Publications
Patent Law Articles
Click on the title of each article listed below to follow a link to the article. The articles are listed in reverse chronological order. I delivered each of the following articles to meetings of patent or environmental attorneys.
14. Patent Remedies Without Going to Court
(Patent) A patent or patent application can be attacked, amended or corrected without going to court. This article discusses the administrative options after the America Invents Act.
13. Changes to 35 U.S.C. 102 under the America Invents Act
(Patent) The new 'America Invents Act' radically changes how inventors and invention-owning companies protect their inventions. This article addresses the changes to the patent bars and to prior art.
12. Inducement of Infringement
(Patent) Causing someone else to infringe a patent is the same as infringing the patent. This memorandum explores inducement of infringement and addresses the element of 'intent.'
11. Supreme Court Decisions on Patentable Subject Matter
(Patent) The decision in the Federal Circuit Court substantially restricted what can be patented and was modified by the U.S. Supreme Court. This memorandum is a review of prior Supreme Court decisions on the what can be patented.
10. Deferred Examination of Patent Applications
(Patent) Deferred examination allows a patent applicant to request that review of the patent application be deferred by up to three years from the priority date, which can be valuable for some. This memorandum reviews the use and requirements of deferred examination.
9. Inequitable Conduct as a Defense to Patent Infringement:
(Patent) The doctrine of 'inequitable conduct' is a shield against patent liability and is a defense frequently raised in patent infringement litigation. This memorandum provides an overview of the historical roots and current development of 'inequitable conduct.'
8. Appeal of Patent Claim Rejections:
(Patent) A final rejection of a patent application by a patent examiner is not the end of the process. The patent applicant can appeal the rejection to the Patent Trial and Appeal Board ('PTAB') and to the Court of Appeals for the Federal Circuit. The patent applicant also can file a request for continuing examination to bring new facts or arguments to the attention of the examiner.
7. Enforcing Design Patents:
(Design patents) Design patents protect how an article looks rather than how the article works. Recent and pending court decisions may make design patents more valuable, and hence more worthwhile, than in the past. This article addresses the state of the law of design patent enforcement.
6. Patent Licensing of Future Inventions:
(Patent) This memorandum is a review of an article on patent licensing. I delivered this review to the Delaware County Intellectual Property Forum.
5. Trade Secrets in Pennsylvania:
(Trade Secrets) Pennsylvania adopted the Uniform Trade Secrets Act in 2004. This memorandum addresses the changes to state law from that adoption.
4. Indirect Infringement of Copyright:
(Copyright) This memorandum is a review of selected cases addressing the question of whether a provider of a copying technology is liable for infringement where other persons use the technology to copy works protected by copyright. I presented this article to the Delaware County Intellectual Property Forum.
3. Patent Reexamination:
(Patent) Patent reexamination is a mechanism for a patent holder to strengthen his or her patent by bringing new art to the attention of the examiner. This article discusses the finer point of patent reexamination. I presented this article to the Delaware County Intellectual Property Forum. The article is cited by "," Harvard Journal of Law and Technology, Vol. 17, No. 2, Spring 2004.
2. Protection of Trade Dress:
(Trademark) A trademark identifies the source of a product. The appearance, or "trade dress," of a product also can serve to identify its source. This article discusses Supreme Court decisions concerning trade dress. I presented this article to the Delaware County Intellectual Property Forum.
1. Supreme Court Jurisprudence on the Doctrine of Equivalents:
(Patent) The doctrine of equivalents expands the reach of a patent beyond its literal claims to include inventions 'equivalent' to the patented invention. I presented this article to the Delaware County Intellectual Property Forum.
Newsletters
The following are links to newsletters by Lipton, Weinberger & Husick.
41. Newsletter, July 2012
Patentable Subject Matter - Mayo v
Prometheus
Powerful ideas
Can a title be a registered trademark?
40. Newsletter, June 2012
Patenting the non-obvious problem
Self-incrimination - It's for everybody.
Trade Dress
IP protection around the world.
39. Newsletter, May 2012
University copyright on student work
Design patent and trademark law merge
Fair use of MLB broadcasts
38. Newsletter, April 2012
Copyright is not fashionable.
It's official - intellectual property is valuable.
Files on the cloud may not be private
37. Newsletter, March 2012
Business resources for entrepreneurs
Copyright troll dealt a blow.
Facebook redefines common words.
Healthcare and innovation
36. Newsletter, Febuary 2012
Putting books on the digital shelves
Patent justice is denied.
Facebook not so friendly.
Ipad trademark in dispute
35. Newsletter, January 2012
Stopping a Patent
Kodak - definition of a strong trademark
Marx Bros. and trademark law.
Walmart competition for new products
34. Newsletter, December 2011
Ask Dr. Copyright . . . Protect Your Software, Circuit
Boards, and Mask Works
Quick Patent Application Review for Green Technologies
French Fries Sue Crabs
Has Your Privacy Been Breached?...Now You Have a
Resource.
33. Newsletter, November 2011
Ask Dr. Copyright - Peer-to
Peer file sharing may be hazardous to your health.
'Best Mode' under the America Invents Act
The 'First Sale' doctrine and why you should not
rely on Google as your lawyer
Trademark infringement cases on the rise
The privacy we give up for cell phone convenience.
32. Newsletter, October 2011
High cost of character costumes
Deceptive trademarks
America Invents Act, Part II - Prior Art
31. Newsletter, September 2011
Patent reform signed into law
America Invents top ten list
Crucial information for inventors
PTO restarts 'fast track' patent review
Descriptive Trademarks: Apple loses one
30. Newsletter, August 2011
Copyright Infringement and the Vanishing
Corporate Veil
Patent Reform is Broken
When is Computer Software an Unpatentable Mental
Process?
29. Newsletter, July 2011
Treb Lipton, 1942-2011
Theft by a departing employee
Protecting intellectual property on Facebook
Supreme Court says employee can assign away employer's invention
28. Newsletter, June 2011
Fate of a copyright troll
House passes 'America Invents Act'
LWH reclaims domain name
ICANN developments
'Inequitable Conduct'
27. Newsletter, May 2011
Protecting your trademark from XXX
Viacom v YouTube - The saga continues
Who owns your invention?
New opportunities for patent applicants.
26. Newsletter, April 2011
Branding is effective
Trade secret theft is a crime
Dr. Copyright
25, Newsletter, March 2011
'America Invents Act' passes
Senate, pending in House
Two Trademark Registers
Attorney-Client Privilege
Chocolate Milk, part II
24. Newsletter, February 2011
Is Coca-Cola's trade secret
recipe still a trade secret?
Watson computer vs. Jeopardy champions
What's in a
name? - Your name as a trade mark
Patent Reform Legislation forwarded to the full U.S. Senate
Federal Courts' Continued Hostility Toward Complex Patent Issues
23. Newsletter, January 2011
Patent Infringement 'R' Us
To Hold or Not to Hold - IP holding companies
PTO Green Technologies Program Extended
Patent Reform Redux
22, Newsletter, December 2010
Copyright and Safe Harbor, part II
Corvette and famous trademarks
Losing foreign patent rights
21. Newsletter, November 2010
Copyright and 'safe harbors'
Policing Trademarks
Deferring patent examination
20. Newsletter, October 2010
Ask Dr. Copyright - duration of
a copyright
Famous trademarks
Does a food trademarks protect the recipe?
Patent search tool for FireFox
PTO issues patents, reduces backlog
19. Newsletter, September 2010
Transfer of software licenses
Keeping it private in the workplace
Gourmet's guide to IP rights
Dangerous patent applications
Unspillable milk and iPhone apps
18. Newsletter, August 2010
Mailing a work
to yourself
End of the Internet monopoly
Protecting trade secrets from employee theft
Patent invention services - buyer beware
17. Newsletter, July 2010
Jurisdiction in the Internet World
Grammar of Copyrights and Trademarks
Inventor's Eye - PTO publication
Copyright and public performance of a movie
16. Newsletter, June 2010
Supreme Court Decides Bilski.
Supreme Court sends a message to employees.
Can I donate a copyright?.
PTO considers multiple patent review tracks.
Internships: It's not just another free employee.
15. Newsletter, May 2010
Can I freely distribute a news article?.
Patent reform Lite.
Registering trademarks for scents, color and sound.
International piracy.
Patent Prosecution Highway
14. Newsletter, April 2010
Cyberspace is expanding.
Can I sell photos that I take?
Planning for events beyond your control.
Patent reform is not dead.
13. Newsletter, March 2010
Is an image without a copyright
notice free to use?.
Don't go naked when assigning a trademark.
PTO budget proposes more examiners and fees..
Cease and desist letters and trademark rights.
12. Newsletter, February 2010
Intent-to-use trademark
applications and the Internet.
Is plagiarism copyright infringement?.
Proper patent marking.
When is a product 'sold' for patent infringement?
11. Newsletter, January 2010
Teaching innovation.
Using trademarks where they do not belong.
PTO pilot program for green technologies.
Do patent applications require a separate written description?
10. Newsletter, December 2009
Bloggers and advertisers cautioned by the FTC
on product endorsements.
Global Findability goes for the gold.
What to do when your trademark is registered as a domain name by
another person.
Planning to license or sell your patent?
9. Newsletter, November 2009
Read your software licenses carefully.
PTO pilot program for small entities.
What's in a name-Choosing a domain name can be tricky.
You don't have to wait until your patent issues.
8. Newsletter, October 2009
Ringtones freed by district
court.
Hope for the patent system?
The Mighty Mouse saga
Free patent search resources
7. Newsletter, September, 2009
Is your patent vulnerable to foreclosure?
Sign, sign, everywhere a sign.
PTO Director Kappos to reform examiner 'count'
system
Congress considers copyright protection for
fashion designs.
6. Newsletter, August, 2009
New PTO Administrator sworn in.
Is a download a performance?
Supreme Court to consider what can be patented.
Real trademarks in a virtual world, part II
5. Newsletter, July, 2009
Is ASCAP crazy?
Michael Jackson Defied Gravity.
Registered Offices are important.
Why not use fake patent numbers?
4. Newsletter, June, 2009
Facing Trademark Protection on Facebook
Design Patents
Real Trademarks Used in a Virtual World
Developments at the Board of Patent Appeals and Interferences
3. Newsletter, May, 2009
State trademark registration
Patent reform - First to File vs. First to Invent
Don't forget trade secrets
$9.7 million trade secret judgment
2. Newsletter, April 2009
iPod to the Queen
Applications and revenue down at the PTO
Trademarks- Use them or lose them
Protecting yourself from infringement on EBay
1. Newsletter, March 2009
Registering copyrights and
trademarks with Homeland Security
Deferred examination of patent applications
Linking may be dangerous to your health
Environmental Law Articles:
6. RCRA Land Ban:
(Hazardous Waste) The RCRA Land Ban is an effort by Congress to phase out all disposal of hazardous wastes in landfills or other land-based disposal. I originally presented this article to a meeting of environmental attorneys.
5. Legislation Affecting the Solid Waste Industry:
(Solid Waste) The companies that collect and dispose of trash are under attack in Pennsylvania. This article discusses efforts by the Pennsylvania Legislature to limit the waste disposal industry. I originally presented this article to a meeting of Philadelphia environmental attorneys.
4. Ozone Non-Attainment and the Problem of Long Range Transport:
(Air Pollution) Air contaminants travels from power plants in the Midwest and cause air pollution problems in the Eastern United States. Fixing the problem will be expensive and is resisted by Midwestern states and electrical utilities. The monograph explores the efforts by EPA and several Eastern states to force a cleanup of the Midwestern power plants. I presented this monograph to the Advanced Air section of the Pennsylvania Bar Association Environmental Law Forum.
3. The "Any Credible Evidence" Rules and Compliance Assurance Monitoring:
(Air Pollution) The ACE and CAM rules relate to the monitoring and enforcement of Federal air pollution requirements. The CAM rules require air polluters to collect evidence of their own air emissions. The ACE rules allow a private citizen to use the information to enforce the clean air laws. I presented this monograph to the Advanced Air Section of the Pennsylvania Bar Association Environmental Law Forum.
2. Pennsylvania's Water Quality Antidegradation Program:
(Water Pollution) The thrust of the "anti-degradation" water pollution program is to protect lakes, streams and rivers from pollution. Pennsylvania's program was substantially changed in 1999 in response to litigation and pressure from EPA. I originally presented this article to a meeting of Philadelphia environmental attorneys.
1. Pennsylvania's Anti-Sprawl Legislation:
(Growth) This monograph was published by the Philadelphia Bar Association and relates to efforts to control explosive suburban real estate development.
