2009 June

The U.S. Supreme Court has granted certiorari in the Bilski case, a challenge to the decision handed down by the Federal Circuit last October excluding pure business methods from patent protection. Additionally, the Bilski decision set some roadblocks in the way for obtaining software patents. In its decision, the Federal Circuit held that in order to be patent eligible under 35 U.S.C. § 101, a claimed process must either: (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. The Board of Patent Appeals and Interferences at the U.S. Patent Office has handed down a few decisions in the wake of Bilski, however potential patentees are still left with a great deal of uncertainty in the future of business method and software patents. The U.S. Supreme Court’s ruling in this case will be an important and significant decision affecting patentable subject matter under § 101.

Applicants of international PCT patent applications filed on or after January 1, 2009, can now view the file contents of their published applications online.  Over the next couple of months, the service will begin including applications for which early publication has been requested.   In addition, you may obtain an International Application Status Report containing the latest bibliographic data; important status dates; information about certain withdrawals; the title and abstract; and information on the international search report, preliminary examination report, and supplementary search report.  The Status Report is intended for Applicants, designated/elected Offices, and third parties and is generated upon request. To view this information, access the PATENTSCOPE® search service at WIPO .

While the recently enacted Madrid Protocol System allows trademark owners to seek protection for their respective marks in multiple countries by filing a single application, there are some pitfalls to avoid.

For large-scale coverage of your trademark in many countries, you may want to consider filing an application for an international Madrid Protocol trademark registration. Benefits of the Madrid Protocol registration include the filing of a single application designating many countries, one expiration date, and one place for renewal and for filing changes of names/addresses, license agreements, assignments, etc. As long as the application meets all formal requirements, the filing date of the Madrid Protocol application is the date of registration. The cost of a one-class application filed directly with all 78 Madrid Protocol countries would be around $70,000 US, whereas a Madrid Protocol application designating all the member countries is only about $18,000 US.

However, a few issues have been encountered with the Madrid Protocol system.

* An application must be based on a valid home (e.g., United States) application or registration. (The international registration is dependent on the home application for five years, after which it stands alone.)
* The classification and identification of goods/services in the international application must be identical to the home application. This can create problems if not considered ahead of time, because an acceptable goods and services identification internationally varies somewhat from an acceptable goods and services identification in the United States.
* Some foreign trademark offices will correspond directly with the client, even though a foreign agent has been retained.
* Notifications of partial or total refusal from designated countries are transmitted to the International Bureau and then to the foreign agent, in some cases leaving a short time between receipt of the Notification and the deadline for responding.
* Some countries publish the Notifications, giving rise to solicitation letters from foreign associates. To respond to the Notifications, the services of a foreign agent must be secured.

Strong consideration can be given to the Madrid Protocol system if you desire widespread trademark coverage, especially where cost is a concern. Many countries automatically extend the international registration into their country without further examination. Even though a foreign associate may be needed for responding to a refusal, cost savings can still be realized at the filing stage.

Please contact us if you are interested in further information regarding the Madrid Protocol.

Applicants of international PCT patent applications filed on or after January 1, 2009, can now view the file contents of their published applications online. Over the next couple of months, the service will begin including applications for which early publication has been requested. In addition, you may obtain an International Application Status Report containing the latest bibliographic data; important status dates; information about certain withdrawals; the title and abstract; and information on the international search report, preliminary examination report, and supplementary search report. The Status Report is intended for Applicants, designated/elected Offices, and third parties and is generated upon request. To view this information, access the _PATENTSCOPE_® search service at www.wipo.int/pctdb.

The Federal Circuit recently reversed a Trademark Trial and Appeal Board (TTAB) decision affirming an Examining Attorney’s refusal to register the mark MOSCOVSKAYA as primarily geographically deceptively misdescriptive. In Russian, MOSCOVSKAYA means “from Moscow.” The Examining Attorney relied on the Doctrine of Foreign Equivalents which is a guideline providing that foreign words from modern languages be translated into English when it is likely that the ordinary American purchaser would stop and translate the foreign word into English. The third prong of the test for primarily geographically deceptively misdescriptive is that the misrepresentation is a material factor in the consumer’s decision. Joining the Doctrine of Foreign Equivalents and the 3rd prong of the test, the TTAB found that Russian speakers are an appreciable number of consumers and found that the mark met the materiality test of the 3rd prong based on the deception to Russian speakers. The Fed. Cir. ruled that the materiality test requires that a substantial portion of the relevant consumers is likely to be deceived, not whether any particular segment (Russian speakers) is likely to be deceived. The Fed. Cir. went on to state that Russian speakers may in fact be a substantial portion of the intended audience, but this needs to be considered by the TTAB on remand. We will have to wait and see if this decision will expand to other trademark principles (likelihood of confusion, descriptiveness, surnames, etc.) or be limited to primarily geographically deceptively misdescriptive refusals? In re Spirits International, N.V., Appeal No. 2008-1369 (Fed. Cir. April 29, 2009).