Cover Story
Based on recent changes to the U.S. patent statute, companies may wish to consider increased use of trade secret protection for their proprietary ideas and information. If employees understand their part in an unambiguous and committed trade secret culture, company information security policies will more likely be accepted and followed. This article discusses how the Leahy-Smith America Invents Act and recent court decisions affect patent protection and enforcement rights and how trade secrets can be adapted into the corporate culture to help improve protection of valuable intellectual property.
FEATURED ARTICLES
The Leahy-Smith America Invents Act was signed into law on September 16, 2011 and significantly changes the U.S. patent system. This article is a broad overview of some of the more impactful changes including the conversion to a first-to-file system, new/revised challenges to the validity of an issued patent, and revisions to the marking and false marking statutes, among others.
The Federal Circuit’s decision in Spectralytics, Inc. v. Cordis Corporation and Norman Noble, Inc. brings some clarity on two issues that relate to determining a reasonable royalty: 1) whether a sales commission is relevant to the determination of reasonable royalty; and 2) whether a prior sale places a limit on the reasonable royalty.
The Court’s recent opinion in the Powell v. Home Depot patent infringement case provides insight relevant to the determination of use-based reasonable royalties, which, in some respects, is applicable to more typical patent infringement matters. The Court reaffirmed that in determining a use-based reasonable royalty, it is appropriate to consider the value of the benefit conferred to the infringer by using the patented technology and that neither the infringer's nor the patentee's profits are an absolute limit on reasonable royalty damages.
As the Federal Circuit illustrated in Bosch v. Pylon, the abolishment of its general rule on the presumption of irreparable harm does not mean that “the fundamental nature of patents as property rights granting the owner the right to exclude” should be ignored in this inquiry. A patentee seeking an injunction must show that the four-part test favors an injunction. As a result, there will be an increased need for more detailed financial and economic analysis to address irreparable harm and the other equitable factors of the four-part test.
