Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) to the U.S. District Court. The Fourth Circuit had held that the USPTO could recover such fees from trademark applicants who appealed, successfully or not, from the TTAB to the Eastern District of Virginia, while the Federal Circuit held the opposite with respect to patent applicants who appealed from the PTAB to the district court for de novo review.

Prior to the Supreme Court’s decision in Peter v. Nantkwest, the Fourth Circuit had followed its precedent and affirmed an award of attorneys’ fees to the USPTO in Booking.com B.V. v. USPTO, notwithstanding that Booking.com had prevailed in the district and appellate courts. The Supreme Court recently ruled that the term “Booking.com” was capable of trademark significance and therefore registrable, affirming the decisions below and, on July 2, remanding the case to the Fourth Circuit on the issue of the fee award. Continue Reading

“Trump Too Small” is Too Personal for Trademark Registration

The Trademark Trial and Appeal Board (TTAB) – for the second time in the past six months – has decided that a proposed mark incorporating the name “Trump” may not be federally registered as a trademark. Relying on the Lanham Act prohibition against registration of any mark that identifies “a particular living individual” without that person’s consent,[1] the board refused to register “Trump Too Small” for use on T-shirts and other apparel.

It is probably no coincidence that the application for the Trump Too Small mark was filed in January 2018, only months following the Supreme Court’s June 2017 decision in Matal v. Tam[2] declaring that the Lanham Act prohibition against registration of marks that “may disparage” individuals or institutions[3] violates the Free Speech Clause of the First Amendment. The TTAB had refused to register the rock band name “The Slants” because it could be considered disparaging to people of Asian descent. The Tam decision also vindicated the “Redskins” mark for the Washington football team, which the TTAB had canceled in 2014 because it could offend American Indians. The Supreme Court ruled that refusing the benefits of federal trademark registration because a mark could be considered by some to be disparaging amounts to unconstitutional discrimination against speech that “expresses ideas that offend.” Continue Reading

‘Something of an Experiment’: District of Delaware Prepares for Socially Distanced Patent Trial Tentatively Set for August 2020

In an earlier blog post, we commented on how the COVID-19 pandemic has affected and may continue to affect patent litigation. A recent order from one of the country’s busiest patent courts, the District of Delaware, reflects the ways in which the pandemic may affect patent trial practice.

On July 2, in Sunoco Partners v. Powder Springs Logistics, Chief Judge Leonard P. Stark of the District of Delaware announced these procedures for a patent-infringement trial tentatively scheduled for August 2020:

  • All witnesses will testify remotely – and not only for social-distancing reasons. The court also expressed concern that the side with more witnesses “who end up being unable to come to the courtroom” could be at a disadvantage, that witnesses “may feel pressure to conceal symptoms and/or coronavirus-related concerns,” and that the court would rather not decide whether to “permit,” “require” or “prohibit” witnesses from wearing face coverings.
  • The plaintiff will be limited to a total of four attorneys, assistants, consultants or corporate representatives in the courtroom at a time. Each of the two defendants will be limited to three (for a total of six). The court encouraged out-of-state counsel to consider “arriving in Delaware more than 14 days prior to the start of trial, self-quarantining, and developing strict internal procedures to maintain trial-team bubbles.”
  • The parties are to “take all necessary steps to eliminate paper exhibits (i.e., absent compelling reasons, all exhibits shall be displayed to witnesses and the jury electronically).”
  • “The Court will simulcast a video feed of the trial into another room in the courthouse, in which the Court’s policies for social distancing and face covering will be enforced.” The public, the media and overflow members of the trial teams will be in that room.

The court noted several logistical issues that would be decided later: “how voir dire will be conducted, where the jury will be seated, where the jury will go during breaks and for deliberations, where counsel tables will be placed, how to ensure that exhibits needed for cross-examination are kept secure until needed, whether counsel will be permitted to be present in the same room with witnesses who are being examined remotely, face covering and other PPE requirements for those in the courtroom, etc.”

While these procedures reflect a creative approach to trial practice, they are not one-size-fits-all. The court cautioned that they were “something of an experiment” and were tailored to this specific case. The court also warned that the August trial would be postponed if the court does not reach the jury-trial phase of its reopening guidelines by the trial date. Nevertheless, these procedures offer a useful glimpse into how patent trial practice may look in the federal courts as they begin to reopen.

USPTO Grants Additional COVID-19-Related Relief to Patent Applicants

On June 29, 2020, the United States Patent and Trademark Office (USPTO) issued another notice under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act to grant COVID-19-related relief to patent applicants. In issuing the notice, the USPTO recognized that some stakeholders, in particular small businesses and individuals, will require additional relief as the economy reopens.

Therefore, the notice grants extensions for payments of certain fees by small and micro entities. For small and micro entities only, application filing fees, issue fees or maintenance fees “due between, and inclusive of both, March 27, 2020, and September 29, 2020, will be considered timely if paid on or before September 30, 2020.” The USPTO will accept the late payment of fees as long as the payment includes a statement indicating that the delay was due to the COVID-19 outbreak. Continue Reading

SCOTUS Holds that ‘generic.com’ Trademarks Like Booking.com May Be Capable of Registration

Today, the Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V., holding “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” Justice Ginsburg delivered the majority opinion, in which justices Roberts, Thomas, Alito, Sotomayor, Kagan, Gorsuch and Kavanaugh joined. Sotomayor filed a concurring opinion. Breyer dissented, primarily over the role evidence of consumer perception should play in according a term generic status.

The definition of a trademark is a word or device that identifies goods or services as emanating from a single source. A descriptive term can acquire distinctiveness in the minds of consumers as designating a single source of certain goods and services. With that acquired distinctiveness, the term becomes eligible for registration on the Principal Register of the United States Patent and Trademark Office (USPTO). Continue Reading

Patent-demic: How COVID-19 Has Affected Patent Litigation

As it has almost every industry and business around the world, the COVID-19 pandemic has altered the practice of law. While these unprecedented times present myriad problems, patent attorneys are among the best equipped to adapt and embrace the changes. Because of the global nature of patent law, which often necessitates regular travel to appear in court, depose witnesses, meet with clients and/or engage in other face-to-face business endeavors, patent attorneys generally are accustomed to working remotely and relying on technology to operate their practice. As a result of procuring, protecting and promoting cutting-edge technology and innovations, patent attorneys often are also early adopters of products and services that eventually become essential business tools.

Technology like e-discovery and remote depositions enables attorneys to continue to work without disruption during the pandemic but still poses considerable obstacles. For example, conducting a deposition requires extensive coordination of and technological compliance from the witness, both sides’ attorneys, the court reporter and/or videographer, and any other necessary attendees. Specialized software is needed to reliably present exhibits, or alternatively, physical copies of all potential exhibits need to be sent to all parties prior to the deposition. Consequently, this may result in less-productive depositions because of an inability to cover as much material due to technical difficulties and/or to execute a strategy effectively in the intended manner. Continue Reading

USPTO Grants Relief for Patent Applicants Who Failed to Timely File Patent Applications Due to the COVID-19 Outbreak

The United States Patent and Trademark Office (USPTO) has again exercised its authority under the Coronavirus Aid, Relief, and Economic Security Act to grant patent applicants additional COVID-19 outbreak-related relief. In addition to the prior actions taken to help patent applicants, the USPTO has issued a notice granting relief also to applicants seeking to restore the right of priority to or benefit of a prior-filed foreign application.

To claim priority to or benefit of a prior foreign or provisional application, the nonprovisional application has to be filed within 12 months of the prior-filed application. After that period expires, applicants have an additional two months to file such an application “if the delay in filing the application … was unintentional.” 35 U.S.C. § 119 (a). To extend the statutory deadline, the USPTO requires a petition, with fees, asserting that the delay was unintentional. For design applications, the period for claiming foreign priority is six months, with the two-month extension available for unintentional delay. 35 U.S.C. §§ 119(a), 172. Thus, patent applicants failing to timely file patent applications, with a claim priority to or benefit of a foreign or provisional application, have a two-month grace period for a delayed filing if the delay in the filing was unintentional.

In its latest notice, the USPTO is granting additional relief to patent applicants for delayed filings of certain patent and international applications. For nonprovisional applications that were filed outside the 12-month window for claiming priority to or benefit of a prior foreign or provisional application, the USPTO is extending the two-month window and waiving the petition fee. The relief for nonprovisional applications is available for applications only when the 12-month period for claiming priority to or benefit of “ended between and inclusive of both March 27, 2020, and July 30, 2020.” For such applications, the two-month period for restoring the right of priority to a foreign application or the benefit of a prior-filed provisional application runs until the later of July 31 or the two-month period defined by statute. To be able to take advantage of this relief, the USPTO requires “a statement that the failure to timely file the application was due to the COVID-19 outbreak as defined in the USPTO’s notice of April 28, 2020.”

For delayed filings of international patent applications, the USPTO is not waiving the two-month period for restoring the right of priority. However, the petition fee is waived for international patent applications for which the period for the filing of the international application ended or will end between March 27 and July 30 only if a statement indicating that the delay was due to COVID-19 is filed.

Fast-Track Examination for COVID-19-Related Trademarks and Service Marks

The U.S. Patent and Trademark Office (USPTO) issued a notice on June 12 announcing a new, accelerated examination program for certain COVID-19-related trademark applications. The USPTO will begin accepting petitions for fast-track examination on June 16, 2020. This is great news for those developing and researching new products to help combat COVID-19.

Applications are typically examined in the order received, but under this new program, applicants can request an earlier initial examination by filing a Petition to the Director. The USPTO will waive the petition fees. The petition should be filed after the new application is filed, and if granted, the application will immediately be assigned for examination, which will expedite the examination process by about two months. Currently, examination typically takes around three months. Applicants can further expedite examination by immediately responding to any Office Action that is issued, despite having six months to respond. The 30-day publication for opposition period remains unchanged. Continue Reading

The Potential Patent Risks Associated with COVID-19 Collaborations

As researchers at universities and pharmaceutical companies rush to find treatments for COVID-19, new potential patent risks arise. While owners of existing patents that may be useful for COVID-19 treatments may have agreed to free up access to their patent rights through licensing or initiatives like Open COVID Pledge (U.S.) or the Open COVID-19 Declaration, the free access to these patent rights is only for the duration of the COVID-19 emergency or some specified period thereafter. Thus, COVID-19 treatments used outside those periods could result in patent infringement liability if such treatments read on claims of existing patents.

Most universities and companies have well-established procedures regarding the exchange of information and technology. These procedures often involve agreements vetted by in-house and/or outside counsel, with well-defined intellectual property rights clauses. Depending on the parties and the type of agreement, it may take time and significant resources to implement these procedures. Unfortunately, these well-established procedures may not necessarily be compatible with the aggressive timeline needed for COVID-19 treatment. Therefore, the accelerated speed of finding treatments for COVID-19 also may result in sidestepping these procedures for sharing results of research or even technology. The resulting lack of legal safeguards exposes the exchanging parties to a variety of potential legal risks.

For instance, if there is no patent ownership clause in place, one of the collaborating parties could file for a patent application without needing the other’s consent and without providing the other party any license to the technology in the patent. Without a clear definition of the scope of patent ownership, a dispute could arise in the future. Similarly, if there is no confidentiality agreement in place for a disclosure of information among parties, it is possible that such a disclosure would be considered a public disclosure, which may prevent the patenting of COVID-19 treatments.

Even if the parties are diligent about the patent rights, they still need to be cognizant of potential outside disclosures and/or patent filings. For instance, many jurisdictions require so-called foreign filing licenses for filing a patent application abroad. The penalties for failure to comply with such foreign filing licenses may be harsh. For example, in the U.S., under 35 U.S.C. § 185, failure to obtain a foreign filing license may result in a patent being invalid unless the failure to procure such license was in error and the patent does not implicate national security.

Furthermore, in the U.S. and other jurisdictions, new patent applications are publicly unavailable until 18 months from the earliest priority date (unless they grant as patents sooner). Therefore, there is always an 18-month window when it is not possible to identify patent applications that may be of concern. With the rush to find treatments for COVID-19, it is likely that a large number of patent applications are already on file that could be a concern for those trying to find treatments for COVID-19. Once these applications grant as patents, it is possible there will be a spike in infringement actions relating to COVID-19 treatments.

To minimize these risks, it would be best for universities and companies working on COVID-19 treatments to follow existing procedures, which may include consulting in-house or outside counsel. Companies working on COVID-19 treatments also may want to establish a rigorous patent publication-monitoring system to identify patents and patent publications of concern.

Child Artists, Rejoice: Federal Circuit Affirms Noninfringement and Invalidity Judgments Against Designer of Chalk Holders

The COVID-19 pandemic has caused sweeping changes to our daily lives and the way we interact with one another. Many of these changes have been rather unwelcome. But one pleasant change I have noticed is a significant increase in driveway chalk art. Children across the country now can rest easy knowing they have not infringed a design patent or a copyright by using plastic chalk holders that look like pencils.

Lanard Toys Ltd. is a toy company with design studios outside Los Angeles. In the early 2010s, Lanard designed and sold chalk holders to distributors such as Dolgencorp and retailers such as Toys ‘R’ Us. The chalk holders were designed to look just like No. 2 pencils. In an attempt to protect the design of its toy, Lanard sought and obtained a design patent (D671,167) and registered a U.S. copyright (Reg. VA 1-794-458). Continue Reading

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