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Texas Intellectual Property Law Journal
Volume 2

Issue 1 - Fall 1993


Rainmakers for the Harvest of Technology
 
Citation:
2 Tex. Intell. Prop. L.J. 1 (1993)
 
Author:
Dan Morales
 
About:
Mr. Morales is Attorney General of the State of Texas.
 
Abstract:
If we want technological innovation to stay within a company or a country, we must improve our ability to form cooperative teams among those who invent, those who apply, and those who finance and commercialize. To develop common understandings of technology, common vocabularies, and realistic assessments of marketability can be a daunting task as product life cycles are compressed. The irony is that as technology has become more important, building a competitive advantage based on technology has become more difficult. Whatever the difficulties, there is growing recognition that the next technological wave, the next era of transformational economic growth, cannot even begin without the essential due diligence you provide. Your knowledge and insights as intellectual property lawyers have moved you from the periphery of senior management to the inner circles.


Intel Corp. v. ULSI System Technology, Inc.: Patent Exhaustion and Post-Sale Restrictions on the Use of a Component Made Under License
 
Citation:
2 Tex. Intell. Prop. L.J. 5 (1993)
 
Author:
William L. Martin, Jr.
 
About:
Mr Martin received his M.S. from The University of Texas at Dallas and J.D. from The University of Texas School of Law. He earned his PTO license in 1977 and is currently Intellectual Property Counsel at Dell Computer Corp.
 
Abstract:
Attorneys and executives concerned with intellectual property licensing and litigation will be fascinated by the recent decision of the Court of Appeals for the Federal Circuit (hereinafter “CAFC”), Intel Corp. v. ULSI System Technology, Inc. Its treatment of the doctrine of patent exhaustion has far reaching implications for a broad range of technologies in which systems are assembled out of sophisticated components. Additional appreciation of these implications can be obtained by a concurrent review of a recent district court case having close factual similarities: Cyrix Corporation v. Intel Corp. v. SGS-Thomson. Both cases pitted Intel against the customers of semiconductor foundries, where those foundries enjoyed full patent licenses from Intel. In the first case, the foundry was Hewlett Packard. In the second case, the foundry was the former Mostek plant, now owned by SGS-Thomson.

Familiarity with the recent CAFC decision will be of particular value to those whose clients manufacture complex systems out of numerous sophisticated components. These practitioners will recognize that it is often the case that numerous separately patented components must be combined in order to create a functioning system. In such cases, it is common for the systems manufacturer (unless it is highly vertically integrated) to obtain components from various vendors. Due to the highly troubled and unpredictable state of patent rights, it is often difficult to get indemnity agreements from vendors that cover the use of the vendor’s part in the environment for which it was designed. This problem is particularly complicated when, as originally asserted in the subject case, a sophisticated integrated circuit chip legally manufactured in a licensed foundry cannot be used without a separate license between subsequent transferees and the patent owner. For example, the licensor may assert that infringing parts which are custom manufactured under “make, use or sell” license rights by the parts manufacturer cannot be sold or used without a separate license between the system manufacturer and the licensor. The separate license is demanded for patent rights under the very same patents licensed to the parts manufacturer from whom the part was obtained.


The New Covenant Not to Compete Statute
 
Citation:
2 Tex. Intell. Prop. L.J. 19 (1993)
 
Author:
Steven R. Borgman
 
About:
Mr. Borgman is an attorney with Vinson & Elkins.
 
Abstract:
The 1993 Act eliminates several major obstacles to enforcing covenants not to compete. Because so many employment relationships are at will, the 1993 Act seems likely to have a significant impact on litigation in employer/employee cases. The legislature seems to have clearly rejected most of the efforts by the Texas Supreme Court to limit the enforceability of such covenants. The express preemption of the common law signals the Legislature’s intent to have the Texas courts look at noncompetition agreements in a new light. Because the 1993 Act incorporates the traditional common law test of reasonableness, however, the common law and the courts will remain an important ingredient in the development of this area. Moreover, the 1993 Act’s retroactive and preemptive effects remain unclear in many respects, thus leaving such issues for the courts.


Can Thou Serve Two Masters? — The Texas Disciplinary Rules of Professional Conduct v. The Patent and Trademark Office Code of Professional Responsibility Appendix: A Texas-PTO Attorney Ethics Guide
 
Citation:
2 Tex. Intell. Prop. L.J. 31 (1993)
 
Author:
Paul I. Herman
 
About:
Mr. Herman received his J.D. from The University of Texas School of Law in 1994.
 
Abstract:
Attorneys licensed by the State Bar of Texas are bound by the Texas Disciplinary Rules of Professional Conduct (hereinafter “Texas Rules”). Attorneys registered with the United States Patent and Trademark Office (hereinafter “PTO”) are bound by the PTO Code of Professional Responsibility (hereinafter “PTO Rules”). Both sets of ethics rules are designed to be independently comprehensive. Yet when one reviews these two sets of ethics rules one sees that a number of differences exist between them, both in terms of what behavior and actions are allowed and disallowed, and what is permissive and what is mandatory. By carefully controlling one’s actions, an attorney could theoretically follow both the Texas Rules and the PTO Rules. But is this necessary? For instance, it seems inane that an attorney registered with the PTO should be bound by the PTO Rules when that attorney never handles patent prosecution and practices only patent litigation. Similarly, if an attorney’s practice is limited to patent prosecution, one would think that federal preemption would remove his actions from review by the Texas Rules. A Texas PTO-registered attorney must determine when his or her activities are governed by either one set of rules or both. In determining this, there are two key questions to address.

1. What is the range of activities covered by the PTO Rules?
2. Once the range of applicability of the PTO Rules is determined, what is the extent of federal preemption by the PTO Rules over the Texas Rules?

An answer to these two basic questions (range of PTO Rules and extent of preemption) will let the Texas PTO-registered attorney know which rule he or she is to follow at what time. The courts have given no definitive answer, nor has the PTO, nor has the Texas bar. This note will attempt to answer these questions, as well as discuss the ramifications of its conclusions with respect to common difficulties that attorneys may encounter. At the end of this Article is a complete cross-reference between the PTO Rules and the Texas Rules, as well as a composite ethics guide.


Recent Developments in Patent Law
 
Citation:
2 Tex. Intell. Prop. L.J. 59 (1993)
 
Author:
Andrew J. Dillon and Duke W. Yee
 
About:
Mr. Dillion is a partner at Felsman, Bradley, Gunter & Dillon, L.L.P. Mr. Yee is an associate at Felsman, Bradley, Gunter & Dillon, L.L.P.


Recent Developments in Trademark Law: Focused for the Texas Practitioner
 
Citation:
2 Tex. Intell. Prop. L.J. 67 (1993)
 
Author:
Kenneth E. Kuffner
 
About:
Mr. Kuffner is a partner at Gunn & Kuffner.
 
Abstract:
This Article reviews fourteen recent cases that dealt with trademark issues.


Recent Developments in Copyright Law
 
Citation:
2 Tex. Intell. Prop. L.J. 73 (1993)
 
Author:
Jeff A. McDaniel and Shannon T. Vale
 
About:
Mr. McDaniel and Vale are attorneys at Arnold, White & Durkee in Austin.
 
Abstract:
The last few months have seen several intriguing appellate copyright decisions. The stream of computer software infringement cases continues with the Ninth Circuit’s controversial MAI Systems Corp. v. Peak Computer, Inc. decision, which casts doubt on the continued viability of the independent software maintenance industry. Ownership issues also continue to infiltrate many cases, with the Tenth Circuit explicitly settling the open (but often overlooked) question of whether the Supreme Court’s interpretation of the work made for hire rules in Community for Creative Non-Violence v. Reid applies retroactively to all works created under the 1976 Copyright Act. And, just as interestingly, the Supreme Court has granted certiorari in two copyright cases—one testing the boundaries of parody fair use and the other concerning whether plaintiffs and defendants should be treated evenly in awarding attorney fees to prevailing parties.

We have reported below, by topic, selected appellate copyright decisions reported in Volumes 25 through 27 of the United States Patents Quarterly Second Series.


Recent Developments in Miscellaneous Relevant Law
 
Citation:
2 Tex. Intell. Prop. L.J. 83 (1993)
 
Author:
Jeffrey W. Tayon
 
About:
Jeffrey W. Tayon is a director of Conley, Rose & Tayon, a professional corporation located in the Texas Commerce Tower, 600 Travis Street, Suite 1850, Houston, Texas 77002. Mr. Tayon is a former Patent Examiner in the medical arts (1978–80) and a former law clerk and technical advisor (1980–82) to the Honorable Judge Jack R. Miller, who is now a Senior Judge at the U.S. Court of Appeals for the Federal Circuit.
 
Abstract:
Miscellaneous relevant law refers to state and federal case law or legislative developments on procedure, discovery and evidence issues. The following are some of the more current and substantial pronouncements.


Issue 2 - Winter 1994


Defining the Elements of Trade Dress Infringement under Section 43(a) of the Lanham Act
 
Citation:
2 Tex. Intell. Prop. L.J. 103 (1994)
 
Author:
Joel W. Reese
 
About:
Mr. Reese is an Associate at Orgain, Bell & Tucker in Beaumont, Texas. He received his J.D. from Texas Tech School of Law in 1993.
 
Abstract:
“Trade dress” is the total image and overall appearance of a product or business as reflected in such features as size, shape, color or color combinations, design of a label, texture, graphics or sales techniques. As evident from the broad definition of trade dress, virtually any combination of features of a product or business could be defined as trade dress.

In defining the specific trade dress of a product and determining whether infringement of that trade dress has occurred, consideration is given only to the aggregate of all the features. In other words, the analysis of a trade dress infringement claim focuses on the combination of all the features, not the individual features. A manufacturer or business can freely use certain elements or features of a competitor’s trade dress as long as that use does not constitute use of the competitor’s overall image. The appropriate inquiry is whether the alleged trade dress infringer has copied a distinctive combination of features.

Federal protection of trade dress is derived from section 43(a) of the Lanham Act. To establish a trade dress infringement claim under section 43(a) of the Lanham Act, a plaintiff must prove both the validity of the trade dress and the infringement of that trade dress. In more simplified terms, the analysis of a trade dress infringement claim focuses on the following two questions: (1) Is the trade dress entitled to protection?; (2) Has an infringement of that trade dress occurred? The question of whether the trade dress is entitled to protection is answered by the distinctiveness and nonfunctionality of the trade dress. The question of whether an infringement of the trade dress has occurred is answered by determining whether a likelihood of confusion exists between the senior trade dress and the junior trade dress.

This Article represents a modest attempt to decipher the elements of a section 43(a) claim from the perspective of trade dress infringement. The novelty of this Article is the fact that it focuses entirely on trade dress infringement, rather than section 43(a) in general. However, because trade dress infringement is merely a judicial designation of a particular species of infringement under section 43(a), most of the following discussion will be applicable to all section 43(a) claims.


Intellectual Property Aspects of NAFTA and GATT: An Update
 
Citation:
2 Tex. Intell. Prop. L.J. 131 (1994)
 
Author:
John E. Vick, Jr.
 
About:
Mr. Vick is an attorney at Fish & Richardson in Houston, Texas and Chair of the Patent Legislation Committee of the Intellectual Property Law Section. The author expresses his profound gratitude to Rene D. Tegtmeyer of the Washington, D.C. office of Fish & Richardson for lending his expertise in the writing of this paper. Mr. Tegtmeyer is a former Assistant Commissioner for Patents in the United States Patent and Trademark Office, and he actively participates in debate relating to NAFTA and GATT.
 
Abstract:
The North American Free Trade Agreement (hereinafter “NAFTA”) and the General Agreement on Tariffs and Trade (hereinafter “GATT”) are changing the way the world views intellectual property rights. Although the international scope of each provision is different, they are overlapping and therefore, the changes in intellectual property law provisions of NAFTA cannot properly be considered without reference to related and important provisions in GATT.


Recent Developments in Trademark Law
 
Citation:
2 Tex. Intell. Prop. L.J. 149 (1994)
 
Author:
Sanford E. Warren, Jr.
 
About:
Mr. Warren is a partner at Warren & Perez in Dallas, Texas.
 
Abstract:
This Article reviews twelve recent cases that dealt with trademark issues.


Recent Developments in Copyright Law
 
Citation:
2 Tex. Intell. Prop. L.J. 155 (1994)
 
Author:
Kenneth S. Barrow
 
About:
Mr. Barrow is an associate with Fish & Richardson in Houston, Texas.
 
Abstract:
In recent months, the courts have handed down several interesting and important decisions affecting the law of copyrights. In particular, the courts (both trial and appellate) have taken the opportunity to apply the teachings of the Supreme Court’s revolutionary decision in Feist Publications, Inc. v. Rural Telephone Service Co. In several decisions, the courts have continued to emphasize the existence of a presumption against the transfer of copyright ownership and have addressed issues of venue and jurisdiction in copyright cases. The recent cases show continued development in copyright disputes in computer software. Issues of fair use, fragmented literal similarity, and vicarious liability in a copyrighted work have also challenged the courts. Finally, several decisions illustrate the developing trends in remedies for copyright infringement.


Recent Developments in Trade Secret Law
 
Citation:
2 Tex. Intell. Prop. L.J. 171 (1994)
 
Author:
Sue Z. Shaper
 
About:
Ms. Shaper is an associate at Butler & Binion in Houston, Texas.
 
Abstract:
In a theft of trade secrets case in Texas against a subsequent employer with no knowledge, when does the statute of limitations begin to run—when the theft effects an injury or when the injury is “discovered?”


Recent Developments in Miscellaneous Relevant Law
 
Citation:
2 Tex. Intell. Prop. L.J. 175 (1994)
 
Author:
Jerry R. Selinger
 
About:
Mr. Selinger is an attorney at Vinson & Elkins L.L.P. in Dallas, Texas.
 
Abstract:
Davis v. Loesch considered whether a notice of appeal from a decision of the Board of Patent Appeals and Interferences which did not bear the names of both co-inventors (Davis and Granger), but rather was captioned “Davis, et al.” was sufficient to preserve jurisdiction on appeal. The Federal Circuit concluded, with “no difficulty,” that it had jurisdiction.

BIC Leisure Products, Inc. v. Windsurfing International, Inc., involved, among other things, a trial amendment under Rule 15(b) of the Federal Rules of Civil Procedure. Patentee Windsurfing challenged in this appeal the district court's recognition of intervening rights as a limitation on damages because infringer BIC had neither litigated this issue during the liability phase of the litigation nor pled it as a defense. The Federal Circuit agreed that the defense of absolute intervening rights addresses a damage issue, something which did not arise until the patentee secured a liability judgment. Nevertheless, the district court was deemed to have properly admitted intervening rights evidence under Federal Rule of Civil Procedure 15(b). The district court had found that the accused infringer provided the patentee with ample notice of its intent to prove intervening rights.

In United States Sporting Products, Inc. v. Johnny Stewart Game Calls, Inc., the first point of error raised by Sporting Goods was that the facts as described above failed to state a claim for misappropriation in Texas. The appellate court rejected this contention. It noted a difference between unfair competition as a general area of law and the specific causes of action that it subsumes. According to the reviewing court, the doctrine of misappropriation is a branch of the tort of unfair competition “which involves the appropriation and use by the defendant, in competition with the plaintiff, of a unique pecuniary interest created by the plaintiff through the expenditure of labor, skill and money.”

In Houston Cable T.V., Inc. v. Inwood West Civic Ass'n, the Texas Supreme Court ruled that it is improper to vacate an appellate opinion after a party files an application for writ of error and thereafter agrees to settlement. A jury verdict was affirmed on appeal. While the application for writ of error was pending, the parties settled. One of the terms of settlement was that the appellate judgment and opinion be vacated. Based on public policy grounds, the Supreme Court granted the application to effectuate the settlement, but refused to allow the appellate opinion to be vacated.


Recent Developments in Patent Law
 
Citation:
2 Tex. Intell. Prop. L.J. 183 (1994)
 
Author:
William L. Martin, Jr.
 
About:
Mr. Martin received his M.S. from The University of Texas at Dallas and J.D. from The University of Texas School of Law. He earned his PTO license in 1977 and is currently Intellectual Property Counsel at Dell Computer Corp.
 
Abstract:
Expansion of File Wrapper Estoppel: It seemed significant to the Federal Circuit that the patentee had ignored a hint from the Board of Appeals that additional test data might justify the allowance of broader claims. The significance of this might have been lost on a scholar who assumes that file wrapper estoppel depends on the presence of amendments to the actual claim asserted that were specifically made to avoid prior art. However, the standard for determining what has been relinquished during patent prosecution is to be “measured from the vantage point of what a competitor was reasonably entitled to conclude, from the prosecution history, that the applicant gave up to procure issuance of the patent.”

General Validity Issues:Last term, the United States Supreme Court set an outer limit beyond which the Federal Circuit should not go in its arguably self-appointed mission of protecting patent validity. The patent had been the subject of three separate lawsuits in two of which the patent had been held invalid yet the Federal Circuit had refused to resolve the ongoing dispute over the issue of validity. The Federal Circuit had determined the issue of invalidity moot in view of the finding of non-infringement. The U.S. Supreme Court remanded the case to the Federal Circuit for consideration of the issue of validity. On remand the district court was affirmed in all respects.

Damages Issues: Continuing prototype testing and development did not preclude the advent of the on-sale bar. The reasonable royalty rate used for infringement damages purposes may be merely the royalty rate offered to other companies prior to infringement.

Injunction Issues: As for protection against future direct infringement, the court noted that periodic reports relating to the use of plants under construction would be preferable to an injunction prohibiting otherwise lawful sales activity. The Federal Circuit warned the district courts that “judicial restraint of lawful competitive activities . . . must be avoided.”


Proposed Changes to the Laws Governing Ownership of Inventions Made with Federal Funding
 
Citation:
2 Tex. Intell. Prop. L.J. 193 (1994)
 
Author:
Mark R. Wisner
 
About:
Mr. Wisner is an attorney at Vaden, Eickenroht, Thompson, Boulware & Feather, L.L.P.
 
Abstract:
Since their enactment in 1980, the Stevenson-Wydler Technology Innovation Act and Bayh-Dole Act have re-shaped the technology transfer landscape for inventions made during the course of federally funded research. The Stevenson-Wydler Act was amended by the Federal Technology Transfer Act of 1986, which enabled cooperative research and development agreements (so-called “CRADAs”) between government owned laboratories, industry, and academia, and the National Competitiveness Technology Transfer Act of 1989, which extended the Stevenson-Wydler Act to government owned, contractor operated federal laboratories, but neither amendment changed this basic scheme of releasing ownership of such inventions to the recipient of federal funds. However, the Emerging Technologies and Advanced Technology Program Amendments Act of 1991 created an Advanced Technology Program (ATP), administered by the National Institute of Standards and Technology (NIST), which changed this scheme by mandating ownership of patentable inventions made during activities funded by the ATP Program by the private sector participant in the Program. In enacting that 1991 legislation, Congress effectively took title to any inventions made by a non-profit institution participating in the ATP Program out of the institution’s hands, and according to academia, effectively deprived the institution of participation in the potential long-term economic benefits of the Program.

Now, legislation is being considered which would further change the role of non-profit institutions in the transfer of technology resulting from federally-funded research to industry. This legislation, among other things, would amend the Stevenson-Wydler Act to require a Federal laboratory to transfer title to inventions made in whole or in part by the Federal laboratory during a CRADA to the industrial partner involved in the CRADA without providing for ownership by a non-profit institution involved in the CRADA even if an employee of the institution is a co-inventor of the invention.

To place this proposed legislation in perspective, it is helpful to consider each of the Bayh-Dole and Stevenson-Wydler Acts in more detail. It is also helpful to consider how Texas institutions might be affected by the enactment of such legislation.


Issue 3 - Spring 1994


Suggested Form of Contract to Arbitrate a Patent or Other Commercial Dispute, Annotated
 
Citation:
2 Tex. Intell. Prop. L.J. 205 (1994)
 
Author:
Tom Arnold
 
About:
Mr. Arnold is a fellow of the Chartered Institute of Arbitrators. Mr. Arnold, a co-founder-director of International Centers for Arbitration, has served as President of the A. A. White Dispute Resolution Institute, the American Intellectual Property Law Association, the Licensing Executives Society, the Houston Bar Association, and was Chairman of the Patent Trademark and Copyright Section of the American Bar Association, the National Council of Intellectual Property Law Associations, and others. He has served as an adjunct Professor of Law at the University of Houston teaching Alternative Dispute Resolution, and at the University of Texas teaching Intellectual Property law. He is co-author of books including Patent Alternative Dispute Resolution Handbook, Licensing Law Handbook 1988, Patent Law for Engineers and several hundred speeches and papers on ADR, litigation and intellectual property law. He is a founding member of Arnold, White & Durkee in Houston, Texas.
 
Abstract:
This is not an Article which undertakes discussion at length of about 30 considerations a party ought to undertake before entering into a contract to arbitrate a big-buck intellectual property, construction or other commercial dispute.

What follows is a form contract for setting up arbitration. With minor editing this could be a section or “clause” within any commercial contract including a license; it could be a separate contract calling for arbitration of a companion commercial contract; or it could be a separate contract to arbitrate any commercial dispute, such as a patent, trademark or copyright infringement dispute.

The following form can be used like any form book form. But perhaps more important, reading through it will educate you on some of the more important issues in contracting for arbitration.


Transportation Insurance Co. v. Moriel: Texas Supreme Court Lassos the Punitive Damages Broncing Bull (May that Bull Still Run Free in the Federal Courts?)
 
Citation:
2 Tex. Intell. Prop. L.J. 229 (1994)
 
Author:
Richard T. Redano and Daniel E. Venglarik
 
About:
Mr. Redano and Venglarik are, respectively attorney and law clerk at Rosenblatt & Associates, P.C. in Houston, Texas.
 
Abstract:
On February 2, 1994, in the jurisprudential rodeo in Austin, the Texas Supreme Court lassoed what may well be the wildest and most ornery bull ever bred on the plaintiffs’ range, punitive damages. In Transportation Insurance Co. v. Moriel, the Texas Supreme Court held that in all future punitive damage cases, the determination of the amount of punitive damages shall be bifurcated from the remaining issues in the case.

This decision will impact all tort claims in the state of Texas. For the intellectual property practitioner, the most obvious impact of this decision will be in the areas of trade secret and common law unfair competition litigation. Due to the facially procedural nature of the requirements imposed by the Texas Supreme Court, one of the most interesting questions raised by this decision will be the extent to which it must be implemented by the federal courts, pursuant to the Erie doctrine. A substantial number (if not the majority) of Texas trade secret and unfair competition claims are brought in federal court. Thus, the applicability of the Moriel decision to federal practice should be highly relevant to trade secret and unfair competition practitioners.


Discovery of Draft Patent Applications: Considerations in Establishing a Draft Retention Policy
 
Citation:
2 Tex. Intell. Prop. L.J. 237 (1994)
 
Author:
David W. O’Brien
 
About:
Mr. O’Brien is a student at The University of Texas School of Law.
 
Abstract:
Retention of draft patent applications after filing with the Patent and Trademark Office (PTO) creates two significant problems. First, preliminary commentary or speculative information contained in (or on) interim drafts can be obtained by adverse parties through discovery. To the extent that such a notation, or the draft itself, questions the viability of claims, fails to adequately distinguish prior art, or simply presents the invention in a limiting sense, it could be discovered and used against a client in litigation.

The second problem is purely practical. Taken together, the collections of drafts created in preparation for submission of patent applications represent a large commitment of space, personnel, and other resources to document storage and retrieval. Costs associated with these commitments support an argument for limitations in the retention period, although a quantitative treatment of these costs is beyond the scope of this note.As a result of these variations in comparative risks and benefits, draft patent applications should be included in a systematized document destruction program. Legal and ethical considerations require that any draft retention/destruction program be conducted pursuant to consistent standards and to a policy motivated by business concerns. Ad hoc or selective destruction of drafts may expose the destroying party to sanctions and civil liability. The analysis which follows examines the risks and potential evidentiary benefits of retaining draft applications for use in interference or litigation. In addition, this note proposes a draft retention policy which attempts to balance these risks and benefits. The proposed draft retention policy is presented in an Appendix.

As a result of these variations in comparative risks and benefits, draft patent applications should be included in a systematized document destruction program. Legal and ethical considerations require that any draft retention/destruction program be conducted pursuant to consistent standards and to a policy motivated by business concerns. Ad hoc or selective destruction of drafts may expose the destroying party to sanctions and civil liability. The analysis which follows examines the risks and potential evidentiary benefits of retaining draft applications for use in interference or litigation. In addition, this note proposes a draft retention policy which attempts to balance these risks and benefits. The proposed draft retention policy is presented in an Appendix.


Priority Disputes Involving Security Interests in Patents: Case Law and Current Proposals
 
Citation:
2 Tex. Intell. Prop. L.J. 257 (1994)
 
Author:
Shreen Danamraj
 
About:
Mr. Danamraj is a student at The University of Texas School of Law and 1994–95 Notes Editor for the Texas Intellectual Property Law Journal.
 
Abstract:
In spite of the economic value of patents, copyrights, trademarks and trade secrets, the use of such intellectual property as collateral for securing loans has been relatively rare until recent years. One of the primary reasons for this trend is lenders’ reluctance to accept such collateral because of perceived legal uncertainty with regard to their rights in the event of default.

While Article Nine of the Uniform Commercial Code (“UCC”) is drafted broadly enough to include intellectual property within its definition of “general intangibles,” it is also provided elsewhere in the UCC that secured transactions involving such property are excluded from its perimeters to the extent that federal statutes exert control over these forms of property. Of particular significance are the UCC provisions that relate to perfection of security interests by filing. These provisions, in spirit, take a deferential approach to the filing mechanisms provided for intellectual property under respective federal statutes. The relevant UCC language and comments, however, do not provide a clear picture of the scope and depth of federal preemption.

It is clear that there is a systemic and conceptual gulf between the state and federal recordation schemes. While Article Nine is form-neutral and title-neutral, the Patent Act requires both. Moreover, as a legal system interacting with the external economic system, Article Nine introduces shorter time delays than the Patent Act which allows a longer grace period.


Recent Developments Relating to Trade Secrets, Unfair Competition and Covenants Not to Compete for the Texas Practitioner
 
Citation:
2 Tex. Intell. Prop. L.J. 271 (1994)
 
Author:
Walter R. Brookhart
 
About:
Mr. Brookhart is a Shareholder in the Houston, Texas intellectual property firm of Browning, Bushman, Anderson & Brookhart.
 
Abstract:
There have been few reported Texas cases addressing trade secrets, unfair competition and covenants not to compete since 1992. One area of activity has related to implementation of Rule 76a, Tex.R.Civ.P., which concerns the requirements for sealing of court records. These cases have looked at the burden of proof under Rule 76a and at the effect of Rule 76a on the availability of conventional protective orders under Rule 166b(5), Tex.R.Civ.P. Other Texas cases have examined issues relating to the enforcement of covenants not to compete. Finally, several other cases, including non-Texas cases applying federal statutes, have examined the use of the Lanham Act, the Racketeer Influenced and Corrupt Organization Act, and the Texas Penal Code to obtain relief for theft of trade secrets.


Recent Developments in Patent Law: Selected Biotechnology Cases Interpreting § 112 and § 101
 
Citation:
2 Tex. Intell. Prop. L.J. 281 (1994)
 
Author:
Denise Mayfield and Duke W. Yee
 
About:
Ms. Mayfield is an attorney at Arnold White & Durkee in Austin, Texas. She holds a B.A., Trinity University, 1979; M.S., The University of Texas, 1983; and J.D., St. Mary’s University, 1988. Mr. Yee is an attorney at Feldsman, Bradley, Gunter, & Dillon, L.L.P. in Ft. Worth, Texas. He holds a B.A. University of Texas at Austin, 1986; B.S.E.E., University of Texas at Dallas, 1993; and J.D., University of Texas School of Law, 1989.
 
Abstract:
The present Article summarizes several recent decisions by the Patent and Trademark Office and the courts that interpret the statutory requirements of utility and enablement as applied to biotechnology. These decisions reflect the continued application of a relatively higher standard of disclosure to establish enablement and utility for the invention relating to the “unpredictable” art of biotechnology, as compared to a mechanical or electrical case.

The present selected review illustrates that, in a biotechnology case, consideration of an enabled practical utility commensurate with the scope of the claims involves a consideration of both 35 U.S.C. §§ 101 and 112. This review also demonstrates the essentially case-by-case basis by which the issues of enablement and utility are evaluated for inventions relating to this technology by the Patent Office and the courts. Ultimately, the scope of patent protection afforded the biotechnology invention will depend on the particular facts and circumstances of the case in view of the state of the art as of the date the application is filed.


Recent Developments in Trademark Law
 
Citation:
2 Tex. Intell. Prop. L.J. 291 (1994)
 
Author:
Jeffrey W. Tayon and Shawn Hunter
 
About:
Mr. Tayon is a member of the Houston firm of Conley, Rose & Tayon. Mr. Tayon is a former Patent Examiner in the medical arts and a former law clerk and technical advisor to Judge Jack Miller who is now a Senior Judge at the U.S. Court of Appeals for the Federal Circuit. Mr. Hunter is a member of the Houston firm of Conley, Rose & Tayon. Mr. Hunter received a Bachelor of Science degree in Engineering from the United States Military Academy in 1983. Mr. Hunter obtained his J.D. degree from the University of Houston in 1991.
 
Abstract:
This review covers noteworthy decisions made by the courts and the Trademark Trial & Appeal Board (TTAB) and reported in the U.S.P.Q.2d Vol. 28, No. 1 (Oct. 4, 1993) through Vol. 29, No. 6 (February 7, 1994).


Recent Developments in the Right of Publicity
 
Citation:
2 Tex. Intell. Prop. L.J. 303 (1994)
 
Author:
Jeffrey W. Tayon
 
About:
Mr. Tayon is a member of the Houston firm of Conley, Rose & Tayon. Mr. Tayon is a former Patent Examiner in the medical arts and a former law clerk and technical advisor to Judge Jack Miller who is now a Senior Judge at the U.S. Court of Appeals for the Federal Circuit.


Specialization
 
Citation:
2 Tex. Intell. Prop. L.J. 305 (1994)
 
Author:
Frank S. Vaden III
 
About:
Mr. Vaden is partner at Vaden, Eickenroht, Thompson, Boulware & Feather, L.L.P., Houston, Texas. Mr. Vaden is a member of the American Bar Association’s Standing Committee on Specialization, and is a past chair of the ABA Patent, Trademark, and Copyright Section’s Committee 507 on specialization.
 
Abstract:
Specialization in the practice of law is a growing trend, at least in the present cycle of the profession. Although all lawyers have to pass a common bar examination in order to practice law in the State of Texas, lawyers are increasingly deciding to voluntarily restrict their areas of practice rather than to practice as general practitioners. This is especially true in the large urban areas where there are larger numbers of practicing attorneys as well as potential clients. To specialize narrowly is to practice in direct competition with fewer attorneys and to be able to charge for those specialized services at a higher rate.


 
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