America runs on just Dunkin’

By Pablo N. Garcia Rodriguez and Carla Vercellone It was 1950 in Quincy, Massachusetts, when Bill Rosenberg founded “Open Kettle”, a coffee and doughnut shop later renamed as “Dunkin’ Donuts” [1] . But that has changed in 2018, and after 68 years of using this name, one of the biggest food chains in the world is changing and dropping its last name, resulting in just Dunkin’. The brand has received mixed reactions from confused consumers and fans from across the world (see at the end of this post). Last year’s opening in Pasadena, Calif. of the first store with what is the brand’s new name today, meant a change was coming for its loyal consumers. Rumors had been swirling around about a new name, but it wasn’t until January 2018 that the coffee and food chain made a move and filed a new trademark application (87768615) with the United States Patent and Trademark Office (‘USPTO’) for goods such as hats,

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Net Metering

By Pablo N. Garcia Rodriguez Nowadays renewable energies are a popular topic due to the benefits that they provide for our environment and our health. Moreover, 15 years ago, a new mechanism was implemented in the United States which enables people to get money from using alternative ways of energy. This is Net Metering. Its first implementation was in 2003 but, as it was a new technology, it was not allowed in several states. Today, considering that this system has improved people’s lives economically, new regulations allow its use in 38 states plus D.C. The chart below shows Net Metering increasing since 2003 to 2010. Chart from Eia.Gov, 2018, https://www.eia.gov/todayinenergy/detail.php?id=6270. The following presentation is to provide an understanding of the basics of Net Metering and to present some existing policies that regulate this mechanism in the states of Delaware, Maryland, New Jersey and Washington D.C.

The Music Modernization Act: A Step Forward In Today’s Music Industry

By Carla Vercellone The “Big Music Bill”, also referred to as the Orrin G. Hatch–Bob Goodlatte Music Modernization Act, the Music Modernization Act (‘MMA’) or the Musical Works Modernization Act, is a piece of legislation that was introduced by Senator Hatch (R-Utah) and Senator Alexander (R-Tennessee) earlier this year. It was passed unanimously by both chambers this past month of September and was sent to President Trump’s office on September 25th , giving him 10 days to sign the bill after receiving it, or veto it, and turn it into law. If  he chooses not to sign the bill within these 10 days (including weekends), and Congress is in session, the bill will automatically become law. This act is a reform to the Copyright Act of 1976 §115 and §114 (i). The bill aims to solve the current problem of unmatched works, so that digital music providers are protected from liability and songwriters are given the royalties they deserve (more

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Lost Profits Arising from Foreign Sales: WesternGeco LLC v. ION Geophysical Corp.

By Alex Rhim Summary: The US Supreme Court held in favor of Petitioner WesternGeco LLC (“WesternGeco”) on the issue of whether 28 U.S.C. § 271(f)(2) (2010) and 28 U.S.C. § 284 (2012), taken together, entitled damages award for lost foreign profits against Respondent ION Geophysical Corp. (“ION”). Since the Court found that the combined focus of the two statutory provisions recognizes inclusion of foreign lost profits resulting from a domestic infringement, WesternGeco was entitled to damages award.  Facts: ION manufactured and shipped components to companies abroad. The shipped components were assembled by those foreign companies after shipment into a system used to survey the ocean floor. This system was indistinguishable from patents owned by WesternGeco.  Procedural History: WesternGeco sued ION for patent infringement under §§ 271(f)(1) and (f)(2) in the United States District Court for the Southern District of Texas. The jury found ION liable and awarded WesternGeco damages of $12.5 million in royalties and $93.4 million in lost profits

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PCT Collaboration Search and Examination Pilot Effective July 1, 2018

By Michael Stein A new pilot program, the Collaborative Search and Examination (CS&E) under the Patent Cooperation Treaty began effective July 1, 2018, with the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIP), collectively known at the IP5 offices, participating in the program. Instead of other similar pilot programs, applicants will select international patent applications to be handled under the CS&E.  A first, only international applications filed in English will be accepted.  After some time, international authorities that work in languages other than English will begin to accept patent applications in those other languages into the pilot program. Under the pilot program, an examiner of the IP5 office selected as the International Search Authority (ISA) will perform a search and examination, to generate a provisional international search report and written opinion.  Examiners

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Claim Construction By Federal Circuit In Owens Corning v. Fast Felt Corp.

By Michael D. Stein   The Federal Circuit in Owens Corning v. Fast Felt Corporation, 2016-2613 (Fed. Cir. 2017) reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650, providing additional guidance on claim construction.  In the Final Written Decision, the Board found that all of the elements of the independent claims of US Patent 8,137,757 are disclosed in Lassiter when combined with either Hefele or Eaton, contrary to Fast Felt’s assertions.  But the Board also found that Owens Corning failed to show that a skilled artisan would have combined Lassiter with Hefele or Eaton.  Thus, the Board rejected Owen’s challenges to claims 1, 2, 4, 6 and 7.  The Final Written Decision hinged on the scope of the phrase “roofing or building cover material.” In the claim construction analysis, the Board construed the claim term “roofing or building cover material” to mean base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating

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Expanded Collaborative Search Pilot Program

by Michael D. Stein Beginning November 1, 2017, the United States Patent and Trademark Office (USPTO) is participating in a new, expanded Collaborative Search Pilot Program in which applicants may request that multiple partnering Intellectual Property (IP) offices exchange search results for their corresponding counterpart applications before producing and issuing their office actions.  In Expanded CSP, each designated partner IP office will independently conduct a prior art search for its corresponding counterpart application.  The search results will then be exchanged between the designated partner IP office(s) and the USPTO before any IP office offices issue an office action.  A copy of the Notice in the Federal Register is attached herewith.   Initially, under the Collaborative Search Pilot Program (CSP) which began on August 1, 2015, only the Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO) were participants.  And the applicants had to follow the First Action Interview Pilot Program (FAI).   Under the Expanded Collaborative Search Pilot Program

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Lee v. Tam – Disparaging Mark or Free Speech? – Pending Decision

By Michael Small   Section 2(a) of the Lanham Trademark Act, 15 U.S.C. §1052(a) allows the United States Patent and Trademark Office (USPTO) to refuse registration of marks that contain immoral or scandalous matter.[1]  Known as the disparagement clause, the USPTO enforces the rule in the Trademark Manual of Examining Procedure (TMEP) Section 1203.01, specifying the types of rejected marks that fall under immoral or scandalous nature, such as obscene graphics or disparaging terms.[2]  Examples of rejected trademark applications include the following: Stop the Islamisation of America; Democrats Shouldn’t Breed; Naturally Intelligent God Gifted Africans; and most recently, the cancellation of the Washington Redskins NFL football team’s trademark name in 2014.  Rejected trademarks are void from government benefits, such as preventing registration from other confusingly similar marks during the application process, receiving sole ownership of the mark for advertising purposes, and prevent foreign companies with similar marks to import their trademarked goods.  In the pending U.S. Supreme Court case Lee

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Star Athletica v. Varsity Brands – Supreme Court Ruling’s Impact

By Michael Small   In a recent Supreme Court case regarding the compatibility between clothes and copyright, Star Athletica v. Varsity Brands, the justices ruled in favor of Varsity Brands in a 6-2 decision, holding that the Defendant’s cheerleading uniform designs are protectable under copyright because they were deemed conceptually separable[1] from the uniform.  This decision answered the question brought to them by Star Athletica’s petition,[2] to which they state the following regarding the compatibility of copyright on clothes using the conceptual separability test: A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.[3] When placed into

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Fair Use Doctrine

By Michael Small   The Copyright Office defines Copyright as the exclusive right for a person (mainly the author) to reproduce, publish, sell, or claim ownership of his or her original works of creation under Section 106 of the Copyright Act of 1976.[1]  The copyright symbol (©) identifies the work as protected to the copyright owner and the audience.  This intellectual property right grants protection to the author’s creative works such as literature, music, drama, arts, or architecture upon the creation of his or her product in a fixed media.  This protection remains valid until the owner’s death plus 70 years.  Afterwards, the work becomes public domain, which allows for anyone to use the work for any purpose.  However, to prevent potential conflict with the First Amendment’s grant of freedom of speech, religion, and the press, the court created the fair use doctrine as a check and balance to copyright’s power. The Fair Use Doctrine is a declaration that allows

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