February 2013 Newsletter

February 1, 2013


Preparing for the "First Inventor to File" Transition
by Erik Spek and John Van Amsterdam
The final phase of patent reform takes full effect on March 16. Are you prepared to transition to the first inventor to file system? [read more]

The War of AdWords

by Anderson Duff
Trademark owners need to be aware of how Google's lucrative AdWords system works. Recent litigation has virtually ensured that search engine keyword advertising is not going away. That doesn't mean trademark holders must tolerate third parties that purchase their marks as search engine keywords. [read more]

IP Case Law Analysis

Below are links to reviews of recent Federal Circuit cases of interest. For other case reviews, go here.

Federal Circuit Clarifies Substantial Evidence Standard on Appeal for Questions of Motivation to Combine
In Re Hyon

Courts Still Wrestling with Trademark Functionality
In re Becton, Dickinson and Co

Federal Circuit Finds Inequitable Conduct For Failure To Cite Prior Art Under the Heightened Therasense Standard
Aventis Pharma v. Hospira

Federal Circuit Decision Clarifies Algorithm Disclosure Requirements for Means-Plus-Function Claims
Noah Systems v. Intuit

No Settlement Negotiations Privilege
In re MSTG, Inc.

Prosecution History Can Be Used During Claim Construction
Advanced Fiber Tech. Trust. v. J&L Fiber Serv., Inc.

Will Your Settlement Agreement Prevent You from Later Asserting Your Patent Rights?
Aspex v. Revolution

Firm News

Eric Amundsen, Jerry Hrycyszyn, and John Strand promoted to new positions. To read more, go here.

Wolf Greenfield Named Elite Trademark Law Firm in World Trademark Report 1000. To read more, go here.

Wolf Greenfield Associate, Chelsea Loughran, recognized for Pro Bono Service by Women's Bar Foundation. To read more, go here.

In 2012, we filed 3017 patent applications and 848 trademark applications and secured intellectual property rights in over 130 countries for our clients.