Pleading Your Case: Complaint Drafting for Patent Infringement Following the Abrogation of Form 18

By Adam J. Smith, Associate Attorney, Standley Law Group LLP

The former Form 18 set out a bare-bones, minimum level of acceptability, complaint template for pleading patent infringement. In the not-so-distant-past, plaintiffs pleading patent infringement often relied on Form 18 when drafting complaints and rested easy knowing that their complaint would satisfy minimum pleading requirements. However, the relatively recent abrogation of Form 18 has upended this standard practice and left plaintiffs wondering with what level of specificity must they plead their case to avoid a potential dismissal.

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Copyright Ownership and “Works Made for Hire”

By Beverly A. Marsh, Partner, Standley Law Group LLP

Businesses often hire third parties to produce copyrightable works on their behalf. An example is Company A hiring Company B to write a software app for Company A. This type of business contract results in the creation of creative works that are protectable under the copyright laws of the United States, such as source code or photographs.

Understandably, Company A may desire ownership of the copyright in the works created, as ownership will not only give Company A the ability to use the works however it wants, but Company A will also have the freedom to license or sell the copyright and enforce the copyright against third parties. However, Company A will only own the copyright if the work qualifies as a “work made for hire” under the law or if there has been an assignment of the copyright to Company A.

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PTAB Finds New State Immunity

By Stephen L. Grant, Senior Attorney, Standley Law Group LLP

Using one of the least-understood amendments to the United States Constitution, the Patent Trial and Appeal Board (PTAB) recently found a new immunity for States and their instrumentalities. It is the latest resurrection of a doctrine I have been involved with over most of my career as a lawyer.

Many, including the non-lawyers, will be familiar with the first ten amendments to the Constitution, the so-called “Bill of Rights” that put the Constitution into an acceptable condition to the thirteen erstwhile States. The Eleventh Amendment was introduced about four years after the passage of the Constitution, to overrule the US Supreme Court’s holding in Chisholm v Georgia, 2 US 419 (1793), which held that federal courts have diversity jurisdiction over a suit against a state by a private citizen of another state. It was ratified by the States and became law within four years. Through a series of subsequent cases, including Hans v Louisiana, 134 US 1 (1890), Ex parte Young, 209 US 123 (1908) and Alden v Maine, 527 US 706 (1999), the doctrine has developed further judicially-created aspects. As a result, its scope goes far beyond its original language and it is unfamiliar to many lawyers, much less lay persons.

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Copyright Risks for the Unsuspecting – Use of Web-based Photos Can Cost You Money

By F. Michael Speed, Jr., Ph.D, Partner, Standley Law Group LLP

Your fledgling startup is growing and you bring on your first marketing manager; a go getter with all the computer skills needed to get your brand out over social media and the internet. Within days, you have a new website, a new Facebook page along with Twitter and Instagram accounts that are actively followed. Your webpage is adorned with photos of seascapes and waterfalls that match your branding goals and green friendly image. Your leads are increasing and sales are starting to pick up.

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Who is Considered the Inventor of an Invention and Who is the Owner?

By James L. Kwak, Partner, Standley Law Group LLP

The inventor of an invention is the person or persons who intellectually contributed to the conception of the claimed invention. Those persons who merely helped assemble the invention (such as work done on a prototype), but did not conceive any portion of it, are not considered inventors. Those people are merely persons who helped reduce the invention to practice.

For example, let’s assume that Bob invented a new design for a gas grill. Bob makes sketches of his idea and prepares a written description. Bob takes his drawings to a grill manufacturer who takes his drawings and builds him a prototype. In this situation, Bob is the only inventor and the manufacturer is merely the outfit who helped Bob reduce his invention to practice.

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