Andrew M. Nevill

Inventor Info Chat Webinar

April 17, 2017

On April 20, the USPTO Office of Innovation Development will be presenting an Inventor Info Chat on “How to File a Patent Application.” The chat will be held online from 11 a.m. – noon.

Topics included in this chat will be:
• Methods of filing an application
• Different types of applications that can be filed
• Resources available to aid in the filing process

To sign up, click on the link below:
Join the Live Online Web Chat

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.

United States Completes Membership Process for Hague System for the International Registration of Industrial Designs

February 18, 2015

The United States Patent and Trademark Office (“USPTO”) recently announced that the United States has deposited the official instruments needed to ratify the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague System”). The Hague System allows an applicant to apply for international protection for industrial designs in member countries using a single application filed with the USPTO or with the World Intellectual Property Organization (“WIPO”). This promises to make gaining industrial design rights in multiple jurisdictions more efficient and less costly for United States applicants. Previously, United States applicants seeking protection for industrial designs in multiple countries would have to file individual applications in each country in which protection was desired.

An industrial design covers the ornamental or aesthetic features of a product or object. These ornamental or aesthetic features may include the three-dimensional shape of the object or other features, such as patterns or colors. Known in the United States as a design patent, the owner of a registered industrial design may prevent others from making or selling a product that copies the ornamental or aesthetic features that are covered by the industrial design rights.

The Hague System currently has 64 contracting parties including countries such as Japan, Germany, France, and South Korea. An industrial design filed through the Hague System could potentially gain protection in all these member countries using only one application. All Final Rules regarding the USPTO processing and examination of international design applications under the Hague System are expected to go into effect on May 13, 2015.

Woodard, Emhardt Celebrates National Inventors’ Day

February 11, 2015

In 1979, President Jimmy Carter declared February 11 as National Inventors’ Day to celebrate the United States patent system and the role played by inventors in promoting technological progress. February 11 is a significant choice for the date of National Inventors’ Day, as it is the birthday of Thomas Edison, the inventor of the first practical light bulb and the owner of more than 1000 United States patents.

In celebration of National Inventors’ Day, Woodard, Emhardt is hosting a National Inventors’ Day Reception, inviting attorneys from around Indianapolis to meet for conversation, cocktails, and appetizers.

May 2014 Patent Prosecution Lunch Presentation

May 15, 2014

Topics covered in this month’s patent prosecution luncheon included discussion of an ongoing malpractice case involving a conflict of interest question when representing competitors in the same industry. Nationalizing foreign patent applications and accessing foreign reference documents through the Electronic Priority Document Exchange (PDX) and the WIPO Digital Access Service (DAS) was also discussed. The presentation can be downloaded here.

Federal Circuit Clarifies Response Requirements for an Indefiniteness Rejection

May 7, 2014

The Federal Circuit recently released its opinion for the case In re Packard, providing guidance as to when the United States Patent and Trademark Office (USPTO) may properly reject a claim as failing to meet the definiteness requirements of 35 U.S.C. § 112. The patent at issue in the case was rejected because the examiner determined that several claim limitations lacked antecedent basis or were otherwise unclear. The court held that the when the USPTO has made a well-grounded rejection that clearly identifies the language in a claim that is ambiguous or unclear, it may properly reject the claim as failing to meet the requirements of § 112 if the applicant does not offer a satisfactory response.

In upholding the rejection of the patent in suit, the Federal Circuit found that Mr. Packard’s response to the § 112 rejection was inadequate for several reasons. The response did not address all of the § 112 issues presented by the examiner. For the issues that were addressed, the response only offered an explanation of the written description and the figures and did not discuss the claim language. The response also failed to propose amendments to clarify the claim language or make arguments to show why the existing claim language was not indefinite.

In addition to stating why Packard’s offered response was inadequate, the Federal Circuit also provided guidance as to what it considers to be a satisfactory response. A satisfactory response should include either a modification of the language regarded as unclear, a separate definition of the unclear language, or an explanation of why the language is not actually unclear.

Supreme Court Modifies Standard for Awarding Attorney’s Fees in Patent Cases

May 2, 2014

Two recently decided Supreme Court cases have made it easier for a party to be granted attorney’s fees after winning a case. According to 35 U.S.C. §285, a court may award attorney’s fees to a winning party in “exceptional” cases. Since 2005, the determination of the whether a case is exceptional has followed the guidelines outlined by the Federal Circuit in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (2005). These guidelines set a high standard for what is to be considered “exceptional.” Under Brooks, a case was exceptional only if there was “some material inappropriate conduct” or when the litigation is both “brought in subjective bad faith” and “objectively baseless.” Furthering the difficulty of proving an exceptional case, these requirements had to be established by clear and convincing evidence.

Two recent decisions by the Supreme Court have modified the requirements for showing an exceptional case. In Octane Fitness, LLC v. Icon Health & Fitness, Inc., the Supreme Court overturned the ruling in Brooks declaring it “unduly rigid” and stating that it “impermissibly encumbers the statutory grant of discretion to district courts.” Instead, the Supreme Court focused on the ordinary definition of the term “exceptional” meaning uncommon, rare, or not ordinary. Therefore, an exceptional case is “one that stands out from others with respect to the substantive strength of a party’s litigating position . . . or the unreasonable manner in which the case was litigated.” The result is a more flexible standard relying on the district court’s discretion in consideration of the facts of the case and the totality of the circumstances.

In the companion case Highmark Inc. v. Allcare Health Management System, Inc., the Supreme Court ruled on the standard of review that appellate courts should use when reviewing an exceptional case determination made by the district court. In Highmark, the appellate court had reviewed an exceptional case determination de novo, granting no deference to the District Court’s decision. However, because the new test set forth in Octane Fitness relies on the discretion of the district court to determine whether a case is exceptional, the Supreme Court held that an appellate court should review this decision using an abuse-of-discretion standard.