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• Considerations for Patenting ( June 2005 )
  Steven J. Prewitt of Schwabe, Williamson & Wyatt

  Prior to taking the first patenting step, every organization should first consider how the patent will fit within the objectives of the business or within the mission of the organization. A patent is not the end goal, but is a business tool, that, when used properly, adds value to an organization. Thus, a determination of the commercial objectives for the technology is crucial to extracting value from the patent.

• Outsourcing Patent Applications: Issues to Consider Before Jumping on the Bandwagon ( May 2005 )
  Daniel B. Pollack and Vid R. Bhakar of Squire, Sanders & Dempsey L.L.P.

  One of the great economic phenomena of our day is the outsourcing of the U.S. economy's service and information-technology work overseas. It is estimated that by the end of this year, more than 80 percent of the world’s largest 2,000 corporations will have established significant outsourcing operations.

• Correct Inventorship Prevents Patent Application Headaches ( October 2004 )
  Robert  Hulse of Fenwick & West LLP

  Although companies race to the U.S. Patent and Trademark Office to build their patent portfolios, technically, a company is not granted a patent. In the United States, only the inventor or inventors may apply for a patent for their invention.

• Patents on Medical Procedures and The Physician Profiteer ( September 2004 )
  Susan Leach DeBlasio of Tillinghast Licht LLP

  The first reported effort by an American physician to enforce a medical method patent against a colleague failed last month in a federal district court in Burlington, Vermont. Judge William Sessions III ruled, in the landmark case, that an eye surgeon who used a patented procedure for stitchless cataract incisions on a patient was not liable to the physician-plaintiff for infringement. The closely-watched case had prompted Congress last fall to consider legislation that would ban or severely restrict the utility and profitability of patents on medical or surgical procedures.

• IP Strategies In Deals. Seminar Summary of Speaker Robert E. Krebs of Thelen Reid and Priest LLP ( June 2004 )
  FindLaw M V

  Robert E. Krebs, Partner and Co-chair, Intellectual Property and Trade Regulation Group at Thelen, Reid and Priest, discussed patent reexamination as a possible alternative strategy to litigation. The importance of reexamination came up recently when the patent office held a UC patent invalid after it had a $520 million infringement verdict against Microsoft.

• Pre-litigation Strategies: Patent Reexamination ( May 2004 )
  Robert E. Krebs and Hal J. Bohner of Thelen Reid Brown Raysman & Steiner LLP

  The costs of patent litigation - both in terms of time and money - have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals.

• Patents, Politics, And Cloning ( February 2004 )
  Harold C. Wegner, Stephen B. Maebius and Sean A. Passino of Foley & Lardner LLP

  The United States is on the verge of enactment of a law that would inject "pro-life" politics squarely into the patent arena. Indeed, a bill sponsored by Rep. David Joseph Weldon (R-Fla.) would codify the U.S. Patent and Trademark Office's existing policy that human organisms are ineligible subject matter to patent. In other words, if the bill becomes law, then the USPTO would be barred from issuing patents claiming human organisms, including genetically engineered embryos, fetuses, and human beings.