July 15th, 2015 By Michael Stein As people in the patent field know, patent appeals from an examiner’s final decision can take a significant amount of time, even years, with there being a large backlog of patent applications on appeal before the PTAB. In a just issued notice, the USPTO has recently launched a new pilot program that will permit appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (PTAB) to expedite review of one appeal in return for withdrawing another appeal. This pilot program offers a number of advantages, at least from the USPTO’s vantage point, while being simple to use. The advantages set forth by the USPTO are: 1. the Expedited Patent Appeal Pilot allows appellants having multiple ex parte appeals currently pending to have greater control over the priority with which their appeals are decided; 2. reducing the backlog of appeals pending before the PTAB; and 3. permit an appellant having multiple
By Dennis W. Collins This is the first installment of a three part series on the patent reform bills that are currently being debated in Congress. One of the most discussed bills that is being pushed through the House of Representatives is the Innovation Act. The Act was originally introduced by Representative Bob Goodlatte (R-VA) in the 2013 Congress, where it passed through the House, but failed to pass in the Senate. The Act was reintroduced into the current 2015 Congress by Goodlatte (R-VA) and passed by the House earlier this month with little controversy. This Act is being used to change the patent litigation environment in order to limit the prevalence of Non-Practicing Entity’s (NPE) or more popularly known, “patent trolls.” These NPE’s are companies that do not use their patents for anything other than to demand licensing fees for the patents, or threaten lawsuits. Several major corporations, like Apple and Google, who are strongly advocating for the Innovation
Written by Dennis Collins On March 2, 2015, the Federal Circuit ruled that when using a service trademark, the “mere intent to use” was not “actual use in commerce”. In the case Couture v Playdom, Inc. 778 F.3d 1379, the court held that merely offering to provide a service does not support the “actual use” basis when filing during the application process. In 2008, the Plaintiff, David Couture, applied to register the mark “Playdom” for as he described, “educational and entertainment services”. He filed his application under the Lanham Act, 15 U.S.C. 1051 Section 1 (a), which requires that the applicant establish the mark is being “used in commerce” in order to receive approval from the United States Patent and Trademark Office (USPTO). Use in commerce includes any tangible evidence of the mark having been a part of any transaction. By contrast, intent to use, as defined by the Federal Circuit, is having the plan of immediate use after receiving
Written by Dr. Sinai Yarus On April 10, 2014 the Patent Trial and Appeal Board (PTAB) of the USPTO decided the Electronic Frontier Foundation v Personal Audio LLC inter partes review case. Personal Audio LLC is an offshoot of Personal Audio, Inc. which developed an audio player that could download, store and manipulate audio files. The Personal Audio patents issued starting in 1998. Personal Audio, LLC asserts the patents. The International Trade Commisssion has ruled (in an unrelated case) that significant licensing efforts in the US constitute a “domestic industry” worthy of protection. The Electronic Frontier Foundation (EFF) is a nonprofit organization which describes itself as “defending civil liberties in the digital world”. EFF says that it engages in impact litigation, policy analysis, grassroots activism, and technology development. EFF favors open source software. Both Personal Audio and EFF are virtually immune from counter-suits because neither one of them sells a product. Personal Audio is a classic non practicing entity (NPE;
Written by Daniel DeLuca B&B Hardware, Inc. v. Hargis Industries, Inc. Case Summary: The trademark dispute between B&B Hardware, Inc. (“B&B”) and Hargis Industries, Inc. (“Hargis”) has been ongoing for over a decade. Plaintiff B&B registered their SEALTIGHT mark with the PTO in 1993. B&B had produced fasteners for various uses within the aerospace industry under this mark for a few years before registration. Hargis produces self-drilling screws for which they tried to register the mark SEALTITE in 1996. Hargis was ultimately unsuccessful in its attempt to have the B&B mark canceled. The USPTO published the SEALTITE mark for opposition in 2002. Shortly thereafter, B&B instituted an opposition claiming that there was likely to be confusion between the proposed Hargis mark and their own SEALTIGHT mark. By the end of the process, the TTAB found that the marks were confusingly similar and ultimately sustained B&B’s opposition and denied the Hargis mark registration. Shortly before this result, B&B had initiated a suit
Written by Daniel DeLuca In December 2014, the United States Patent and Trademark Office (USPTO), in view of recent case law and comments, updated the guidelines that their examiners use to determine subject matter eligibility under 35 U.S.C. 101. Following the major changes found in the June 25, 2014 update (incorporating Alice Corp. v. CLS Bank International) and the March 4, 2014 update (incorporating Mayo Collaborative Services v Prometheus Laboratories, Inc. and Association for Molecular Pathology v. Myriad Genetics), the most recent update contains noticeably less change. The most notable change in the December guidelines concerns the analysis for products of nature. For nature-based products one must compare the nature-based limitations and their naturally occurring counterparts in their natural state. If after this comparison, a “markedly different” characteristic was found, then the product will be patent eligible. Under the March 2014 Guidelines, only structural changes were sufficient to show a marked difference. The most recent December 2014 guidelines have revised
Written by Tom Matikainen The United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs on February 13, 2015 with the WIPO. The Hague Agreement took effect on May 13, 2015, and enables inventors of industrial designs to file a single standardized application with the USPTO to apply for a design patent in each of 62 territories that are members of the Agreement. Such an Agreement will make it so much easier for inventors to seek design patent protection in many countries outside the US, thereby reducing costs and time to acquire foreign protection. Plus, international design patent applications filed on or after May 13, 2015 will have a term of 15 years, instead of the current 14 year term
By Evan Jensen The modern industrialized economy is a fascinating experiment because never before in history have so many people been so productive. The scientific method, objective metrics of efficiency, mass production, information technology, flight, the list goes on of new capabilities and methods that have arisen fairly recently on the timescale of human civilization. But today’s economy is so productive that it suffers from a surplus of workers, making it difficult for many people to earn a living. Which means we have to ask the question- does innovation lead to prosperity for everyone, or does innovation cause centralization of wealth because of automation and offshoring?
By Evan Jensen The patent system is a complex and sometimes controversial aspect of the American economic, technological, and legal systems. I will attempt to explain why both sides of the controversy; both the ‘pro-patent’ and many of the so-called ‘anti-patent’ advocates are actually substantially in agreement, but prefer different strategies for dealing with collective action problems.
By Evan Jensen The Aereo decision gives the impression of the Supreme Court twisting itself into knots to find a reason why Aereo is infringing. And ultimately the Court decided to help broadcasters kill off the competition, rather than push broadcasters to innovate. On June 25 the Supreme Court’s decision in the ABC v Aereo case came down. The Supreme Court sided with ABC and the other broadcasters against Aereo. In its opinion, the Court held that Aereo’s transmissions are public performances and that therefore Aereo is infringing on copyrights owned by ABC and the other petitioners.