Intellections®


Please explore below archive editions of our Intellections® newsletter.



August 2020

In 2010, we published an article about fraud on the trademark office. In the intervening decade, the trademark office has cracked down on fraud in a number of ways, all of which are designed to…


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July 2020

Thanks to our agricultural roots and entrepreneurial spirit, Montana has a thriving and ever-expanding food industry. Among the products made and sold by Montana producers are meats and—believe it or…


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June 2020

The term "artificial intelligence" is a misnomer. People use it to refer to things that machines can do, but machines could not do those things unless a human programmed them to do them. "Artificial…


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June 2019

Last month we wrote to you about two basic ways to sell product - through a distributor or with the assistance of a sales representative - and we addressed state laws that govern sales representative…


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May 2019

There are two basic ways to sell a product: directly to consumers or indirectly to consumers via a distributor or retailer. Direct-to-consumer sales are typically made through brick-and-mortar stores…


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February 2019

Intellectual property law encompasses patents, trademarks, and copyrights, and each of these areas of law has specific rules that are not necessarily consistent with the rules applicable to other…


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December 2018

On October 11, 2018, Congress passed the Music Modernization Act, which calls for the creation of a worldwide database of songs that will be searchable for licensing purposes. Digital streaming…


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August 2018

TVEyes Inc., a company located in Fairfield, Connecticut, was incorporated in 2000 and describes itself as "the search engine for broadcast." The company's focus is on making news broadcasts readily…


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June 2018

Earlier this year, a company called Power Block Coin, LLC announced its plans to invest over $250 million in a special tax finance district west of Butte, Montana. This money will be used to provide…


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March 2018

Let's say you develop a product (the coolest backpack ever), register your trademark ("Larkspur Designs"), and hit the market. Two months later, you discover that some other company (seller name:…


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January 2018

The word "maverick" has been used to describe politicians such as Senators John McCain (Arizona) and Lowell Weicker (Connecticut), but the term derives from 19th century land baron Samuel Maverick, a…


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August 2017

Patent scams do come in all shapes and forms—and I am not referring just to the people who advertise on tv (we will save that article for another day). I have never seen an ad for a patent attorney…


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June 2017

Whether you are a new business owner or an experienced entrepreneur starting up a new business, these seven tips will save you money when it comes to your trademarks and domain names.1. Conduct at…


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January 2017

Roughly one year ago, Montana joined the bandwagon of states that have passed so-called "cottage food" laws. This, coupled with Montana's leadership in the brewery, winery and distillery industries,…


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August 2016

Montana currently ranks 38 out of 50 states for per capita income, up from 47 in 2014, and has enjoyed the fifth fastest wage growth among all states over the past decade. According to Barbara…


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July 2016

There is a new game in town, and it's called an international design. For some time now, the rest of the world has treated "designs" more like trademarks than patents—according to the World…


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June 2016

Montana deserves credit for enacting legislation in 2015 that makes it easier for inventors and startup businesses to attract investors by eliminating onerous securities registration requirements for…


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February 2016

This may come as a surprise to many readers, but the first computer programmer was a woman. Her name was Ada Lovelace (née Byron), and she was the daughter of the famous poet Lord Byron. The fact…


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January 2016

As a patent attorney in Billings, Montana, I have represented hundreds of patent owners and about a dozen clients that have received cease and desist letters (or "invitations to license") from patent…


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December 2015

On April 2, 2015, Governor Steve Bullock signed Senate Bill 39, which was a bill (now a law) intended to protect Montana businesses from being targeted by patent trolls. The phrase "patent troll" is…


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June 2015

On April 2, 2015, Governor Steve Bullock signed Senate Bill 39, which was a bill (now a law) intended to protect Montana businesses from being targeted by patent trolls. The phrase "patent troll" is…


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March 2015

Part 3: DistilleriesThis article is the third in our three-part series on the burgeoning winery, brewery and distillery industries in Montana. RoughStock Distillery of Bozeman claims to be the first…


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February 2015

Part 2: BreweriesThis article is the second in a three-part series of articles regarding the licensing of alcoholic beverages in Montana. Our first article dealt with wineries; this article will…


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January 2015

Part 1: WineriesDrive through downtown Billings, and the profusion of microbreweries and distilleries is apparent. New York City we are not (some would say for the better), but Billings does have its…


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December 2014

According to Statistics Brain (http://www.statisticbrain.com/tattoo-statistics/), the amount of money spent on tattoos in the United States alone exceeds $1.6 billion annually. There are over 20,000…


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October 2014

In our February 2011 article, we discussed the four factors that are considered by courts in determining whether "fair use" (a defense to infringement) exists under U.S. copyright law. The first…


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August 2013

In June of this year, the U.S. Supreme Court decided a case involving the patentability of human genes. According to the Court, human genes in and of themselves are not patentable, but synthetic…


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June 2013

The Supreme Courts in both Canada and the United States have now rejected farmers' claims that Monsanto's patents on glyphosate-resistant plants should not apply to the replanting and/or re-use of…


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March 2013

It is a fundamental principle of U.S. copyright law that the owner of a copyright has certain exclusive rights. These rights include the exclusive right to distribute the work in the United States.…


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January 2013

As a follow-up to our last article on franchises, this article discusses a recent decision by the Quebec Superior Court that penalized the Dunkin' Donuts franchisor to the tune of $16 million for not…


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November 2012

At first blush, a franchise sounds like a great business opportunity--someone else has already taken the risks associated with developing a product, establishing a market, and protecting a brand. All…


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September 2012

An issue that frequently arises in the context of patent infringement litigation is whether a first-filed declaratory judgment action brought by an accused infringer should be stayed, transferred or…


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July 2012

The Bakken--a 200,000-square mile area of subsurface rock extending across parts of North Dakota, Montana and Saskatchewan--represents the largest oil boom this country has seen in decades. The…


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May 2012

I have acted as a testifying expert, and I have also retained numerous expert witnesses throughout my career. A good expert is one who does her homework, who has a high degree of credibility because…


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March 2012

The U.S. Customs & Border Protection (CBP) agency has a procedure for recording registered trademarks and copyrighted works with CBP. Recordation of your trademark or copyrighted work with the…


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February 2012

Most people think of copyright law as applying to creative works like books, movies, paintings, photographs, sculptures and other works of art and/or literature; however, copyright law also protects…


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January 2012

One year ago, we wrote about fair use under U.S. copyright law (click here to view this article). There is a similar "fair use" doctrine under U.S. trademark law, and this article provides a summary…


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December 2011

I am asked all the time by new clients what they can (or should) do with a patent once they get one. There are really only two options: you can make and sell your invention, or you can let someone…


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November 2011

At long last, the United States has passed patent law reform legislation. On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act. We wrote about prior versions of…


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October 2011

One of the more creative defenses that has arisen in the context of patent infringement litigation is called "divided infringement." Under this theory, a defendant is not liable if it performed some,…


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September 2011

Earlier this year, the Internet Corporation for Assigned Names and Number (ICANN) approved the execution of a registry agreement with the ICM Registry for the registration of ".xxx" domain names. The…


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August 2011

On July 29, 2011, the U.S. Court of Appeals for the Federal Circuit (the court that hears all patent appeals) issued a decision that struck a decisive blow to patent trolls. The term "patent troll"…


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July 2011

When coming up with a name for a new business or product, many people assume that they will avoid trademark repercussions-and that they do not need to do a trademark search-if they simply use their…


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June 2011

In short, the answer is yes, as long as the requirements for patentability (utility, novelty and nonobviousness) are met; however, the vast majority of food products are protected as trade secrets…


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May 2011

Although I specialize in intellectual property law, we are often asked whether a company can include minimum pricing requirement in its contracts with distributors or retailers. What most of our…


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April 2011

The first two issues I address with every new patent client who contacts me are ownership and disclosure. Before you proceed with the patent process, you need to make sure you own the patent rights…


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March 2011

As many of you know who have been following the patent law reform debate, patent law reform has been a long time coming. (For our earlier article on patent law reform, please go here.) Earlier this…


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February 2011

Unlike patent law, copyright does not protect the underlying idea. In other words, if you come up with a new method for training workers online, you will not be able to protect that method under…


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January 2011

It is basic tenet of patent law that if you buy a patented product directly from the patent owner or its authorized licensee, you cannot be held liable for patent infringement with respect to that…


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December 2010

There are individuals who intentionally commit fraud on the trademark office in an attempt to obtain rights to which they are not entitled, but more often than not, it is individuals--either…


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November 2010

One of the fundamental tenets of patent law is that you cannot patent a concept. I have always wanted to figure out a way to beam myself from one place to another, but I have never figured out how to…


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October 2010

In a decision dated October 14, 2010, Judge Michael Phelan of the Federal Court in Ottawa, Ontario, reversed a decision by the Canadian Commissioner of Patents holding that business methods are not…


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September 2010

Pursuant to international treaty, all patent applications filed in the United States are published eighteen months after the earliest filing (priority) date. In this context, the term "published"…


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August 2010

Nearly every business today has a website, and the content of your website may include valuable intellectual content. For example, you may have white papers, charts and graphs reflecting your…


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July 2010

In a June 28, 2010 decision involving the patentability of business methods, the U.S. Supreme Court rejected the "machine-or-transformation" test handed down by the U.S. Court of Appeal for the…


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June 2010

In two recent decisions, the German Federal Supreme Court in Karlsruhe upheld the patentability of two different computer program-related inventions on the ground that software is patentable as long…


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May 2010

Under U.S. copyright law, an "architectural work" is defined as "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans or drawings."…


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April 2010

Your trademark is an important asset of your business. To preserve and enhance its value, it is critical that the trademark be used properly. Following is a list of basic rules for trademark usage:1.…


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March 2010

There is such a thing as a "naked" license, and in a sense, it does mean a license without clothes. The term "naked license" is a phrase that arises under U.S. trademark law, and it refers to a…


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February 2010

This article is intended to provide an overview of the trademark registration process for clients who have not been through the process before. Prior to filing a federal trademark application, we…


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January 2010

We are often asked to represent clients seeking to buy or sell an Internet-based business. Our role typically is not as corporate counsel but as intellectual property counsel for either the buyer or…


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December 2009

Many of our clients are individual inventors, and almost without exception, we recommend that they form an entity and assign their patent rights to the entity. The purpose of this article is to…


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November 2009

1. IntroductionThere are four types of intellectual property-patents, copyrights, trademarks and trade secrets-and every business has some form of intellectual property. Patents protect inventions,…


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October 2009

The confidentiality of a federal copyright application and deposit is an issue that is of concern to many of our clients. Often times the confidentiality issue is the determinative factor in terms of…


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August 2009

There are two types of federal trademark registrations-Principal Register and Supplemental Register. Descriptive marks may not be registered on the Principal Register unless they have been in use in…


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July 2009

In our May 2006 issue, we explained the rules regarding the use of patent markings. A patent marking is a phrase like "patent pending" or "U.S. Patent No. 7,357,193" that appears on a product or in…


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June 2009

In our last issue, we wrote about intervening rights under U.S. patent law. The term "intervening rights" refers to the rule that if you broaden the claims of your patent through a reissue, you…


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May 2009

The doctrine of intervening rights under U.S. patent law is based on Section 252 of the Patent Act. This statute applies to reissued patents, and it states that anyone who made, purchased, offered to…


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April 2009

After an initial trial period implemented in cooperation with the Japanese Patent Office, the U.S. Patent and Trademark Office (USPTO) has entered into so-called "patent prosecution highway" (PPH)…


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March 2009

The purpose of this month's newsletter is to provide guidance to clients for whom I have been engaged to file a software patent application. Because a software patent application must explain not…


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February 2009

There are three possible avenues for protecting plant-related inventions. The first is to obtain a plant patent. A plant patent is a different than a utility patent (which is what most people think…


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January 2009

On October 30, 2008, the U.S. Court of Appeals for the Federal Circuit handed down a decision that purports to clarify the standard for determining whether a "process" is patentable. Section 101 of…


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December 2008

In the first reported decision to directly address the enforceability of open source licenses, the U.S. Court of Appeals for the Federal Circuit ruled on August 13, 2008, that the grantor of an open…


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November 2008

On October 13, 2008, President Bush signed into law Senate Bill 3325, entitled the “Prioritizing Resources and organization for Intellectual Property Act of 2008.” According to an October 14, 2008…


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May 2007

There has been a growing consensus for some time that patent reform is necessary, but there has not always been a consensus as to which aspects of our current patent system need to be changed. That…


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April 2007

Under the "deemed export rule," the sharing of technology with a foreign national located in the United States is treated the same as an export of technology overseas. The deemed export rule is…


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March 2007

This article is based on a written interview provided by Antoinette M. Tease for the online publication IT Business Edge. That article can be viewed here.The Boston Globe reported on February 27,…


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February 2007

On October 13, 2006, the Security and Accountability For Every Port Act (the "SAFE Port Act") was signed into law. Although the bill was initially introduced in the House of Representatives, it…


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January 2007

Earlier this month, the U.S. Supreme Court handed down a decision that will make it easier for licensees to challenge the validity of their licensors’ patents. In MedImmune, Inc. v. Genentech, Inc.,…


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December 2006

To assist our clients in negotiating patent license agreements, we have developed a patent license agreement term sheet questionnaire. This questionnaire was originally intended to provide inventors…


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November 2006

In the first reported U.S. case to address, albeit indirectly, the validity of open source licenses, the United States Court of Appeals for the Seventh Circuit held in Wallace v. International…


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September 2006

Computer programs are a unique form of intellectual property in that they can be protected by both patent and copyright laws. This article addresses copyright protection for computer programs. There…


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August 2006

In a case closely followed by baseball enthusiasts, a federal judge in St. Louis ruled earlier this month that the Major League Baseball Players’ Association does not own the intellectual property…


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July 2006

On November 3, 2005, the U.S. Patent Office published what is purportedly the first “storyline” patent application to be filed in the United States. The term “storyline patent” was coined by the…


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June 2006

On February 23, 2006, a Montana District Court Judge handed down a decision that could have serious implications for the way contracts are drafted in Montana, particularly those contracts that are…


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May 2006

A patent marking is a notice that appears on a product that tells the public that the product is covered by either an issued patent or a pending patent application. For issued patents, the marking…


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April 2006

In deciding whether to file a federal trademark application, clients often ask about the benefits of a federal trademark registration. This article will briefly review those benefits. For any company…


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January 2006

1. Ascertain What Type of Intellectual Property Is At Issue. When a client confronts you with a potential intellectual property (IP) matter, the first thing you need to do is determine what type of…


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December 2005

In 1988, the Montana Historical Society published an anthology of stories about Montana edited by William Kittredge and Annick Smith. The anthology is beloved by Montanans and includes writings from…


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November 2005

On November 10, the United States Senate passed two bills intended to strengthen criminal laws against those who traffic in counterfeit goods. The first bill, S. 1699, is entitled the “Stop…


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October 2005

Last April, Montana joined a number of states that have passed data security legislation to protect consumers in the event of breaches in the security of databases containing personal information.…


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September 2005

Under US copyright law, an individual who creates a copyrightable work—such as a book, magazine, photograph, painting, sculpture, musical composition, sound recording, software application, or piece…


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August 2005

Often two or more people will decide to work together on a collaborative project that results in the creation of a copyrightable work, such as a book, videotape or even a software program. More often…


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July 2005

A covenant not to compete (or “non-compete agreement”) is an agreement not to compete with a former business partner, employer, customer, vendor or any other party with whom you have a current…


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June 2005

The following article is a guest column by John Lambert of NIPC (Northern Intellectual Property Chambers) in the United Kingdom. Mr. Lambert is a barrister of Lincoln's Inn and the Northern Circuit…


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May 2005

With any software development project, there is or should be a written agreement between the development firm and the customer. If the contract is well drafted, and if the parties are ethical (i.e.,…


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April 2005

A new technology developed by a Japanese communications company called Nippon Telegraph and Telephone Corporation (“NTT”) uses the human body for broadband networking. More specifically, NTT’s…


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February 2005

Many in the U.S. have criticized the liberalness with which, in their view, the U.S. Patent Office grants software and business method patents. Yet our patent office continues unabashedly to apply…


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February 2005

One form of trademark infringement unique to the Internet involves the use of metatags. Metatags are key words used to direct Internet users to a website, and they are hidden to the normal website…


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January 2005

A certification mark is a name, logo or slogan that is used to signify that the goods or services used in connection with the mark meet certain standards. According to the trademark office, there are…


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December 2004

An issue that often arises for technology companies is whether to hire someone as an independent contractor or an employee—and if a person is hired as an independent contractor, whether that person…


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November 2004

Earlier this month, in the nation’s first felony spam trial, a brother and sister team were convicted under Virginia’s anti-spam law for sending junk email to millions of America Online customers.…


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October 2004

In a settlement reached less than two weeks ago, Sun Microsystems agreed to pay Eastman Kodak Co. $92 million in damages for infringement of three of Kodak’s software patents. The patents involved an…


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September 2004

For drugs that are subject to FDA approval, patent holders can obtain extensions of their patent terms if the drug is still being reviewed by the FDA when the patent issues. This type of patent term…


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August 2004

Most inventors know that the U.S. patent laws give the holder of a U.S. patent the right to prevent others from making, using, or selling the patented invention in the United States or importing that…


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July 2004

In a recent decision involving insurance coverage, the United States Court of Appeals for the Fourth Circuit (located in Richmond, Virginia) held that software and data are not “tangible” property.…


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June 2004

In our March 2004 newsletter, we talked about the Canadian Supreme Court decision in Harvard College v. Canada. Breaking ranks with the United States, the Canadian Supreme Court held in Harvard…


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May 2004

An issue that should be of interest to anyone who holds stock in a corporation is whether and to what extent a shareholder can be held liable for an act of copyright infringement on the part of the…


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April 2004

Under U.S. patent law, inventors have one year within which to file a patent application after any one of the following events: publication of a document describing the invention, a sale of the…


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March 2004

In 1980, the U.S. Supreme Court held in Diamond v. Chakrabarty that living organisms are patentable if they are the result of human effort or ingenuity, in other words, if they are genetically…


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February 2004

In a recent decision involving insurance coverage, the United States Court of Appeals for the Fourth Circuit (located in Richmond, Virginia) held that software and data are not “tangible” property.…


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January 2004

By virtue of the Visual Artists Rights Act, artists have intellectual property protection that extends beyond traditional copyright law. Under copyright law, an artist has the exclusive right to…


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December 2003

I have received a lot of questions about the Digital Millennium Copyright Act, but perhaps the least known provision of that Act is the Vessel Hull Design Protection Act. You might think that an…


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November 2003

On November 2, 2003, the United States of America became a party to the Madrid Protocol, and the U.S. Patent and Trademark Office (USPTO) began accepting international trademark applications. In 2002…


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Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.

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