Exceptional Patent, Trademark, and Copyright Prosecution

Intellectual property law includes patents, trademarks, copyrights, and trade secrets. The rights provided by these laws may represent a significant value to both individuals and corporate entities in the United States and internationally.

John C. Laurence Law, PLLC, specializes in helping its clients understand and develop their intellectual property rights across various technologies and industries.

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John C. Laurence

Intellectual Property Lawyer

John C. Laurence received his B.S. in Electrical Engineering from Polytechnic University and his J.D. from New York Law School. He is a member of the New York State Bar, the U.S. Patent and Trademark Office (Patent Bar), and the District Court of the Southern District of New York.

Client Testimonials

  • Excellent

    While I consulted John with my case, he frankly discussed with me the options I have. After I signed the agreement, he proceeded promptly. Overall experience is great.

    Alan via Avvo
  • Patent Preparation and Technology Review

    John prepared the patent claims based on highly complex electromagnetic field applications and guided us though the patent application process. We were very satisfied with his work.

    Toby via Avvo
  • Excellent legal service regarding Copyright issue.

    I contacted him regarding Copyright issue. He provided seamless service with quick response. He is knowledgeable in his area. Plus, he provides free consultation which is very helpful. He also charges very reasonable price. I totally recommend him.

    Karen via Avvo

Recent Articles

Learn More about Trademarks, Copyrights, and Patents

Canada Rejects Problem-Solution Approach for Computer Implemented Patent

The Canadian Federal Court has rejected the problem-solution approach as adopted by the Canadian Intellectual Property Office (CIPO) for assessing patentable subject matter in favor of the purposive constructive approach as set out in the Whirlpool and Free World Trust cases. In Choueifaty v. Canada, representative independent claim 1 reads as follows: “A computer-implemented method for providing an anti-benchmark portfolio, the method comprising: acquiring, using a computer system, data regarding a first group of securities in a first portfolio, wherein the computer system comprises a computer processor and memory coupled to said processor, identifying, using a computer system, a second group of securities to be included in a second portfolio based on said data and on risk characteristics of said second group of securities, and providing, using a computer system, the individual weightings for each of the securities in said second portfolio according to one or more portfolio optimization procedures that maximizes the anti-benchmark ratio for the second portfolio wherein the anti-benchmark ratio is represented by the quotient of: a numerator comprising an inner product of a row vector of holdings in said second portfolio and a column vector of a risk characteristic of return associated with said holdings in said second portfolio; and a denominator comprising the square root of a scalar formed by an inner product of said row vector of said holdings in said second portfolio and a product of a covariance matrix and a column vector of said holdings of said second portfolio.” Under Section 2 of the Patent Act, only those elements in a claim identified as essential may be considered in determining whether the subject matter of that claim qualifies as an “invention.” Under the problem-solution approach, only those claim elements that solve an identified problem may be defined as “essential.” Using this approach, it was determined that the representative claim’s “essential” elements were “directed to a scheme or rules involving mere calculations” for weighing securities. It was further determined that these “essential” elements reflected an “optimization procedure” and not a “computer implementation.” As such, the claim was found to be non-statutory. Under the purposive constructive approach, a claim element is “essential” if (1) modifying or substituting that element changes the way the invention works and (2) the intention of the inventor, considering the express language of the claim, or inferred from it, is that the element is “essential.” Accordingly, unlike the problem-solution approach, the purposive constructive approach does not require that “essential” elements of a claim solve an identified problem. While Choueifaty may be appealed, it may provide some clarity for patent applications in Canada that claim a computer implemented method.

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The Intersection of Trade Secrets and Patents

A federal court in New Orleans has allowed a trade secret claim to proceed to trial, even though the alleged trade secrets were disclosed in a patent application. Cajun Servs. Unlimited, LLC v. Benton Energy Serv. Co., No. 17-0491 (R. Doc. 241). The lawsuit concerns Cajun’s patented elevator roller insert system (ERIS), which is a technology used in drilling for oil. Before filing its patent application, Cajun agreed to rent ERIS to Benton Energy. While renting ERIS, Benton Energy hired a third party to reverse engineer ERIS, using drawings and prototypes supplied with the rented system. Cajun eventually filed its patent application for ERIS while still renting the system to Denton Energy. Cajun initially brought claims for trade secret theft and unfair trade practices. Once a patent was granted for ERIS, Cajun added a patent infringement claim against Benton Energy. In response, Benton Energy filed a summary judgment motion on Cajun’s trade secret claims. Benton Energy attempted to argue that trade secret claims failed as a matter of law because Cajun publicly disclosed the ERIS technology in its patent application. That is, the information could not be a trade secret because it was no longer a “secret” since it was disclosed in the patent application. The court disagreed. It noted that “publication of the ‘862 Patent application does not deprive Plaintiffs of a cause of action for misappropriation of trade secrets before the patent application was published.” In other words, the subsequent patent application did not absolve Benton Energy from liability for any misappropriation that occurred before the patent publication. A non-provisional patent application in the U.S. is normally published eighteen months after its earliest priority date. A non-publication request may be made to prevent publication of the non-provisional application. This holding confirms that before publication, the information disclosed in a patent application may still be afforded trade secret protection.

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Protecting Individual Replacement Parts

In Automotive Body Parts Ass’n v. Ford Global Techs. (Fed. Cir. 2019), Ford accused the Automotive Body Parts Association (ABPA) of infringing Ford’s design patents that cover individual parts of Ford’s F-150 truck. The ABPA argued that the patented designs are functional. ABPA further argued the application of doctrines of exhaustion and repair to these patented designs. The design patent D489,299, titled “Exterior of Vehicle Hood,” claims “[t]he ornamental design for exterior of vehicle hood,” as shown in Figure 1 below. The design patent D501,685, titled “Vehicle Head Lamp,” claims “[t]he ornamental design for a vehicle headlamp, as shown below in Figures 1 and 2. A design patent must be directed to an “ornamental design for an article of manufacture” and not one “dictated by function.” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (interpreting 35 U.S.C. § 171(a)). Although the article of manufacture itself is typically functional, the protected design elements themselves may not be “primarily functional.” As to functionality, ABPA states that consumers seeking replacement parts prefer hoods and headlamps that restore the original appearance of their vehicles. As such, ABPA concludes that there is a functional benefit to designs that are aesthetically compatible with those vehicles. Specifically, ABPA argues that Ford’s protected hood and headlamp designs are functional because they aesthetically match the F-150 truck. The Court disagreed with the ABPA’s functionality arguments. Specifically, the Court held that even in the context of a consumer’s preference for a particular design to match other parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional. As to exhaustion, ABPA asserts that the sale of an F-150 truck exhausts any design patents embodied in the truck and permits use of Ford’s designs on replacement parts so long as those parts are intended for use with Ford’s trucks. The Court declined to apply exhaustion to the protected hood and headlamp designs sold by a third party as replacement parts, the Court noting that exhaustion attaches only to items embodying the protected designs sold by, or with the authorization of, the patentee. As to the right or repair, ABPA argues that purchasers of Ford’s F-150 trucks are licensed to repair those trucks using replacement parts that embody Ford’s hood and headlamp design patents. The Court also rejected ABPA repair argument noting that the right of repair does not permit a complete reconstruction of a patented device or component. As such, a purchaser may replace “individual unpatented component” of the patented article but does not permit the purchaser to infringe other patents by manufacturing separate patented components of the purchased article. Accordingly, the new hoods and headlamps in question are subject to Ford’s design patents, and manufacturing new copies of those designs constitutes infringement. This decision reinforces the use of design patents to protect the manufacturer of individual replacement parts to be used in a purchased article.

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