• Posts by Anthony S. Volpe
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    Tony draws on his years of in-house and private practice experience to analyze his client's business model and objectives and craft a strategy to achieve the client's goals.

    With more than 40 years of experience in all aspects of IP ...

Sovereign Immunity, The 11th Amendment, and Intellectual Property

The conflicts over sovereign immunity date back to our country’s founding when states were concerned about possible overreaching by a central government. An early Supreme Court decision in Chisholm v. Georgia, 2 US 419 (1793) rejected sovereign immunity and held that the federal government had sovereign immunity but the states did not. Congress quickly responded with the 11th Amendment, which was ratified in 1798, stating:

“The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United ... Read More ›

The ever increasing speed at which information travels over social media and the expanding volume of information available on the internet has helped and hindered small and start up enterprises. It is easier to get recognition through social media but that recognition does not always translate into revenue. Likewise, it is easier to find information but the reliability of the information can be suspect. All of this matters because long term business success is often the result of the access to funds for the next phase of research, marketing and expansion. The concern here is the ... Read More ›

It is common for the parties to a commercial transaction or relationship to conclude that their circumstance requires more than a non-disclosure agreement. And it is frequently the case that certain privileged attorney client communications may need to be shared. The parties often seek to protect that information with what are known as common-interest agreements or joint defense agreements, depending on the circumstances. Both of the agreements fall under a broad legal umbrella known as the "Common Interest Doctrine" (Doctrine).  While the Doctrine is generally known, it is ... Read More ›

Posted in: Misc

The U.S. Supreme Court's June 2014 landmark decision  Alice v. CLS Bank International, 134 S.Ct. 2347 (2014), altered the course and viability of software patents in the United States and continues to cause uncertainty over the eligibility of software for patent protection.  Alice announced a multi-step test for analyzing patent eligibility, under which the basic question for any software application is, "does the application satisfy the patent eligibility conductions of 35 U.S.C. Section 101 (Section 101)?" The United States Patent and Trademark Office (USPTO) has established ... Read More ›

Posted in: Patents

Benjamin Franklin is credited with coining the axiom that "an ounce of prevention is worth a pound of cure." Allegedly, Franklin actually made the statement in connection with fire safety, which was an avocation for him. Today, the axiom applies perfectly to corporate efforts to manage intellectual property (IP) issues. Many companies rely on old proprietary rights forms or use generic forms collected by the human resource department (HR) with little thought given to downstream consequences.

This article advocates for having in-house or retained counsel make periodic reviews of ... Read More ›

Copyright protection is an often overlooked component of an intellectual property portfolio.  However, it is important to consider pursuing copyright protection in order to provide a more robust intellectual property portfolio.  Given the relatively low costs to acquire a copyright registration and the ability to collect statutory damages, pursuing a copyright registration can prove to be a worthwhile expense.  Although copyright registration is often a relatively simple process, there is an ongoing split among various circuit courts as to the effectiveness of a pending ... Read More ›

Posted in: Copyrights

The identification of the proper venue for commencing a patent infringement or declaratory judgement action was rather straight forward for a number of years. However,  when the U.S. Court of Appeals for the Federal Circuit, which has exclusive appellate jurisdiction in patent matters, addressed the venue issue in  VE Holding v. Johnson Gas Appliance, 917 F.2d 1574 (Fed. Cir. 1990), it liberalized the venue requirement to where the defendant is subject to the court's personal jurisdiction. This decision lead to lower courts applying a liberal view of personal jurisdiction when ... Read More ›

Since the passage of the Leahy-Smith America Invents Act (“AIA”), it has been extremely difficult, if not impossible, for a patent owner whose patent is challenged in an inter partes review (IPR) to amend the challenged claims. As of April 30, 2016, the Patent Trial and Appeal Board (PTAB) had completely denied 112 of 118 patent owner motions to amend and partially denied motions to amend in four of the six remaining IPRs.

Today’s en banc decision by the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. U.S. Patent and Trademark Office, Case No ... Read More ›

Posted in: IP Litigation

Throughout time industries have developed techniques and processes that are believed to be essential elements that contributed to the company's success.  For almost as long, companies have sought and devised ways to protect those techniques and processes that constituted the company's intellectual property. Many companies turned to federal patent protection, others chose to treat the information as trade secrets, and others chose to use contractual obligations to protect their intellectual property. These various forms of protection were especially meaningful in what ... Read More ›

Designers of haute couture fashion have long been troubled by the inability to protect their designs, and the speeds at which designs can be copied now have added to their frustrations. The root of the problem for many years was the U.S. copyright law, which was considered to prohibit enforcement of a copyright in wearable fashions. The Copyright Act, 17 U.S. C. Section 101 et seq., limited copyright protection for “pictorial, graphic, or sculptural features” of “a useful article” to features that “can be identified separately from, and are capable of existing ... Read More ›

Posted in: Copyrights

Patents have had unusual attention from the U.S. Supreme Court recently. In addition to high-profile cases like Alice v. CLS Bank International, 134 S. Ct. 2347 (2014), that dramatically changes the landscape for technology-based patents, Samsung v. Apple, 137 S. Ct. 429, 431 (2016), that has the potential to dramatically change the landscape for damages in design patent infringement, and Life Technologies v. Promega, 2017 U.S. LEXIS 1428 (U.S. Feb. 22, 2017), which tests the limits of liability under U.S. law for infringement abroad, the court is poised to consider whether the ... Read More ›

Many small business entities find that they occasionally have a new product or process for which they wish to seek patent protection. Some of those small businesses may have had some prior experience with the patent process. Unfortunately, many of the prior patent laws changed with the advent of the America Invents Act (AIA). The AIA made fundamental changes in the consequences associated with a business engaging in market activities prior to the filing of a patent application and many commercial entities that occasionally pursue patent protection have not made the necessary ... Read More ›

Posted in: Patents

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