Imagine That IP Law Blog

Issue preclusion and claim preclusion are two strategic defenses that an accused infringer can rely upon if that party was previously cleared of patent infringement.

Issue preclusion, or collateral estoppel, precludes a party from relitigating an issue actually decided in a prior case and necessary to the judgment. Under claim preclusion, or res judicata, a judgment on the merits in a prior lawsuit bars a second lawsuit involving the same parties or their privies based on the same cause of action. Claim preclusion also bars claims that could have been brought in the first action ... Read More ›

Significant intellectual property law provisions are part of the $2.3 trillion spending bill passed by Congress.

Copyrights

In the copyright area, the Protecting Lawful Streaming Act of 2020 is directed to curbing "commercial, for-profit streaming piracy services" that profit from streaming unlicensed or otherwise illegally copied copyrighted material. Penalties could include significant fines and imprisonment. The law currently has a carve-out for "individuals who access pirated streams or unwittingly stream unauthorized copies of copyrighted works.”

The new laws ... Read More ›

The requirements for ownership of a patent and the right to bring suit for the enforcement of the patent would seem to be well settled in patent law. As demonstrated in the recently decided Federal Circuit Court of Appeals (Case 2019-2244), AntennaSys, Inc. v. AQYR Technologies, Inc., et al., overlooking the ownership or enforcement requirement can result in wasted time and cost for the litigants and frustration for the courts. This article raises awareness of the nuances of ownership and enforcement rights in the hope of avoiding the cost and frustrations for all involved.

The ... Read More ›

As the political dust kicked up by Brexit very gradually settles, the focus has shifted from “What if?” to “Now, what?” In a post-Brexit world, what can U.S. companies expect, particularly with respect to their European Union (EU) trademark and design rights? And more importantly, what can U.S. companies do about it?

In thinking about Brexit, it’s helpful to keep a few things in mind. First, the breakup is taking place at the same time as an unprecedented global pandemic, which has delivered major shocks to the world’s economic systems and institutions. Brexit would be a ... Read More ›

While COVID-19 may have temporarily slowed some of the day-to-day activities in the legal profession, the headlines show that the wars over Standard Essential Patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing of SEPs persist without abandon. Appellate courts around the world previously had relatively few opportunities to offer guidance as to the licensing terms or the manner of negotiating licenses to SEPs. But recently, the highest civil courts in Germany and the United Kingdom handed down important decisions in disputes over SEPs and FRAND ... Read More ›

One of the main advantages of hiring outside patent counsel is the ability to pass invention materials to a drafting attorney to prepare a patent application. This work transfer reduces the in-house counsel’s burden, freeing them to devote more of their time to strategic portfolio management rather than the minutiae of preparing an individual application.

Too frequently, however, the invention materials provided to outside counsel are incomplete. The understanding is that the drafting attorney will be able to use their engineering acumen to sort through the pieces, determine ... Read More ›

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 11^th 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 ›

On July 16, 2020, the Court of Justice of the European Union (CJEU) issued a highly anticipated ruling in Data Protection Commissioner v. Facebook Ireland and Maximillian Schrems (Schrems II). The case centers on the validity of two key data transfer mechanisms: Standard Contractual Clauses (SCCs) and the EU-U.S. Privacy Shield (Privacy Shield) – both of which are methods widely used by U.S. businesses to comply with the EU’s laws regarding the transfer of personal data to countries outside the EU. In considering the effectiveness of data protection in cross-border data ... Read More ›

Trademarks function to identify the source or origin of products or services and distinguish them from the products or services of others. On the other hand, generic terms are used by consumers to refer to a type of product or service that cannot function or be registered as a trademark. For example, one cannot register COMPUTER as a trademark for laptops and personal computers. Likewise, one cannot register “APPLE” to identify a fruit (as opposed to “APPLE” to identify computer technology).

However, what if a generic term is combined with “.com” or another top-level ... Read More ›

In November 2019, the China National Intellectual Property Agency (“CNIPA”) issued new Patent Examination Guidelines for applying China’s “inventive step” requirement, the patentability standard roughly equivalent to the US patent requirement of “non-obviousness.” Chinese Patent Law defines “inventive step” such that the invention has a prominent substantive feature and represents notable progress. Under the new Guidelines, inventive step can be determined as a whole from a perspective of “invention concept.”

Regarding “inventive step,” ... Read More ›