News

• Law Brief Podcast: Rachel Lin and Rich Schoenstein Explore Patenting Natural Ingredients
  

  Intellectual Property Counsel Rachel Lin joined Litigation partner and host Rich Schoenstein to discuss Patenting Natural Ingredients on the latest episode of Law Brief. Rachel and Rich talk about the circumstances under which a patent might be obtained for products containing or based on natural ingredients. Listen to the episode.

• Meet the Women of Tarter Krinsky & Drogin: Intellectual Property Counsel Rachel Lin
  

  We have been celebrating the brilliant women of Tarter Krinsky & Drogin all Women’s History Month long. They are integral to the success of our firm, clients and community. In this installment, learn more about Intellectual Property Counsel Rachel Lin.

• Amy Goldsmith and Rachel Lin Quoted on the impact of Brexit on IP Rights for Inside Counsel
  

  Amy Goldsmith and Rachel Lin were quoted in “Brexit’s Impact on Intellectual Property Rights” published by Inside Counsel.

• Rachel J. Lin Joins Intellectual Property Practice
  

  Tarter Krinsky & Drogin LLP is pleased to welcome Rachel J. Lin as a Counsel in the Intellectual Property Practice. 

Events

• Amy Goldsmith and Rachel Lin Speak About Tarter Krinsky & Drogin’s Full-Service Intellectual Property Practice at LAW Member Firm
  

  On August 6, Amy Goldsmith and Rachel Lin will speak to lawyers at Burke, Warren, MacKay & Serritella on Tarter Krinsky & Drogin’s Intellectual Property practice during a monthly lunch and learn series. Our full-service IP group offers protection for the global interests of companies in a variety of industries, including tech, life sciences, luxury goods and consumer products. Burke Warren is the Chicago member of Lawyers Associated Worldwide (LAW), a global association of independent law firms located in more than 50 countries with more than 4000 lawyers internationally.

• Rachel Lin to Speak at Soho House on Intellectual Property for Startups
  

  On June 12, Intellectual Property counsel Rachel Lin will speak on a breakfast panel at Soho House on intellectual property for startups. During the open forum discussion, Rachel will help entrepreneurs understand the costs and benefits of various IP assets in today’s startup environment and how IP issues can affect their small businesses.

• Rachel Lin to Moderate a Panel on Women’s Entrepreneurship Programs at AUTM Annual Meeting
  

  On February 13, Intellectual Property counsel Rachel Lin will moderate a program titled, “Best Practices in Women’s Entrepreneurship Programs” at the Association of University Technology Managers (AUTM) annual meeting in Austin, TX. During the program, Rachel and her fellow panelists, which include representatives from two state universities and a female entrepreneur, will discuss the growing need to develop new strategies to increase the number of women founders commercializing university research.

• Firm Partners with Lawline on “Business in a Box” Series
  

  On October 27 Tarter Krinsky & Drogin partnered with Lawline to host “Business in a Box” – a one-day series of CLE presentations designed to address the top legal issues facing emerging companies in growing and protecting their businesses.

• Biden Administration Announces Support of Temporary Waiver on Intellectual Property Protections on COVID-19 Vaccines
  

  The Biden administration has announced its support of a temporary waiver on intellectual property protections on COVID-19 vaccines, partially reversing its earlier opposition.

• COVID-19 and Considerations for March-In Rights and Compulsory Licenses
  

  The COVID-19 pandemic has had an enormous and likely long-term impact on research into infectious diseases, ushering in a flurry of investigation into possible treatments and vaccines. The pandemic is also influencing how those in the wider healthcare system will bring relevant diagnostics and therapies to the market and ultimately to those in need.
  Many of the future underlying innovations in diagnostics, treatments, vaccines, and other related healthcare services for COVID-19 will come from a university, research institution or other recipient of federal research funding. The desperate healthcare, social and political needs for these innovations may dramatically influence how future research and medical innovations enter the market and ultimately reach patients in need. As such, COVID-19 could substantially affect how both the United States and the world deal with similar crises in the future.

• Prioritized Examination for Certain COVID-19 Related Patent Applications
  

  On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced a new program for expediting certain COVID-19 related patent applications. Under the COVID-19 Prioritized Examination Pilot Program, the USPTO will grant requests for prioritized examination to small or micro entity status applicants without requiring payment of the typical prioritized examination fees. Also under this program, the USPTO will endeavor to reach final disposition of applications within six months if applicants are responsive.

• Natural Ingredients May Be Patentable – No Heavy Lifting Required
  

  In an important decision for the personal care and ingredients industries, the U.S. Court of Appeals for the Federal Circuit recently vacated a district court decision that held patent claims invalid as being directed to non-patent eligible subject matter in Natural Alternatives Int'l v. Creative Compounds, LLC (Case No. 18-295).

• State University's Filing of Patent Infringement Action Waives Sovereign Immunity to IPR Proceedings
  

  The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the USPTO.

• U.S. Supreme Court Seriously Limits Forum Shopping for Patent Litigation in Unanimous Decision
  

  For close to 30 years, patent owners have been able to strategically select the best location for a patent litigation, assuming that the defendant sold the contested product in that location. Popular courts include the Eastern District of Texas and the Eastern District of Virginia. But not anymore... Last week, in a unanimous decision, the U.S. Supreme Court narrowed the possible venues for bringing patent infringement suits, holding that a defendant can be sued only as a "resident" of its state of incorporation, not in any state where it sells products. TC Heartland LLC v. Kraft Foods.

• Quantity - Not Quality - Counts for Patent Infringement: More Than One Component of an Invention Must be Supplied for Patent Infringement
  

  The U.S. Supreme Court recently held in a recent decision in Life Technologies Corp v. Promega Corp. that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to § 271(f)(1) liability."

• Legal Alert: .SUCKS is Here: Can Your Brand Be Protected?
  

  With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.

• Legal Alert: A New System For International Design Protection
  

  Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.

• Legal Alert: Alice Corp. v. CLS Bank's Effect on Business Method Patents
  

  The patent landscape has changed regarding business method patents.
  In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.

• Beware of the Boilerplate Series: "Defend, Indemnify and Hold Harmless"
  

  Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”

• Beware of the Boilerplate Series: Defining Confidential Information
  

  In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.

• Beware of the Boilerplate Series: Limitation of Liability
  

  Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.

• Beware the Boilerplate Series: Always Define the Meaning of "Intellectual Property"
  

  Clearly define the grant provisions of all of your IP contracts. If you want to transfer or receive "intellectual property" or "technology," ensure that these terms are well defined and unambiguous. Definitions matter! By making the contract terms clear, you can potentially reduce (or eliminate entirely) future litigation costs.