Gallagher & Dawsey Co., LPA is a unique intellectual property law firm whose practice includes intellectual property counseling and services to businesses and individual inventors, as well as other law firms, regarding patent, trademark, copyright, and trade secret issues.

Our experienced patent attorneys and trademark attorneys provide various intellectual property legal services such as patent searches, patent applications, trademark searches, trademark applications, copyright applications, infringement advice/opinions, and infringement litigation.

Complete our Request Form to receive one of our Free Brochures regarding protecting your intellectual property, or simply relax and receive an intellectual property education by watching the videos in our Online I.P. Video Library.

In today's information based society, the value of patents, trademarks, and copyrights has never been higher. Contact one of our patent lawyers or trademark lawyers to learn more about protecting your inventions, brands, and creative works.

The U.S. patent and trademark attorneys of Gallagher & Dawsey Co. LPA serve clients around the world from our Midwest offices. Our patent and trademark law firm has offices in Columbus, Dayton, and Cincinnati, Ohio.

Supreme Court Finally Decides Bilski: On June 28, 2010, the U.S. Supreme Court handed down its long-awaited opinion in the Bilski v. Kappos case. As expected, the Court affirmed the Federal Circuit's judgment that Bilski’s claimed method for hedging risk was not a patent eligible “process” under 35 U.S.C. Section 101. However, the Court rejected the Federal Circuit's "machine-or-transformation test" as the sole test for determining whether an invention is a patent eligible process. Instead, the Court noted that the "machine-or-transformation test" is a "useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under Section 101." The Court went on to explain that Bilski's claimed method was not a patentable-eligible process because it was merely an attempt to patent an abstract idea. Unlike the result expected by many commentators, the Court refused to provide a clarifying rule as to what types of processes are patent eligible under Section 101. As a result, it appears that little has changed with respect to the law on patent eligible subject matter.

Three Years of Silence Prevents Enforcement of Patent Rights: In Aspex Eyewear Inc. v. Clariti Eyewear, Inc. (Fed. Cir. 2010), the CAFC concluded that three years of silence after sending a letter pointing out that some products may infringe claims of several patents was enough to preclude a patent infringement suit. In March 2003, Aspex sent a letter to Clariti stating that some of Clariti’s products may infringe some of the claims of four patents held by Aspex. After several rounds of correspondence, Clariti notified Aspex in June 2003 that its products did not infringe any valid claims of Aspex’s patents. This was the last correspondence between Aspex and Clariti until August 2006 when Aspex sent another letter that listed the specific Clariti product that Aspex believed infringed specific claims of one of their patents. The issue was not resolved and Aspex filed suite against Clariti in March 2007 for patent infringement. The CAFC affirmed the district court’s grant of summary judgment to dismiss the suit based upon the doctrine of equitable estoppel. The CAFC noted that after a three year period of silence, it was reasonable for Clariti to infer that Aspex was not continuing its accusation of infringement.

False Marking Fine Exceeds Gross Revenue: Since the beginning of 2010 there have been over one hundred false patent marking lawsuits initiated across the country. The false marking suits target companies that sell products marked with a designation to indicate that the product is patented, such as the word "patented" or a patent number, when the product is not patented or the relevant patent has expired. In a case that made it to the Federal Circuit (CAFC) and was remanded to the district court to recalculate the appropriate false marking fine, the district court recently issued an order requiring the false marker to pay a fine that was more than the revenue generated by selling the falsely marked product. Forest Group v. Bon Tool (S.D. Tex 2010). Under 35 USC 292, the fine for false marking is to be "[no] more than $500 for every such offense." In this case, the evidence showed that 38 pair of falsely marked construction stilts were sold at a price of between $103 and $180. The district court fined the false marking offender at a rate of $180 per set of stilts sold, for a total of $6,840. The court noted that using the highest point in the price range for each set fulfilled the deterrent goal of 35 USC 292.

Federal Circuit Upholds Separate Written Description Requirement: In Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Fed. Cir. 2010, en banc), the Court of Appeals for the Federal Circuit (CAFC) recently held that the first paragraph of 35 USC section 112 includes a written description requirement that is separate from the enablement requirement. Ariad argued that paragraph one of 35 USC section112 contained a written description requirement and that such a requirement was satisfied by providing a written description that identifies the invention in such a way that those skilled in the art are able to make and use the invention. The CAFC noted that, "[i]f Congress had intended enablement to be the sole description requirement of section112, first paragraph, the statute would have been written differently." The CAFC went on to say that a patent’s specification should not only enable a person skilled in the art to make and use the invention, but must also fully describe the invention and show that the inventor actually invented the invention that is claimed.

Patent Held Unenforceable for Inequitable Conduct: In Sabasta v. Buckaroos, Inc., (S.D. Iowa 2010), a U.S. District Court found that U.S. Patent No. 6,751,995 (the ‘995 patent) was unenforceable for failure to disclose material prior art that the patentee knew about. Patent applicants and their attorneys have a duty to disclose to the Patent Office all information that they are aware of that would be considered material to patentability. The ‘995 patent was directed to a roll-bending die used to make saddles for pipe insulation. In arriving at his invention, Sabasta utilized a roll-bending machine, the Acrotech Model 1618, that had been commercially available for several years. During prosecution of the ‘995 patent, Sabasta used features of the Acrotech machine in making arguments to overcome the rejections. However, Sabasta and his attorneys did not disclose any information concerning the Acrotech machine or the manual that accompanied the machine. The court found that the Acrotech machine and manual would have been highly material to patentability and that Sabasta and his attorneys knowingly failed to disclose the Acrotech machine and manual with an intent to deceive the Patent Office. As a result, the court held the ‘995 patent to be unenforceable due to inequitable conduct.

USPTO Miscalculated Patent Term Adjustment: In Wyeth v. Kappos, (Fed. Cir. 2010), the Federal Circuit (CAFC) recently determined that the USPTO has been shortchanging the amount of patent term adjustment available to patentees. The USPTO is required by statute (35 U.S.C. 154(b)(1)(A)-(C)) to extend the term of a patent based for delays by the USPTO in the prosecution process. Under “part A" of the statute, the USPTO must respond to certain actions in a certain amount of time. If the USPTO does not respond within the specified time, then the term of the patent is extended one day for each day after the time period expires. Under “part B" of the statute, the USPTO provides a day of patent term adjustment for each day that the patent was pending over 3 years from the actual filing date of the application. These delays are subject to a limitation that limits the amount of term adjustment when the “part A" and “part B" delays overlap. The USPTO interpreted the statute in a way that gave patentees the greater amount of term adjustment resulting from a “part A" delay or a “part B" delay, but not both. The CAFC found this interpretation to be incorrect, and noted that the statute unambiguously sets forth the “periods of delay" and when the “overlap" limitation applies. The USPTO is currently taking steps to ensure that future patent term adjustment calculations are made correctly.