Costello Law Blog

So many of my clients have asked about the impending changes in U.S. patent law due to the American Invents Act, (AIA) which goes into full effect in 2013. I touched on some of the major provisions in a prior newsletter, but I have learned more about the AIA since then, which I think people would want to know about. In this newsletter I also want to touch on aspects of the current law which will no longer apply after March 16, 2013 when the AIA goes into effect.

Change from “First to Invent” to “First to File”

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I have been getting a lot of cases in the last year related to illegal downloading of copyrighted works involving the usage of the software program Bit-Torrent. Bit-Torrent is a free downloadable program which takes a digitally rendered musical work or a motion picture and breaks it up into data bytes or bits; the program then exports the bits to other computers of other individuals who have downloaded Bit-Torrent. At the same time, it imports bits of the music or motion picture work from other Bit-Torrent enabled computers, and like a jigsaw puzzle ends up building a complete … Continue Reading

People have asked me about the Patent Reform Act and how it might change the field of patent law for better or worse. In this article, I want to touch on some of the main provisions and speculate as to how they might change the status quo.

On the bright side, the Act is still mulling its way through Congress and yes, it could die on the Congressional floor. BUT assuming it does not die, here are some of its major provisions and my thoughts on each one.

First, and seemingly of greatest concern, is the new “first to file” provision. In … Continue Reading

In a stunning David versus Goliath win, Costello Law Corporation along with co-counsel Glenn Peterson won a $1.5 million dollar bench verdict from the trial court of Judge Marie Seth Weiner of the San Mateo Superior Court Complex Case Division.  The court issued its Tentative Statement of Decision on July 14, 2011 in what was an extremely complex trade secret misappropriation case.  The case involved the predatory activities of Konica Minolta Systems Laboratories, Inc. (KMSL)  upon our client, Altavion, Inc., a small Silicon Valley company involved in developing document authentication technology.  The basic facts alleged in the case involved the activities of … Continue Reading

If I had a nickel for every time a potential client came to me with a cease and desist letter in hand and asked this question, I could have retired long ago. It never ceases to amaze me that despite the efforts of the movie and music industries to educate the public about the seriousness of intellectual property theft, that so many people still think it is “no big deal” to download a movie or a song from the internet. My suspicion is that a lot of people still think that if they cannot physically touch a piece … Continue Reading

SELECTING THE RIGHT TRADEMARK IN THE BEGINNING WILL SAVE YOU TIME AND EXPENSE IN OBTAINING TRADEMARK PROTECTION 

Let’s say your company has invented a hot new  product and now the task of what to call it looms large.  You want to come up with a strong and recognizable trademark to set it apart in the marketplace.  Where do you start and what considerations should be taken into account in naming your product?  First, you need to be aware that there is a “spectrum” of trademark strength which governs whether your choice of a trademark will be strong out of the box.  If a mark … Continue Reading

People often ask me how long their patent will take to issue after I have filed it. This phase between filing and issuance is commonly termed as the “patent pending” phase. Under normal conditions, if extraordinary measures are not employed, the pendency phase can typically take 2-3 years. This is only an average, because the pendency phase can vary widely, depending upon the nature of the invention that is involved. Mechanical applications typicaly take two to two and a half years. Electrical might take three years. Biotechnology three to four years. Finally, the … Continue Reading

When the typical person thinks of trademarks the normal thought process is that a trademark is a word or logo which identifies a product. The words “Coca-Cola” identify a cola beverage; the golden arches logo identifies a cheeseburger and fries. However, there are a number of things outside of the typical word and logo scenario which can function as trademarks. One such example are colors which function as trademarks. Think of Owens-Corning “Pink” insulation, which uses the Pink Panther as its spokesman. Owens Corning has set itself apart in the marketplace by dying its insulation … Continue Reading

There are certainly good reasons to mark a patented product with a patent number to which the product pertains. The best reason is that should an infringer begin creating “knock-off” products of your product that is clearly marked with your patent number, then damages accrue from the date of patent marking going forward. Since it is possible to collect patent damages up to six years prior to filing a patent infringement lawsuit, it follows, that as long as a product is marked with a patent number, a patentee can go back six years on damages. If a … Continue Reading

After seven weeks, we finally wrapped up the case of Altavion, Inc. v. Konica Minolta Systems Laboratories, et al. This was a massively complex case involving the theft of document security technology from our client, Altavion, Inc., a small Silicon Valley startup company. Altavion alleged that Konica Minolta stole numerous trade secrets over a series of 40 meetings with Altavion in 2004. When licensing negotiations broke down, Altavion figured that Konica Minolta had chosen to go its separate way and would not divulge Altavion’s secrets under the non disclosure agreement it had in place. However, in late … Continue Reading