Fore! Court takes swing at printed publications as bars to patentability

The Federal Patent Act prohibits the patenting of an invention that was described in a printed publication more than one year before its patent application is filed. But what is a “printed publication”? In this case, an inventor argued that his rejected manuscript did not qualify as a printed publication because no evidence indicated it was included in a catalog or index at that time that would have allowed an interested party to locate it. A sidebar lists three similar cases.
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Who’s your daddy? Patent inventorship often turns on time of conception

A UCLA researcher temporarily joined a University of Pittsburgh lab to join in a research project. Following applications by the University, a patent was issued for a method developed during the project. The listed inventors included the UCLA researcher. The University of Pittsburgh filed an action seeking removal of all inventors except their own two researchers, arguing that they had completed conception of the invention before the other researchers contributed their efforts. UCLA disagreed, asserting that the Pittsburgh researchers were required to know that the invention contained every limitation of each patent claim at the time of conception.
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Connecting the dot-coms in a trademark dispute

It’s well established that generic terms aren’t eligible for protection as trademarks or service marks. Some marketers, however, might try to bypass that problem by adding the suffix “.com” to an otherwise generic term in hopes of transforming it into a protectable brand name. The U.S. Court of Appeals for the Federal Circuit squared off with such a party in a case involving use of the word “hotels” in a name.
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Court tackles tricky issue of tacking trademark rights

When trademark rights are contested, a party might turn to “tacking” to establish that it made first use of the mark and thereby has senior rights to that mark. Tacking allows a trademark owner to claim priority in a mark based on the first use date of a similar, but technically distinct, mark. Courts, however, don’t always buy into this strategy; tacking is allowed in only extremely narrow instances. The Ninth U.S. Circuit Court of Appeals recently tackled the tricky issue of tacking in a case involving two similar company logos.
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