News & Updates

Indiana Super Lawyers, Rising Stars 2021 Includes Seven Woodard Attorneys

February 25, 2021

Woodard, Emhardt, Henry, Reeves & Wagner, LLP congratulates our attorneys who have been selected for inclusion in the 2021 Indiana Super Lawyers® and Rising Stars lists. The Super Lawyers list recognizes outstanding attorneys who are selected using a patented, multiphase process that considers factors such as peer recognition, professional achievement and high ethical standards. No more than 5% of the attorneys in Indiana receive this honor each year. Attorneys named to the Rising Stars list are selected using the same process, with the exception that only those who are 40 years old or younger or who have been in practice for 10 years or less are eligible. No more than 2.5% of the attorneys in the state are named to the Rising Stars list.

2021 Indiana Super Lawyers:

• Spiro Bereveskos – Intellectual Property Litigation
• Thomas Q. Henry – Intellectual Property
• Daniel J. Lueders – Intellectual Property Litigation
• Charles P. Schmal – Intellectual Property

2021 Indiana Rising Stars:
• Matthew M. Gardlik, Ph.D. – Intellectual Property Litigation
• Blake R. Hartz – Intellectual Property Litigation
• Michael M. Morris – Intellectual Property


Happy National Inventors’ Day!

February 11, 2021

We would like to wish all inventors Happy National Inventors’ Day today! Thanks to inventors, we have electricity, automobiles, the internet, traffic signals, sticky notes, sports drinks, lifesaving medicines and more. For over 140 years, it has been our honor and privilege to help inventors protect their innovations. Thank you for placing your trust in us. We look forward to helping you protect the next great invention.


The firm congratulates Andrew M. Nevill on his promotion to partner

January 19, 2021

Andrew joined the firm as an associate in August 2013, focusing his practice on patent and trademark prosecution and litigation. Prior to joining the firm, he gained valuable experience as a research assistant focusing on computational fluid dynamics and the study of combustion properties of solid fuel rockets. He also worked in patent research and competitive analysis for a major health and nutrition company. Drawing from these experiences, he understands the importance of protecting intellectual property assets and the challenges companies face in bringing new technologies to market.

The firm congratulates our newest partner and looks forward to building on Woodard Emhardt’s 140 plus years of protecting and defending client’s creative and intellectual assets.


The Impact of BREXIT and EU Trademark Registrations

December 22, 2020

As you likely know, due to the United Kingdom leaving the European Union (Brexit), current European Union (EU) Trademark Registrations will no longer cover the territory of the United Kingdom. However, existing EU Registrations will continue to cover the remaining EU countries.

There is no cause for concern since the United Kingdom Intellectual Property Office (UK IPO) is automatically “cloning” all EU trademark registrations into new UK trademark registrations. The UK Registrations will retain the same filing date and renewal date as the EU registrations. The Registration Numbers for the new UK Registration will be the EU Registration Number with the prefix 009.

The UK trademark registrations will be fully independent registration governed by UK law—with the ability to be challenged, assigned, and/or licensed separately from the original EU trademark. In the event of a challenge to a UK registration, proof of use of the trademark in the UK will be necessary. Conversely, to defend an EU Registration, evidence of use will be needed in at least one of the other EU countries.

If the EU Registration is a Designation of an International Registration, the cloned UK Registration will be an independent UK Registration which will need to be managed and renewed separately from your International Registration. Alternately, the UK can be Subsequently Designated in an existing International Registration to allow for renewals, assignments, changes of name, etc. to be made in one place. Please contact us if you are interested in incorporating the UK into an existing International Registration.

If you have EU Designs, they will be similarly cloned in the UK. However, Brexit will not affect any European patent applications or patents since the European Patent Organization is established under the European Patent Convention (EPC), which is an international treaty independent of the EU. The UK will continue as an EPC member state.

Please contact us if you have any questions about your trademark, design or patent coverage.


Don’t let intellectual property be an after-pandemic thought

December 10, 2020

Whether next month, next year, or even beyond, at some point, the COVID-19 pandemic will begin to end. The world may look and feel a bit different, but the intangible intellectual property system will still be here, and we can take steps now to better position you (or your clients) for what comes next.

File now to protect new business

Before we look too far ahead, it is important to take inventory of what already happened. The pandemic forced widespread changes in a matter of weeks to how businesses deliver goods and services. Did your intellectual property protection strategy adapt as quickly? (I didn’t think so.) The obvious example is virtual services — things like telemedicine, educational videoconferences, and livestreamed entertainment. But there is also an explosion in delivery of physical goods and alternate purchasing methods. Do your trademark registrations cover how you are doing business in this new world? (I didn’t think so.) If you developed new technology to deliver your services, maybe you need to look into patent protection as well. You can abandon cases later. You can’t get retroactive filing dates.

Or maybe you now sell (or give away) masks? Did you already have trademark protection for masks last January? (I didn’t think so.) At the beginning of the year, the USPTO would have issued you a trademark registration on “protection masks” in International Class 9. Now, faced with a flood of “mask” applications, the USPTO requires applicants to specify things like “protective face masks for the prevention of accident or injury” in Class 9 (safety equipment), “sanitary masks for protection against viral infection” in Class 10 (medical devices), or “fashion masks” or “knit face masks being headwear” in Class 25 (clothing). The list of acceptable “mask” descriptions has been updated five times since June. Thanks, COVID. Masks are a new accessory that will outlive the pandemic in some capacity. They are a new promotional item. To quote my favorite movie, “It’s just they’re terribly comfortable; I think everyone will be wearing them in the future.” (“The Princess Bride,” 1987.)

Reevaluate enforcement and usage decisions

You are not the only one to adapt in the last several months. The virtual, streaming world presents an array of potentially confusing trademark uses, public performances and copying of protected works, and distributed infringement problems. While these online infringement opportunities existed in the before times, the extent of their use and adoption may warrant reevaluating whether to take action to enforce your rights. And search engines, social media, and digital archiving can make it easier to uncover these activities.

On the other hand, those same technologies make it easier for you to be found. In the rush to adapt this spring, intellectual property clearance likely got overlooked, and your operations may not line up exactly with your pre-pandemic practices. Some of your business model changes will still be here after the pandemic (as will the Internet’s memory), so this is a great time to check that your activities are (still) permissible.

Update (or create) IP systems to look forward

If your business has an office, it probably looks a lot less busy these days. But the work is still somewhere, buried in brains in employees’ basements. That brilliant inventor with the terrible communication skills — you can’t even corner him in the hallway to extract a progress report! There are reports that many people enjoy working remotely (my hand is raised) and that businesses are looking to shed expensive office space. To make this work long term, you will of course need secure technology infrastructure. But from an IP perspective, you need systems.

One of those systems is a way to get your employees to actually use the technology appropriately. You will want policies to govern use of company equipment and data and employees’ personal devices, and communications and training to ensure compliance with said policies. If the VPN or other remote systems are too slow, users will be tempted to do things on local equipment and valuable competitive information may be left up to the vagaries of user’s personal habits on operating system updates, home antivirus software, and wireless router configurations. Or users turn to cloud services without authorization and with untold number of additional personal devices synchronized and backed-up in third-party server facilities. So a key first step is driving use of information to your controlled technology environment.

Assuming you have control of your information, systems can help turn it into assets. Creative insights are often developed in informal interactions, and a lone employee at his kitchen sink may not be a good substitute for the office water cooler here. So you need to make a deliberate effort to mine the workforce for intellectual property — whether it be sales leads, marketing angles, or technological advances — in a way that works for your organization. That may be something like a recurring team meeting to review IP or assigning this task to a coordinator who connects with sources on an ad hoc basis. Proactive steps will go a long way to protecting your ideas, but you will need to do this in moderation.

Generating “intellectual” property requires good ideas, and an endless parade of virtual meetings is even more draining than a sterile conference room at the office.

Of course, an IP attorney can help you get started on all these processes.•

As published in The Indiana Lawyer.


Firm Named “Best Law Firms” by U.S. News & World Report and Best Lawyers

November 5, 2020

For the eleventh consecutive year, Woodard, Emhardt, Henry, Reeves & Wagner, LLP has been named U.S. News Media Group (U.S. News) and Best Lawyers “Best Law Firms” list. For 2021, Woodard was recognized with top regional rankings in 5 practice areas including Copyright Law, Litigation – Intellectual Property, Litigation – Patent, Patent Law and Trademark Law.

Firms included in the 2021 “Best Law Firms” list are recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.


New associates: Step one — develop your skills

November 2, 2020

Many of you recently passed the state bar exam and were sworn in to practice law within the last couple of months. Now it is time to start practicing law, implement what you learned in law school and begin to learn from your colleagues how to be a lawyer in the real world. Some of you may be looking for advice on how to proceed following your law school experience. I was in your shoes one year ago and will now impart some of the “knowledge” I have learned in my first year as a lawyer. It is up to you to decide if what I have learned is helpful to you or if I am full of it.

Develop a solid foundation

It is tempting to want to hit the ground running. Many lawyers want to try the biggest cases and to leave their mark on the profession. However, in order to do so, you need to develop a solid foundation of skills. In every area of the law, there are steps you must take to develop those skills. My advice is to learn what they are and become proficient in each no matter how rudimentary. Learn how to use a calendar, how to file a document with the court, how best to communicate with partners and clients, and how to work well with others in your firm including the paralegals, staff and assistants. Do not shy away from difficult work or hide from a partner with a reputation for being tough to work for. If there are partners at your firm willing to teach you, be grateful and learn as much as you can from their experiences. I believe the best way for anyone to learn is to do — make sure to gather as much work as possible. Working on a variety of matters will provide you with real-world legal experience and exposure to clients, helping you build your client service skills.

To read the full article, visit The Indiana Lawyer

 


USPTO Access to Relevant Prior Art Initiative Status Update

October 23, 2020

This article first appeared in the AIPLA Patent Law Committee October 2020 Newsletter.

By Hayley Talbert and Michael M. Morris

For the past few years, the USPTO has been quietly testing a way to automatically import prior art references from related applications at the USPTO (i.e., without any prompt from the Applicant) and improve examiner review of those references.  The program, referred to as the Access to Relevant Prior Art (RPA) initiative, launched in November of 2018 and is currently being piloted in one Art Unit in each of the nine technology centers at the USPTO (currently Art Units 2133, 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753). Other than a recent announcement regarding the Art Units within the program and the occasional Notice of Imported Citations received by an Applicant—which indicates their application was entered in the program—the USPTO has been relatively silent regarding this initiative. So, earlier this summer, AIPLA Patent Law Committee Members Hayley Talbert and Mike Morris met with USPTO personnel working on this program to understand how the initiative has been going and learn where the initiative may go. The following is a summary of what the USPTO shared with the AIPLA.

The RPA initiative is currently in Phase 1, which is limited to US patent applications with only one non-provisional parent application or patent and in only certain Art Units.  For applications in the initiative, software created to implement the RPA initiative collects prior art from Information Disclosure Statements (IDSs), PTO 892 forms, and Third Party Submissions in the parent application or patent and presents those references to the Examiner as a Master Reference List.  An applicant whose application is included in the RPA initiative receives a Notice of Imported Citations informing them of their application’s inclusion and listing the references on the Master Reference List.  The Applicant, however, need not take any affirmative steps to participate in this program.

Currently, for citations printed on the face of a patent outside of the RPA, the references come from up to three sources (Applicant provided, Examiner cited, Third Party Submission). Under the RPA, the USPTO has now added another category—automatically imported references.  All four of these categories of prior art references will be printed on the face of patent granted from the RPA.

So why was this program created? The USPTO’s primary goals in the program are to increase patent examination quality and efficiency. An automated tool developed for USPTO examiners to help them review the references from the Master Reference List is the primary means to achieve these goals.  While the USPTO is still collecting data on the new tool which is currently available only for cases in the RPA, the general sense is the new automated tool for examiners has increased the number of relevant reference presented to the Examiner and also does aid the Examiner in his/her review of those references.

Another goal of the RPA is to assist Applicants and patent prosecutors in meeting the duty of disclosure under 37 C.F.R. 1.56, and—hopefully—save Applicant’s money during prosecution. Whether this goal is being met is unknown. From informal conversations, many practitioners seem unfamiliar with the program and, therefore, may be surprised when they receive a Notice of Imported Citations—perhaps causing them to spend time investigating the program. Additionally, while some practitioners that receive a Notice of Imported Citations may trust the completeness of the references listed, the AIPLA suspects many practitioners will compare the list of references on the Notice of Imported Citations with the references in their own records of prior art to ensure no relevant reference is omitted.

So what are the USPTO’s plans for future phases of the RPA? While the RPA currently imports references from only an immediate parent application or patent, the USPTO intends to eventually pull references from more distant family members (grandparents, PCTs, etc.). Also, rather than the single import done now, the USPTO plans to import relevant prior art in real-time (e.g., as citations are entered in the parent case). Additionally, the USPTO intends to collect prior art from other patent offices (e.g., the EPO and JPO).

While Phase 1 is about to have its second anniversary, the USPTO has not yet scheduled a transition to Phase 2 of the initiative.  When Phase 2 occurs, however, practitioners may see an increase in the number of Examiners using the Master Reference List and related new tools, expansion in the types of applications allowed in to the initiative (such as applications that have more than one priority claim), and expansion in the sources from which the prior art references are collected. The USPTO is also considering providing a mechanism for Applicants to indicate other applications to be imported, such as cross-cited families that may not share a priority claim.

Takeaway, the USPTO is currently automatically importing references for only certain cases in certain Art Units. If you receive a Notice of Imported Citations, please know that the USPTO is currently doing only a one-time import of references from the parent application.  If the parent application is still pending and additional prior art arises in the parent application after the import into the child application, practitioners will need to identify and provide such references to the USPTO in an IDS if they want such references to be considered by the examiner and listed on the face of any patent issuing from the child application.

More information is available on the Access to Relevant Prior Art webpage of the USPTO website.


Obtaining and Enforcing Patents and Trademarks for Flavor Burst

October 15, 2020

Flavor Burst is a leading manufacturer of flavor and candy delivery equipment for frozen confections. The company designs and manufactures self-serve dispensing systems that increase a restaurant and retail establishments’ menu flavor offerings for soft service ice cream, shakes, slushies, frozen coffee, smoothies, frozen carbonated beverages, and frozen cocktails. Since Flavor Burst released its first product in 1992, it has expanded to more than 40 countries worldwide.

Flavor Burst executives have worked with the Woodard firm for decades to obtain and enforce patents and trademarks for its unique flavor blending and dispensing systems, syrups, mixes, and candies. Recently, Woodard attorneys Mike Morris and Andrew Nevill helped Flavor Burst prepare and file new patent applications on the next generation of flavor blending and dispensing systems that will increase efficiency for restaurants and retail establishments and provide patrons with even more enjoyable products.

For more information on Flavor Burst Company, please visit: https://www.flavorburst.com/


The Firm’s Key Role with Gatorade®

October 8, 2020

The Indianapolis Star published an interesting article about the history of Gatorade® thirst quencher: The Fascinating Tale of Gatorade’s Indy Beginning

Our law firm has played a key role in this famous product over the decades. We prepared and secured the original patent rights for the product. We also secured the original trademark registrations for “GATORADE” mark. We continue to represent the University of Florida, home of the Gators, in connection with the Gatorade® brand.

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