Business Model and Computer Program Will Soon be Patentable in China

We recently received an informational white paper from our agents in China, Lynn Wang and Zhou Jiaxin at NTD Intellectual Property, with news about a change to make software and business methods patentable as long as certain conditions are met.

We felt this information would be valuable to our readers and clients.

Please contact us if you have any questions.

The examples in this article are hypothetical and for illustration purpose only and should not be relied upon for legal advice.


A Break in the Glass Ceiling? Majority of Law Students are Women

For the first time in history, there are more women in U.S. law schools – just over 50 percent of the seats at accredited law schools.

According to The New York Times, a nearly equal amount of men and women have enrolled in juris doctorate programs for several years. However, the American Bar Association recently released data that shows women now make up more than half of those students.

So what does this mean for the profession? Click here to read the entire The New York Times article.

Green Grass and High Tides: The Pennsylvania Medical Marijuana Act

On April 17, 2016, Governor Tom Wolf signed Pennsylvania’s medical marijuana program into law, making it the 24th state with a comprehensive medical marijuana program. The new law – Act 16 or the “MMA” – will protect registered patients and their physicians from civil and criminal penalties and is in the process of creating a regulated system for growing, prescribing and selling medical marijuana.

The law was effective in April, but the Department of Health is in the process of issuing regulations to implement the Act.

Predictably, Pennsylvania employers now have another issue with which to wrestle in the workplace.

Click here to read the entire article.

By Kevin L. Carr



Ornamental Features, Apple and Samsung: The Reverse of the $400M Verdict

The Supreme Court has stepped into the Apple and Samsung argument by reversing a $400 million verdict.

According to Bloomberg, “The U.S. Supreme Court gave Samsung Electronics Co. its first good news in a while on Tuesday, reversing a nearly $400 million verdict against it for infringing on Apple Inc.’s iPhone patent. The holding was narrow, and the justices sent the case back to the appeals court to figure out what the correct damages should be. But the thrust of the opinion was that damages could be computed based on the profit Samsung made from specific infringing features of the phone — not based on the overall profit from all sales of infringing smartphones.

The case is the latest in a string of decisions over the past several years in which the Supreme Court has rejected rulings by the U.S. Court of Appeals for the Federal Circuit, which specializes in patent law, among other things.”

According to William P. Smith, Counsel at Spilman Thomas & Battle who practices patent law and intellectual property law, “Design patents protect only the ornamental features of a product, which traditionally has been a very narrow scope of protection.  The lower court decision in Samsung appeared to have broadened the scope of design patent protection.  Now the Supreme Court reversal, while leaving intact the lower courts’ scope of protection, may ultimately limit the damages that may be recovered for infringement of a design patent.”

Click here to read the entire Bloomberg article.




Correction – Let’s Amend This Trademark: Part Five of Our Trademark Series

In our previous four articles (articles 1, 2, 3 and 4) in our trademark series, we discussed mandatory and optional filings for maintaining and protecting your marks, in order to avoid abandonment or cancellation.

The final segment of our trademark maintenance series provides guidance on corrections and amendments to trademark registrations.

Click here to read the entire article at

By William P. Smith




Your Trademark on Steroids – Making Your Trademark Registration Stronger

In our previous articles (part one, part two and part three), we discussed ways in which trademarks are maintained and protected through filings that are mandatory and which filings would result in abandonment or cancellation if not timely submitted.

There are also optional filings a trademark owner can take advantage of to optimize and secure its rights under a U.S. trademark registration. An Affidavit of Incontestability Under Section 15 is one such method. Once registered on the Principal Register, if a mark has been in continuous use for at least five consecutive years, the owner may submit a Declaration of Incontestability, also referred to as a Section 15 Declaration or Affidavit. Incontestability offers several advantages. Specifically, third parties can no longer challenge either registrant’s ownership of the trademark or the validity of the mark itself on the basis that it is merely descriptive of the goods or services or was improperly registered.

One may file a Section 15 Declaration any time after the five-year continuous use. While the Affidavit may be filed separately, it is commonly combined with the six-year Declaration of Continued Use under Section 8. The United States Patent and Trademark Office (“USPTO”) does not acknowledge a Section 15 Affidavit unless a use affidavit is pending or has been accepted. The USPTO confirms that the Section 15 filing is facially sufficient and then updates the registration record to reflect receipt of the Section 15 Declaration. It does not review Section 15 filings for substantive issues. Therefore, whether the registration is actually incontestable is determined only if the mark is challenged in a court or administrative proceeding before the Trademark Trial and Appeals Board (“TTAB”).

The Section 15 Affidavit (or declaration) must be filed along with a filing fee (currently $200), and submitted by the owner of a trademark registration after the mark has been in continuous use in commerce for at least five consecutive years after the date of registration. It must specify the goods or services with which the registered mark has been in continuous use for at least five consecutive years after the date of registration. If some but not all of the associated goods qualify at the time of filing, the trademark owner can file more than one Section 15 Affidavit at different times to cover different goods or services, The declaration must state:

  1. The mark is still in use in connection with those goods or services,
  2. There has been no final decision adverse to the owner’s claim of ownership of the mark for the covered goods or services; and
  3. There is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of.

If you have any questions about trademark or patents, please feel free to contact us.

By William P. Smith


Pennsylvania Continues to Lead the Way in Natural Gas Production

According to the U.S. Energy Information Administration (“EIA”), Pennsylvania has seen the biggest gain in U.S. natural gas production and production is expected to continue to rise.

The EIA’s Natural Gas Annual indicates that the marketed production of natural gas reached more than 4.8 million cubic feet in 2015, an increase from 4.2 million cubic feet the previous year. By the end of 2015, Pennsylvania had more than 68,000 producing gas wells, up by nearly a thousand from 2014.

There has been record natural gas production levels for five straight years, despite current low natural gas prices.

Click here to read the entire Pittsburgh Business Times article.



Congratulations to the New President of Duquesne University

Spilman is thrilled to congratulate Ken Gormley, J.D., on his installation as Duquesne University’s 13th president.

Ken has had a long and distinguished legal career and follows in the footsteps of other attorneys turned presidents including University of Pittsburgh’s Mark Nordenberg, West Virginia University’s E. Gordon Gee, St. Vincent College’s James Towey and John Murray, Duquesne’s 11th president.

With Ken at the helm, Duquesne is poised for continued growth and success.


Protecting a Precious Asset- Your Trademarks (or Your Brands): Part Three in Our Trademark Series

In our last article, we explained trademark filings for showing continuous use of a mark.

This third article in our trademark series explains renewal applications and practical suggestions for the trademark owner to avoid losing trademark protection for its marks.

Click here to learn about when you must renew, how to renew and the evidence you must provide for renewals.

By William P. Smith



Sharing a Bit of History – Spilman Guides Tour of Historic Baseball Sites

It was a beautiful day in Pittsburgh for the historical baseball parks tour Spilman Managing partner Ron Schuler led for Spilman clients and friends. Schuler was part of the team that brought PNC Park to life and provided a “behind the scenes” view of the site selection process for the home of the Pittsburgh Pirates.

“We’re looking at Pittsburgh urban history as well as baseball history,” said Schuler.  “Where people have played and watched the game of baseball in Pittsburgh reveals a lot about what it has meant to the city over the last 150 years, and how it has been valued as an institution at various times in the city’s history.  Plus, there are a lot of fun stories to tell about ballplayers, owners and politicians, and their connections to these old sites.”

If you are so inclined, and you happen to be on Facebook, please consider giving the Grand Baseball Tour a “like.”