Search results - found 169
PTAB arbitrary in not allowing claim amendments (International reports)
The Federal Circuit recently vacated the Patent Trial and Appeal Board's (PTAB) denial of a patent owner's motion to amend the claims during an inter partes review proceeding. The PTAB's denial was based on the sole ground that the motion to amend and the supporting declaration offered no discussion of whether the new features added by proposed amendment were separately known in the art.
Supreme Court to review exclusion of disparaging marks from federal trademark registration (International reports)
The Supreme Court recently granted certiorari in Lee v Tam. In so doing, the Supreme Court agreed to review a decision of the US Court of Appeals for the Federal Circuit which held that the statutory prohibition on disparaging marks from federal trademark registration was unconstitutional.
Inter partes review burden of proof does not shift to patent owners (International reports)
The Federal Circuit has firmly rejected the US Patent and Trademark Office's argument that on the initial institution of an inter partes review proceeding, the burden of producing evidence supporting the validity of the patent claims shifts to the patent owner. Instead, the court held that the petitioner seeking to invalidate the patent claims continues to bear the burden of proving unpatentability.
Federal Circuit issues first-ever ruling in inter partes review appeal (International reports)
The Federal Circuit recently issued its first-ever ruling in an appeal from an inter partes review. The court emphasised that it lacks jurisdiction to review decisions of the Patent Trial and Appeal Board to institute inter partes reviews even in connection with the appeal of a final decision.
USPTO issues guidance for determining subject-matter eligibility (International reports)
The US Patent and Trademark Office has issued its Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Law of Nature, Natural Phenomena and Natural Products, to assist patent examiners in assessing whether claims cover subject matter that is eligible for patentability.
Caught in the middle: US sellers in Europe (International reports)
In late Spring 2018 US entities will have to consider recent changes to US discovery law while also working to comply with the EU General Data Protection Regulation. Data protection is particularly relevant to trademark rights, as rights holders must balance factors for protecting brands and personal data.
Newyear hashtag valuableasset (International reports)
Once-descriptive social media hashtags and Twitter handles are now valuable assets associated with specific parties. Businesses in particular should have social media account user names and hashtags cleared before using them to market and advertise their goods or services.
The metrics challenge (International reports)
In-house and outside counsel must increasingly justify themselves, their patent expenditures and the resulting work product. Patent data is no less a tool for gaining a competitive advantage; so what opportunities exist for emerging companies and patent practitioners?
Federal Circuit decision likely to limit patent owner liability for false marking (International reports)
The Federal Circuit has affirmed the Eastern District of Virginia’s grant of summary judgment of no liability for false patent marking in favour of defendant Solo Cup Company in Pequignot v Solo Cup Co. The decision should help to limit exposure of patent owners to the flood of qui tam false marking lawsuits filed since last year’s decision in Forest Group, Inc v Bon Tool Co.
The federal government's march-in right: what does it mean for your intellectual property? (International reports)
Although academia remains a source of technologies ripe for commercial R&D, there is growing concern that the federal government will utilise a never-before-used provision in the Bayh-Dole Act 1980 to control the skyrocketing cost of medications stemming from federally funded research.
Federal Circuit reverses district court decision on exceptional case and attorneys' fees (International reports)
The US Court of Appeals for the Federal Circuit has reversed a district court decision in a patent infringement case involving what constitutes an exceptional case justifying an award of attorneys' fees under 35 USC Section 285.
Copyright protection for graffiti and street artists (International reports)
The legal issues surrounding the extent of copyright protection for graffiti and street art unsettled and unresolved by the courts. However, there are signs that graffiti artists may be able to count on some form of copyright protection by public (or, at least, social media) acclamation.
Supreme Court rules on patentable subject matter in Alice (International reports)
The Supreme Court has issued its decision in Alice Corporation v CLS Bank International. This case dealt with what constitutes patentable subject matter under 35 USC 101. The decision affirmed the Federal Circuit's earlier en banc per curiam decision in which it unanimously held that the method and "computer-readable media" claims at issue were not patent eligible.
The role of the expert witness in calculating damages (International reports)
The Federal Circuit Court of Appeals has set aside a US$358 million damages award in Lucent v Gateway, finding that the evidence was insufficient to support the jury’s verdict. The case provides some useful guidance on the role of expert witnesses in working out damages.
Intellectual property made easy: set an information trap (International reports)
There are signs that traditional methods of patent and trademark monitoring are waning as the US Patent and Trademark Office embraces real-time web-based alerts, digital subscription services and partnerships with data capture experts.
Scope of CBM review is limited (International reports)
In a rare reversal of a Patent Trial and Appeal Board (PTAB) decision, the Federal Circuit recently determined that the PTAB had incorrectly used an overly broad definition of a 'covered business method' (CBM) patent in instituting a CBM review of a challenged patent.
Does first sale doctrine allow infringement claims for imported genuine goods? (International reports)
Two cases pending before the Supreme Court and the Court of Appeals for the Second Circuit deal with the questions of which rule applies when someone buys a copyrighted article outside the United States and then imports it, and whether such importation is an act of infringement under Section 602 of the Copyright Act or a permitted activity under the first sale doctrine.
Balance between brand protection and artistic expression: strengthening the First Amendment (International reports)
Two recent decisions reflect the increasing strength of free speech rights for authors of expressive works and the elevation of those rights over rights of trademark owners, so long as there is no express statement that could mislead consumers as to the source or content of the work.
Personal jurisdiction over out-of-state defendant may exist based on single act (International reports)
The US Court of Appeals for the Second Circuit has held that specific personal jurisdiction over an out-of-state trademark defendant may exist based on a single act of shipping an item into New York, along with other substantial business activity in-state. The case establishes a relatively low bar for plaintiffs seeking to enforce their trademark rights, at least in New York.
Trademarks and Neil Gorsuch a heated tale of chilli peppers and agency regulation (International reports)
Judge Neil Gorsuch's plainspoken criticism of the Trademark Trial and Appeal Board's Manual of Procedure in a 2016 case suggests that the US Supreme Court nominee is more likely to adhere to the Federal Rules of Civil Procedure's primary aim of promoting speedy and inexpensive trials than what he described as a "pointless process".
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