by Kathleen Lynch | Aug 6, 2015 | Entrepreneurship, Innovation, IP Management, Patent Prosecution
(I have to admit I picked this case in part on the name, Fuzzy Babba. )
Walmart sells a similar fuzzy slipper under the mark “Fuzzy Babba™.” Buyer’s Direct sued Walmart and others for infringing their design patent directed to a slipper that Buyer’s Direct sells under the mark “Snoozies”. In their defense, Walmart and others claimed that the patent was invalid because it was an obvious variation on slipper designs in existence at the time the patent application was filed.
A Federal District Court in New York City found in favor of the accused infringers, Walmart, Sears and High Point Design. The court found that the differences between the design patent and other slipper designs were obvious variations and that the patent was invalid.
What’s the take away here? Be very sure of the strength of your patent when you assert it against an alleged infringer. The first defense is often an attack on the patent itself. If the accused infringers prevail, your patent may be invalidated and any rights associated with it are lost.
Advising on intellectual property issues is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jun 30, 2015 | Innovation, IP Management
Recently, the U.S. Supreme Court confirmed a lower court ruling for Marvel Entertainment relating to a patent royalty dispute for a Spider-Man toy. The majority, written by Justice Kagen, found that Marvel did not have to pay the agreed to royalties to the inventor of a web-shooting toy after the patent term expired. “Patents endow their holders with certain superpowers,” Kagan wrote, “but only for a limited time.”
The decision is a loss for the Spider-Man toy inventor Stephen Kimble. Mr. Kimble obtained the patent in 1990 for a toy that shoots foam string from a gloved hand, imitating the web spun by a spider person. Kimble sought to market the toy to Marvel’s predecessor, which at the time made its own “Web Blaster” toy without paying Kimble.
In 1997, Kimble sued Marvel and the parties settled for a fixed payment to Kimble, along with a 3 percent royalty on sales of the toy with no cutoff date. Marvel later sought a declaratory judgment that it no longer needed to pay royalties after the end of the patent term in 2010.
What’s the take away here? If you are entering into a license agreement for intellectual property rights, be sure to fully understand your obligations as well as your rights. Capitalizing on innovative developments is critical to any organization. Having the right person to help you make those decisions is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Feb 7, 2013 | IP Management, Patent Prosecution
With the implementation of the American Invents Act, the United States patent system is changing from a first-to-invent system to a first inventor to file system. Without going into all of the nuances and rules of the new act, the basic change is that the patent will be awarded to the first inventor to file the invention with the US Patent Office.
This race to the Patent Office necessitates a review of any organization patent management system. The change in how patents will be awarded inevitably requires organizations to manage and move on innovations quicker than ever before. Such a system should include the following:
Documenting innovation. This provides a record of inventorship, and also a time line as to what was invented and when the innovation occurred. An existing inventor notebook system that documents innovation and that meets the evidentiary requirements should continue to be implemented.
This group should include all of the key players that have decision making capacity to manage the organization’s IP. Typically this should include R&D, business development and legal or IP. This group should meet either in person or virtually on a regular basis. A virtual or hybrid system may be more appropriate as the group should have the ability to act quickly when innovations are disclosed.
The duties the IP committee would include:
Innovation assessment-whether to iniate a patent application or patentability assessment. All innovations cannot usually be fully protected, so the group may need to come up with a process for evaluating the developments and prioritizing them based on company needs.
Provide strategic input-with existing filings, the committee may need to provide input on prosecution strategy, and where to file for patent protection. Geographic patent protection should coincide with present and future business activity as well as possible competitor activity.
Manage issued patents-after patents have issued the decision to continue to pay maintenance fees may be outweighed by business realities. If your company is no longer making or selling a patented product, does it make financial sense to continue to pay patent maintenance fees if the innovation is obsolete? Alternatively, it may make sense to look at possibly out-licensing the technology.
Complete the circle-once a patent has reached the end of its useful life, it is typical to file it away. However, it may be appropriate to look at whether the innovation in question can be given new life with an innovative improvement. Also, circling back with customers to see what improvements they would like to see on this product is a good way to jump start innovation.
Making sure your assets are protected is considered a best business practice. Having the right person to help you make that decision is critical. The Law Office of Kathleen Lynch is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
