Market Insight

Updates from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, dealmaking and valuation.

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USA

15 DECEMBER 2021

Trademark Modernisation Act rules usher in big changes for brand owners

US trademark owners will have fresh options for expunging, re-examining and cancelling trademarks once key provisions of the Trademark Modernisation Act come into effect later this week. While the changes are designed to encourage a more efficient registration process, they are a significant shake up to the existing regime.

18 AUGUST 2021

China may be a guiding light for small claims IP courts in the United States

Several key senators have asked the USPTO to carry out a study on small claims courts to ascertain whether these would be a suitable venue for patent rights. The study raises the question of whether China’s new internet courts could be a useful model.

14 JULY 2021

US Supreme Court limits Patent Law’s assignor estoppel doctrine

In a significant ruling, the Supreme Court has handed down its decision in Minerva Surgical v Hologic Inc, signalling a change for invalidity claims.

23 JUNE 2021

The pros and cons of non-publication requests

Non-publication requests are common when filing a patent application before the USPTO. However, applicants often make these requests without understanding the potential pitfalls of doing so, which can have severe consequences.

05 MAY 2021

Federal Circuit highlights limitations to claim construction when essential structure is only found in preamble

The Federal Circuit has handed down its decision in Simo Holdings Inc v Hong Kong Ucloudlink Network Technology Ltd, which clarifies a crucial issue with regard to constructing the preamble in a patent claim.

21 APRIL 2021

The Trademark Modernisation Act 2020 – all you need to know

The new Trademark Modernisation Act signals a complete overhaul of the trademark system. It is crucial that brand owners and IP professionals get to grips with these changes, as they will significantly strengthen trademark rights.

07 APRIL 2021

Federal circuit finds oral presentations constitute printed publications in post-grant reviews

The US District Court of Appeals for the Federal Circuit has issued a precedential decision addressing what kinds of documents are considered to be publicly accessible and why the PTAB cannot hold that a claim is unpatentable based on a theory of unpatentability that was not presented by the challenger.

31 MARCH 2021

IP due diligence considerations in view of recent US case law

Recent Federal Circuit precedent has highlighted issues surrounding inventorship and the factors that IP holders should consider during the due diligence process.

03 MARCH 2021

Federal Circuit raises the enablement bar for antibody patents

The Federal Circuit has issued new guidance in light of Amgen v Sanofi, stating that patentees should take particular care to describe and claim various structural antibody features without relying solely on functional properties of those antibodies.

17 FEBRUARY 2021

Growing complexity of ITC product redesign disputes could threaten rights holders

While the International Trade Commission has procedures to determine whether a new or redesigned product infringes the IP rights at issue and come under an exclusion order, determining this is a contested area, so rights holders should be well versed in the process.

10 FEBRUARY 2021

The road less travelled for dispute resolution – the benefits of ENE in patent litigation

A dive into the merits of early neutral evaluation presents compelling reasons for why patent litigants should consider it as an early, cost-effective alternative in future cases.

27 JANUARY 2021

Biden administration promises hard stance against Chinese IP abuses

US IP experts discuss what the Biden administration has in store for the IP world, including a more multilateral approach to US-China trade practices.

06 JANUARY 2021

Fintiv and the increased need to be expeditious

Companies looking to leverage post-grant proceedings before the PTAB should file a petition as soon as practicable. US IP experts provide crucial information on how to do so.

USA

15 JULY 2020

Booking.com? Booking.yeah! Supreme Court weighs in on trademark protection for generic terms combined with gTLDs

The US Supreme Court has handed down its decision in USPTO v Booking.com BV, in which it held that the addition of a gTLD such as ‘.com’ to an otherwise generic term may be protectable under trademark law, provided that consumers do not perceive the mark as a whole as generic.

27 MAY 2020

What the Supreme Court's Romag Decision means for trademark infringement and damages

The US Supreme Court's unanimous decision in Romag Fasteners, Inc v Fossil, Inc has resolved a circuit court split by confirming that a plaintiff in a trademark infringement suit is not required to show that the defendant wilfully infringed the plaintiff's trademark as a precondition to an award of profits. This is a clear signal to Congress to avoid further unclear drafting that leaves open issues to the courts for interpretation and clarification.

29 APRIL 2020

USPTO and US Copyright Office extend deadlines due to covid-19 pandemic

On 31 March 2020 the USPTO and the US Copyright Office announced that most due dates for patent and trademark filings and/or fees that would ordinarily be due between 27 March and 30 April 2020 will be extended for one month if the delayed submission includes a statement that the hold-up was caused by covid-19.

05 FEBRUARY 2020

More states draft legislation to address student athlete compensation as the NCAA passes the ball to congress

Following California's Fair Pay to Play Act and the National Collegiate Athletic Association’s approved policy change, a wave of states are proposing bills to their legislatures to compensate student athletes for the use of their name, image and likeness.

04 SEPTEMBER 2019

Hand it over: satisfying the written description requirement in patent filings

A recent ruling by the US Court of Appeals for the Federal Circuit is a timely reminder to assess an often-overlooked requirement that must be heeded when drafting a patent specification. The written description requirement of 35 USC Section 112 highlights the delicate balance that patent applicants strive to strike between obtaining patent protection on an invention and simultaneously preserving the so-called ‘secret sauce’ that underlies its implementation. In order to obtain an enforceable patent, the Federal Circuit reminds us that the applicant must hand it all over – down to the very last detail.

17 JULY 2019

Supreme Court to decide if Lucky Brand prevents do-overs in litigation

The Supreme Court has accepted certiorari in the long-running Lucky Brand trademark battle. It is hoped that this will provide much-needed clarity on the controversial issue of defence preclusion, which has been muddied by the Second Circuit’s confusing stance throughout this litigation.

10 JULY 2019

You can trademark whatever the ®®®® you want: the immoral and scandalous bar to trademark registration is unconstitutional

On 24 June 2019 the Supreme Court's decision in Iancu v Brunetti (588/2019) struck down the Lanham Act's ban on registering "immoral" or "scandalous" marks, furthering the recent line of Supreme Court decisions that reaffirm the importance of the First Amendment right to freedom of speech and further opening the doors to the registration of colourful marks.

19 JUNE 2019

test Proposed amendments to US Patent Law could overhaul the regime as we know it

Decisions by the Federal Circuit Court of Appeals since Alice have attempted to clarify the appropriate analysis for patentability under 35 USC Section 101, but many stakeholders have continued to express dissatisfaction with the status quo. Members of Congress have taken up the calls for change and a bill to amend the Patent Act is working its way through IP sub-committees in both houses.

19 JUNE 2019

Proposed amendments to US Patent Law could overhaul the regime as we know it

Decisions by the Federal Circuit Court of Appeals since Alice have attempted to clarify the appropriate analysis for patentability under 35 USC Section 101, but many stakeholders have continued to express dissatisfaction with the status quo. Members of Congress have taken up the calls for change and a bill to amend the Patent Act is working its way through IP sub-committees in both houses.

12 JUNE 2019

Supreme Court resolves circuit split to hold that licensee's trademark rights survive following licence’s rejection in bankruptcy

The Supreme Court has resolved a significant issue of trademark and bankruptcy law that was decades in the making. In Mission Product Holdings Inc v Tempnology, LLC, it held that rejection of the trademark licence agreement constitutes a breach of the contract, but it does not rescind it, nor does it terminate the licensee's rights.

05 JUNE 2019

US cannabis pioneers face chaotic advertising laws

Businesses marketing cannabis and cannabidiol products must navigate a tricky path between state and federal laws when it comes to registering trademarks for their products. This confusion persists when it comes to advertising and there seems to be no sign of a resolution any time soon.

22 MAY 2019

Disney accused of being real pirate in Pirates of the Caribbean

The District Court for the Central District of California has dismissed with prejudice the claims of two scriptwriters in which they asserted that the Walt Disney Company’s Pirates of the Caribbean movie franchise infringed their copyright in an original spec screenplay. The court held that the plaintiffs could not prove unlawful appropriation because the works in question were not substantially similar under the objective extrinsic test.

15 MAY 2019

Prior user rights defence to patent infringement

Companies engaged in large-scale manufacturing must make the difficult choice between patenting or maintaining their process-improvement inventions as trade secrets. A prior user rights defence shields a party from a successful claim of patent infringement. However, while many have celebrated this mechanism, it has been asserted a few times only and has not been successfully used all the way through trial and appeal.

01 MAY 2019

Music publishing rights dispute throws “Lady Marmalade” songwriter's royalties into a black box

Patti LaBelle's 1974 earworm may have made “Lady Marmalade” famous, but the song’s lyrics and music were created by co-writers Nolan and Bob Crewe and Nolan wrote numerous famous songs during the 1970s. A fresh claim filed by songwriter Kenny Nolan against Sony/ATV Publishing over the use of the song “Lady Marmalade” has reignited a long-running dispute over copyright terms.

17 APRIL 2019

Small mistake, big consequences: a trademark practice pointer

Preparing a trademark application for registration in the United States requires that care and attention be paid to a number of different factors. Of the numerous elements that go into the application, certain routine aspects may be easy to pass over without discussion. However, one such inconsequential detail can doom a trademark application and any resulting registration. The culprit – the designation of the mark's owner.

27 MARCH 2019

PTAB issues precedential decision on joinder under 35 USC Section 315(c)

The USPTO Precedential Opinion Panel has established binding agency authority concerning major policy, procedural issues and other issues of exceptional importance in adjudications before the PTAB. It issued its first precedential decision on joinder in an inter partes review in Proppant Express Investments, LLC v Oren Technologies, LLC.

12 MARCH 2019

Supreme Court limits recoverable fees and costs in copyright litigation

In a unanimous decision, the Supreme Court recently held that a prevailing party’s recoverable costs in a copyright infringement case are limited to the specific categories of cost permitted under the general federal statute authorising the award of costs by federal district courts.

20 FEBRUARY 2019

USPTO report profiles women inventors named on US patents

The USPTO has released a report titled "Progress and potential: a profile of women inventors on US patents" on the trends of women inventors named on US patents over the last 40 years. Prepared by the Office of the Chief Economist, the report shows a modest increase in the number of women inventors, but documents that women still make up a small minority of inventors and highlights the untapped potential of women to spur innovation.

13 FEBRUARY 2019

Supreme Court declines to narrow on-sale bar

In Helsinn Healthcare SA v Teva Pharmaceuticals USA, Inc, the Supreme Court has unanimously declined to narrow the on-sale bar to public sales only in light of new language in the America Invents Act.

06 FEBRUARY 2019

165-year-old brand alleges trademark infringement against best-selling video game

The Red Dead 2 lawsuit spotlights how trademark infringement claims require trademark use. It is never sufficient to simply claim "you can't do that, it's trademarked”. Whether ‘use’ constitutes trademark use, and whether it is permissible, is a nuanced analysis.

30 JANUARY 2019

The price of allegiance: NBA's ‘supermax’ is super unpredictable

A supermax contract is a contract extension for players who achieve the highest tier of NBA accolades. This article examines how a provision expected to benefit franchises in smaller markets has gone awry and suggests possible improvements.

23 JANUARY 2019

New USPTO guidance on patentable subject matter

On 7 January 2019 the USPTO published guidance on subject-matter eligibility in an effort to synthesise the disparate analysis of patent claims by the federal courts since the Supreme Court's rulings in Mayo v Prometheus and Alice v CLS Bank several years ago.

19 DECEMBER 2018

A step towards uniformity and stronger patent protection through consistent claim construction

The PTAB and federal courts historically follow different procedural standards for construing claims, which has led to inconsistent results. However, the new PTAB claim construction standard means that patent holders can expect more predictability when facing challenges across multiple tribunals.

05 DECEMBER 2018

SUCCESS Act extends USPTO's fee-setting authority

The SUCCESS Act reads as a feel-good piece of legislation that acknowledges the growing role of underrepresented classes in the innovation ecosystem. However, it maintains the USPTO's controversial fee-setting authority.

21 NOVEMBER 2018

Supreme Court moves goalposts of the on-sale bar

A recent Supreme Court decision has re-opened the discussion as change of phrasing alters parameters of the on-sale bar.

14 NOVEMBER 2018

US Supreme Court to decide whether trademark licences can survive bankruptcy

The US Supreme Court considers whether a debtor or licensor's rejection of a trademark licence agreement terminates the rights of a licensee to continue to use the mark.

31 OCTOBER 2018

Music Modernisation Act brings copyright closer to the 21st century

The Music Modernisation Act has been signed into law and is considered to be a sweeping reform that finally addresses copyright issues raised by advancements in digital music delivery.

10 OCTOBER 2018

Pitfalls in open innovation

For years, corporate R&D organisations have been evolving from relying solely on a centralised innovation paradigm to looking outwardly in search of expertise. While such endeavours are often advisable, they raise certain IP issues.

19 SEPTEMBER 2018

A step in the right direction: US and EU courts protect trademark for red-soled heels

The success of Louboutin's trademark protection for its red-soled heels illustrates the challenges expected when claiming trademark rights in a colour – and how to overcome them.

28 AUGUST 2018

Lucky Brand cannot assert release defence in trademark infringement suit

Not so luckily for apparel maker Lucky Brand Dungarees Inc, the Second Circuit recently ruled that res judicata bars it from asserting a defence against a trademark infringement claim by competitor Marcel Fashions Group Inc.  This is the first time that the court has applied defence preclusion to bar a party's litigation defence.

20 AUGUST 2018

High-stakes gambling with a bad hand

Scientific Games Corp was recently handed a dead loss judgment for $305 million in a recent professional gambling antitrust case, which stemmed from patent misuse in an earlier lawsuit over an automatic card shuffler. The plaintiffs alleged that Scientific Games’ patent infringement lawsuit against them was based on unenforceable patents.

15 AUGUST 2018

Honey badger don’t care – transforming trademark infringement into artistic or expressive works

After his video about African honey badgers went viral, Christopher Z Gordon began policing third-party use of the catchphrases. In a recent case against greeting cards manufacturers, the Ninth Circuit Court of Appeals provided a detailed explanation of the Rogers test, particularly regarding the artistic relevance analysis.

08 AUGUST 2018

Two iconic brands – Federer's uncertain hope to obtain the RF logo from Nike

Although Nike no longer has a clothing contract with Roger Federer, it still owns the trademark registration for the iconic stylised RF logo. However, despite his optimism, the publicity rights, trademark rights and copyright avenues to obtain rights in the RF logo look challenging at best for Federer.

08 AUGUST 2018

USPTO must pay its own attorneys’ fees

The Federal Circuit Court of Appeals en banc has rejected the USPTO’s attempt to obtain attorneys’ fees in a de novo civil action. It rejected the Fourth Circuit Court of Appeals’ reasoning for allowing the USPTO to obtain attorneys’ fees for appeals against trademark denials.

25 JULY 2018

Nike Jumpman logo: not yet a slam dunk

Nike had seemingly won the copyright contest over its iconic Jumpman logo when the Ninth Circuit Court of Appeals issued its opinion of non-infringement. However, photographer Jacobus Rentmeester has managed to keep the game alive by convincing the court to stay the mandate confirming its decision.

11 JULY 2018

Federal Circuit expands generics – including ZERO for soft drinks

The Federal Circuit recently vacated and remanded the Trademark Trial and Appeal Board’s decision that the term ‘zero’ is not generic for soft drinks and sports drinks. It found that Coca-Cola had acquired distinctiveness in ZERO for these goods, such that disclaiming the term on registration is unnecessary.

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