In this article, we are continuing the discussion of a legal strategy to protect software that involves segmenting software into three tiers and protecting each tier separately. This strategy has been developed in response to a 2014 U.S. Supreme Court case, Alice v. CLS Bank, that effectively slammed the door on receiving and enforcing software utility patents. The protectable tiers are as follows:

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Patent. Seal and ImprintIn a previous article, we discussed a legal strategy for protecting software that involved segmenting software into three tiers and protecting each tier separately. Those tiers are as follows:

  1. Level One: User Interface
  2. Level Two: API
  3. Level Three: Algorithms and Data Structures

This article focuses on the first tier, which involves how the user interacts with the program.

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Software Law

Although the protection strategy has changed, the answer is yes.

Until recently, software patents accounted for about half of all utility patents issued by the USPTO. Application of a 2014 U.S. Supreme Court case, Alice v. CLS Bank, effectively slammed the door on this practice. Likewise, software patents issued prior to this decision have been routinely stricken down by the courts as invalid. Only a small number of utility software patents have still been allowed at the expense of nuanced arguments and arduous appeals. However, there remains a variety of methods when used in combination that can arguably give broader legal protection with numerous practical advantages to the software industry.

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In the day following Michelle Lee’s resignation as Director of the USPTO, Joseph Matal was announced as Acting Director. These events appear to bring to a close the recent turbulence of leadership at the Office. It wasn’t until March that Director Lee’s position with the Office was confirmed, and that confirmation was given only on the final day to respond to a Freedom of Information Act request. Acting Director Matal’s pedigree diverges from that of the immediate past two directors, having never been a practitioner of patent law, instead having served as counsel to the Senate Judiciary Committee from 2002 to 2012, at which point he became an Associate Solicitor in the USPTO. He did, however, play a significant role and is intimately familiar with the enactment of the America Invents Act. No timeline has been provided as to when a permanent director will be named. Director Lee served as Acting Director for over a year before being named Director.

Seal of the United States Supreme Court

Summary of the Decision:
On May 22, 2017, the U.S. Supreme Court overturned nearly 30 years of patent litigation practice by narrowing the application of a statute describing where plaintiffs may file a lawsuit. In the past, patent holders have been able to file suit in almost any jurisdiction in which a defendant sells an infringing product despite a defendant’s physical location. Critics of the practice have argued that plaintiffs were permitted to “forum shop” since they could seek out jurisdictions with favorable laws and judges. In large part this has led to lawsuits filed in the Eastern District of Texas, which has seen the most patent litigation in the country.

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We just received an alert from the United States Patent and Trademark Office that the Trademark Electronic Application System (TEAS) and the Trademark Electronic Application System International (TEASi) will be down for maintenance between 8AM ET and 4PM ET on Saturday April 29, 2017. This should not affect too many people as far as deadlines are concerned as any deadline that falls on a weekend or a government holiday are extended to the next business day. Please be aware of this blackout period in case you were planning on doing some trademark filing and/or maintenance during that time. The notice received from the USPTO can be found below:

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Wells FargoOver the years, several of our clients have received trademark solicitations from what appeared to be legitimate entities, but which are in fact complete scams. I recently posted an article on LinkedIn regarding this issue. A typical example of one type of scam letter can be found in our previous article on this topic.

A fifth person has been convicted in connection with defrauding trademark owners and applicants out of millions of dollars using such a scam. The Department of Justice announced today that Albert Yagubyan, 37, of Burbank, California was convicted for money laundering. In short, he assisted the sham company in moving the money through Wells Fargo Bank into bogus accounts, then making payments to gold dealers and to entities in Europe.

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question markWhen a company is ready to bring its debut product to market, excitement may run high. The importance of protecting the company’s intellectual property rights in the new product is paramount.

While the company may enter contract negotiations with its distributor in good faith and in anticipation of creating a mutually beneficial agreement, a lack of experience or difficulty foreseeing certain issues may result in a contract that doesn’t adequately protect the company’s rights, or that doesn’t allow room for the relationship to grow and change. It’s important to ask the right questions.

Here are just a few of the questions companies may overlook in negotiating the distribution of a patented product:

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Intellectual PropertyEvery week, it seems, another news story appears about an innovative startup preparing to launch its new take on a product to a waiting market. While consumers and companies alike often eagerly anticipate these launches, they also pose potential risks to the company and its ownership of its intellectual property.

Today’s marketplace is more competitive than ever, and with more competition comes greater risk. How can companies protect themselves when creating a distribution agreement? What potential pitfalls arise, and how can they be avoided? What happens if the relationship between our company and the distributor changes? What if we wish to expand, or to end that relationship altogether?

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The Girl Scouts, in conjunction with the United States Patent and Trademark Office, have announced an Intellectual Property (“IP”) patch. Information about the patch can be found here. The Girl Scouts already offer an Innovation Badge, and the IP patch is meant to compliment the Innovation Badge. According to the USPTO website the “IP patch will show the tools that allow inventors to benefit from their inventions while also sharing them with others.The Girl Scouts

The Girl Scouts also offer a Product Designer badge. This badge shows how inventions can be used to improve lives. Basic concepts of intellectual property protection are taught while Girl Scouts work to earn the IP Patch. The ways that IP protection can be used to protect an invention, as well as how various IP protection can inspire others to improve on inventions are also taught.

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