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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THE DEFEND TRADE SECRETS ACT

By Michael Small The Defend Trade Secrets Act (DTSA) of 2016 has allowed the protection of trade secrets to expand towards the federal court system, making it one of the most dynamic changes to intellectual property protection in years (Goldman, 2015).  Signed in 2016 under the Obama Administration, the Act has provided an avenue for trade secret owners to use private federal lawsuits/court to challenge those that have allegedly stolen their trade secret.  Prior to this Act, only state law could have been applied to trade secret violations, with punishments/costs varying between state courts due to the protection granted by the Uniform Trade Secrets Act[1] (UTSA).  Both have set a foundation for trade secret definition and fines for conviction, but the DTSA grants more power for trade secret owners to protect their company’s profits. The DTSA builds upon the 1996 Economic Espionage Act (EEA), which specializes in dealing with industrial espionage.  It has intensified the fines for convicted trade secret appropriators

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Patent and Copyright Reform Update

by Michael Small Congressman Bob Goodlatte, Chairman of the House Judiciary Committee, has announced that he will reveal a number of proposals to take place through the year during his speech at the 115th Congress that would reform intellectual property, targeting patent litigation cases and the Copyright Office.[1]  This reform is built upon his reflection of what is hindering American business.  In his perspective, he argues that the rising number of regulations and ‘red tape’ placed on businesses are causing a greater hindrance on entrepreneurs and companies with regard to innovation and competition.  Therefore, he will put his focus on making America competitive again by making the legal system fair and efficient.  In particular, he emphasized on making it more difficult for lawyers to ‘game’ the legal system by discouraging abusive patent litigation cases or ‘truly frivolous lawsuits,’ from occurring or accumulating high damage costs, often caused by aggressive ‘patent trolls.’[2] One of the first proposals to reflect his speech

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New Defend Trade Secrets Act

By Samantha Leiner Congress added a new section to the federal criminal trade secret law enacted on May 11, 2016, which allows owners of a trade secret to now file a civil action for misappropriation of that trade secret.  See 18 U.S.C. § 1836(b). The new act is referred to as the Defend Trade Secrets Act of 2016 (DTSA).   Before the addition of the DTSA, trade secret misappropriation issues were governed by state laws, in which 47 states have adopted their trade secret laws from by the Uniform Trade Secret Act (UTSA).   The UTSA was published in 1979, and amended in 1985, in an effort to make the ever-growing state common law on trade secrets more uniform throughout the country.  The three states that have not adopted the UTSA are New York, North Carolina, and Massachusetts. While the DTSA and the UTSA share some common aspects, there are three major differences between them. Filing an Ex Parte Application for

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NantKwest, Inc. v. Lee

By Samantha Leiner   DISCUSSION ON STATUS OF CASE:  The only brief that has been filed in the Fed. Cir. regarding the appeal of the order on the Motion for Expenses by the Eastern District of Virginia is the Brief for Appellant filed by the PTO.  We are still waiting for the reply briefs by NantKwest, Inc. The Fed. Cir. has not heard oral arguments. ISSUE: Whether the phrase “all the expenses of the proceeding” in 35 U.S.C. § 145 includes the personnel expenses actually incurred by the PTO in defending the proceeding. FACTS: NantKwest, Inc. is the assigned owner of a patent application filed by a Dr. Hans Klingemann in 2001.  In 2010, an examining attorney rejected the application based on a finding of obviousness in view of two prior art.   In October 2013, the PTAB affirmed the rejection by the examining attorney. In December 2013, NantKwest filed its complaint in the Eastern District of Virginia under § 145,

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Trader Joe’s Co. v. Hallatt, 981 Fed. Supp. 2d 972 (W.D. Wash. 2013).

This case is currently awaiting a decision from the Ninth Circuit.  Case No. 14-35035. Facts and Procedural History: Trader Joe’s, a specialty United States (“U.S.”) grocery store, filed a Lanham Act trademark infringement and dilution action against Canadian grocery store owner, Michael Hallatt.  To stand apart from its competition in the U.S., “Trader Joe’s developed a rustic South Pacific-inspired theme.”  Brief for Appellant at 6, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Although Trader Joe’s has a website that displays its products, Trader Joe’s only sells its products at its retail grocery stores in order “[t]o maintain the exclusivity of its branded products.”  Brief for Appellant at 7, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Trader Joe’s has received several U.S. trademark registrations for its marks, including “the word TRADER JOE’S for retail store services in the field of specialty foods and beverages (Trademark Reg. No. 2,171,157); for processed foods (Trademark Reg. No. 1,424,176); and for beverages (Trademark Reg. No.

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India Patent Act Changes

By Julie Shursky Behind South Africa, India is managing the world’s second largest HIV treatment program.  In 2015, more than 900,000 patients received antiretroviral treatment in India.[1]  Despite the enactment of various government-funded health insurance programs and organizations to combat infectious and chronic diseases such as HIV/AIDS, the Indian government continues to struggle in financing adequate healthcare facilities for its citizens, causing a significant number of Indian citizens to “fund their health needs through out-of-pocket expenses.”[2]  In an effort to protect and manage its market, India enacted Section 3(d) and established patent laws that allow its government to grant compulsory licenses for pharmaceutical products. In an effort to increase the availability of low-cost drugs, the Indian Patent Act of 1970 (“1970 Act”) prohibited the patentability of pharmaceutical products.[3]  The 1970 Act, however, permitted patents on the manufacturing process of said products,[4] which led to the booming of India’s generic drug sector through capitalizing on innovation by multinational companies that were

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