 Months)
File Signed
Declaration w/ 1-Month
EOT + surcharge
PCT- 371 Nationalization or Bypass CON?
• What is the best way to nationalize a PCT ?
• Answer: Bypass CON!!!
371
Nationalization
Patent Term
PDX
Simplicity
US Restriction...
Bypass CON
Assignments and Ownership
Stanford v. Roche (Fed. Cir. 2009)
• Patented Technology
o
•
Method of quantifying HIV virus levels in human blood
samples and correlating to the effectiveness of antiretroviral
drugs.
History
o
o
o
o
One of the named inventors (Holodniy) of the patents at issue
signed a Copyright and Patent Agreement ("CPA") upon
joining laboratory at Stanford.
Holodniy visited Cetus to learn the technology.
─ Holodniy signed a Visitor's Confidentiality Agreement
("VCA").
Research for the technology at Stanford was funded by the
National Institutes of Health ("NIH").
Stanford filed the applications for the patents at issue – the
'730, '705 and '041 patents.
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
• Procedural History
o
o
Stanford sues Roche for patent infringement.
Roche: Stanford lacks standing - Roche owns, has a
license for, and/or a shop right on the asserted patents.
• District Court
o
o
o
Roche's ownership was barred by California's statute of
limitation and the Bayh-Dole Act.
Roche's license claims fail because Stanford never
consented to Roche's acquisition of Cetus.
Roche lacked shop right to the patents.
Stanford v. Roche (Fed. Cir. 2009)
• Federal Circuit
o
o
Although Roche claiming ownership was barred by
California's statute of limitation, under California law,
"a defense may be raised at any time, even if the matter
alleged would be barred by a statute of limitations if
asserted as the basis for affirmative relief" (citation
omitted).
─ Similar reasoning applies to laches and equitable
estoppel.
Thus, Roche can assert its ownership as a bar to
Stanford's standing.
Stanford v. Roche (Fed. Cir. 2009)
• Federal Circuit
o
Which law to apply?
─ Normally questions of ownership are state law
issues.
─ Exception: questions of whether a patent
assignment clause creates an automatic
assignment or merely an obligation to assign Federal Circuit Law applies.
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
• Federal Circuit
o
Was Holodniy's CPA with Stanford an automatic
assignment?
─ Language: "I agree to assign and confirm in
writing to Stanford..." is a mere promise to assign.
─ Stanford's invention rights policy supports this
conclusion: "Unlike industry and many other
universities, Stanford's invention rights policy
allows all rights to remain with the inventor if
possible."
─ Stanford did not immediately gain title to the
inventions.
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
• Federal Circuit
o
Was Holodniy's VCA with Cetus an automatic
assignment?
─ Language: "I will assign and do hereby assign to
CETUS..." is a present assignment of Holodniy's
future inventions.
─ Cetus immediately gained equitable title to
Holodniy's inventions.
─ Cetus's equitable title converted to legal title when
the parent application was filed on May 14, 1992.
─ This negated Holodniy's subsequently executed
assignment to Stanford (May 4, 1995) because
Holodniy no longer retained any rights.
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
• Federal Circuit
o
o
o
Was Stanford a Bona Fide Purchaser (BFP) under
35 USC § 261?
─ "An assignment, grant or conveyance shall be
void as against any subsequent purchaser or
mortgagee for a valuable consideration, without
notice, unless it is recorded in the Patent and
Trademark Office within three months from its
date or prior to the date of such subsequent
purchase or mortgage." 35 USC § 261
Stanford was charged with notice of its employees'
assignments (the VCA).
Stanford was not a BFP.
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
Stanford v. Roche (Fed. Cir. 2009)
• Bayh-Dole Act- 35 USC § 200+
o
o
US Government to take title under certain conditions.
The "contractor" universities or inventors can retain ownership
if US Government does not.
• Stanford (and District Court): Bayh-Dole allowed Stanford a
"right of second refusal" after Government refrained to
exercise its rights.
o
Holodniy could only keep title if Stanford did not elect to retain
title.
• Federal Circuit
o
o
Bayh-Dole does not void prior contractual transfers of rights.
Thus, Bayh-Dole did not automatically void the patent rights
Cetus received from Holodniy.
Stanford v. Roche (Fed. Cir. 2009)
• Federal Circuit
o
o
Roche declaratory judgment of ownership barred by
California's statutes of limitation.
Stanford lacks standing because it cannot establish
ownership of Holodniy's interest.
Stanford v. Roche (Fed. Cir. 2009)
• Take Home Points:
o
o
Review the language in your assignments to make sure
that it contains a present assignment of patent rights.
─ "I do hereby assign"
When collaborating, make sure that employees do not
sign anything unless it is reviewed.
Inequitable Conduct
Therasense v. Becton Dickinson (CAFC 2010)
Unrelated
USPTO
'551 Patent
Membraneless
Biosensor
Affidavit/Resp.
'382 Patent
Requires Membrane
for Whole Blood
USPTO
'382 Patent
Anticipate/
Obvious
Statements
Never Cited
to USPTO
EPO
'636 Patent
EPO
Counterpart
Resp. in Revocation
Proceeding
Membrane is optional
for Whole Blood
'551 Patent
Allowed
Therasense v. Becton Dickinson (CAFC 2010)
•
Federal Circuit- Failure to Cite EPO Statements was materialInequitable Conduct
–
“Applicant’s earlier statements about prior art, especially
one’s own prior art, are material to the PTO when those
statements directly contradict the applicant’s position
regarding that prior art in the PTO. 37 CFR 1.56(b)(2)
In any event, the representations to the PTO were not
merely lawyer argument; they were factual
assertions…of those skilled in the art provided in
affidavit form.”
Therasense v. Becton Dickinson (CAFC 2010)
• Dissent (Judge Linn) – “The question for purposes of materiality
here is not whether Abbott’s arguments to the PTO were
meritorious (i.e., that the word “preferably” in the ‘382/’636 patent
would actually have been interpreted…to mean “required”); rather,
the question is whether anything in Abbott’s EPO submissions
“refutes, or is inconsistent with,” its arguments to the PTO. Even if
this information were material, however, the individuals who owed
a duty of disclosure to the PTO produced a good faith explanation
as to why they withheld the EPO submissions…Such an
explanation will defeat a charge of inequitable conduct if it is
“plausible”.” “The question, thus, is not whether it is plausible that
the information is immaterial – a question asked under the
objective materiality prong- but rather, whether it is plausible that
the individuals subjectively believed that the reference was
immaterial at the time they withheld it – a question presented
under the subjective intent prong.”
Therasense v. Becton Dickinson (CAFC 2010)
• New- Being reviewed en banc (April 26, 2010 order)
• Six questions to be briefed:
• 1. Should the materiality-intent-balancing framework for inequitable
conduct be modified or replaced?
• 2. If so, how? In particular, should the standard be tied directly to
fraud or unclean hands? [citations omitted] If so, what is the
appropriate standard for fraud or unclean hands?
• 3. What is the proper standard for materiality? What role should the
United States Patent and Trademark Office’s rules play in defining
materiality? Should a finding of materiality require that but for the
alleged misconduct, one or more claims would not have issued?
Therasense v. Becton Dickinson (CAFC 2010)
• Six specific questions to be briefed:
• 4. Under what circumstances is it proper to infer intent
from materiality? See Kingsdown Med. Consultants,
Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en
banc).
• 5. Should the balancing inquiry (balancing materiality
and intent) be abandoned?
• 6. Whether the standards for materiality and intent in
other federal agency contexts or at common law shed
light on the appropriate standards to be applied in the
patent context.
Ethics
Ethics
• Indiana is Revising its Rules Regarding Attorney Advertising
• Not yet implemented
• Some Key Areas
• Clarifies the Specialty Language in Rule 7.4- e.g., “Patent
Attorney” or “Proctor in Admiralty”
• Use of Trade Names with field of law, geographic location,
and language proficiency will be allowed
Ethics- Old Rule
• 7.4 Communication of Specialty Practice
• When communication otherwise meets the requirements of Rules,
7.2, 7.3, and 7.5, a lawyer may:
• (a) communicate the fact that the lawyer does or does not
practice in particular fields of law, but may not express or
imply any particular expertise except as otherwise provided in
Rule 7.4(b)
• (b) communicate that the lawyer is certified as a specialist in a field
of practice when the certification and communication are
authorized under Admission and Discipline Rule 30 [regarding
Continuing Legal Education in Indiana].
• (c) Notwithstanding subsection (b), a lawyer admitted to engage in
patent practice before the United States Patent and Trademark
Office may use the designation “Patent Attorney” or a
substantially similar designation, and a lawyer engaged in
Admiralty practice may use the designation “Admiralty,”
“Proctor in Admiralty” or a substantially similar designation.
Ethics- New Rule
• 7.4 Communication of Specialty Practice
• (a) A lawyer may communicate that the lawyer does or does not
practice in particular fields of law.
• (b) A lawyer admitted to engage in practice before the United States
Patent and Trademark Office may use the designation “Patent
Attorney” or a substantially similar, non-misleading, designation.
• (c) A lawyer engaged in Admiralty practice may use the designation
“Admiralty,” “Proctor in Admiralty” or a substantially similar, nonmisleading, designation.
• (d) A lawyer shall not state or imply that the lawyer is certified as a
specialist in a particular field of law, unless:
•
(1) The lawyer has been certified as a specialist by an Independent
Certifying Organization accredited by the Indiana Commission for
Continuing Legal Education pursuant to Admission and Discipline
Rule 30 [regarding Continuing Legal Education in Indiana]; and,
• (2) The certifying organization is identified in the communication.
• (e) [ Indiana Commission for CLE vested with authority to accredit
Independent Certifying Organizations mentioned in (d)(1) ]
Ethics- Old Rule
• 7.5 Professional Notices, Letterheads, Offices, and Law Lists
• (a) A lawyer or law firm shall not use or participate in the use of
professional cards, professional announcement cards, office
signs, letterheads, telephone directory listing, law lists, legal
directory listings, or a similar professional notice or device if it
includes a statement or claim that is false, fraudulent, misleading,
deceptive, selflaudatory or unfair within the meaning of or that violates
the regulations contained in Rule 7.2.
• (b) A lawyer shall not practice under a name that is misleading as to
the identity, responsibility, or status of those practicing thereunder, or
is otherwise false, fraudulent, misleading, deceptive, self-laudatory or
unfair within the meaning of Rule 7.2, or is contrary to law. In that it
is inherently misleading, a lawyer in private practice shall not
practice under a trade name. However, the name of a professional
corporation or professional association may contain “P.C.” or “P.A” or
similar symbols indicating the nature of the organization, and if
otherwise lawful a firm may use as, or continue to include in, its name,
the name or names of one or more deceased or retired members of
the firm or of a predecessor firm in a continuing line of succession.
Ethics- New Rule
• 7.5 Firm Names and Letterheads
• (a) A lawyer shall not use a firm name, letterhead or other
professional designation that violates Rule 7.2. A trade name may
be used by a lawyer in private practice if it does not imply a
connection with a government agency or with a public or charitable
legal services organization and if it is not otherwise in violation of Rule
7.2 Trade names are subject to the following requirements:
• ...
•
(3) Words that identify the field of law in which the firm
concentrates its work, words that describe the geographic location
of its offices, and words that indicate a language fluency may be
used, so long as the firm name includes the name of a lawyer, or
the name of a deceased or retired member of the firm, or of a
predecessor firm in a continuing line of succession, as set forth in
subparagraph (2) above.
Ethics- New Rule
•
•
Comment:
[1] A firm may be designated by the names of all or some of its members,
or of deceased members where there has been a continuing succession
in the firm’s identity. A trade name may also include words identifying
the field of law in which the firm concentrates it work, the geographic
location of its offices and words that indicate a language fluency.
Examples would be “De la Mirada Employment Law Firm of
Greenwood” written in Spanish, or “Anderson’s Auto Accident Law,
P.C.,” assuming that De la Mirada and Anderson are or have been
members of these respective firms. A lawyer or law firm may also be
designated by a distinctive website address or comparable
professional designation. Although the United States Supreme Court
has held that legislation may prohibit the use of trade names in
professional practice, use of such [trade] names in law practice is
acceptable so long as it is not misleading. If a private firm uses a
trade name that includes a geographical location such as “Springfield
Legal Clinic,” an express disclaimer that it is not a public legal aid agency
may be required to avoid a misleading implication, furthermore the name
of the firm must also include the name of at least one of its members or
deceased members. ...
Ethics- New Rule
• Potential New Law Firm Name Under
Proposed Rules:
Doll and Schmal Patent and Trademark Law
Firm of Indianapolis, LLP
Other Notable Cases
• Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010,
en banc)
• Written Description and Enablement are Separate
Requirements
• European Patent Office Rules
• Bilski- TBD
Want to know more?
Chuck Schmal
Patent Attorney
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Chase Tower
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
317.634.3456
cps@uspatent.com
www.uspatent.com