Patently-O Bits & Bytes by Lawrence Higgins

Sharon Barner returns to the practice of law

  • Former Deputy Director of the USTPO has announced her return to the Foley & Lardner law firm in Chicago. Barner was chair of the Intellectual Property Department at Foley & Lardner before she left to work for the USPTO. While at the USPTO Barner was the driving force behind the 2010-2015 USPTO's Strategic Plan. [Link]

Carlson Marketing is suing MillerCoors

  • Carlson Marketing Worldwide is suing MillerCoors over its "Miller High Life Extras Loyalty Program." Carlson owns patent [6,039,244] which covers a "Method of building up a data bank containing customer data and/or for the organization of." At issue in the suit is the 1st claim of the patent which claims, "a method for motivating a customer to purchase a product or a service and for rewarding the customer for repeat purchases thereof, the method comprising the steps of…" [Link] If Carlson wins this suit they could potentially file suit against many more large companies for patent infringement.

Can Patent Attorneys and Agents use Groupon when seeking new clients?

  • According to the Rule 5.4(a) of the ABA's Model Rules of Professional Conduct, "a lawyer or law firm shall not share legal fees with a nonlawyer. Groupon makes money by keeping approximately half the money the person pays for the coupon. So maybe Rule 5.4(a) would rule out patent attorneys in some states, but what about patent agents? The state of Missouri does allow lawyers to use Groupon as a way of obtaining new clients. While other places like North Carolina does not allow lawyers to use Groupon [Link]. The question I pose is, "Would the USPTO allow agents and attorneys to use Groupon?"

European Parliament voted for a single patent law system

  • European member states will soon operate under a single patent law system rather than rely on their individual patent law systems. While the single patent law system is voluntary, most European states joined the system. There appear to be at least 2 holdouts as Italy and Spain have decided not to join at this time. [Link] The benefits of this system over the current state of affairs will not be understood until the legislation is developed.

Patent Jobs:

  • King & Spalding is seeking a patent attorney with 2 years experience and a engineering background to work in its Houston or Atlanta office. [Link]
  • Rothwell, Figg, Ernst & Manbeck is searching for a patent attorney with 3-6 years experience. To work in its DC office. [Link]
  • NXP is seeking an IP Monetization Specialist with an electrical engineering background to work in their San Jose location. [Link]
  • Sheldon Mark & Anderson is in search of a patent attorney with 2-5 years experience in IP litigation. [Link]
  • Klarquist Sparkman is seeking a patent associate or agent with 1-4 years experience. [Link]

Upcoming Events:

  • Northwestern Journal of Technology and Intellectual Property will hold its 6th Annual Symposium entitled "The Economics of Intellectual Property and Technology on March 4th in Chicago. The keynote speaker is Michael Fricklas, General Counsel of Viacom. [Link]
  • The Toledo Intellectual Property Law Association (TIPLA) will be hosting its 2011 Spring Seminar, entitled "A Comprehensive Approach to Protecting Designs: The Overlap of Patent Design, Trade Dress, and Copyright Protection", on March 9th at the University of Toledo College of Law. Guest speakers include: Theresa Orr, Katrina Quicker, Christopher Weston, and William Bryner. [Link]
  • The Columbus School of law will host its Dean William Robinson Intellectual Property Law Lecture Series on March 29. The series lecture will be presented by Professor Jeffrey Lefstin. [Link]
  • The University of Houston Law Center's Institute for Intellectual Property & Information Law will host a Symposium on June 4th in Sante Fe, New Mexico. The Symposium will focus on "Trademark: Today and Tomorrow". Presenters include:  Ann Bartow, Barton Beebe, Greg Lastowka, Mark McKenna, and Rebecca Tushnet. [Link]

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