March 31, 2010
The Ninth Circuit issued an ironic ruling last month regarding levying domain names to satisfy a prior judgment. In Office Depot, Inc. v. Zuccarini, (9th Cir., Feb. 2010) Slip Opinion, the Ninth Circuit ruled that a creditor can levy a domain name of a debtor to satisfy a judgment.
John Zuccarini, a notorious cyber squatter, registered hundreds of domain names incorporating other individual’s trademarks, including “officedepot.com.” Office Depot successfully sued Zuccarini under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). The ACPA provides a cause of action for trademark owners against persons who register their mark(s) as domain name(s) to profit from the trademark. Office Depot obtained a judgment against Zuccarini, but was unable to collect and subsequently assigned the judgment to DS Holdings.
DS initially sought to have 109 “.com” domain names that were registered to Zuccarini transferred directly to it. However, a California statue prohibited the court from ordering transfer of property held by a third party (a registrar maintains domain name registrations). DS then successfully had the court appoint a receiver to take possession of the domain names and sell them to satisfy the judgment.
The irony is that this judgment arose from Zuccarini’s liability from registering these domain names to sell to trademark owners for profit. Now, DS will presumably sell the same domain names to the same trademark owners to satisfy the judgment. While this situation likely does not meet the definition of bad faith required under the ACPA, the end result is the same: a third party selling a domain name confusingly similar to another party’s trademark.
In any event, this decision provides a roadmap to levying domain names to satisfy a judgment. In many cases, domain names would not be worth the effort to seize. But in other cases, domain names can have significant commercial value, making such efforts worthwhile.
March 25, 2010
The Federal Circuit has affirmed an ITC decision finding two asserted patents invalid because they did not satisfy the best mode requirement of 35 U.S.C. §112.
The two patents relate to improved methods of producing L-lysine using genetically modified E. coli. (L-lysine is a dietary supplement in animal feed and has a multi-billion dollar market worldwide.) The patent disclosed one method of creating the L-lysine producing E. coli. However, before the patent applications were filed, the inventors created another, better strain. (The evidence also established that the better strain was intentionally withheld from the patent applications.)
§112 requires that the inventor disclose the preferred embodiment of the invention and any preferences that materially affect the claimed invention, but only to the extent that information is known by the inventor when an application is filed.
The patentee unsuccessfully argued that the improvements in the better E. coli strain related to other, non-patentable, improvements that were not related to the “inventive aspects” of the claimed invention.
Here, the best mode requirement was not met due to the breadth of the claims. The asserted claim recited the step of “cultivating a bacterium belonging to the genus [E. coli] … having mutation to desensitize feedback inhibition of L-lysine.” Because the scope of the claimed invention included “cultivating a bacterium,” the failure to disclose the preferred, and in one case, only bacterial strain used by the patentee to practice the claimed invention the best mode requirement was not met and the asserted patents were held invalid.
See Ajinomoto Co., Inc. v. International Trade Commission (Fed. Cir. 2010). Link http://www.cafc.uscourts.gov/opinions/09-1081.pdf
Thus, it is important to keep your attorney apprised of any modification to the invention, particularly if you believe the modification is preferred, up to the filing date your patent application.
Note: the current version of the Patent Reform Act of 2010 eliminates the invalidity defense for failing to disclose the best mode, which would likely have flipped the verdict in a case such as this.
March 18, 2010
A pilot program of the Trilateral (EPO, JPO and USPTO) PCT-Patent Prosecution Highway began January 29, 2010 and is planned to run for two years. The program fast-tracks patent examinations in the EPO, JPO and USPTO for PCT applications receiving a positive written opinion of the International Searching Authority or the International Examining Authority from the EPO, JPO, or USPTO. Such a positive opinion must come in the form of: (i) a written opinion from the ISA; (ii) a written opinion from the IPEA; and/or (iii) an IPER from the IPEA.
In effect, the work product from any of these patent authorities (acting in its PCT capacity) serves as the basis for a petition to make special in the USPTO.
US Applicants my request participation by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP). When filled via EFS-Web, the form is indexed as “Petition to make special under PCT-Patent Pros Hwy”.
On a related note, Applications may now be prepared in a Common Application Format (CAF) developed by the Trilateral Office. This format streamlines direct filings in the EPO, JPO and USPTO where applications in this format are not subject to additional formality requirements. For US applicants, the CAF goes beyond what is required in the US. However, using the CAF can provide significant savings when nationalizing PCT applications in the EPO and JPO. More information may be found at http://www.trilateral.net/projects/pct/CAF.html and http://www.wipo.int/pct/en/filing/caf_example.html.
March 12, 2010
The EPO has changed its rules for filing Divisional applications. Previously, Divisional applications could be filed from any pending European application. Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication by the Examining Division. Note that search reports and search opinions do not trigger the 24 month period because they are issued by the Search Division, not the Examination Division. Also note that a new unity of invention objection establishes a new 24 month period for filing a divisional application.
For pending applications for which the 24 month period has expired or expires before October 1, 2010, the deadline for filing a Divisional application will be extended to October 1, 2010. We suggest you review any pending applications well before the October 1, 2010 deadline to allow enough time to prepare and file any desired divisional applications before the deadline.
For more information see EPO Rule 36(1).
Also see EPO Rules
November 24, 2009
The Midwest Intellectual Property Symposium was held November 19 & 20 at the University Hotel and Conference Center in Indianapolis, IN. The event was sponsored by the Indiana Continuing Legal Education Foundation and featured presentations by speakers in a variety of intellectual property areas, including patent prosecution, trademark prosecution, biotechnology practice, intellectual property litigation, and ethics. Woodard Emhardt Trial Practice Group Co-Chair, Holiday W. Banta, served as moderator for the event. In addition, the following Woodard Emhardt attorneys were featured among the presenters and panelists (click on the topic titles to access presentation materials):
T.J. Cole
Hot Topics in Patent Law
Thomas Q. Henry
Top Patent Prosecutors Roundtable: Prosecution and Client Management Tips from Indianapolis’ Leading Practitioners
Charles P. Schmal
Current Topics Concerning Corporate Ownership and Licensing of Intellectual Property
Kenneth A. Gandy (material preparation), Gilbert T. Voy (Eli Lilly & Co., presenter)
Patenting Therapeutic and Diagnostics Medical Methods Around the World: Practices and Pitfalls in Divergent Systems
James R. Blaufuss
Hot Topics in Trademark Law – Part 1
Hot Topics in Trademark Law – Part 2
Daniel J. Lueders
‘You Really Should Settle This Case’ – Do the Courts Practice What They Preach?
The Symposium was a huge success, with over one hundred faculty, attorneys, and IP professionals from around the world in attendance. Special thanks go out to all of the individuals involved who helped with organizing and presenting at the event.
Related Links:
Midwest Intellectual Property Symposium, Nov. 19-20, 2009
