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Practical Perspectives on Intellectual Property Legal Developments

Category Archives: USPTO

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USPTO Introduces an Expedited Patent Appeal Pilot

Posted in Patent, USPTO
On June 15, 2015, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) introduced a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the PTAB to obtain an expedited review of one appeal in return for withdrawing another appeal. The stated goals of this program are to allow appellants with multiple ex parte appeals pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals before the PTAB.… Continue Reading

White House Backs Recently Introduced Patent Reform Bill Known as PATENT Act

Posted in Patent, USPTO
On April 29, 2015, Senators Grassley, Leahy, Corny, Schumer, Lee, Hatch, and Klobuchar introduced another patent reform bill known as the Protecting Talent and Entrepreneurship Act of 2015 (“PATENT Act”). This bill includes many provisions similar to the previously introduced Innovation Act of 2015, but takes a slightly different approach on some key issues.… Continue Reading

Another Patent Reform Bill Targets Frivolous Demand Letters

Posted in Patent, USPTO
Last week, the House Energy and Commerce Committee approved yet another patent reform bill to curtail misleading and frivolous demand letters sent by patent assertion entities (also known as “patent trolls”). The legislation, approved by a vote of 30 to 20, is known as the Targeting Rogue and Opaque Letters Act, or TROL Act (H.R. 2045). This bill aims to protect businesses from frivolous demands while preserving the ability of patent holders to legitimately protect their intellectual property. The overall goal is to curtail “certain bad faith communications in connection with the assertion of a United States patent [that] are unfair or deceptive acts or practices, and for other purposes.”… Continue Reading

Congress Reintroduces Innovation Act in Hopes to Curb Frivolous Patent Litigation

Posted in Patent, USPTO
Recently, House Judiciary Committee Chairman Robert Goodlatte reintroduced a patent reform bill, known as the Innovation Act of 2015 (H.R. 9) (“The Act”). This reintroduced bipartisan bill is substantially similar to its predecessor, Innovation Act of 2013. The Innovation Act of 2013 had received overwhelming support by the House of Representatives, but was ultimately tabled, along with other patent reform bills, due to bipartisan disputes.… Continue Reading

Potential Delay Enough to Reduce PTA

Posted in Patent, USPTO
The Federal Circuit recently addressed the issue of whether Patent Term Adjustment (“PTA”) can be reduced under 35 U.S.C. § 154(b)(1)(C) by conduct that does not actually cause delay in the conclusion of prosecution. Section 154(b)(1)(C) provides that PTA “shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” The USPTO has interpreted the statute to mean that conduct that did delay or that could potentially delay the examination of a patent applications should be sanctioned. In Gilead Sciences Inc. v. Lee, Gilead Sciences, Inc. (“Gilead”) contested the USPTO’s interpretation and argued that the statue required actual delay in the conclusion of prosecution. The Federal Circuit held that Congress’s intent in enacting the statute was “to sanction not only applicant conduct or behavior that result in actual delay, but also those having the potential to result in delay irrespective of whether such delay actually occurred.”… Continue Reading

The United States Deposits Ratification of the 1999 Geneva Act of the Hague Agreement and Becomes a Member Country of the Hague System

Posted in Patent, USPTO
On Friday, February 13, 2015, the United States deposited an instrument of ratification to the 1999 Geneva Act (Geneva Act) of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO). With this final step by the United States to become a signatory to the Geneva Act, qualifying U.S. applicants will be able to more easily protect their design patents in member countries and intergovernmental organizations (Contracting Parties) that have also signed on to the Geneva Act.… Continue Reading

Federal Circuit Issues Its First AIA Appeal Ruling

Posted in Patent, USPTO
On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”). Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Patent No. 6,778,074 (the “’074 patent”) entitled “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit.” Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (“USPTO”) for IPR of claims 10, 14, and 17 of the ’074 patent. The PTAB found the claims to be invalid as obvious.… Continue Reading

USPTO Releases Examples of Patent Eligible Claims Relating to Abstract Ideas

Posted in Patent, USPTO
We previously reported on the United States Patent and Trademark Office’s issuance of new interim examination guidance in December for evaluating subject matter eligibility under 35 U.S.C. § 101. At the time, the USPTO included examples of allowable claims for nature-based products in light of previous Supreme Court rulings in Mayo and Myriad. On Tuesday, January 27, the USPTO followed up by releasing claim examples relating to abstract ideas in response to the Supreme Court’s decision earlier this year in Alice.… Continue Reading

Hana Financial, Inc. v. Hana Bank: Tacking Priority of Earlier Trademarks

Posted in Trademark, USPTO
The U.S. Supreme Court does not get to tackle trademark law issues very often. The decision in Hana Financial, Inc. v. Hana Bank, (No. 13-1211; January 21, 2015) is the first pronouncement of the highest Court on trademark matters in more than a decade, and it deals with the issue known as tacking. Trademarks often experience changes in appearance and overall look in the course of many years. These changes can take various forms, such as a modification in lettering style, a rearrangement in the order of words, the dropping of a background design, or the addition of new stylized elements. The tacking doctrine allows a party to claim the earlier priority date of an old mark for a new trademark, if the later involves slight changes over the prior version. The U.S. Supreme Court’s decision in Hana Financial addresses narrowly the question as to whether tacking is a matter of law reserved to a judge, or a matter of fact decided by a jury.… Continue Reading

USPTO Issues New Guidance on § 101 Subject Matter Eligibility

Posted in Patent, USPTO
On December 16, the United States Patent and Trademark Office issued new interim examination guidance for evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance, entitled the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Interim Guidance”), was developed in view of the recent Supreme Court decisions in Alice, Myriad, and Mayo. The Interim Guidance supplements the June 25, 2014 Preliminary Examination Instructions that we previously discussed, and supercedes the March 4, 2014 Guidance following Myriad and Mayo.… Continue Reading

The Honorable Grace K. Obermann to Present at NJIPLA’s ETS Seminar on November 6, 2014

Posted in Licensing, Patent, USPTO
On Thursday, November 6, 2014, The Honorable Grace K. Obermann, Lead Administrative Patent Judge, USPTO, PTAB, will present on practicing before the PTAB at the New Jersey Intellectual Property Law Association’s seminar, "Electronics, Telecom & Software Patent Practice Update." The seminar will also address topics such as licensing guidance, implications of recent Supreme Court decisions, and damages considerations.… Continue Reading

Unified Patents Petitions for IPR to Counter Patent Troll PanTaurus’ Patent Litigation Assault

Posted in Patent, USPTO
Much debate has centered on patent reform and efforts to curtail the litigious activities of patent assertion entities (PAEs) also referred to as “patent trolls.” However, and as underscored for example by the number of patent lawsuits filed by Texas-based PAE PanTaurus, LLC this past year, PAEs continue to present a significant patent litigation presence.… Continue Reading

McDonald’s Triumphs over BioMcDiesel

Posted in Trademark, USPTO
On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration.… Continue Reading

PTAB Roundtables Coming to a City Near You

Posted in Patent, USPTO
On March 25, 2014, the United States Patent and Trademark Office (USPTO) announced that the Patent Trial and Appeal Board (PTAB) would be hosting roundtables across the country to educate the public, and collect feedback regarding the new America Invents Act (AIA) trial proceedings. These roundtables are free and open to the public. According to Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Michelle Lee, “[t]hese roundtables are a part of USPTO’s ongoing efforts to provide more opportunities for the public and other key stakeholders to share ideas, feedback, experiences and insights on additional ways we can improve our processes.”… Continue Reading

IP Practitioners — Get Ready for the Global Patent Prosecution Highway!

Posted in USPTO
Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway ("GPPH"): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet.… Continue Reading

Gibbons Directors Robert Rudnick & Thomas Bean to Serve on Panel for Upcoming Gibbons Institute of Law, Science & Technology Event

Posted in Patent, USPTO
Robert E. Rudnick and Thomas J. Bean, Directors in the Gibbons Intellectual Property Department, will serve as panelists at the upcoming Gibbons Institute of Law, Science & Technology event, "USTPO Patent Post-Issuance Proceedings Under the American Invents Act -- a New Frontier" on April 23.… Continue Reading

Limitations on Discovery in Inter Partes Review Proceedings

Posted in Patent, USPTO
Companies accused of patent infringement have a number of basic alternatives to contemplate: settle the matter; defend the suit; or consider resort to a post grant patent proceeding at the United States Patent and Trademark Office (USPTO). With an eye towards cost, risk and accurate resolution, inter partes review (IPR) proceedings are an attractive alternative to settling or defending.… Continue Reading

Cooperative Patent Classification System Underway to Streamline Prior Art Searching

Posted in USPTO
As we previously reported, the US Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) with the aim of producing a common classification system for technical documents and the promise of transparent and harmonized global classification for patent documents.… Continue Reading

The USPTO Sets Up Two Additional Pro Bono Assistance Programs in California and D.C.

Posted in USPTO
Upon the passage of the America Invents Act ("AIA") and in an effort to help individuals and corporations who are unable to afford legal advice relating to intellectual property, the USPTO has recently announced two additional pro bono assistance programs in California and the District of Columbia. With the addition of these two programs, the USPTO has created four intellectual property pro bono programs across the United States and is forecasting an additional ten by the end of 2013.… Continue Reading

USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012

Posted in Patent, USPTO
On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, 2012.… Continue Reading

Patent Classification Harmonization

Posted in USPTO
The United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) and released a finalized set of CPC definitions. The CPC is operational at both the EPO and USPTO. The USPTO and EPO developed the CPC with the collaborative aim of producing a common classification system for technical documents. The CPC brings the promise of transparent and harmonized global classification for patent documents.… Continue Reading

Inter Partes Review Under AIA is Underway …

Posted in Patent, USPTO
As we previously discussed, the new inter partes review (IPR) procedures went into effect September 16, 2012, along with several other significant changes. The IPR procedure replaces the previous inter partes reexamination and applies to any patent issued before, during, or after September 16, 2012. This removes one of the hurdles of the previous inter partes reexamination which applied only to applications filed after November 29, 1999. The PTO will only accept a valid IPR petition nine months after a patent issues. As in inter partes reexamination, the IPR permits the petitioner to challenge claims as being anticipated or obvious in view of published prior art references. Also, like the previous inter partes reexamination, IPR carries with it an estoppel effect barring the IPR petitioner from asserting the invalidity of any challenged claim on the same arguments and references in any district court action.… Continue Reading
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