May 24, 2016—Terry Sanks and David Maire have been recognized as “IP Stars” by Managing Intellectual Property (“MIP”) magazine in the fourth edition of the IP Stars Handbook—a Managing IP for 2016. Dave is recognized as a “Patent Star” for his patent prosecution practice. Terry’s recognition resulted from his varied legal practice covering primarily patent prosecution and IP litigation, as well as trademarks, copyrights, unfair competition, trade secrets, and licensing. As a result, Terry is recognized as both a “Patent Star” and a “Trademark Star.” Both founders of BWSM have been continuously recognized as “IP Stars” since the inception of this honor in 2013.
The IP Stars Handbook highlights the country’s leading intellectual property attorneys based on surveys and interviews where a recognized lawyer’s practice and industry experience along with recommendations from their peers and clients are used to identify such attorneys to in-house counsel at Fortune 500 companies.
May 24, 2016–For the fourth consecutive year, BWSM is ranked “Highly Recommended” in the fourth edition of the IP Stars Handbook—a Managing IP guide which identifies the leading intellectual property firms and lawyers in the United States. BWSM is only one of four law firms in the State of Florida to achieve the “Highly Recommended” ranking. BWSM is recognized as being among the top IP boutiques in Florida for its particularly strong patent practice and burgeoning reputation for its trademark work.
The IP Stars Handbook is produced by Managing Intellectual Property Magazine which is a leading international magazine for in-house IP counsel and is part of the Euromoney Legal Media Group with offices in London, Hong Kong and New York.
Visit ipstars.com to view the 2016 rankings and editorial.
May 21, 2016—With the 138th International Trademark Association Annual Meeting occurring in Orlando this year, BWSM hosted a well-attended reception for foreign agents on the first evening of this six-day event. In addition to foreign trademark attorneys attending nearly an equal amount of foreign patent attorneys were also in attendance. This reception provided BWSM attorneys and staff an opportunity to forge more binding relationships with many of the foreign agents the firm currently uses and a chance to meet potential new foreign agents. The 2016 Annual Meeting had over 10,000 registrants, making this meeting the largest in INTA’s yet.
Written By Judith Evans
The USPTO just issued a May 2016 Subject Matter Eligibility Update providing further guidance to examiners and practitioners in determining subject matter eligibility under 35 U.S.C. § 101, more specifically to clarify the scope of judicial exceptions to subject matter eligibility. Subject matter involving an abstract idea, law of nature, natural phenomena, or natural products is considered ineligible for patent protection and is thus called a “judicial exception.” However, claims that include limitations involving these exceptions are not a priori unpatentable; instead they require heightened scrutiny by the examiner to determine whether the claim as a whole “adds meaningful limits on the use of the exception” that make the claim patentable. Continue reading May 2016 Subject Matter Eligibility Update
Written By Eugene J. Molinelli
A brand new decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) and new USPTO guidelines for examiners disseminated on May 4, 2016 may have breathed new life into arguments that had been receiving resistance from some examiners in response to rejections that software-related patent claims are not patent eligible under 35 U.S.C. 101.
For example, the guidelines state “Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.” By reciting many steps of a claim as the abstract idea, examiners have gone beyond any abstract idea recognized previously by the courts. Furthermore, some examiners have asked applicants to cite an example in the previous guidelines similar to applicants’ respective claims. Examiners may ignore applicants’ objections that there is o example corresponding to applicants’ respective claims. The new guidelines state “applicants should not be required to model their claims or responses after the examples to attain eligibility.” Thus it may be worth referencing those two points and resubmitting and even resubmitting previous responses to such rejections. Continue reading Comments on the Revival of Software Patents as Patent Eligible Subject Matter
May 17, 2016—BWSM is hosting a six-part lecture series on six different intellectual property topics at the Florida Institute of Technology (“Florida Tech”) as part of Florida Tech’s Skill Space continuing education program. This luncheon lecture series is free for Florida Tech students, faculty and staff whereas there is a nominal charge for others attending. The presenters are BWSM attorneys John DeAngelis and Fred Romano. The first lecture occurred this week and the topic was “How Can I Use Copyrights to Protect and Grow My Business Assets?”
The next scheduled lectures and dates are as follows:
June 14: Leveraging Patent Rights to Achieve Business Success.
September 13: How Should Trademark Rights Be Used to Benefit a Business?
October 11: What Terms Should Contracts Require to Protect My IP and Avoid Liability? What Are My Rights and Remedies?
November 8: Strategies for Protecting Mobile Apps and Other Software-Based Products.
Written By Terry M. Sanks
The Defend Trade Secrets Act (“DTSA”) was signed into law yesterday. The DTSA amends the Economic Espionage Act of 1996 and now provides another means to protect against intellectual property theft. Though federal law already provided for a criminal theft of trade secret cause of action, which could be brought by the federal government, this new federal law creates a private civil cause of action for trade secret misappropriation that can be brought by individuals or business entities if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce. Continue reading Federal Theft of Trade Secrets Act Enacted
May 3, 2016— After an extensive and confidential peer review by members of the Bar and Judiciary, Dr. Gene Molinelli received a Martindale-Hubbell® Peer Review Rating of AV Preeminent, which is the highest rating available. According to Martindale-Hubbell®, “Peer Review Ratings attest to a lawyer’s legal ability and professional ethics in specific Areas of Practice, and reflects the confidential opinions of members of the Bar and Judiciary. The Peer Review Rating is established by lawyers. The legal community respects the accuracy of ratings because it knows that its own members are directly involved in the process.” Patents and intellectual property were the specific areas of practice in which Dr. Molinelli was evaluated.