The Sun Has Set on CBM Review

Earlier this month, on September 16, 2020, the Transitional Program for Covered Business Method (CBM) Review expired.[1] Enacted as part of the AIA and spanning eight years, CBM Review was promoted within Congress as a vehicle to challenge weak patents, i.e., patents that should not have been issued in view of the Supreme Court’s Bilski decision and, later, its Alice decision.[2] CBM Review was limited in duration and scope, and applied only to “covered business method[s]” while excepting “technological inventions.” In supporting those goals, CBM Review was utilized primarily within the financial industry, and permitted entities to challenge patents based on patent eligibility, unlike other post-grant tools that permitted only challenges based on prior art, such as ex parte reexamination and inter partes review (IPR).

CBM Review filings reached peak usage several years after being enacted. Continue Reading

Strategic Considerations for Participation in the USPTO’s COVID-19 Deferred-Fee Provisional Application Pilot

On Sept. 17, the United Patent and Trademark Office (USPTO) issued a notice implementing a deferred-fee provisional application pilot program for COVID-19-related technologies. The pilot is designed “[t]o disseminate information designed to combat COVID-19 on a more expedited basis while still securing rights for inventors.”

I. Fundamentals of the Pilot Program

Participation is limited to provisional applications concerning a product or process relating to COVID-19. “The product or process must be subject to an applicable FDA approval for COVID-19 use.” According to the USPTO, “[t]he requirement is broadly drafted to include any sort of FDA premarket regulatory review procedure.”

A. Requirements for Participation

To participate in the pilot program, the provisional application filing must include:

(1) A Certification and Request for COVID-19 Provisional Application Program (PTO/SB/452) form.

(2) A provisional application cover sheet, as required by 37 C.F.R. § 1.51(c)(1).

(3) A specification in DOCX format.

The USPTO mandates the filing of an electronic specification. “A submission that fails to include legible copy in DOCX will not be treated as a program submission, even if it is accompanied by form PTO/SB/452.” Continue Reading

Justice Ginsburg’s Dissents – in Patent Law

As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the justice was famous for her dissents on other issues, what about in patent law?

From Markman v. Westview Instruments (1996) (claim construction is a matter of law) to eBay v. MercExchange (2006) (an injunction is not automatic after a finding of infringement) to KSR v. Teleflex (2007) (changing the test for obviousness) to Alice v. CLS Bank (2014) (establishing two-part test for patent eligibility), Justice Ginsburg has been involved in 53 Supreme Court decisions relating to issues of patent law during her tenure, and most of the time she was with the majority. Her dissents were few and far between. She authored only two dissents, and joined the dissents in four other cases.

Continue Reading

Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition

While the UK formally left the EU on January 31, 2020, “Exit Day” will occur on December 31, 2020. Are your trademarks ready? This article provides a brief checklist of considerations as we approach the hard exit date at the end of this year.

  • For existing European Union Trade Mark (EUTM) registrations, each registration will be cloned out into a UK registration and given the prefix UK009 to signify that it is a comparable trademark of the existing EUTM. There will be no registration fees or action necessary for the cloned UK registrations to be effective; the renewal date for the UK registration will be the same as for the EUTM. For existing EUTMs currently in the renewal period, renew the case now so that you don’t end up paying renewal fees on both the EUTM and the corresponding UK registration after the first of the year.
  • For pending EUTM applications, if the application has not matured to registration as of Exit Day, applicants will have a nine-month period, or until August 31, 2021, to file a UK application based on the EU application and pay the normal UK application fee. Note that the UK application based on the EU application must have either the same or a narrower identification of goods and services. This process will allow the applicant to claim the filing date and priority date of the EU application.
  • For new applications, there is no longer enough time for EUTM applications to be examined and allowed before Exit Day. To achieve protection for both the EU and the UK, file in both the EU and the UK. It’s a good idea to file directly in the UK now as opposed to relying on a clone application right, as the fees are the same and there may be delays in processing and examination of new applications that are filed post-Exit Day. For Madrid Protocol applications, designate both the EU and the UK.
  • For existing EU designations of Madrid registrations, the EU right will be cloned out into a UK national registration, with no representative appointed. Registrants can retain UK attorneys to appoint themselves as the agent on the cloned registration (generally at no charge). The UK agent will need to fax the appointment request to the UKIPO, so it is wise to get out ahead of this now.
  • It is also a good time to assess where a UK clone registration may not need to be maintained due to, for example, the client already owning a national UK registration or a UK designation of a Madrid registration. This can be done when docketing the new case and noting future deadlines.
  • Regarding cancellations and oppositions, any EUIPO proceedings based solely on a UK right will simply cease to exist following Exit Day. A case may need to be initiated instead in the UK, depending on the circumstances.
  • For upcoming opposition deadlines in the UK, consider filing in advance of Exit Day if possible, due to the administrative burden that Brexit will cause at the UKIPO.

The UKIPO operates primarily by mail and fax filings, and so the challenges of importing 1.5 million EUTMs as clone UK registrations over the December holidays will be substantial.

Following Exit Day, trademark owners whose rights are implicated by Brexit also will need to ensure that trademark licenses and security interests are amended as necessary to account for the change in the territory of the EU and affirmatively recorded with the UKIPO; double-check that UK clone registrations contain accurate seniority information; and consider the effects of the use obligation of marks now that use in the UK will not defeat a nonuse cancellation in the EU and vice versa.

Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents

On Aug. 26, 2020, the United Kingdom Supreme Court issued a decision in Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37 that changes the landscape for patentees seeking to enforce standard essential patents, which are patents claiming inventions that must be used to comply with a technical standard. The U.K. Supreme Court held that U.K. courts have the jurisdiction to determine the terms of a global license directed at standard essential patents, including the royalty rates.

The decision involved appeals from three different actions involving standard essential patents relating to the telecommunications standards for 2G (GSM), 3G (UMTS) and 4G (LTE) telecommunications equipment and devices. Continue Reading

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a cancellation proceeding. Instead, all a petitioner must do is demonstrate “a real interest in the cancellation proceeding and a reasonable belief of damage.” Id. at p. 2.

In this case, the petitioner (“Australian”) first used the unregistered marks NAKED and NAKED CONDOMS during April, 2003 in the U.S. for condoms advertised and sold via its Australian website and shipped such goods to U.S. customers. The predecessor-in-interest for registrant (“Naked”), a U.S. company, was a junior user of NAKED for the same goods and filed an application to register the NAKED mark during December, 2003. Approximately two years later, Australian learned of Naked’s use of the mark and eventually contacted Naked. From latter July, 2006 to early 2007, the parties negotiated a settlement via E-mails. Not believing a settlement had been reached, however, Australian commenced a cancellation proceeding against Naked’s registration. Continue Reading

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

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