Header graphic for print
Technology Law Source Mapping the evolving legal landscape

Category Archives: Intellectual Property

Subscribe to Intellectual Property RSS Feed

Expediting patent examination in the United States

Posted in Intellectual Property, Patents

Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.

Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1

Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As …

Katy Perry’s left shark

Posted in Copyright, Intellectual Property

By now, you probably have heard of the infamous “left shark” in Katy Perry’s Super Bowl XLIX halftime show, who went off script and did its own moves during “Teenage Dreams” and “California Gurls.”

So much buzz built about the shark that a 3D printing service, Shapeways, starting offering Left Shark models online, which prompted a letter from Perry’s attorneys insisting that the service stop sales immediately, claiming that the shark character was protected by copyright.

Shapeways sent a response stating that it did not appear that Perry owned the copyright for Left Shark (because a copyright is owned by the “author,” in this case the costume designer, and she did not design the costume), and that she had no basis because courts have held that costumes are useful articles and, thus, ineligible for copyright protection.

But wait! Though a costume may be classified as a useful article, courts also have held that design elements that are separate from the function of “clothing” are eligible for copyright. In fact, the U.S. Copyright Office lists a registration for “Shark costume; Children’s shark costume” (VA0000624682) owned by the Children’s Museum of Indianapolis.

Whether Perry does, in fact, own the copyright is yet to be determined, but this exchange is a lesson for business owners who send cease-and-desist letters without thinking about the consequences. In the past few days, the Internet has spiked with anti-Perry comments, and the model has been downloaded more than 11,000 times. Probably not the result Perry desired.…

The saga of strict de novo review of patent claim construction comes to an end — U.S. Supreme Court tweaks the standard of appellate review

Posted in Intellectual Property, Patents

As we reported last year, one of the issues that has divided the U.S. Court of Appeals for the Federal Circuit (the CAFC) for nearly 20 years is the proper standard of appellate review of patent claim construction rulings. No less than four CAFC en banc decisions addressed the issue. In each instance, the majority applied a strict de novo standard for appellate review with no deference to the trial court even with regard to underlying factual determinations, while vigorous dissents objected to this standard.

The dissenters have been vindicated, as the Supreme Court has now held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard. This decision should, at least in theory, result in an increase in claim construction affirmances by the CAFC. It remains to be seen, however, whether there will be a significant increase.

Patent claim construction basics1

The scope of a patent is defined by its claims, and construing those claims is the heart and soul of nearly all patent litigation. The meaning of the words and phrases used in the claims  is critical to not only the question of infringement, but also patent validity.

The task of construing the meaning of patent claims is a question of law for the court — not a jury — to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Claim terms are given their ordinary and customary …

Life sciences patent subject matter eligibility — two steps forward, one step back

Posted in Intellectual Property, Patents

The U.S. Patent and Trademark Office (USPTO) released its revised Interim Guidance on Patent Subject Matter Eligibility under 35 U.S.C. 101 on Dec. 16, 2014. For the life sciences industry, the revised guidance provides significant relief from the previous guidance released March 4, 2014. However, just one day later, the joy that many life science patent practitioners felt from the revised guidance was tempered when the Court of Appeals for the Federal Circuit affirmed a district court’s holding of invalidity of several patent claims of Myriad Genetics based on patent subject matter ineligibility.

The good news

The revised guidance still employs a three-step analysis to determine subject matter eligibility, but has several notable changes. The first step of the analysis still questions if the claim is to a process, machine, manufacture or composition of matter as required by Section 101. However, the second step of the analysis questions if the claim is “directed to” a judicial exception, rather than the previous “involving” a judicial exception. As an example, the revised guidance notes that process claims that merely use a nature-based product are not necessarily subject to the analysis. Additionally, all claims — i.e., both products and processes — are subject to the same analysis.

Further, if a claim is identified as directed to a “product of nature” exception, the analysis compares the nature-based product to its naturally occurring counterpart to identify “markedly different” characteristics based on structure, function or properties. Only if there is no markedly different characteristic does the …

Supreme Court charts clear course for trademark tacking determination

Posted in Intellectual Property, Trademarks

The U.S. Supreme Court created some wake by issuing their first substantive trademark ruling in more than a decade this week. The Supreme Court decided to hear a case on appeal from the Ninth Circuit’s decision in Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013) cert granted, 134 S. Ct. 2842 (2014).

Of significant importance to the case is the trademark doctrine of tacking, which allows a trademark owner to make slight modifications of a trademark over time while maintaining the original first-use priority date. The doctrine holds that the original mark and the later, slightly altered, mark may be tacked when they are considered to be “legal equivalents” that “create the same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991).

The issue addressed by the Supreme Court is whether a judge or a jury should determine whether tacking is available — that is, whether the original and revised marks are legal equivalents — in a given case.…

gTLD update: ’Tis the season for new gTLDs

Posted in gTLDs, Intellectual Property, Trademarks

ICANN has been making a final push this December after a couple sluggish months and has delegated 40 gTLDs since our last gTLD update. Those newly delegated gTLDs are:

  • .docs
  • .tires
  • .dev
  • .schwarz
  • .iwc
  • .osaka
  • .sew
  • .garden
  • .lidl
  • .doosan
  • .sky
  • .cartier
  • .samsung
  • .商店 (shop)
  • .adult
  • .porn
  • .trust
  • .eurovision
  • .fashion
  • .latrobe
  • .irish
  • .网店 (webstore)
  • .aquarelle
  • .memorial
  • .legal
  • .money
  • .coach
  • .everbank
  • .谷歌 (Google)
  • .madrid
  • .firmdale
  • .グーグル (Google)
  • .mormon
  • .lds
  • .party
  • .八卦 (gossip)
  • .cricket
  • .science
  • .reit
  • .android

Though ICANN has picked up the pace, there are only a small number of gTLDs about to enter or in the sunrise phase this month.…

Changes are coming for trademark registration holders in Canada

Posted in Intellectual Property, Trademarks

In late 2015 or early 2016, significant changes will occur in Canada under the Canadian Trade-Marks Act. Entities holding a Canadian trademark registration that has a renewal date close to this time period will face issues regarding the renewal term period and potential fee increases.

Under the current provisions of the Canadian Trade-Marks Act, registrations are valid for a period for 15 years. The Canadian Trademark Office has indicated that registrations having a renewal date before the change will renew for a period of 15 years. Registrations with a renewal date after the change will have 10-year terms. In that the exact date of the change is not yet known, any Canadian trademark registration having a renewal date from about September 2015 to about April 2016 could have either a 15-year or 10-year renewal period, depending on when the change is enacted.…

Supreme Court decision likely to affect TTAB proceedings

Posted in Intellectual Property, Trademarks

Early in December 2014, the U.S. Supreme Court heard oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc. At issue are inconsistencies by the 12 regional federal courts appeal in giving preclusive effect in trademark infringement cases to a denial by the Trademark Trial and Appeal Board (TTAB) of an application to register a trademark in an opposition action. Issue preclusion prevents a party to a lawsuit from re-litigating an issue once it has been decided in a previous case where the party was given a full and fair opportunity to litigate the issue. The issue here is “likelihood of confusion.”

B&B owns a U.S. registration for the trademark SEALTIGHT. When Hargis applied to register SEALTITE, B&B opposed the registration. The TTAB held for B&B. B&B then sued Hargis in district court, alleging trademark infringement. The district court found that the TTAB’s ruling for B&B did not have preclusive effect on the district court case. B&B appealed to the Eighth Circuit. The Eight Circuit held that the TTAB and the district court used different tests to reach their findings of a likelihood of confusion, so refused to apply issue preclusion. B&B appealed to the Supreme Court.…

Sony Data Hack: “You Can’t Lose What You Ain’t Never Had”

Posted in Copyright, Information Technology, Intellectual Property, Privacy, Trademarks

Back in the 1960’s, legendary bluesman Muddy Waters wrote a song called “You Can’t Lose What You Ain’t Never Had.”

Now, it is Sony Pictures that is singing the blues, as damages continue to mount following the cyber attack on its data networks just before Thanksgiving. A shadowy group with possible connections to the North Korean government has claimed responsibility for the hack, which, to date, has resulted in exposure of Sony intellectual property (e.g., movie scripts), trade secrets (e.g., film budgets), employee personal information (e.g., employee and former employee home addresses and social security numbers) and other sensitive information (e.g., actor travel aliases and phone numbers).

I’m no cybersecurity expert, but I’m at the point where I seriously doubt any currently available data security technology is totally hack-proof. Who knows, there may have been precious little that Sony could have done to prevent the loss of its intellectual property and trade secret information to determined hackers. Let’s face it, some of the most highly sophisticated corporations and government agencies have been victimized by cyber attacks in the last year. But the same really can’t be said for their employee data.…

Breaking down new gTLDs by the numbers

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

The Internet Corporation for Assigned Numbers and Names continues to be sluggish in delegating new gTLDs this month, delegating no new gTLDs since our last post. But ICANN has made a dent this year in the 1,930 gTLD applications submitted, delegating 432 new gTLDs to date. Of those 1,930 applications, 1,157 are proceeding through the new gTLD program and 341 have been withdrawn.

Are new gTLDs selling?

More than 3 million second-level domains have been purchased in new TLDs, but of those 3 million, nearly two-thirds are parked domains, i.e., registered internet domain names which are not associated with any services. A total of 62,666 new second-level domain registrations were purchased within the last week, at an average of nearly 9,000 a day.

Top 10 gTLDs in terms of registrations:

Rank

New domain

No. of registrations

1

.xyz

700,817

2

.berlin

153,170

3

.club

131,418

4

.realtor

84,621

5

.wang (net)

82,837

6

.guru

75,460

7

.nyc

55,905

8

.oyc

54,387

9

.london

48,852

10

.photography

47, 766

gTLD update: Are ICANN and the gTLD program suffering from jetlag?

Posted in gTLDs, Intellectual Property, Trademarks

ICANN has given 34 gTLDs the green light to launch since our last gTLD update. Only 14 new gTLDs were launched in the month of October, and only 21 were delegated in total for the month of September. These numbers are strikingly low compared with the rapid-fire delegation the Internet community witnessed through the summer. The following list represents the small batch of gTLDs that have been delegated by ICANN since Sept. 15, 2014:

  • .sydney
  • .bloomberg
  • .energy
  • .delivery
  • .taipei
  • .emerck
  • .band
  • .yoga
  • .crs
  • .abogado
  • .rip
  • .wedding
  • .poker
  • .alspace
  • .allfinanz
  • .ibm
  • .forsale
  • .vermögensberatung (financial advice)
  • .vermögensberater (financial advisor)
  • .pyc (Russian)
  • .tui
  • .dvag
  • .pohl
  • .work
  • .casa
  • .budapest
  • .world
  • .fly
  • .nexus
  • .channel
  • .prof
  • .gle
  • .zip
  • .cal
  • .chrome

This sluggish behavior also is demonstrated with the small number of gTLDs currently entering or in the sunrise phase this month.

These gTLDs are in the queue for launching:…

‘Patent troll’ cannot “derail” FTC investigation

Posted in Patents

Have to give them an “A” for effort. “Patent troll” MPHJ Technology Investments, LLC sued the FTC hoping to shut down its investigation into the company because the investigation violated MPHJ’s First Amendment rights to petition. A West Texas federal judge recently ruled that MPHJ could not “derail” the FTC investigation with such a claim.

MPHJ, which had bought a number of patents related to computer scanning programs, mailed demand letters in an effort to license its patents to various companies that were already using similar technology. But MPHJ didn’t stop there. Many of the letters also threatened to sue those same companies if they didn’t sign license agreements and pay MPHJ’s demanded licensing fees. Those inquiry letters landed MPHJ in hot water with the attorneys general of various states, including Vermont and Nebraska—and with the FTC. Specifically, the FTC is investigating whether the inquiry letters violated Section 5 of the FTC Act. The FTC has already offered to settle the matter with MPHJ via a consent judgment, but MPHJ rejected the offer, leaving the investigation open and pending. Indeed, the Commissioners have yet to make a final decision about bringing any enforcement action at all, which would be accomplished by a majority vote.…

Grab your passport; geographic gTLDs are jetsetting this month

Posted in gTLDs, Intellectual Property, Trademarks

Twenty-three new gTLDs have been delegated since our last post. The following gTLDs have been cleared for takeoff:

  • .network
  • .企业 (Chinese for “enterprise”)
  • .business
  • .otsuka
  • .gbiz
  • .gmail
  • .pizza
  • .immo
  • .esq
  • .prod
  • .here
  • .youtube
  • .meme
  • .eat
  • .rsvp
  • .mov
  • .new
  • .ing
  • .frl
  • .day
  • .dad
  • .boo
  • .gmx
  • .pharmacy
  • .wme

Delegation is the green light for new gTLDs to launch into their respective mandatory sunrise period before moving on to landrush, early access and their final destination: general availability.…

Coinye West will not take over bitcoin’s reign on cryptocurrency

Posted in Information Technology, Intellectual Property, Trademarks

There’s exciting news in the world of cryptocurrency, the exchange medium that uses cryptography to secure the transactions and control the creation of new units. Bitcoin, created in 2009, was the first cryptocurrency and remains the most popular, though numerous other cryptocurrencies, such as Coinye, have emerged in the interim.

Where can you find cryptocurrency? Certainly not at your local bank.

Cryptocurrency is essentially digital money, a virtual medium of exchange that is not issued, backed, or tied to any particular nation or government. Cryptocurrency derives value through a variety of ways, such as buying either from exchanges, or directly from other people selling them, or try your hand at mining, which requires software you download to your computer.

After obtaining cryptocurrency, such as a bitcoin, the next hurdle is finding someone who will accept the currency in exchange for goods and services — which isn’t as difficult as you might think. Analysts estimate that over 65,000 bitcoin transactions occur every day through electronic transactions. What types of goods and services are exchanged, you may ask? Almost anything from the mundane products, such as electronics or dog apparel, to swanky cocktails or a Tesla, or to the illegal, including drugs and guns. Because purchases occur online through user’s virtual wallets, purchasers can remain anonymous and law enforcement can’t freeze their accounts.

Back to school – time to get educated about the newest gTLDs

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

Ready for the first day of sunrise

ICANN continues to make big strides in widening the Internet playing field. To date, ICANN has invited 1,159 new gTLDs to contract, and of those 1,159 invited, 495 registry agreements have been signed. From the 495 applicants who have signed a registry agreement, ICANN has delegated 357 new gTLDs to the root zone including the newest 20 that have been delegated since our last post. The newly delegated gTLDs are:

  • .tatar
  • .wales
  • .gifts
  • .sarl
  • .cymru
  • .restaurant
  • .bnpparibas
  • .佛山 (Chinese city of Foshian)
  • .广东 (Chinese province of “Guangdong)
  • .sca
  • .caravan
  • .cern
  • .ltda
  • .property
  • .hosting
  • .help
  • .uol
  • .ooo
  • .how
  • .diet
  • .click

Ready. Set. Go. FTC patent troll study cleared for takeoff

Posted in Intellectual Property, Patents

Last week, the White House’s Office of Management and Budget approved the FTC’s request to study how patent assertion entities (PAEs or, less charitably, patent trolls) operate and to what extent they affect competition and innovation. The study was originally proposed in September 2013 and modified this past May in response to public comment.

As we described previously in a two-part series of articles (read part 1 and part 2), the study will be conducted in two segments and is designed to answer the following questions:

  • How do PAEs organize their corporate legal structure, including parents, subsidiaries, and affiliates?
  • What types of patents do PAEs hold and how do they organize their holdings?
  • How do PAEs acquire patents; who are the prior patent owners; and how do they compensate prior patent owners?
  • How do PAEs engage in assertion activity (i.e., how do they behave with respect to demands, litigation, and licensing)?
  • What does assertion activity cost PAEs?
  • What do PAEs earn through assertion activity?
  • How does PAE patent assertion behavior compare to that of other entities that assert patents?

A new Ohio weapon against patent trolls?

Posted in Intellectual Property, Patents

Ohio may become the next state — after Virginia, Georgia, and thirteen other states — to take on the fight against patent trolls. A bill pending in Ohio’s General Assembly, H.B. 573, would provide additional tools to thwart abusive tactics by patent trolls. But how useful those tools may prove in the battle against the problems they are intended to remedy is yet to be seen.

“Patent troll” is a pejorative term without a well-defined meaning. It is widely used to describe an entity that does not make or sell any products or services, but acquires patents from others and then seeks to exact licensing fees through abusive tactics, including meritless assertions of patent infringement. Because defending against patent infringement claims can be an expensive endeavor, those targeted by meritless lawsuits often opt to pay patent trolls’ relatively low demands rather than aggressively defend against the claims in court. It is a decision that can leave business leaders steaming because, in their view, their companies are essentially being subjected to a shake-down by the threat of a meritless lawsuit.

In addition to frustrating business leaders, abusive practices in enforcing patents can stymie the economy. When companies are forced to settle meritless claims of infringement, they have less to spend on payroll, research and development, and other expenses that add value to the company and make it more likely to contribute to a thriving economy. Thus, patent trolls (as defined above) harm their targets, but they also negatively impact society more …

ICANN continues to rapidly expand the Internet this summer — newest statistics released

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

As of July 4, 2014 ICANN announced that out of the 1,930 applicants received in 2012, 1,146 have been invited to contracting. Contracting is the process through which ICANN will contact eligible applicants and engage with them through execution of the registry agreement. Contracting is part of the transition to delegation phase of the New gTLD Program. To date, 464 registry agreements have been signed and those new gTLDs have entered the delegation phase of the program.

Next six gTLDs jump into the Internet pool

More than 300 new gTLDs have now been delegated to the root zone. A gTLD is delegated to the root zone and becomes a part of the Internet once it has completed the new gTLD program. The newest group of gTLDs to be delegated is:

  • .deals
  • .melbourne
  • .city
  • .schmidt
  • .cuisinella
  • .cancerresearch

The Internet revolution — new gTLD update

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

Since our last blog post, the total number of domain name registrations among all new gTLDs has reached 1,414,766. There has been little movement this week on the leader board. The leaders are:

Number

New domain

Total registrations

1

.xyz

250,731

2

.berlin

136,703

3

.club

78,767

4

.guru

64,123

5

.photography

39,868

6

.email

34,799

7

.link

33,781

8

.在线 (online)

33,726

9

.today

29,669

10

.tips

25,661

ICANN has delegated four new gTLDs to the root zone:

  • .active
  • .suzuki
  • .place
  • .direct

Protecting the home front

It is important to remember that each newly delegated string that is set to launch is potentially one new threat to a trademark owner’s brand unless it has proactively protected its registered trademarks.…

Do you know what your employees are posting while they’re at work?

Posted in Electronic Discovery, Intellectual Property

Our colleagues at Employer Law Report posted about an interesting case in which FedEx was sued because one of its employees used the company’s internet connection to post allegedly defamatory comments. The Court of Appeals of Indiana affirmed the trial court’s decision dismissing the plaintiffs’ claims based on Section 230 of the Communications Decency Act.

In short, the court found that FedEx and another employer (500 Festival) that was sued were providers of an “interactive computer” service, that the claims sought to treat the defendants as a “publisher” or “speaker” of the comments, and the defendants did not develop or create the comments. The case also raised an e-discovery issue that highlights the importance of having updated legal hold procedures in place in addition to appropriate social media and computer usage policies. The plaintiffs argued that FedEx spoliated evidence because it failed to preserve the logs for its proxy server which filtered Internet traffic for thousands of users and did not preserve electronic records until a year after being added as a defendant.

The court found that there was no spoliation because FedEx had properly responded to non-party discovery served on it before being added as a defendant (including disclosing its document retention policy for the logs) and the plaintiffs did not complain about FedEx’s responses, including its overbreadth objections. The plaintiffs also argued that 500 Festival spoliated evidence because the identify of its employee was known and 500 Festival failed to preserve the information on the employee’s work computer. …

It’s game time — 140 new gTLDs are now publicly available

Posted in Domain Names, gTLDs, Intellectual Property, Trademarks

To date more than 1.3 million new second-level domain registrations have been registered within new gTLDs that have launched. The top 10 on the leader board are:

Number

New domain

Total registrations

1

.xyz

214,789

2

.berlin

136,371

3

.club

76,035

4

.guru

63,234

5

.photography

39,066

6

.email

34,172

7

.在线 (online)

33,605

8

.link

33,456

9

.today

28,887

10

.tips

25,120

The Redskins trademark decision — great media interest, overhyped reaction

Posted in Intellectual Property, Trademarks

The June 18, 2014, decision of the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) cancelling six federal trademark registrations for trademarks used by the Washington Redskins professional football team has received substantial media coverage and generated great interest among the public.

The impact of the decision has been widely misstated in early news reports. Harry Reid, the Senate Majority Leader, stated on the Senate floor: “The Redskins no longer have trademarks. They are gone.” According to the Majority Speaker’s statement, anyone who wants to sell T-shirts with the name Redskins can now do so.” Highly regarded publications have advised their readers: “The ruling, if it stands up to an appeal to the U.S. Court of Appeals for the Federal Circuit, would mean that the NFL no longer has the exclusive right to sell merchandise and apparel branded with those specific uses of the nickname.”

The truth is far different. Though undoubtedly a matter of significance in the trademark area, the legal impact of the TTAB’s decision is likely to be far less influential than these news reports suggest. Most importantly, the decision, even if ultimately upheld, does not mean that the team has lost all rights in the marks or that the marks are not enforceable under state or federal law. To put the case into perspective, let’s look at what happened, what the decision means to the NFL, and what it means for the rest of us.…