Case Archive.

"Avoiding Costly Mistakes"
An inventor of a medical device came to us after an expensive -- and unnecessary -- error. He had paid thousands in fees to apply for European patents. His previous law firm had properly processed all the required documents with the proper authorities. The government offices accepted the money -- and, then, rejected the application. When the inventor came to us, we recognized the problem immediately.
 
The invention in question was directed to a device and method for use in treating a common medical condition. However, under European Patent Convention Article 52(4), methods of treatment by surgery or therapy and diagnostic methods are not eligible for patent protection. Not surprisingly, the invention was considered ineligible for patent protection because the patent application, as drafted, while compliant with U.S. patent law, but fell squarely within the exception of Article 52(4). If only the application had been drafted with Europe’s patent laws in mind, the invention could have been presented and claimed in a way that would have been eligible for patent protection in Europe.

"Royalty-Free License"
Our client received a Summons and Complaint, charging him with infringement on the plaintiff's copyright on a computer program. During the discovery phase of litigation, we established that the copyrighted work was a derivative of works created under a government-sponsored grant. Our client had created these works under the grant in collaboration with the plaintiff's predecessor. Once we put this information in our client's amended Answer, the plaintiff promptly opened negotiations. We achieved a settlement which allowed our client to continue marketing his product under a royalty-free license.

"Staying Power"
Our client had devised an improvement to a moderately priced consumer product. The product's originator sued him for trade dress infringement, false designation of origin and trade secret violations. At trial, we showed that the product similarities were due solely to unprotected functional aspects of the product. The District Court found for our client on all counts. On Appeal, the First Circuit Court of Appeals was asked to remand the case because of the trial court's failure to ascribe to our client the burden of proof with respect to product confusion in the marketplace and secrecy of the competitor's dealers list. We were able to persuade the Court of Appeals to sustain the trial court on both these issues, in spite of the fact that the confusion issue had never been decided by the First Circuit.

"International Licensing Conflict"
Our client faced an injunction on his most promising new product line: litigation involving a foreign patent owner with an exclusive U.S. licensee. We found prior art work anticipating our adversary's patents in broad concepts, but the projected result of the litigation remained in doubt. After a difficult three-way negotiation with both the foreign patent owner and the U.S. licensee, we settled the litigation, with our client receiving a license under the patent. It allowed our client to become a leader in the product line.

"Unpatented Success"
Our client operated an agricultural catalog store, catering to poultry, dairy and cattle farmers. One of his products was a plain sheet of plastic stock, cut to selected sizes for building animal pens, floors and gutter liners. The client wanted a proprietary marketplace position with this popular product. Our study showed that the patent was unavailable, but that the trademark he had been using could be registered. Today he markets the product as his own exclusive brand under a federally registered trademark.