Patent Prosecution Legal Terms and Legal Words. Intellectual Property Terminology

disclosure and enablement

“[I]f the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance… {T]his claim can derive no aid from the specification file. It is outside of [the specification], and … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property

licensing a patent

A patent licensee does not have to materially breach or terminate a license agreement in order to bring an action against the licensor challenging the patent covered by that agreement.Inc. v. Genentech, Inc., 549 U.S. 118 (2007). … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property

licensing trade secrets

Royalty payments pursuant to a written agreement should continue for as long as the licensed formula is used – even after the trade secret becomes know to the public. Warner-Lambert Pharmaceutical Co., Inc. v. John J. Reynolds, Inc. et al , 178 F. Supp. 655 (SDNY 1959). … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property

nonobviousness

“Under §103, the scope and content of prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in pertinent art resolved. Against this background, the obviousness and nonobviousness of the subject matter is determined. Such secondary consideration as commercial … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property

novelty and statutory bars

“But can it be said that the invention was in public use? The use of an invention by the inventor himself, or of any other person under his direction, by way of experiment, and in order to bring the invention to perfection, has never been regarded as such a use.” City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877). … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property

purpose of trademark law

“[i]s to reduce the cost of information to consumers by making it easy for them to identify the products or producers with which they have had either good experiences, so that they want to keep buying the product … or bad experiences so that they want to avoid the product or the producer in the future.“. W.T. Rogers Co. v. Keene, 778 F.2d 334 (7th Cir. … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property

theft of trade secrets

“One may use his competitor's secret process if he discovers the process by reverse engineering applied to the finished product; one may use a competitor's process if he discovers it by his own independent research; but one may not avoid these labors by taking the process from the discoverer without his permission at a time when he is taking reasonable … Full Definition »

Law topic: Patent Prosecution << Legal issue: Intellectual Property