Imagine That IP Law Blog

2021 has seen many different trends, with a large one being break ups, specifically, major companies splitting into multiple entities. Earlier this year, several fortune 500 companies, including General Electric (GE) and Toshiba announced that they would be splitting into multiple entities. But how do intellectual property (IP) rights play into these major spin offs?

Splitting companies and determining where the IP rights will go requires careful consideration of a variety of factors. While it may be clear where some IP goes, such as specific patents or trademarks, other IP may ... Read More ›

Uncertainty surrounding patent eligibility jurisprudence has been a thorn in the side of many patent applicants, patent holders, scholars, and judges for years, leading voices in the patent sector to issue repeated, though unavailing, calls for legislative action. Recent activity by lawmakers, however, suggests that rising innovation in the artificial intelligence (AI) sector may be viewed as a catalyst for change.

Central to the issue of patent eligibility is the framework set forth in Mayo Collaborative Services. v. Prometheus Labs, 132 S.Ct. 1289 (2012) and Alice v. CLS Bank ... Read More ›

Facebook’s CEO Mark Zuckerberg announced on October 28, 2021 that Facebook changed its corporate name to Meta and its stock ticker from FB to MVRS.

This does not mean that the social media app will be changing its name to Meta. Instead it signals a shift in corporate strategy. It appears that that Meta will be the parent company under which its social media applications (Facebook, Instagram, and WhatsApp) will become subsidiaries along with potential new business in the fields of augmented and virtual reality. In other words, Facebook’ goodwill, which it claims in its 2020 annual ... Read More ›

Companies face many hurdles when bringing a new product to market, including technical problems, regulatory requirements and changing market forces. Introducing a new drug or medical device to the market introduces additional regulatory hurdles before both the Food and Drug Administration (FDA) and the US Patent and Trademark Office (USPTO). The strategies for meeting these regulatory requirements may often seem contradictory, and can be a trap for the unwary.  This ultimately doomed the Belcher Pharmaceutical patent as will be explained in detail below.

When filing a patent ... Read More ›

It takes two to tango, and if you are like many of us still working remotely, you may use a two-step identification method for accessing a secure network, such as the Duo Security two-part authentication dance to log onto your remote platform. Well, you might be dancing to something different one day now that the Federal Circuit has upheld validity of a patent owned by Duo competitor CosmoKey. In CosmoKey Solutions, GMBH & Co. KG. v. Duo Security, LLC (Fed. Cir, Oct. 3, 2021), the appeals court reversed a Delaware District Court ruling that CosmoKey’s authentication patent U.S ... Read More ›

Scam solicitations involving intellectual property notices have plagued trademark and patent owners for many years. As technology and scammer sophistication improve, these schemes are becoming more prevalent and confusing, and a growing international problem. Currently the U.S. Patent and Trademark Office (USPTO) is tracking over 50 such scams originating in the U.S. and dozen overseas. Staying vigilant is the best protection.

Typically, these fraudulent solicitations target owners of U.S. registrations and patents. They often provide misleading deadline information ... Read More ›

On September 29, 2021, Senators Patrick Leahy (D-VT) and John Cornyn (R-TX) introduced a bipartisan bill, “Restoring the America Invents Act.” The bill would roll back changes introduced by the courts and former USPTO Director Andrei Iancu. Specifically, the bill would “restore” aspects of the Patent Trial and Appeal Board (PTAB) and the inter partes review (IPR) and post-grant review (PGR) programs.

The purpose of the bill is “to address problems for small businesses and ordinary Americans caused by poor-quality patents” according to the Senators’ joint ... Read More ›

Let’s face it: patents are expensive and most fail to be profitable. For any typical patent portfolio, the challenge is to efficiently weed out the winners from the duds and then assert the winners strategically to effectively monetize the portfolio.

To successfully monetize a patent, one must: 1) prove infringement of one or more asserted claims, 2) defend the asserted claims against invalidity attacks, and 3) establish high-impact damages caused by the accused products’ infringement. So, how does one mine a portfolio for patents that are most likely to help achieve these ... Read More ›

Actress Kristen Bell, alongside her business partner Monica Padman, debuted a limited series podcast this summer, which focused on sharing the stories of exceptional women. They called it Shattered Glass, an homage to the ceiling-smashing work of storied guests like Oprah Winfrey, Reese Witherspoon, Gloria Steinem, and Malala Yousafzai.

By the fifth episode, the podcast had been renamed We Are Supported By and Bell was embroiled in a public skirmish with the creators of a different podcast called Shattered Glass – one that also celebrated the stories of strong women, and that had ... Read More ›

The influencer industry has ballooned in size and importance since the first affiliate marketing network was launched fifteen years ago. With this growth, however, comes increasing legal responsibility for those who profit off it.

Celebrities make headlines for commanding upwards of $1M for sponsored social media posts, but the average influencer is more likely to be a young person, armed with an iPhone and a shoestring budget. In a world where affiliate marketing, sponsored posts, and giveaways trump traditional print advertising, influencers - from nano-influencers to Kim ... Read More ›