James R. Blaufuss

2015 Indiana Super Lawyers

February 13, 2015

We are pleased to announce that Woodard, Emhardt partners Tom Henry, Spiro Bereveskos, and Dan Lueders have been named Super Lawyers in the 2015 edition of Indiana Super Lawyers. Woodard, Emhardt partner Bill McKenna and associate Jim Blaufuss have been named Rising Stars for 2015. Congratulations! Super Lawyers recognizes outstanding lawyers through a rigorous ratings and selection process.


Woodard Emhardt Attorneys Recognized in Indiana Super Lawyers 2014 Edition

February 27, 2014

We are pleased to announce that Woodard, Emhardt partners Tom Henry, Spiro Bereveskos, and Dan Lueders have been named Super Lawyers in the 2014 edition of Indiana Super Lawyers. Woodard, Emhardt partner Bill McKenna and associate Jim Blaufuss have been named Rising Stars for 2014. Congratulations! Super Lawyers recognizes outstanding lawyers through a rigorous ratings and selection process.


James Blaufuss Elected To Indiana Bar Association’s Leadership Development Academy

January 30, 2014

James Blaufuss was elected by The Indiana State Bar Association to be one of 25 young lawyers to join the 2014 class of its Leadership Development Academy. The Academy is a statewide leadership program established to empower and develop lawyers to be informed, committed and involved so that they may fill significant leadership roles in local and state bar associations, local communities and organizations and to serve as role models in matters of ethics and professionalism.


June 2013 Trademark Prosecution Group Luncheon Update

July 1, 2013

Topics covered in this month’s trademark prosecution luncheon include: a discussion of recent Trademark Trial and Appeal Board (TTAB) decisions Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Vina Casa Tamaya S.A. (evaluating likelihood of confusion) and In re Zico Beverage LLC (creation of a single commercial impression through double entendre), along with a discussion of Facebook Inc. v. Teachbook.com LLC (N.D. Ill 2011). You can download the presentation here.


Provisions of the America Invents Act Effective as of September 16, 2012

September 19, 2012

Provisions of the America Invents Act Effective as of September 16, 2012

The America Invents Act (IAI) is now one year old and several important provisions are now in effect.  Some of these provisions are important to both patent holders and anyone who wants to challenge the validity of a patent.  The newly in-force provisions include:

  • Prior art submissions by third parties;
  • Post-grant review of newly issued patents;
  • Post-grant review of covered business method patents;
  • Inter partes review of issued patents; and
  • Supplemental examination

 

Prior Art Submissions by Third Parties

Third parties may now submit any printed publication of potential relevance to the examination of a patent application.  This allows a third party to let the patent examiner know of relevant prior art that may have a bearing on patentability.  Third party submissions must be filed before a notice of allowance and before the later of 6 months after publication or the date of the first office action (not a restriction requirement).  Submissions must include a brief explanation of why the submitted documents are relevant.

This can be advantageously used as a persuasive brief arguing against patentability.  Third-party submissions of prior art may provide a relatively inexpensive way to invalidate a competitor’s patent before it ever issues.  Businesses should consider a patent monitoring service to monitor published patent applications for business damaging patents.

Inter partes Review of Issued Patents

This new review procedure replaces the old inter-partes reexamination.  Anyone (except for the patentee) can petition for inter partes review of the patent, seeking cancellation of one or more claims based on the claim(s) being anticipated and/or obvious in view of one or more prior art documents (limited to patents and printed publications).  This review allows the third party to participate throughout the process, including comments on any arguments or amendments made by the patentee.  Unfortunately, the Patent Office has set the base government fee for inter partes review at $27,200, making this approximately three times as expensive as the previously available inter-partes reexamination.

Post-Grant Review of Newly Issued Patents

This new review procedure allows anyone (except for the patentee) to petition for post-grant review of the patent, requesting cancellation of one or more claims.  Unlike inter-partes review, the petition for post-grant review is not limited to anticipation or obviousness arguments based on prior art documents.  Post-grant review may also argue the claims are directed toward ineligible subject matter, the claims are invalid because the written-description in the patent is insufficient to support the claims and the claims are invalid as anticipated and/or obvious in view of prior public use or disclosure (as well as any prior art documents).

This provides options for arguing invalidity that were not previously available from the Patent Office (and which otherwise require Federal Court litigation to resolve).  Unfortunately, the Patent Office has set the base government fee for post-grant review at $35,800.  Also, the petition must be filed no later than nine-months after the date the patent was granted.  Due to this short timeframe, businesses should consider a patent monitoring service to monitor for business damaging patents.

Post-Grant Review of Covered Business Method Patents

This new review procedure is a broadening of the post-grant review, as applied to “covered business method patents.”  Post-grant review of covered business method patents is allowed anytime between September 16, 2012 and September 16, 2020 and is not limited by the grant date of the patent.  Only a person who has been charged with infringement of a patent that claims a covered method of corresponding apparatus can file a petition under this procedure.  The petition may be brought under the same grounds as the post-grant review, but with limits on the prior art that may be asserted.

Supplemental Examination

This new review procedure is now available to patent owners to correct mistakes made during the prosecution of the patent.  The patent owner may present any information believed to be relevant to the patent including any ground of patentability, i.e., patent eligibility of the subject matter of the claims, anticipation or obviousness in view of prior art, lack of written description, enablement, best mode and indefiniteness of the claims.  Supplemental examination can be used to cure what otherwise might be considered inequitable conduct during the prosecution of an application, although it is expensive.  A request for supplemental examination requires a total government fee of $21,260, although $16,120 is potentially refundable.

Please contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP if you need any assistance with these or any other IP matter.


Five Woodard Emhardt Attorneys Recognized by 2012 Indiana Super Lawyers

February 17, 2012

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2012. Additionally, Woodard, Emhardt associates Bill McKenna and Jim Blaufuss have been named Rising Stars for 2012. Congratulations to all!


Ambush Marketing and Clean Zone Ordinances for the Super Bowl

February 1, 2012

 With Super Bowl week already in full swing in Indianapolis, we wanted to remind you of some of the legal issues surrounding ambush marketing in view of the clean zone ordinance put in place by the City of Indianapolis.  Ambush Marketing is when one brand pays to become the official sponsor of an event (e.g., the Olympics, the NFL, the World Cup) and another competing brand connects itself with the event without paying sponsorship fees.

Below is a presentation which discusses ambush marketing and ways to combat it.  The presentation also covers similar laws used to prevent ambush marketing, such as the Olympics Symbol Act in relation to the 2012 Olympics in London, and the clean zone ordinances, adopted by Dallas for the 2011 Super Bowl.

Click here to download a copy of the presentation.

 

The Patent Office Issues New Examination Guidelines to Evaluate Whether Inventions are Distinctly Claimed

February 21, 2011

The United States Patent and Trademark Office (USPTO) recently issued supplementary patent examination guidelines further defining the USPTO’s interpretation of the second paragraph of 35 U.S.C. §112 that requires inventors to distinctly claim their inventions.  These guidelines are supplements to the standards in the Manual of Patent Examining Procedure (MPEP).  While the supplemental guidelines are not a comprehensive revision of the MPEP, the guidelines anticipate an eventual revision of the MPEP based on a future, final version of these guidelines.  The current provisions in the MPEP remain in effect except as where indicated in the guidelines.

The new supplementary guidelines are published here.   The public has until April 11 to comment on these guidelines.


A Proposed New Rule for Fee-Based Fast-Track Examination

February 11, 2011

The United States Patent and Trademark Office (USPTO) has issued a proposed rule to implement “Track I” of the 3 track examination program proposed last year.  Track I applications would be accorded special status and placed on a special Examiner docket with the goal of providing a final disposition (e.g., allowance or Final Office Action) within twelve months (the same goal as accelerated examination).  An additional fee of $4,000 is proposed with no small entity fee reduction.  Track I applications are limited to 4 independent claims and 30 total claims under the proposed rule.  Also, the USPTO proposes to cap this program at 10,000 applications per year, subject to further review.

          As current proposed, Track I will provide a good option for individuals wanting faster prosecution.  The $4,000 fee is comparable to what most applicants spend to prepare an application for accelerated examination without the associated risks of documenting an analysis of the prior art before examination.  The accelerated examination and petition to make special programs will remain as currently implemented.

          The USPTO is accepting comments on the proposed rulemaking until March 7, 2011.  Assuming normal regulatory procedures, expect this program to start late 2011.  It will be interesting to see how quickly the 10,000 application cap is reached.  We will keep this blog updated when more information is available.  The entire proposed rulemaking can be found by clicking here.


Enforcing a Judgment by Levying a Domain Name

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.

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