SCOTUS Holds that ‘’ Trademarks Like May Be Capable of Registration

Today, the Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. B.V., holding “A term styled ‘’ 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

Something on Which Even Patent Litigators Can Agree: McRO v. Bandai, Inc. Clarifies the Framework for Enablement Challenges and for Enablement Defenses

In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains both how to craft enablement challenges and also how to sidestep such challenges.

The claims at issue in McRO concerned “method[s] for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions.” At the district court, the defendants secured a summary judgment of invalidity by arguing that McRO’s claims lacked enablement because the claims covered two specific forms of animation that McRO’s specification did not teach how to make or use. On appeal, the Federal Circuit vacated the summary judgment of invalidity, clarifying several key points concerning enablement. Continue Reading

USPTO Further Extends Certain Patent Due Dates Only for Small and Micro Entities

Under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act, on March 31, 2020, the United States Patent and Trademark Office (USPTO) originally extended certain patent due dates falling between March 27, 2020, and April 30, 2020, by 30 days as long as a statement indicating that the delay was due to COVID-19 was filed with the response. On March 31, 2020, the USPTO issued another notice indicating that responses “due between, and inclusive of both, March 27, 2020 and May 31, 2020, will be considered timely filed if filed on or before June 1, 2020 providing that the filing or payment is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak …” Both of these extensions of due dates were available to all patent applicants and patent owners. Continue Reading

Can a Good Deed Ever Go Unpunished? Patent Infringement Considerations for Technologies Used to Combat COVID-19

With the COVID-19 outbreak, institutions and corporations are scrambling to develop and produce COVID-19 tests and cures, while at the same time hospitals are facing a lack of personal protective equipment (PPE) and lifesaving medical devices such as ventilators.

Major companies are using their large-scale production capabilities to mass-produce products for hospitals. For example, some companies are teaming up to manufacture large numbers of transparent face shields, while others are switching production at their factories to produce ventilators. Even without access to factory-scale resources, individuals and small companies are contributing to help remedy the lack of PPE and medical devices through the use of additive manufacturing, also known as three-dimensional printing (3DP). Continue Reading

No Luck Needed for Lucky Brand at the Supreme Court

The Supreme Court yesterday issued its second trademark decision of this term.

In Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., Case No. 18-1086 (S. Ct. May 14, 2020), the ultimate question before the Court was the applicability of “defense preclusion.” Specifically, the Court considered whether and under what circumstances a defense may be barred in subsequent litigation between two parties. In a unanimous decision, the Court held that any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Namely, the causes of action must share a “common nucleus of operative facts” for a defense to be precluded.

This case was the latest twist in nearly 20 years of trademark litigation between Lucky Brand and Marcel Fashions Group involving the parties’ “Lucky” trademarks. In the first case, brought in 2001, Marcel sued Lucky Brand alleging that Lucky Brand’s use of the phrase “Get Lucky” infringed its registered trademark for GET LUCKY. That case resulted in a settlement agreement in which Lucky Brand agreed to cease use of the phrase “Get Lucky,” while Marcel agreed to release any claims regarding Lucky Brand’s use of its own trademarks. Continue Reading