IP Law Alert : Intellectual Property Lawyers & Attorneys : Gibbons Law Firm : Copyrights, Patent Infringement, Unfair Competition

Earlier today, the Supreme Court denied certiorari in the Tiffany v. eBay action, permitting a ruling to stand that places the burden on trademark owners to police infringements taking place on on-line auction sites. The Supreme Court’s denial of cert was without comment.

Critical to the underlying decisions of the Second Circuit Court of Appeals and the U.S. District Court for the Southern District of New York was that eBay was not itself the seller of the infringing goods, and that it acted promptly to take down auctions when it received notice that the goods were not legitimate. eBay reportedly has made investments of up to $20 million per year to stop fraud and infringements occurring via its site.

This action, which has been pending since 2004, has been carefully watched by brand owners and on-line retailers alike, since it examines the modern question of how responsibility for infringement should be allocated when third parties sell goods via an on-line marketplace. Given the Supreme Court’s denial of certiorari, the brunt of that burden currently remains on trademark owners.

Catherine M. Clayton is a Director in the Gibbons Intellectual Property Department.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

On October 7, 2010, the U.S. Patent & Trademark Office (USPTO) issued a press release announcing the adoption of new procedures for measuring the quality of patent examination that will be implemented during the start of the 2011 fiscal year. After requesting public comment in both the Federal Register and Official Gazette and holding two round table discussions, a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force developed a new composite quality metric including seven factors, and an associated procedure for obtaining measurements, identifying systemic problems and providing remediation through examiner training.

Currently, the USPTO measures the quality of patent examination according to two factors: (1) the quality of the action setting forth allowance or final rejection of the application; and (2) the quality of the actions taken during the course of examination;. In the October 7 press release, USPTO describes these two factors as “useful but insufficient measurements of patent examination quality.”

Under the new procedures, the USPTO will use seven quality measurements, which are described in detail in the USPTO publication "Adoption of Metrics for the Enhancement of Patent Quality Fiscal Year 2011." In addition to the two factors presently used, the new composite metric will also measure: (3) the use of best search practices in the examiner’s initial search for prior art; (4) the use of best examination practices in the first action on the merits; (5) trends in compact and efficient examination as reflected in aggregate USPTO data; (6) the perceptions of applicants and practitioners as measured by surveys; and (7) the perceptions of examiners as measured by surveys. While the USPTO presently measures the perceptions of applicants and practitioners, this factor was not previously incorporated within the composite metric.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link