IS NEW RULING ON PATENTS A THREAT
TO THE SYSTEM OR AN IMPROVEMENT? The U.S. patent system rewards
innovators by helping them build businesses and profit from
their ideas —creating jobs and stimulating the economy.
If your business is affected by patents, you will want to
consider the impact of the new ruling carefully and watch
for further developments. Below, in an abstract of a much
longer article, “Supreme Court Makes It Harder to Obtain
Valid Patents,” John R. Harris, a noted authority on
patent law, clarifies the components of the new patent ruling
to help businesses reconsider patent filings, prosecution,
enforcement, and defense strategies.
John R. Harris, a Partner in the Technology/Intellectual
Property Group at Morris, Manning & Martin, LLP, and
a specialist in intellectual property law and litigation,
has written and spoken extensively about patents and patent
law
Active
FOCUS Deals
With over 25 years of experience across many verticals,
FOCUS currently has nearly 60 active transaction engagements
in its four offices in Atlanta, Chicago, San Francisco, and
Washington, DC in the following specific business sectors:
- Aerospace
- Automotive
- Building Products
- Business Process Outsourcing
- Business Services
- Call Center
- Construction
- Distribution
- Education and e-Learning
- Energy, Oil and Gas
- Food and Beverage
- Government Contracting
- Healthcare
- Information Services and Databases
- Information Technology: Hardware
- Information Technology: Services
- Information Technology: Software
- International
- Manufacturing
- Media and Publishing
- Medical Devices and Equipment
- Medical Diagnostics
- Metals and Mining
- Payment Systems
- Professional Services
- Retail
- RFID Technology
- Satellite Communications
- Security Systems and Services
- Sports
- Supply Chain Management
- Systems Integration
- Technology
- Telecomm and Wireless
- Transportation
Our transaction process provides us with up-to-the-minute
market knowledge in these sectors. Are any of them of corporate
development interest to you? Give us a call or drop us a
note.
Inquiries should be addressed via e-mail to info@focusbankers.com,
by telephone to 202-470-1973 or by fax to 202-785-9413.
Supreme Court Makes It Harder to
Obtain Valid Patents
Supreme Court Ruling on "Obviousness" Creates
Greater Uncertainty in the Patent World
By John R. Harris, Partner, Morris, Manning & Martin,
LLP
On April 30, 2007, the U.S. Supreme Court issued a highly-anticipated
ruling on an important legal question—what makes an
invention “obvious” and therefore unpatentable?
Rather than clarifying the law, the Supreme Court struck
down a lower appeals court’s test and reverted to a
state of the law that existed in 1966, which expressed an “expansive
and flexible approach” to considering obviousness. KSR
International Co. v. Teleflex Inc. et al., 550 U.S. ____
(2007).
The decision suggested that inventions that represent only “ordinary
innovation” over the state of the art may not be entitled
to patent protection. The decision has potential long-term
implications for patents and the patent system, including:
- Will patents become less or more valuable because of
this decision?
- Will the number of patents filed drop off drastically?
- Will judges and juries strike down more patents as obvious?
The decision is likely to mean two things in the short term:
- It will be harder to obtain a valid patent from the
U.S. Patent and Trademark Office—examiners are likely
to rule more inventions obvious and unpatentable during
patent examination.
- More patents will be challenged in the courts as obvious
and invalid, possibly resulting in more litigation and
greater difficulty in enforcing patents.
Some experts think that the decision will bring an improvement
to the patent system for these four reasons:
- There may be a decline in the large numbers of low
quality, “commodity” patents filed by
larger companies.
- This decline will bring a welcome relief to the U.S.
patent and Trademark Office, which has been inundated
by commodity filings; this should improve patent examination
quality.
- High quality patents directed to significant advances,
beyond that of ordinary innovation, will become more
valuable.
- Any patent that survives the expansive obviousness
test may become unassailable.
For a copy of a more thorough article discussing the decision
and its potential implications contact the author, John R.
Harris, a Partner in the Technology/IP group at Morris, Manning & Martin,
LLP, via email at jharris@mmmlaw.com or
(404) 233-7000.
FOCUS
Joins Business Growth Alliance, LLC
In late May, FOCUS joined Business Growth Alliance’s
(BGA) growing network of Affiliates. Douglas E. Rodgers,
Managing Partner and CEO of FOCUS said, “FOCUS is delighted
to be part of this unique and powerful group which share
common goals to provide growth and liquidity to middle market
firms and families.” BGA has appointed Gerald Turner,
a FOCUS Partner, to the BGA Advisory Board.
BGA, founded in 2005, is an expanding national alliance
dedicated to providing growth advisory and investment banking
services to controlling owners of family-owned and middle
market businesses. BGA is comprised of nine Affiliate Member
Firms aggregating a team of 115 professionals.
Manning J. O’Connor II, Executive Director of BGA
said, “BGA is very fortunate to have another industry
leading Affiliate Member, with a stellar reputation like
FOCUS, join the Alliance.” Mr. O’Connor added, “FOCUS
brings additional investment banking transactional experience
supported by a unique research and data gathering process,
all designed to help middle market companies grow and remain
competitive thus accomplishing the objectives of BGA.”
“The addition of FOCUS continues to expand BGA’s
national footprint with its coverage in nine key cities in
the US and gives BGA Affiliates around the country the ability
to collaborate and assemble customized, transaction and industry-focused,
teams,” said Francois M. de Visscher, Co-Founder and
Co-Chairman of BGA. |
