In addition to another year of the pandemic, 2021 brought with it several key developments in the realm of intellectual property (IP) that BakerHostetler has covered in this blog series. We hope readers have found these posts informative and entertaining thus far. Looking forward to 2022, there are a number of issues already teed up that the IP bar will need to closely follow in the new year. To that end, below is a brief overview of a few known or emerging issues to keep an eye on.
If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually rendered in connection with the mark for a registration to be granted.
In In re Alessandra Suuberg, SN 88234650 (TTAB December 10, 2021) [precedential] (Suuberg), the Trademark Trial and Appeal Board (TTAB) followed well-established Court of Appeals for the Federal Circuit (CAFC) precedent that the actual rendering of services is necessary for proof of use of a service mark.
Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows: Continue Reading
On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme involving … egregious misconduct,” including unauthorized practice of U.S. law, providing false domicile addresses, impermissibly entering signatures of others and misusing uspto.gov accounts. Zhang had at least three different accounts, and multiple different people were using them.
The December Order followed a June 8, 2021 Show Cause Order and Response filed on July 6, 2021. Zhang and her firm claimed they were “unfamiliar with the filing requirements and did not fully understand the signature requirements under 37 C.F.R. § 2.193 until engaging counsel” and were now taking corrective action. The USPTO rejected this argument, as attorneys and pro se parties participating in the trademark registration process or board proceedings are presumed to be aware of the rules requiring foreign applicants to be represented by a U.S.-licensed attorney, and ignorance is no excuse. In addition to terminating the 15,000+ fraudulently filed applications, Zhang and her firm are precluded from future submissions to the USPTO.
One common rationale used to support an obviousness argument is that the patented solution would have been “obvious to try.” The Supreme Court has stated that where “there are a finite number of identified, predictable solutions” for solving a problem and that “a person of ordinary skill has good reason to pursue the known options,” if that “leads to the anticipated success,” that “might show that it was obvious under § 103.” In a recent opinion upon appeal from the Patent Trial and Appeal Board (Board), Teva Pharmaceuticals, LLC v. Corcept Therapeutics, Inc., No. 21-1360 (Fed. Cir. 2021), the Federal Circuit confirmed that specific limitations in claim language necessarily shape the application of the “reasonable expectation of success” obviousness analysis.
Corcept developed a mifepristone tablet for treating Cushing’s syndrome. The U.S. Food and Drug Administration (FDA) approved Corcept’s application with certain stipulations. First, the FDA required Corcept to conduct a clinical trial to determine the safety of its tablet when co-administered with ketoconazole (a strong CYP3A inhibitor) and provided Corcept with a memorandum describing that the effects of co-administering mifepristone with strong CYP3A inhibitors was “unknown” and “may present a safety risk.” Additionally, the FDA approved the prescribing information for the tablet on its label. In relevant part, the label limited the “mifepristone dose to 300 mg per day when used with strong CYP3A inhibitors.” Corcept conducted the requested clinical trial and, based on data collected during that trial, filed for and was granted its ’214 patent. The claims of the ’214 patent are directed to a method of treating Cushing’s syndrome by co-administering a specific dosage (600 mg) of mifepristone and a strong CYP3A inhibitor (e.g., ketoconazole) to a patient.
Partner Stephanie Lodise, Ph.D., and Patent Agent Tracy Palovich, Ph.D., break down the differences between obviousness rejections and obviousness-type double patenting rejections. They then provide important prosecution strategies how to respond to each type of rejection so as to maximize patent protection
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Under U.S. law, every patent claim must be supported by an adequate written description, which conveys to those skilled in the art the nature and breadth of the invention. The Federal Circuit recently decided two cases that found that claiming both a quantitative value and a quantitative range requires particular clarity in the disclosure.
In Indivior v. Dr. Reddy’s Laboratories, Indivior appealed an inter partes invalidation of claims reciting polymer percent weight ranges in orally dissolvable films. Indivior argued that disclosure of specific formulations with the lower quantity of a claimed range (48.2 wt %) and the upper quantity of a claimed range (58.6 wt %) was sufficient to encompass the claimed ranges (40 wt % – 60 wt % and 58.6 wt % – 60 wt %). The Court disagreed and found that disclosing examples having only the upper and lower limits of a range is not sufficient to claim an entire range, stating that “more clarity is required” for adequate written description support of the claimed range. The Court further rejected Indivior’s argument that if one looks to the specification’s tables and creates a range from the polymer weight percentages in the examples, then one has obtained the range. The Court stated that this act would “amount to cobbling together numbers after the fact” and that Indivior did not demonstrate that a person of skill in the art would have understood that the specification was disclosing a range of polymer weights. Thus, the Federal Circuit affirmed the PTAB’s holding that the claims were invalid as lacking adequate written description.
If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP).
In CHiP, the TTAB dealt with an appeal from a refusal to register “MADE FOR MORE” for services “including employment-recruiting services, personnel recruitment, employment recruiting and staffing services, and recruitment and placement of personnel in the field of law enforcement.” Id. at p. 8. The U.S. Patent and Trademark Office (USPTO) examining attorney refused registration, contending the mark was not used to render a service within the meaning of the Trademark Act, and asserted the mark was used by the California Highway Patrol (Applicant) to recruit its own personnel and thus was not registrable. Id. at p. 2. The TTAB affirmed the refusal to register, denying registration under sections 1, 2, 3 and 45 of the Trademark Act.
I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas.
As my friend is well aware, pursuing patent protection for a company’s inventions developed in the course of product development projects may deliver significant value back to the company. For example, a strong patent portfolio may protect investment in research and development, increase market and/or company value, secure market position, generate licensing revenue, and serve as a strong bargaining chip in cross-licensing negotiations. For these reasons, many companies task individuals, such as my friend, with supporting business and engineering units to harvest invention disclosures.
Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents. Likewise, design patents are not subject to attacks under 35 U.S.C. § 101, which can lead to a significant portion of utility patent invalidations that occur. Further, while utility patents are frequently attacked in post-grant challenges before the PTAB, design patents are rarely challenged in that forum, and they face significantly lower rates of institution. Finally, finding infringement of a design patent is relatively simple and straightforward under the applicable “ordinary observer” test. Specifically, if an ordinary observer would find the accused product to be “substantially the same” as the claimed design, there is infringement.
On top of these benefits, the Federal Circuit recently provided another benefit to design patent applicants. In a unanimous precedential opinion, the panel decision of In re: Surgisil, LLP significantly narrowed the field of prior art that can be used to invalidate a design patent as anticipated.
At issue in the case was a claim directed to an “ornamental design for a lip implant as shown and described”:
The PTO had rejected the design patent application, citing minor differences between the above lip implant and a Dick Blick art catalog that contained an image and description of an art tool called a stump:
The stump was described as being made of “tightly spiral-wound, soft gray paper” and used “for smoothing and blending large areas of pastel or charcoal.”
The Federal Circuit found that the PTO had erred as a matter of law by finding that the lip implant design would be anticipated by the stump art tool. The court explained that “[a] design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” Therefore, prior art directed to the different field of art tools did not anticipate a lip implant design.
This ruling is significant in the realm of design patent law because it changes course from decades of prior practice at the PTO. Namely, examiners traditionally have been able to rely on prior art from any field to establish anticipation, relying on a 1956 Court of Claims case, In re Glavas. The In re Surgisil opinion squarely rejects this 60-year-old rule.
The takeaway for patent owners is that it should be easier to obtain design patents because the realm of art for anticipation grounds significantly shrank due to the In re: Surgisil, LLP opinion.
 35 U.S.C. § 289.
 In re Finch, 535 F.2d 70, 71-72 (C.C.P.A. 1976).
 Of the 1,513 AIA petitions filed in fiscal year 2020, just 20 were directed to design patents, and only 14% of such petitions were instituted. AIA Trial Statistics FY 2020 Roundup, at 6, 11 (Oct. 1, 2019, to Sept. 30, 2020), available at https://www.uspto.gov/patents/ptab/statistics.
 Egyptian Goddess Inc. v. Swisa Inc. 543 F.3d 665, 671 (Fed. Cir. 2008) (en banc). Notably, the claim scope is limited to the same article of manufacture enumerated in the claim. Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334 (Fed. Cir. 2019).
 2021 WL 4515275, at *2 (Fed. Cir. Oct. 4, 2021).
 Id. at *1.
 MPEP § 1504.02, Novelty, available at https://www.uspto.gov/web/offices/pac/mpep/s1504.html#d0e153408.