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October 2015 Prosecution Lunch

November 12, 2015

The October 2015 prosecution featured a discussion of the availability of PDFs on the US Patent and Trademark Office (USPTO) website. In addition, this presentation contains an explanation of the USPTO’s Patent View website and the web-based issue fee form (Web 85b) which allows patent practitioners to pay issue fees and have the information automatically entered into the system. Also information is provided about the After Final Consideration Pilot Program (AFCP) 2.0 and the Quick Path IDS (QPIDS) programs being extended to September 30, 2016. There was also a discussion of a copyright case concerning clothing (Varsity Brands, Inc. et al. v. Star Athletica, LLC). The presentation can be downloaded here.


Protecting Trademarks from Registration with an Unwanted Domain Name

November 5, 2015

General registration has begun for websites including the generic top level domains (gTLDs) .sex, .porn, .XXX, and .adult, thus allowing the public to purchase domain names ending with these extensions. Registration is on a first come, first serve basis and does not require pre-ownership or proof of a trademark registration to be granted the domain name. This presents the risk that third parties may register domain names in these new gTLDs for trademarks they do not own and potentially use the domain names for derogatory purposes.

If a trademark is registered in a domain name in an undesired gTLD to a party that is not the owner of the trademark, the actual trademark owner could sue the domain name holder and ask the judge to award them control and ownership of the domain name. However, this could be a costly and time consuming process. Instead of waiting for a third party to register a domain name with a trademark in an undesired gTLD, a trademark owner may proactively register for a domain name containing their trademark in that gTLD to prevent other parties from registering and using it for disparaging purposes. Actual use of the domain name is not required to maintain ownership and this approach may provide a cheaper alternative filing a lawsuit against a third party owner.

If you have any questions regarding the registration for new generic top level domains or wish to protect your brand from being registered in these domains by a third party, please contact the attorneys at Woodard, Emhardt, Moriarty, McNett and Henry LLP.


An Introduction to Intellectual Property Law

October 12, 2015

Below is a recent presentation that addresses common questions concerning intellectual property law, and explaining as why intellectual property (IP) is usually the most valuable asset for businesses. The presentation gives information about patents, trademarks, copyrights, and trade secrets. It provides information about how to obtain IP protection, how long the registration process lasts, associated costs, and who can typically handle the registration process. In addition, there is a discussion of foreign IP protection as well as how long you receive protection for each form of IP. The presentation also gives information on how to do an initial knockout trademark search as well as the trademark process in the United States including intent-to-use (ITU) based, use based, Paris Convention based, and Madrid Protocol trademark applications. There is discussion on specimens and the post-registration process for trademarks as well as a discussion of IP licensing and IP as it relates to operation agreements, employment agreements, and third-party supplier agreements. In addition, there is a discussion about nondisclosure agreements (NDAs) and franchising law. The presentation can be downloaded here.


The After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path IDS (QPIDS) Pilot Have Been Extended

October 6, 2015

The After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path IDS (QPIDS) pilot have been extended to September 30, 2016. AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. The QPIDS pilot program eliminates the requirement for processing of a request for continued examination (RCE) with an information disclosure statement (IDS) filed after payment of the issue fee in order for the IDS to be considered by the examiner.

More information on these and other USPTO programs can be found here.


USPTO Announces Next Generation Trademark Manual of Identification and Classification of Goods and Services (IDM-NG)

October 1, 2015

The USPTO has announced the deployment of the Version 2.1 of the Next Generation Trademark Manual of Identification and Classification of Goods and Services (IDM-NG) available at tmidm.uspto.gov.

The IDM-NG search system and results display have been updated to include the following features:

• Selection of “Advanced Search” modes, including “Exact,” “Prefix,” “Proximity,” “Suffix,” and “Classic” mode in which users can enter the same search syntax used in the legacy ID Manual BRS search system;

• Printing of results table – use the printer icon on the top left of results page to generate a copy of ID Manual Search Results with search terms, date, Nice Classification Version and the URL;

• Search engine returns similar results to search term based on algorithm and alternate results when search term is not found;

• Updated “Searching the ID Manual” and “Guidance for Users” help files located under the white “i” information icon.


USPTO Provides Statistics on Petition Pendency

September 11, 2015

The United States Patent and Trademark Office has launched a new website—the USPTO Patents Petitions Timeline. The new website provides the average pendency and success rates (over the past 12 months) for each type of petition that can be filed during the patent prosecution process. For example, petitions to correct patent term adjustment periods remain pending for nearly a year and have a success rate of 42%, while petitions to correct inventorship remain pending for roughly five months and are granted nearly 84% of the time. Not surprisingly, petitions for extensions of time during prosecution are quickly granted 100% of the time.

The Patents Petitions Timeline will help practitioners and applicants make better strategical decisions on when to file a particular petition during prosecution or for the life of the issued patent. Moreover, much like the first office action predication available in PAIR, this provides some guidance as to the likely timing of a decision for the various petitions available.


August 2015 Prosecution Update

August 31, 2015

The August prosecution update featured a discussion of proposed changes to the Patent Trial and Appeal Board (PTAB) rules governing proceedings before the board. The proposed rules include allowing patent owners to include new testimonial evidence such as expert declaration when submitting their opposition to a petition to institute a proceeding, requiring the PTAB to use the same claim construction standards used by district courts for patents that will expire during PTAB proceedings, and changes to the amendment procedures used by the PTAB during a trial. The prosecution update also included a review of the Cooperative Patent Classification system (CPC) and includes information about how to find relevant CPC classifications.

The presentation can be downloaded here.


August 2015 Litigation Update

August 21, 2015

The August litigation update included a discussion of some important statistics on post grant proceedings issued by the Patent Trial and Appeal Board (PTAB). The statistics offer information on the number of Inter Partes Review (IPR), Covered Business Method Review (CBMR), and Post Grant Review (PGR) proceedings that have been initiated and granted, the most common subject matter involved, and the number of claims held invalid in the end. The update also included a discussion of the Akami v. Limelight case that has been moving between the Federal Circuit and the Supreme Court. The Supreme Court ruled in Akami that showing inducement to infringe requires a single direct infringer. In response, the Federal Circuit has now expanded the definition of a “direct” infringer to include multiple parties working together in a joint enterprise.

The presentation can be downloaded here.


July 2015 Trademark Update

August 4, 2015

July’s practice group lunch included an overview of recent news from the U.S. Patent and Trademark Office (USPTO) and decisions from the Trademark Trial and Appeal Board (TTAB). The USPTO continues to revise its manuals for trademark practice (TMEP and TBMP) on a rolling basis, and has issued new rules and guidance on certain specific types of trademarks, such as collective marks and repeating patterns. The TTAB has decided that it will presume that, between a manufacture and an exclusive distributor, the manufacture owns the mark, subject to rebuttal (UVeritech v. Amax Lighting). Another TTAB case addresses the interaction between the courts and the USPTO, where the TTAB refused to vacate a decision even though the parties later settled the case while on appeal (University of Alabama v. Pitts).

The presentation can be downloaded here.


July 2015 Patent Case Update

July 31, 2015

July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).

The presentation can be downloaded here.

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