President Trump’s Continued Focus on Counterfeit Goods

On Oct. 13, President Donald Trump signed a “Memorandum on Stopping Counterfeit Trafficking on E-Commerce Platforms Through Fines and Civil Penalties.”[1] This memorandum builds on his prior Jan. 31 executive order, discussed in the first article of this series, on the increased focus in 2020 on combating the sale of counterfeit goods.

The president’s latest memorandum seeks to focus enforcement efforts on e-commerce platforms selling counterfeit goods. As part of this policy, he aims to “pursue legislation that would clarify and strengthen the executive branch’s authority and increase its resources to deter and address counterfeit trafficking on e-commerce platforms.”[2] The memorandum implores the secretary of Homeland Security and the attorney general to consider taking appropriate actions to seize counterfeit goods imported into the United States in connection with a transaction on an e-commerce platform and impose the maximum fines and civil penalties permitted by law on any e-commerce platform that is in any way connected to the importation. Additionally, the president directs the secretary of Homeland Security, consulting with the attorney general, to develop a legislative proposal to promote the objectives of the memorandum within 120 days. The proposal will therefore be due on or before Feb. 10, 2021.

The SHOP SAFE Act, discussed in our previous article, is still currently before the House Committee on the Judiciary. This bill also seeks to hold e-commerce platforms liable for the sale of counterfeit goods on their sites. It will be interesting to see whether the secretary of Homeland Security puts forth a similar proposal to the SHOP SAFE Act or one that is broader in scope and seeks harsher penalties. Under the current draft of the SHOP SAFE Act, an e-commerce site is only liable if it fails to adopt the 10 best practices and the counterfeit goods are ones that implicate health and safety. The secretary’s proposal could extend a similar type of legislation to all counterfeit goods given the policy outlined in the Memorandum of including intellectual property rights holders, businesses and workers in the list of individuals it seeks to protect. Stay tuned for an article on the proposal once it issues.

[1] https://www.whitehouse.gov/presidential-actions/memorandum-stopping-counterfeit-trafficking-e-commerce-platforms-fines-civil-penalties/

[2] Id.

The Legislative Branch’s Answer to Stopping Counterfeit Goods: The SHOP SAFE Act

This post is the second in our ongoing series on the heightened focus in 2020 on combating the sale of counterfeit goods. Our first article focused on the actions of the executive branch, while this article discusses the actions of the legislative branch in the fight against the sale of counterfeit goods.

In early March, a bipartisan bill was introduced in the House of Representatives aimed at curbing the sale of counterfeit goods online.[1] The bill is titled “Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act of 2020,” or the SHOP SAFE Act of 2020 for short. The legislation is currently pending before the House Committee on the Judiciary and aims to address the wide array of counterfeit products being offered for sale on third-party marketplace platforms. This act comes on the heels of the Jan. 31 executive order issued by President Donald Trump that called for a crackdown on companies that import or facilitate the import of counterfeit goods.[2] Continue Reading

Wielding Trademark Rights to Fight COVID-19 Scams

Trademark owners are wielding their intellectual property rights to stop COVID-19 scams and prevent the spread of misinformation about the ongoing pandemic. With the injunctive power of the Lanham Act, medical supply companies, software companies and even educational institutions are able to quash scams and misinformation.

Earlier this year, 3M launched what has grown into a widespread campaign of almost two dozen lawsuits targeting price gougers for infringing its trademark rights. Third parties unassociated with 3M were charging exorbitant prices for their inventories of 3M products. These scammers use 3M’s trademarks to make offer sheets and price lists appear legitimate. Several of these lawsuits successfully, and quickly, enjoined these third parties from continuing to sell 3M products using 3M’s trademarks. Continue Reading

Supremes Won’t Review the Morality of Whitewashing Graffiti Art

Too bad that on Oct. 5 the Supremes passed on applying a due process determination to define the “recognized stature” of art. The Visual Artists Rights Act of 1990 (“VARA”) gave visual artists limited “moral rights” in their creations. The primary right is one of “integrity,” or preventing the alteration or destruction of a copyrighted visual artwork. Artists, after all, suffer a blow to their reputation when their creations are removed or destroyed. Further, those of a decided secular, and especially European, mindset for generations substituted artistic enthusiasm for religious fervor. Top artists were viewed as merging their personas with their works. Destroying art killed a piece of a sensitive soul.

Conservatives such as C.S. Lewis and Paul Johnson, though, traced the point at which Western civilization began declining to the point at which art no longer depicted nature. The tacit observation was that a society abandoning objective standards for subjective tastes is a society in decline. Real property owners, either later purchasers of the property or disappointed commissioners, sometimes later wish to have visual art such as mosaics removed. Society’s tastes ineluctably shift with time. Continue Reading

Moderna’s IP Vault Paves the Way for COVID-19 Treatments

On Oct. 8, Moderna, Inc., issued a statement on intellectual property matters during the COVID-19 pandemic. In the statement, Moderna acknowledged the importance of the role of intellectual property “in encouraging investment in research.” Nevertheless, Moderna feels it has a special obligation to allow others access to its patented technologies; accordingly, Moderna indicated that it will not enforce COVID-19-related patents during the pandemic and that it is willing to license its patents.

“We feel a special obligation under the current circumstances to use our resources to bring this pandemic to an end as quickly as possible. Accordingly, while the pandemic continues, Moderna will not enforce our COVID-19 related patents against those making vaccines intended to combat the pandemic. Further, to eliminate any perceived IP barriers to vaccine development during the pandemic period, upon request we are also willing to license our intellectual property for COVID-19 vaccines to others for the post pandemic period.” Continue Reading

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 grace period for renewal, 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

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