Publications and Events: Amster Rothstein & Ebenstein, LLP

ARELaw Alerts

The attorneys of Amster, Rothstein & Ebenstein keep track of significant events in intellectual property law. As a service to our clients and the community, we provide ARELAW Alerts as short bulletins summarizing these events.

U.S. Patent and Trademark Office Proposes New Interim Guidelines For Determining Patent Eligibility in Light of Bilski v. Kappos
- July 28, 2010
Author(s): Charles R. Macedo

U.S. Supreme Court Affirms Bilski, But Sets The Course Clear For Business Methods Patents
- June 28, 2010
Author(s): Charles R. Macedo, David R. Widomski, Joseph Casino

The Enlarged Board Of Appeal Of The European Patent Office Declines To Provide Further Guidance On The Patentability Of Computer-Implemented Inventions Under The European Patent Convention
- May 19, 2010
Author(s): Jung S. Hahm, Marion P. Metelski, Charles R. Macedo

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Published Articles

The attorneys of Amster, Rothstein & Ebenstein are recognized authorities in their fields, consistently staying at the forefront of developments, decisions, and trends within the constantly evolving world of intellectual property law. We encourage our attorneys to publish their discussions and analyses of intellectual property law developments, and we offer them as a service to the community of clients and practitioners engaged in this field.

Same word, different meanings
- Journal of Intellectual Property Law and Practice, August 19, 2010
Author(s): Charles R. Macedo

Tips For Drafting And Prosecuting Patent Applications After Bilski v. Kappos, 561 U.S. ___ (2010)
- Technology Transfer Tactics, August 2010, pp. 123-24
Author(s): Charles R. Macedo

Nine Opportunities for Federal Circuit Guidance on Patents Post-Bilski
- Weblog entry, Legal Pulse, 26 Jul 2010
Author(s): Charles R. Macedo

The Nuts And Bolts Of The Bilski Decision
- IP Law360, June 30, 2010
Author(s): Charles R. Macedo, David R. Widomski

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In the Press

Reporters and editors covering decisions and developments in intellectual property law, often working on deadline, frequently find themselves turning to the lawyers at Amster, Rothstein & Ebenstein for the perspective and insight that goes “behind the story.” We are gratified that the print and online media have come to rely on our lawyers to distill complex decisions into plain English so that the audience for the story can understand not just what was decided but, more importantly, why it was decided and what implications it has for the future.

Inside Counsel Turns to Partner Charles R. Macedo for Insight on TiVO v. Echostar Case
“Defendants don’t get to have the same presumptions and defenses. There’s no jury trial. There’s no Markman hearing. It’s a shortcut proceeding. You have one streamlined hearing, then an issuance,” says Charles Macedo, a partner at Amster, Rothstein & Ebenstein and author of “The Corporate Insider’s Guide to U.S. Patent Practice.”

A finding of contempt, moreover, is particularly stinging. “No one wants to be found in contempt of court,” Macedo says. “It’s a pretty harsh sounding remedy, even if the damages aren’t any bigger [than for infringement].”
- TiVo Case Affects Difficulty of Designing Around Patents Decision could make designing around patents harder and penalties more severe, Inside Counsel, Steven Seidenberg
August 1, 2010

Technology Transfer Tactics turns to Partner Charles R. Macedo for insight on Bilski decision.
Charles R. Macedo Esq., a partner at New York’s Amster Rothstein & Ebenstein LLP, tells TTT that the decision “keeps in play a wider range of potentially patent-eligible subject matter than if Justice Stevens’ concurrence had been adopted as a majority decision. The flexibility of the majority decision will lead to greater opportunities to argue that what might have been questionable subject matter under the Federal Circuit’s test might nonetheless be patent-eligible subject matter. However, with the flexibility of the Supreme Court’s test comes greater uncertainty in application.”

It is, he adds, “overall a good thing for most existing business method patents” and “does nothing to categorically put in doubt any licenses based on them.” He stresses, though, that “each license may need to be considered on a case-by-case basis in light of the Supreme Court’s guidance.”

Because the Bilski saga “evidences that the standard for determining patent-eligibility is a relatively quick-moving target as legal standards go,” Macedo comments, “the decision calls for use of a wide variety of claim forms and scopes by university TTOs to ensure that the two-decade life of a patent can be fully enjoyed. Many in the patent community breathed a sigh of relief with the decision, knowing that another rigid rule had been struck down as too narrow. The safe harbor of the machine or transformation test probably remains open, but it is not the unforgiving boundary that it was before.”
- Bilski Decision Leaves Many Questions Unanswered for TTOs, Technology Transfer Tactics, July 2010

IP Law 360 Quotes Partner Chester Rothstein as expert on recent case law: "Design Patent Law Still Murky Post-Egyptian Goddess"
Chester Rothstein, a partner at Amster Rothstein & Ebenstein LLP, was less convinced of the significance of the Crocs ruling, however.
While it's helpful to have another example to add to the 100-plus years of case law related to design patents, Rothstein said, "I don't think Crocs dramatically changed the law or analysis. We still have the ordinary observer test."
Moreover, he said, the type of written claims construction done by the ITC in the Crocs case and criticized and overturned by the Federal Circuit has not been the norm since Egyptian Goddess, Rothstein said.
"My impression is that most courts did the correct visual analysis," he said, referring to pre-Crocs decisions.
- Design Patent Law Still Murky Post-Egyptian Goddess, IP Law360, Wednesday, March 24, 2010

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