Berlin Photo
Matthew Mousley, Editor-in-Chief
July 2010
In This Issue
Bilski - Encouraging Innovation in the 21st Century?
Traveling Fellowship Award Report
E-Bulletin Submissions Due July 23, 2010
Global Industry Briefs
ITechLaw Member Spotlight
ITechLaw New Members
Bilski - Encouraging Innovation
in the 21st Century?
conferenceBy Rory Radding
Co-Chair, ITechLaw IP Committee
Partner, Morrison & Foerster, LLP,
New York
 

On June 28, 2010 the U.S. Supreme Court issued its decision in Bilski v. Kappos. The Court affirmed the Federal Circuit's judgment that Bilski's particular business method for hedging consumption risk was not eligible for a patent. The Court, however, rejected the machine-or-transformation test as the "sole test" for patent eligibility. And the Court expressly stated that the Patent Act does not exclude business methods from patent eligibility. Instead, the Court relied on its previous precedent to reject petitioners' patent as "an unpatentable abstract idea." By requiring a more flexible approach, the Court's decision may benefit those seeking - or trying to enforce - not just business method patents, but also method patents in a broad range of technologies.  The Court stated that, while "the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101," the Patent Act must not be read so narrowly, especially in the "Information Age."  But the Court stated that its precedents on the unpatentability of abstract ideas provide a useful limiting principle.

 

The decision in Bilski seems to give ammunition against invalidity challenges under Section 101 back to patent applicants and holders, especially in new and emerging technologies such as software, e-commerce, information technology, and medical diagnostics.  In patent prosecution, the decision will likely benefit patent applicants because it does not categorically preclude the patenting of business methods.  Applicants also will want to ensure that their claims are not so abstract as to violate the Court's long-standing prohibition against patenting an abstract idea, law of nature, or mathematical formula.  In litigation, it may make it more difficult for accused infringers to mount Section 101 challenges to method claims.

 

While the Section 101 standard for patentees will no longer be so restrictive, the exact parameters for when claims run afoul of the prohibition on claiming "laws of nature, physical phenomena, and abstract ideas" remain unclear. Patent owners seeking to enforce their patents in court may want to emphasize that their claims are concrete, specific, and limited in scope, and that they do not preempt any abstract ideas or fundamental principles.

 

All in all, the decision encourages innovation, but uncertainty still remains on the contours of what is or is not patent eligible.

 

 


ITechLaw Traveling Fellowship Award
Report
conferenceBy Nirupam Lodha
Luthra & Luthra & Luthra Law Offices, Delhi

My first destination as a part of the Travelling Fellowship Award was the beautiful city of Stockholm, where I worked with the law firm Setterwalls. It was a great experience working at Setterwalls, and I would particularly like to thank Mr. Carl Nasholm and Mr. Jorgen Axelsson for ensuring that I was able to take part in various office activities and I did not miss the various sights and activities Stockholm has to offer.
 
At the law firm, I particularly enjoyed working on a licensing agreement, which involved licensing of patent know-how as well as trademarks. During my review of the agreement, and in my interactions with the partner concerned, I had an opportunity to understand the particular differences between various laws in Europe and India, which led to the varying nature of clauses in such agreements. This was something that will surely help me in the future when I deal with similar issues of law.
 
I also had an opportunity to be involved in a trademark/ consumer matter during which I visited a court hearing in the Market Court at Stockholm. It was an enriching experience and highlighted the difference in the two judicial systems - Swedish and Indian. I was also given an opportunity to make a presentation on the Indian legal regime and specifically on doing business in India. I was happy to share my knowledge on the topic as well as to answer the queries that  came up during the presentation.

conferenceThe firm also arranged for various other activities - a boat cruise to the royal canal, a ride on the RIB boat, etc. The firm had its Annual Summer Party during that week and my hosts were very kind to invite me - the party gave me insight into traditional Swedish parties. I thoroughly enjoyed my stay at Setterwalls in Stockholm.
 
Nirupam Lodha is an Associate with Luthra & Luthra & Luthra Law Offices' Delhi office, since obtaining a B.Sc. LL.B degree (with Hons. in Law and Technology) from National Law University, Jodhpur in 2007. Nirupam's experience includes transactional and advisory work involving IT outsourcing, intellectual property law, etc. Nirupam has also been involved in drafting and negotiating intellectual property licensing and technology transfer agreements as well as technology litigation, including litigation involving patents and multi-jurisdictional claims.
 

 
E-Bulletin Submissions Due July 23, 2010

conferenceDear Colleagues:
 

The next ITechLaw eBulletin will be published in August 2010. I would like to personally encourage you to submit articles for consideration for the next issue of the eBulletin by Friday, July 23, 2010. Please view our Submission Guidelines for additional detail regarding your submission, or feel free to contact me with any questions.

 

The ITechLaw eBulletin is a quarterly online law journal providing members with useful and diverse perspectives on timely issues faced by technology lawyers in jurisdictions worldwide. Each volume presents a broad array of useful content covering issues such as intellectual property, outsourcing, biotech, trademarks, etc.

 

Publishing in the eBulletin offers significant visibility to its contributors within the ITechLaw community, as well as the public at large as archives of the eBulletin are now open to the public.

 

We look forward to hearing from you.

 
Sincerely,
Kiran Sandford
ITechLaw eBulletin Editor


 
 
Global Industry Briefs
conferenceExposure Draft of Privacy Principles Released
By Michael Pattison
Allens Arthur Robinson, Melbourne
 
The Australian Government has released an Exposure Draft of the Australian Privacy Principles that are proposed to replace the National Privacy Principles and the Information Privacy Principles. Special Counsel Karin Clark and Partner Michael Pattison look at the new principles and their impact on privacy compliance programs.
 
                                                                       
 
In addition to ITechLaw's quarterly online law journal for members, the eBulletin, ITechLaw often provides 1-2 short articles in eNews each month.

eNews articles cover not only short legal updates but also give members an opportunity to share their unique professional experiences as they relate to ITechLaw.

ITechLaw encourages members to contribute to its publications. For more information or to submit your articles, please contact us. Submissions are subject to editorial discretion. Articles not used in eNews may be used in the eBulletin and vice versa.

Please submit articles for the eNews by the 8th of each month to memberservices@itechlaw.org.


 
ITechLaw Member Spotlight
Peter Brown, a partner in the New York office of Baker Hostetler,  was the Co-Chair of the Practicing Law Institute's seminar "Cloud Computing 2010: Is Your Company Ready" in San Francisco on June 23, 2010.  Mr. Brown, a former member of the Board of ITechLaw, spoke on the topic "Jurisdiction and Cloud Computing". 
 
In the June 2010 issue of Computer Law Review International (CRi) Felix Hofer  provided a summary and a comment on a recent judgment issued by a First Instance Court in Milan (Fourth Criminal Chamber, no. 1972 of February 24th - April 12th, 2010) with respect to liability of online platforms for privacy infringements. An abstract of the article is available on HLT's website at www.hltlaw.it; contact CRi for information about how to access the full text of the article.
 
conferenceAlexandra Néri, Head of the Herbert Smith IP/IT in the firm's Paris office, has recently been named "Woman of the Year" by the Cercle Montesquieu and Option Droit des Affaires magazine. Each year, this prize is awarded to one person in the field of Intellectual Property, Media and Information Technology. The Cercle Montesquieu is an association of general counsels in France and Option Droit des affaires is one of the country's premier legal magazines. View the full article.
 
Submit your member news today! Submit by the 8th of each month for inclusion in that month's eNews.
 


Correction
conferenceIn the June 2010 eNews, Jaime Angeles of Angeles & Lugo Lovatón, Santo Domingo, Dominican Republic was inadvertently omitted from the list of the 2010 - 2011 ITechLaw Board of Directors.
 
The eNews staff  regrets the error. 
 
ITechLaw Welcomes Its Newest Members!
NameOrganizationCity, State
Janice HouseyMH2 Technology Law Group LLPVienna, VA, United States
Hele KarjaLaw Firm Glimstedt Straus & PartnersTallinn, Estonia
  
President's Column
By Sandra A. Jeskie

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Dear ITechLaw Members and Colleagues,
 
It is that time of year when we remind you to renew your membership to ITechLaw, as most ITechLaw memberships expired on June 30, 2010. This year, we tried to make renewals easier than ever. To assist your firm or organization in fully understanding the value of membership, we prepared the ITechLaw Justification Memorandum. This document clearly outlines the multiple benefits and value ITechLaw brings to its members, and we encourage you to use this memorandum to help your firm or organization appreciate the complete spectrum of opportunities and benefits ITechLaw provides in a cost-effective manner.
 
You can renew online, or you may contact
renewals@itechlaw.org to request username and password details, or an invoice if you prefer to pay via a check or wire transfer.
 
We are busy preparing for another great year in which ITechLaw celebrates its 40th anniversary as the leading global organization for legal professionals focused on technology and law. We hope that you will continue your support and participation in ITechLaw during this momentous year for our Association.
 
Best Regards,
Sandra A. Jeskie
President, ITechLaw
president@itechlaw.org

Upcoming ITechLaw
Events

ITechLaw Roundtable

September 2010
Brussels, Belgium
Additional Details Coming Soon

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ITechLaw Roundtable

September 2010
Boston, MA
Additional Details Coming Soon

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ITechLaw 2010 European Conference

October 28-29, 2010
Berlin, Germany
Registration Opens June 2010
Conference Website

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Events of Interest

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ITechLaw is proud to be a Supporting Organization of The Massachusetts Conference for Women, to be held in Boston, MA on December 9, 2010. As a Supporting Organization, ITechLaw members receive a discount on conference registration.
 
Register online, and enter MATSU2 as the "Promotional Code" to receive the special discounted rate of $125 per person.
 
The Massachusetts Conference for Women features nationally recognized speakers who will address the critical issues facing women today, helping attendees find clarity on professional and personal goals and what they need to accomplish them.
 
Register online at MAConferenceForWomen.org.
 
 

 

Have You Renewed Your ITechLaw Membership?

 
 
Most ITechLaw memberships expired on June 30, 2010. If you haven't yet renewed, we encourage you to renew today to continue receiving ITechLaw membership benefits in the coming year, ITechLaw's 40th anniversary (1971-2011) as the leading global organization for legal professionals focused on technology and law.

Don't get left behind - log in to the ITechLaw Member Center and click on "Renew Membership" to renew now and enjoy another year of ITechLaw member benefits, such as our networking opportunities, global conference offerings, and award-winning publications.  
Contact ITechLaw Member Services with any questions regarding your membership expiration date and renewal fees, log-in details for the Member Center, or to request an invoice. 
 
We want to hear from you! Email ITechLaw Member Services and let us know why your ITechLaw membership is important to you, and how we can better serve you going forward!
Contact Us!

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  For more information on
ITechLaw and its activities,
please visit us at:
  
 www.itechlaw.org
 
 
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