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2019
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Industry Reports - More Updates
USA
Baker Donelson
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4 Sep2019
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. Full text
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17 Jul2019
Supreme Court to decide if <em>Lucky Brand</em> 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. Full text
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10 Jul2019
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. Full text
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19 Jun2019
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. Full text
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12 Jun2019
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. Full text
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5 Jun2019
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. Full text
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22 May2019
Disney accused of being real pirate in <em>Pirates of the Caribbean</em>
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. Full text
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15 May2019
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. Full text
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1 May2019
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. Full text
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17 Apr2019
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. Full text
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27 Mar2019
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. Full text
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12 Mar2019
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. Full text
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20 Feb2019
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. Full text
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13 Feb2019
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. Full text
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6 Feb2019
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. Full text
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30 Jan2019
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. Full text
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23 Jan2019
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. Full text
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19 Dec2018
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. Full text
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5 Dec2018
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. Full text
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21 Nov2018
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. Full text
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14 Nov2018
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. Full text
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31 Oct2018
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. Full text
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10 Oct2018
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. Full text
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19 Sep2018
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. Full text
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28 Aug2018
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. Full text
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20 Aug2018
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. Full text
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15 Aug2018
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. Full text
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8 Aug2018
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. Full text
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8 Aug2018
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. Full text
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25 Jul2018
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. Full text
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11 Jul2018
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. Full text
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4 Jul2018
Patent owners can recover lost foreign profits
The US Supreme Court has issued a decision finding that patent owners can recover lost foreign profits resulting from a specific type of infringement. The court emphasised that damages are adequate when they place the patent owner in as good of a position as they would have been in if the patent had not been infringed. Full text
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27 Jun2018
Who is the real MASTERMIND?
The Ninth Circuit Court of Appeals has reversed a district court’s decision to invalidate a US Patent and Trademark Office registration for the mark MASTERMIND. The Ninth Circuit held that the presumption of validity for the registered mark was heavy and the defendants had not sufficiently overcome that presumption. Full text
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20 Jun2018
Balance between brand protection and artistic expression: strengthening the First Amendment
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. Full text
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13 Jun2018
Multi-district states and burden of persuasion: Federal Circuit resolves issues of venue
The Federal Circuit has resolved two issues regarding venue, ruling that a domestic corporation resides only in the single judicial district within its state of incorporation where it maintains a principal place of business and that the plaintiff bears the burden of establishing proper venue. Full text
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23 May2018
Trademark and branding pitfalls in a hashtag culture
With viral marketing using social media hashtags on the rise, some practitioners predict an increase in the use of the merely informational refusal for trademark applications. Brand owners should be aware of what this involves and how to avoid it. Full text
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16 May2018
USPTO guidance on subject-matter eligibility following Berkheimer decision
The US Patent and Trademark Office has recently provided additional guidance to its examiners on the issue of subject-matter eligibility, which could make it easier for applicants to overcome rejections under 35 USC Section 101. Full text
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9 May2018
Supreme Court rules PTAB proceedings constitutional
The Supreme Court has issued dual decisions with substantial implications for the future of inter partes reviews and related proceedings for challenging the validity of patent claims before the Patent Trial and Appeal Board. Full text
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25 Apr2018
Music publishers score major victory in closely watched copyright case
Six music publisher groups were recently granted summary judgment on an infringement claim relating to copyrights in approximately 200 musical compositions in audio and audiovisual concert recordings offered as on-demand streams and digital downloads through the defendants' websites. Full text
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18 Apr2018
Practice note: avoid multiple embodiments in design patent applications
Considering the growing popularity of design patent applications, the Federal Circuit's recent decision in Pacific Coast Marine Windshields has important implications for IP owners and patent practitioners. Full text
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11 Apr2018
New USPTO director: predictability!
The overriding need for predictability in the US patent system is the focus of the new US Patent and Trademark Office (USPTO) Director Andrei Iancu. He recently identified several ways that the USPTO could improve certainty during the patent examination process. Full text
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28 Mar2018
Copyright protection for graffiti and street artists
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. Full text
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21 Mar2018
Federal Circuit continues to narrow appellate jurisdiction
The most recent case narrowing the Federal Circuit's appellate jurisdiction involved a Walker Process claim. The Federal Circuit attempted to reconcile this holding with its past decisions in Nobelpharma and Cipro. Full text
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7 Mar2018
Tribal sovereign immunity does not apply to PTAB proceedings
A panel of three administrative patent judges at the Patent Trial and Appeal Board (PTAB) unanimously agreed that tribal sovereign immunity does not apply to PTAB proceedings in Mylan v Saint Regis Mohawk Tribe. Full text
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14 Feb2018
It's alive! The public domain starts breathing again
In 1998 the flow of works entering the public domain was halted by the Sonny Bono Copyright Term Extension Act, which extended the duration of US copyrights by 20 years. That moratorium will end at midnight on December 31 2018. Full text
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7 Feb2018
A rose by any other name?
The scent of certain 'roses' that are gifted to trademark owners is far from sweet – safeguard your intellectual property this Valentine's Day by avoid scammers' rosy offers and notices. Full text
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31 Jan2018
Will Spotify's expensive US copyright shortcut be its coda?
For several years, songwriters and music publishers have sued Spotify for streaming musical compositions without certain required copyright licences, resulting in several class action suits. A pending damages claim against the company is close to 10% of its valuation. Full text
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17 Jan2018
Federal Circuit allows appeal of PTAB time-bar decisions
A recent Federal Circuit ruling has overturned earlier decisions which denied patents owners the right to appeal Patent Trial and Appeal Board time-bar decisions relating to inter partes review petitions. Full text
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10 Jan2018
#Newyear #hashtag #valuableasset
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. Full text
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20 Dec2017
Federal Circuit hinders ability of pharmaceutical companies to claim broad antibody classes
A recent Federal Circuit decision provides an important update for life sciences intellectual property and could significantly impact pharmaceutical compound patenting. Existing claims to a large genus of antibodies are now far more likely to be invalidated for lack of written description if challenged. Full text
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13 Dec2017
Potential shift in landscape of university IP management
The Association of University Technology Managers recently released its annual licensing activity survey of universities, hospitals and other research institutions nationwide. More than ever, academic research is fuelling impressive gains for local, state and national economies. Full text
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6 Dec2017
New copyright protection test for designs of useful articles
The Supreme Court has clarified the appropriate test to determine when a feature of the design of a useful article is protectable under Section 101 of the Copyright Act. The test includes separate identification and independent existence requirements. Full text
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29 Nov2017
Caught in the middle: US sellers in Europe
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. Full text
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22 Nov2017
Intellectual property made easy: set an information trap
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. Full text
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15 Nov2017
Independence is bliss? Congress revisits proposal for independent USPTO
Although we are technically no closer now than we were 10 years ago to an independent US Patent and Trademark Office (USPTO), the House Budget Committee's inclusion of a certain line item in its budget earlier this autumn has been interpreted by many as reinvigorating the discussion on the USPTO’s role within the Department of Commerce. Full text
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8 Nov2017
Can the bankruptcy model salvage inter partes review?
As the Supreme Court prepares to hear oral argument in Oil States Energy Services LLC v Greene's Energy Group LLC, the constitutionality and structure of inter partes review hangs in the balance. Full text
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1 Nov2017
Tribal sovereign immunity in patent cases questioned
A new bill which would prevent tribes from asserting sovereign immunity in inter partes reviews could leave patent holders questioning whether this arrangement is a viable strategy to avoid invalidation. Full text
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25 Oct2017
Ninth Circuit address priority and proof for trademark litigants
The Ninth Circuit recently held that a remote junior user with knowledge of a common law senior user cannot claim good-faith adoption of that mark, while a claim for profits from another's trademark infringement requires proof of wilful infringement. Full text
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18 Oct2017
Commercial arbitration awards possibly subject to increased judicial scrutiny
Arbitration awards are reviewed by US courts on only limited grounds. In a writ of certiorari involving a patent licensing dispute, Dow AgroSciences, LLC is now asking the Supreme Court to reduce the deference that US courts give to arbitration tribunals. Full text
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4 Oct2017
US trade associations unite to protect intellectual property globally
The worlds of entertainment, art, medicine and technology have joined together to address the significant international challenges to their intellectual property, and thereby enhance innovation and creativity in their fields. The new American Creative, Technology and Innovative Organisations Network will develop an international market that "rewards innovation and protects creative assets". Full text
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27 Sep2017
Private entities use sovereign immunity to protect patents from PTAB review
While many commentators have noted that Allergan appears to be taking advantage of a legal loophole to stymie competition, others have noted that inter partes review proceedings are inherently unfair to patent owners due to their unfavourable standards and presumptions. Full text
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13 Sep2017
Winner (or loser) pays USPTO fees
The US Patent and Trademark Office recently began making applicants who challenge agency rulings on trademarks and patents in district court pay the attorney fees and expenses of the agency, regardless of the case’s outcome. While initially supportive, the Federal Circuit appears to be having second thoughts. Full text
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6 Sep2017
A trademark by any other colour: Cheerios™ and colour trademark requirements
General Mills's recent failure to obtain registration for the yellow colour of their Cheerios™ boxes illustrates the high burden faced by applicants for federal registration of colour marks in the United States. Full text
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23 Aug2017
Biologics and ‘patent dance’
A recent Supreme Court decision has been welcomed by biosimilar companies as it gives biosimilar products more certainty and flexibility. Based on this decision, biosimilar companies can bring biosimilar products to the market without waiting for 180 days after approval by the Food and Drug Administration. Full text
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16 Aug2017
Litigation misconduct during patent infringement lawsuit can result in invalidation
A recent Federal Circuit decision surprisingly affirmed that specific intent to deceive the US Patent and Trademark Office can be inferred as a result of misconduct during a patent infringement lawsuit, even though such misconduct occurs several years after prosecution of the patent. Full text
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9 Aug2017
Public universities are immune from inter partes review, but are their patent co-owners?
A panel of administrative patent judges recently found that inter partes review proceedings may continue in the absence of a patent owner should the patent be jointly owned by an entity not entitled to immunity. The decision is of particular interest to companies and public universities which actively engage in collaborative R&D projects. Full text
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26 Jul2017
Time for the pendulum to swing back? A brief look at the proposed STRONGER Patents Act
The STRONGER Patents Act seeks to substantially change the way issued patents are reviewed and enforced. The bill presents a decidedly pro-patent response to the veritable onslaught of patent invalidations produced by inter partes review. Full text
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19 Jul2017
New case law potentially turns the tide of patent lawsuits fleeing favoured venues
A recent decision by the district judge who sees more patent cases than any other judge in the United States could help lessen the impact of TC Heartland and preserve some of the ability of patent owners to file infringement claims in a venue of their choosing. Full text
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12 Jul2017
Shocking trademarks may now be viable, but medical marijuana marks miss
The Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations, but that does not mean that a medical marijuana dispensary can get a federal trademark registration. Goods or services relating to marijuana are not intended for use in legal commerce and may not be registered. Full text
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5 Jul2017
Strategically choosing venue at the intersection of corporate and patent law
As a result of TC Heartland, plaintiffs now have fewer choices about where to file patent infringement suits. This means that companies, as potential defendants, can better control where the litigation takes place. Full text
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28 Jun2017
Eligibility for Digital Millennium Copyright Act safe harbour
The Tenth Circuit recently affirmed, and the Ninth Circuit overruled, lower court rulings regarding eligibility for safe harbour protection provided under Section 512(c) of the Digital Millennium Copyright Act. Both rulings hinge on the identity of the user who contributed the infringing content. Full text
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21 Jun2017
Federal Circuit reverses district court decision on exceptional case and attorneys' fees
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. Full text
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7 Jun2017
Is it time to reform 35 USC Section 101?
The American Intellectual Property Law Association and the Intellectual Property Owners Association recently proposed changes to the legal framework governing the analysis of what constitutes patent-eligible subject matter in an effort to curtail the current confusion resulting from recent Supreme Court rulings. Full text
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31 May2017
Supreme Court drastically changes where patent infringement cases can be filed
A recent unanimous Supreme Court decision will greatly restrict the venue for patent infringement litigation. The court held that a domestic corporation resides only in its state of incorporation for purposes of the patent venue statute, reversing several decades of a more expansive interpretation. Full text
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24 May2017
Patentee's claim construction and evidence can be used to show unpatentability
The Federal Circuit recently held that the Patent Trial and Appeal Board did not exceed its authority when it adopted a patentee's claim construction and submissions, during inter partes review, to find the patentee's own patent unpatentable. Full text
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17 May2017
PTAB not constrained by parties' constructions of claim terms
Parties in an inter partes review or other Patent Trial and Appeal Board (PTAB) proceeding should be alert to indications that the PTAB may apply its own interpretation to claim terms and not adopt any proposed construction from a party. Full text
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10 May2017
‘Private’ sale of invention bars patents
While patent applicants in the United States have the benefit of a one-year grace period for filing a patent application after novelty-destroying disclosures, a recent case underscores the hazards of relying on that grace period. Full text
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3 May2017
Federal Circuit unambiguously endorses references to patent drawings as 'exemplary embodiments'
The Federal Circuit recently stated that a patent's use of the phrase ‘exemplary embodiments’ accentuates that the claimed invention is not limited to representations that are identical to those depicted in a patent’s drawings. Full text
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26 Apr2017
Federal Circuit reverses district court holding in generics case
The Federal Circuit has reversed a decision that Mylan Inc’s proposed generic version of a drug infringed one of two patents owned by the Medicines Company. In doing so, it revised the district court’s claim construction to import a non-limiting example from the specification to define the pivotal term. Full text
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19 Apr2017
Modernising the non-disclosure agreement
Patent attorneys are frequently asked to either to prepare or review non-disclosure agreements or confidential disclosure agreements. Occasionally, these agreements have negotiated terms or are presented to the disclosing party on a ‘take it or leave it’ basis. However, in all instances, there are terms that should be updated to reflect current business practices. Full text
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12 Apr2017
Standing required to assert co-inventorship of patents
The US Court of Appeals for the Federal Circuit recently held that a woman asserting that she should be listed as a co-inventor on nine patents lacked standing because she had no economic interest in obtaining co-inventor status. The plaintiff had assigned her interests in the patents to her holding company and was subsequently divested of any interest in the company. Full text
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5 Apr2017
PTAB: public universities immune to inter partes review
Three administrative patent judges of the US Patent and Trademark Office Patent Trial and Appeal Board recently entered an order dismissing multiple petitions for inter partes review of patents owned by the University of Florida Research Foundation based on sovereign immunity. Full text
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29 Mar2017
Supreme Court rules that laches is not a defence for patent damages
The Supreme Court recently held that the doctrine of laches cannot bar a claim for damages in patent infringement cases. The decision reverses a Federal Circuit Court of Appeals decision and substantially increases the ability for patent owners to obtain damages for patent infringement. Full text
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22 Mar2017
The metrics challenge
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? Full text
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15 Mar2017
Protect your trademark from challenges: good-faith intent to use
Brand owners generally want to protect a potential trademark as broadly as possible, which can lead to specifying as many goods or services in their intent-to-use trademark applications as might possibly be covered by the planned mark. However, a recent case demonstrates that dreaming big in trademark applications is not to be encouraged. Full text
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8 Mar2017
Big trouble over tiny enzymes: limits on geographic reach of Patent Act
A dispute over a tiny enzyme could have a far-reaching impact for patent holders whose covered technology can be assembled in components. In keeping with a decades-long trend, the Supreme Court has again articulated limits on the foreign reach of US patent rights for exported products. Full text
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1 Mar2017
Trademarks and Neil Gorsuch – a heated tale of chilli peppers and agency regulation
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". Full text
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22 Feb2017
Patents and Supreme Court nominee Judge Neil Gorsuch
While much is being written and reported about US Supreme Court nominee Neil Gorsuch, nothing has been said thus far about his stance on intellectual property. However, an oft-cited opinion in a copyright case gives an intriguing sense of the direction he might take in patent cases. Full text
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8 Feb2017
Drug manufacturers cannot avoid infringement by dividing method between physicians and patients
The Federal Circuit recently stated that a physician may directly infringe a patented method for drug administration, even when the infringing steps are divided between the physician and patient. Specifically, the court held that infringement cannot be avoided when the physician "directs or controls" the patient to perform at least one step of the patented method. Full text
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1 Feb2017
Preliminary injunction affirmed despite initiation of PTAB post-grant review proceeding
The Federal Circuit recently affirmed a district court's granting of a preliminary injunction barring the alleged infringer from selling its Balloon Bonanza product. The Federal Circuit affirmed the preliminary injunction despite the Patent Trial and Appeal Board granting a petition seeking post-grant review on the grounds of indefiniteness and obviousness. Full text
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25 Jan2017
'Injury-in-fact' standing required to appeal PTAB decision
The Federal Circuit recently held that a petitioner challenging the validity of a patent in a Patent and Trademark Appeal Board (PTAB) inter partes review proceeding must have legal standing under Article III of the US Constitution to appeal an adverse PTAB decision upholding the challenged claims. Thus, only an individual suffering an injury in fact can appeal a PTAB decision to the Federal Circuit Court of Appeals. Full text
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18 Jan2017
'Visually negligible' is definite enough
The Federal Circuit recently determined that the patent claim term 'visually negligible' was definite enough to meet the definiteness requirement under the Patent Act. In reversing the district court, the Federal Circuit held that 'visually negligible' was not purely subjective. Full text
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11 Jan2017
Maintain your DMCA safe harbour: designating agents to avoid copyright infringement
The US Copyright Office recently created an online system for website operators to designate agents to receive notices under the Digital Millennium Copyright Act. Agents designated before December 1 2016 must re-register before December 31 2017 and renew such designations every three years to maintain safe harbour status. Full text
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21 Dec2016
Walking Dead creator lives to fear others' trademark applications
A month after Halloween, a federal court refused to find on summary judgment that a pending batch of applications to register WALKING DEAD for merchandising items had infringed the hit franchise's trademark. Full text
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14 Dec2016
Scope of CBM review is limited
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. Full text
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7 Dec2016
The federal government's march-in right: what does it mean for your intellectual property?
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. Full text
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30 Nov2016
You and your patent agent
The Supreme Court has held that the states may not prohibit patent agents from providing patent drafting and filing services. However, as recent cases show, the issue of whether a patent agent enjoys the full benefits of a patent attorney with regard to patent prosecution remains unresolved. Full text
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23 Nov2016
Prosecution history estoppel may restrict construction of more than just amended patent claims
The recent case of UCB, Inc v Yeda Research and Development Co, Ltd demonstrates the importance that prosecution history estoppel can have on claim construction. While the estoppel effect is generally understood with regard to claims that were actually amended during prosecution, the doctrine can also be used to reduce the breadth of other claims, even those that were not amended. Full text
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16 Nov2016
Supreme Court argues copyrighting cheerleader uniforms
The Supreme Court recently heard oral argument in Varsity Brands v Star Athletica. The question involved the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act. Full text
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9 Nov2016
USPTO seeks public comment regarding subject-matter eligibility
The US Patent and Trademark Office (USPTO) is to hold two roundtables to discuss patentable subject-matter eligibility under 35 USC § 101. The roundtables have been set up to facilitate public comment and discussion regarding the USPTO’s existing guidance on subject-matter eligibility as well as case law arising from interpretation of the requirements under 35 USC § 101. Full text
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2 Nov2016
Federal Circuit affirms invalidity of claims for logic circuit design
The US Court of Appeals for the Federal Circuit has once again cited the Supreme Court decision in Alice Corp v CLS Bank International to affirm the invalidity of certain asserted claims under Section 101 in three patents held by Synopsis, Inc. The patents include claims which are directed to translating a functional description of a logic circuit into a hardware component description that can be used for actual fabrication of the logic circuit. Full text
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26 Oct2016
USPTO requests public comment on proposed fee adjustments
The US Patent and Trademark Office (USPTO) recently released a notice of proposed rulemaking regarding proposed USPTO fee adjustments. Most fees that are commonly associated with standard patent prosecution will see only modest increases. The largest proposed increases are for post-grant challenges and post-grant review requests. Full text
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19 Oct2016
Supreme Court to review exclusion of disparaging marks from federal trademark registration
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. Full text
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12 Oct2016
No equitable defences in inter partes review
The Federal Circuit recently let stand a Patent Trial and Appeal Board (PTAB) ruling that the assignor estoppel barred the petitioner from filing an inter partes review petition. The PTAB had reasoned that equitable doctrines did not provide an exception to the broad statutory mandate that any person that is not an owner of a patent may file a petition to institute an inter partes review proceeding. Full text
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5 Oct2016
An a-ha moment! Oprah proves fair use of trademark
The Second Circuit recently cleared Oprah Winfrey's company and magazine of charges that their use of the phrase "Own Your Power" infringed a motivational speaker's trademark rights. The court held that despite the speaker's ownership of a "special form" trademark on the phrase – arguably making it distinctive – Winfrey had proved that the phrase was merely descriptive. Full text
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28 Sep2016
Assignment documents now publicly available through USPTO website
The US Patent and Trademark Office now makes copies of patent assignments available for immediate download. Although a seemingly small gesture, the new service is valuable to patent practitioners and IP professionals who often need expedited access to assignment records for diligence purposes or otherwise to diagnose inventorship or ownership issues. Full text
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21 Sep2016
Sims PlumbBob flash drive may be copyrightable
The US Court of Appeals for the Ninth Circuit in Direct Technologies v Electronic Arts partially reversed a trial court's determination that a flash drive design was not sufficiently "original" to qualify for copyright protection. The court held that there was a genuine issue of material fact as to whether the cutaway design for the USB flash drive was sufficiently non-functional and non-trivial to warrant copyright protection. Full text
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7 Sep2016
PTAB arbitrary in not allowing claim amendments
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. Full text
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31 Aug2016
Nothing obvious about common sense
In a rare reversal of a Patent Trial and Appeal Board (PTAB) decision in an inter partes review proceeding, the Federal Circuit has reversed the PTAB's decision that the subject patent claims were obvious. The court held that the PTAB had misused "common sense" to conclude that it would have been obvious to supply a missing limitation in a prior art reference. Full text
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24 Aug2016
PTAB invalidates third consecutive patent in post-grant review
For the third time in as many post-grant reviews decided by the Patent Trial and Appeal Board (PTAB), the PTAB has declared a patent to be invalid based on the legal framework established in the 2014 Supreme Court decision in Alice Corporation Pty Ltd v CLS Bank International. Full text
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17 Aug2016
Resurrecting the value of the opinion letter
The Supreme Court recently held that Section 284 of the Patent Act “gives district courts the discretion to award enhanced damages... in egregious cases of misconduct beyond typical infringement”. In doing so, the court rejected the long-applied Seagate test as being “unduly rigid” and as “impermissibly encumber[ing] the statutory grant of discretion to district courts”. Full text
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10 Aug2016
Impact of Brexit on US IP owners
The outcome of the Brexit referendum has caused substantial uncertainty among US businesses and IP owners. Over the coming months US IP owners and counsel alike will be examining closely the implications for current UK brand extensions and future expansions, as well as for existing EU registrations that may be affected. Full text
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3 Aug2016
Inter partes review burden of proof does not shift to patent owners
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. Full text
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27 Jul2016
Federal Defend Trade Secrets Act: potential clashes with existing state law pre-emption
Congress introduced the Defend Trade Secrets Act in part to promote a uniform body of federal trade secret law. However, in practice, the act could result in unexpected confusion, given the existing and well-developed bodies of state trade secret law. Full text
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20 Jul2016
Federal Circuit distinguishes between tests for obviousness and patent-eligible subject matter
Recently in Bascom the Federal Circuit held that the district court had improperly applied the two-step test for determining patent eligibility under Section 101 of the Patent Act established by the Supreme Court in Alice. The decision should reduce district courts' conflation of the separate tests for determining whether a patent claim is obvious and whether a claim is directed to patentable subject matter. Full text
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13 Jul2016
Biosimilars: 180-day notice is mandatory
The Federal Circuit recently held that a biosimilar product applicant must give notice to the reference product sponsor 180 days before commercially marketing its Food and Drug Administration (FDA)-licensed biosimilar. In a different case, it also approved the longstanding practice of 'same-day-continuation' filings in the United States. Full text
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6 Jul2016
Supreme Court strengthens attacks on US patents through inter partes reviews
The Supreme Court recently added to the far-reaching efforts to reduce the number of patents in the United States through inter partes reviews. Such proceedings are used predominantly by alleged patent infringers or their proxies to attempt to invalidate patents under a lesser standard than is required to prove invalidity of patents in district courts. Full text
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29 Jun2016
Same-day continuation patent applications okayed
The Federal Circuit recently approved the longstanding practice of same-day continuation filings in the United States. It affirmed the interpretation that the US Patent and Trademark Office has followed for several decades, which permits a continuation application to be filed on the same day that the patent issues in the parent application. Full text
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22 Jun2016
Supreme Court lowers bar for awarding enhanced damages for patent infringement
The Supreme Court has ruled in favour of patent owners with a unanimous decision in Halo Electronics, Inc v Pulse Electronics, Inc. The court held that the Federal Circuit's strict test for awarding enhanced damages was inconsistent with the language of the Patent Act. Instead, the award of enhanced damages for patent infringement is at the discretion of the trial court. Full text
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15 Jun2016
ANDA defendant Mylan Pharmaceuticals seeks rehearing en banc
In March 2016 a panel of the Federal Circuit Court of Appeals held that Mylan Pharmaceuticals' filing of two abbreviated new drug applications in Maryland subjected it to being sued in Delaware by two brand companies which alleged that the prospective drugs would infringe their patents. Mylan has now asked the full Federal Circuit to rehear the case en banc. Full text
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8 Jun2016
Light in the Alice tunnel: software claims found patentable
In Enfish, LLC v Microsoft Corporation the US Court of Appeals for the Federal Circuit has provided much-needed guidance for the patent community in finding that software claims are patentable subject matter under Section 101 of the Patent Act. In reversing the district court, the Federal Circuit went against the flood of cases in which courts have invalidated patents based on the Supreme Court's 2014 Alice decision. Full text
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1 Jun2016
Impact of Defend Trade Secrets Act on litigating in state court
Following the enactment of the Defend Trade Secrets Act of 2016, if a claim can be asserted under the act, a plaintiff now has the option of choosing whether to litigate in state or federal court by virtue of federal question subject-matter jurisdiction for trade secret misappropriation. Full text
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25 May2016
Updated USPTO guidance for biotech claims
The US Patent and Trademark Office has published an update to its existing guidelines on patent-eligible subject matter under 35 USC §101. With respect to the life sciences and biotechnology industry, the guidelines included four new examples that demonstrate how the Alice/Mayo two-part test is applied to diagnostic methods and nature-based products. Full text
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18 May2016
Defend Trade Secret Act to bring consistency to trade secret litigation
The US House of Representatives recently approved the Defend Trade Secret Act by a margin of 410 to two. As the act had already passed the Senate, the bill has now gone to President Obama to be signed into law. The Obama administration has voiced strong support for the act and the passage of the bill appears imminent. Full text
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11 May2016
Supreme Court to review laches in patent infringement cases
The Supreme Court recently granted certiorari in SCA Hygiene Products Aktiebolag v First Quality Baby Products to consider whether the doctrine of laches can bar a claim for damages in patent infringement cases. This case follows a 2014 Supreme Court decision that laches could not be used to bar copyright infringement claims brought within the three-year limitation period. Full text
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4 May2016
Increasing power of design patents
When in-house counsel think of patents, they generally think of utility patents – but would they ever think about design patents? Interest in design patents has increased recently, particularly following Apple's success in asserting its design patents associated with the iPhone and the iPad. Full text
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27 Apr2016
Google Books project gets green light
The Supreme Court has declined to hear an appeal in Authors Guild v Google, thus leaving in place a lower court ruling that Google did not infringe authors' copyrights in its project to create a searchable library of the world's books. The US Court of Appeals for the Second Circuit had held that Google's project was a protected 'fair use' of copyrighted works. Full text
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20 Apr2016
Another genetic testing patent found invalid
In Genetic Technologies Ltd v Merial LLC the Federal Circuit has upheld the lower court's dismissal of patent infringement claims based on methods of detecting genetic variations. The court held that the claims for analysing DNA for linkage disequilibrium were effectively claiming a law of nature, and thus were patent ineligible. Full text
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13 Apr2016
Copyright protection for designs of useful articles
The US Court of Appeals for the Sixth Circuit recently held that the graphic designs and features on cheerleading uniforms were protected. However, the scope of protection depends on the details of each case, as the copyrightable elements must be separable and capable of existing independently of the utilitarian aspects of the useful article in question. Full text
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6 Apr2016
Life sciences and export control
Before filing a patent application abroad, an applicant for a life science patent should first obtain a foreign filing licence from the US Patent and Trademark Office. However, a full release of the life science technology in the patent application may also be subject to the Export Administration Regulations and the Deemed Export Rule. Full text
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30 Mar2016
Federal Circuit issues sprawling opinion certain to continue Big Pharma forum shopping
In an opinion that will continue the trend of forum shopping, the Federal Circuit held that the filing of an abbreviated new drug application opens the door to specific personal jurisdiction in any state where the generic company will market the drug. This effectively means that Hatch-Waxman defendants may be forced to defend litigation in any forum chosen by brand drug companies. Full text
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23 Mar2016
Card game too abstract to be patentable
The Federal Circuit has upheld the Patent Trial and Appeals Board's rejection of patent claims for a variation of the card game blackjack. The court noted that the new game merely used a standard deck of cards and that claims directed to conducting a game using a new or original deck of cards could potentially survive the Alice abstract subject-matter test. Full text
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16 Mar2016
Federal Circuit recognises patent agent privilege
The Federal Circuit recently recognised a "patent agent privilege". In a case of first impression, the court held that communications between a non-attorney patent agent and a patent applicant were protected by privilege, but this was limited to communications falling within the scope of practice. Full text
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9 Mar2016
Apple loses $120 million infringement verdict
The Federal Circuit overturned a $120 million patent infringement verdict won by Apple in its smartphone war with Samsung. The court ruled that two of Apple's patents were invalid and found that Samsung had not infringed a third patent. To rub salt in the wound, the court affirmed a $158,400 award against Apple based on infringement of one of Samsung's patents. Full text
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2 Mar2016
No international exhaustion for US patents
The recent Federal Circuit ruling in Lexmark generally rejected the extension of the uncodified doctrine of patent exhaustion to foreign sales of patented products. The court held that the no international exhaustion principle is still sound. As a result, the application of patent exhaustion rules in the United States remains unchanged for the present. Full text
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24 Feb2016
IP managers need to collaborate across functional silos
Are your organisation's creative, strategy and legal functions integrated? If not, you may be missing market-critical opportunities to create or exploit fully the value of your intellectual property. Facilitate communication among your creatives, lawyers and business executives and you will counteract functional silos and better manage your IP assets. Full text
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17 Feb2016
Federal Circuit strikes down patent directed to patent-ineligible subject matter
The Court of Appeals for the Federal Circuit recently struck down yet another patent as being directed to patent-ineligible subject matter. The case, while providing yet another example of what is not patent eligible, does not help the patent community in determining what is patent eligible. Full text
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10 Feb2016
Louisiana Life Sciences Survey indicates continued growth
The Louisiana Life Sciences Survey was recently released. Despite facing IP issues such as subject-matter patentability under Alice, Mayo and Myriad Genetics, the life sciences entrepreneurial environment continues to see significant growth and success. Full text
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3 Feb2016
The trademarking of politics
The US primary season leading up to the 2016 presidential election is well underway. Political candidates and their supporters have been quietly filing trademark applications with an eye on commercial opportunities. However, as several applicants have been reminded, US trademarks that invoke the name of a living individual cannot be registered without that individual’s written consent. Full text
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27 Jan2016
Copyright Office requests public comments on safe harbour
The Digital Millennium Copyright Act 1998 provides a system for copyright owners and online entities to address online copyright infringements. However, recent research indicates a doubling of infringing material accessed via the Internet from 2010 to 2012. As a result, the US Copyright Office is now seeking information on, among other things, the impact and effectiveness of the Digital Millennium Copyright Act's safe harbour provisions. Full text
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20 Jan2016
Copyright royalties for streaming music to increase
The Copyright Royalty Board has ordered changes in the rates that digital streaming services must pay in royalties in 2016. Future rate changes will be based on changes in the consumer price index. As a result, subscribers to music streaming services can expect to see a slight increase in subscription costs, and non-subscribers will see an increase in streamed advertising. Full text
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13 Jan2016
PTAB proceedings are constitutional
The Federal Circuit has rejected a challenge to the constitutionality of the new inter partes review proceedings conducted by the US Patent and Trademark Office Patent Trial and Appeals Board (PTAB). The decision effectively removes one possible, albeit unlikely, defence that patent owners may have had to fight off inter partes review or other proceedings before the PTAB. Full text
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16 Dec2015
Federal Circuit to consider 'prototype manufacturer' exception to on-sale bar
The Court of Appeals for the Federal Circuit has agreed to consider en banc whether the manufacture of a prototype by a third-party supplier is a “sale” that triggers the one-year statutory bar under US patent law. Full text
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9 Dec2015
New pleading rules for patent infringement cases
The barrier to entry for patent infringement litigation became a little higher on December 1 2015 when amendments to the Federal Rules of Civil Procedure took effect. While there will be an initial period of uncertainty as the new standard is implemented in various jurisdictions, it is hoped that over time the change will lead to more clarity and the earlier resolution of patent infringement cases. Full text
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2 Dec2015
The TPP battle begins
After years of negotiations, the Trans-Pacific Partnership (TPP) – a 12-nation Pacific Rim trade agreement – has been submitted to Congress for approval. A sustained fight over ratification is expected, with opposition from groups in both political parties. Central to the dispute are TPP provisions that arguably weaken IP protection. Full text
