Imagine That IP Law Blog

In the case of In re Cellect, the Federal Circuit upheld a United States Patent and Trademark Office (USPTO) decision that the patentee’s (Cellect’s) patents were unpatentable due to Obviousness-type Double Patenting (ODP). In reaching its decision, the Court ruled that Patent Term Adjustments (PTA) and Patent Term Extensions (PTE) should be treated differently when considering ODP.

In particular, the Court held that when different patent family members have different expiration dates based on PTA, the patent family members that expire on an earlier date can be relied upon ... Read More ›

In the United States, trademark rights flow from use, not registration. A business may be afforded a certain level of trademark protection in its geographic area simply by being the first to use a mark in commerce in connection with its goods or services. However, any unregistered or “common law” rights may be limited geographically. There are critical differences between common law trademark rights and trademark rights obtained via a federal trademark registration with the United States Patent and Trademark Office (USPTO). As discussed in this article, priority battles can ... Read More ›

In patent law, the doctrine of “assignor estoppel” refers to barring a party who assigned a patent from later challenging the validity of the patent. Assignor estoppel is an equitable doctrine that has been relied upon in order to prevent someone who has assigned the rights to a patent (or patent application) from later contending that what was assigned was, in fact, worthless. The doctrine has been applied to not just inventors, but also parties in privity with the original inventor, such as a corporation founded by the inventor. Essentially, the doctrine of assignor estoppel is ... Read More ›

On October 17, 2020, the Chinese Legislature passed the Fourth Amendment to the China Patent Law, which will take effect on June 1, 2021. The Fourth Amendment marks the first major change in Chinese patent law since 2008. These changes will have a major impact on both prosecution and enforcement. Key amendments include those related to patent terms, damages, and licenses. Below is a summary of a few of these key amendments.

New Article 20 adds a “Good Faith” provision which reads, in part, “patent rights shall not be abused to harm public interests or the legitimate rights and ... Read More ›

The Administrative Office of the United States Courts announced new security procedures to protect confidential filings on Wednesday, January 6, 2021. The changes come in the wake of a massive cybersecurity breach identified in December 2020. The breach involved a known compromise of third-party provider products, and has affected a number of federal agencies, including the Departments of Energy, Commerce, State, and Treasury. The Judiciary uses an impacted product for IT network monitoring and management and; consequently, its online filing system has been jeopardized.

In ... Read More ›

Significant intellectual property law provisions are part of the $2.3 trillion spending bill passed by Congress.

Copyrights

In the copyright area, the Protecting Lawful Streaming Act of 2020 is directed to curbing "commercial, for-profit streaming piracy services" that profit from streaming unlicensed or otherwise illegally copied copyrighted material. Penalties could include significant fines and imprisonment. The law currently has a carve-out for "individuals who access pirated streams or unwittingly stream unauthorized copies of copyrighted works.”

The new laws ... Read More ›

On Thursday, April 23, 2020, in the case Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court held that the statutory provision governing remedies for violations in the Trademark Act, §1117(a), does not require a showing of willfulness in order for a plaintiff to recover profits in an infringement action arising under Trademark Act, 15 U.S.C. § 1125(a). This decision could tip the scales in favor of trademark owners.

The case involved a fastener manufacturer, Romag, that originally contracted with Fossil, to allow Fossil to use Romag’s magnetic snap fasteners for ... Read More ›

Under 35 U.S.C. § 171 of the Patent Act, patent protection is provided for a “new, original and ornamental design for an article of manufacture.” Design patents cover the appearance of an article of manufacture. Design patents have been used to obtain patent protection on the appearance of articles including hair scrunchies, sneakers, paintball goggles, and almost any other consumer product one can think of.

Design patents are essentially comprised of a title, drawings, and a description of the drawings. In design patents, unlike utility patents, the claimed scope is defined ... Read More ›

While it is sometimes the case that intellectual property lawsuits involve subject matter that is overly technical or perhaps difficult to relate to, there are times when these lawsuits involve subjects from popular culture that capture the imagination. That is just the case with two recent lawsuits, one involving a beloved figure in Philadelphia sports, and the other focused on the Old Spice commercial jingle.

The subject matter of The Phillies, L.P. v. Harrison/Erickson, Incorporated et al, 1:19-cv-07239 (August 2, 2019), pending in the U.S. District Court for the Southern ... Read More ›

On January 22, 2019, the United States Supreme Court ruled that the sale of an invention to a third party who is obligated to keep the invention confidential may place the invention “on sale” for purposes of the Leahy-Smith America Invents Act (AIA). The case is Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. With this decision, the Supreme Court answered a question about the “on-sale bar” to patentability that has lingered since the enactment of the AIA in 2011.

Prior to the AIA, it was settled law that a sale embodying an invention, whether public or private ... Read More ›

In a step toward consistent interpretation of patent claims before federal courts and the Patent Trial and Appeal Board (PTAB) during post-grant proceedings, today the United States Patent and Trademark Office (“USPTO”) published a final rule revising the claim construction standard used during proceedings established by the Leahy-Smith American Invents Act (“AIA”).

Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42)Read More ›

The United States Supreme Court today (June 22, 2018) ruled that a plaintiff in a patent case can recover damages for foreign sales, under certain circumstances. The case is WesternGeco LLC v. ION Geophysical Corporation, 2013-1527, 2014-1121, 2014-1526, 2014-1528.

WesternGeco LLC originally sought to recover damages for patent infringement based on Ion Geophysical Corp.’s sales of product components shipped outside the United States. The plaintiff argued that the Patent Act provided for recovery against patent infringement related to the supply of components of the ... Read More ›

On March 21, 2018, a split Ninth Circuit Court of Appeals handed down a verdict confirming copyright infringement in the case of the song “Blurred Lines,” and the decision left many in the music community “all shook up.” The song, recorded in 2012 and released in 2013, hit number one on the Billboard Top 100 songs in 25 countries and became a best-selling single with more than 14.8 million sales. It was also nominated for Record of the Year and Best Pop Duo/Group Performance at the 2013 Grammy Awards.  As the song rapidly climbed the charts, media interest in the song grew due to its ... Read More ›

March’s arrival signals the onset of Spring and college basketball bracket battles. The three-week basketball tournament gradually whittles 64 teams down to two for a final showdown. It may come as a surprise to fans to learn that the tournament has not always been known as “March Madness” and the National College Athletic Association (NCAA) is not the first organization to use the term. This is particularly surprising given that “March Madness” is the NCAA’s biggest money maker, reaping 85 percent of the organization’s yearly budget.¹ That revenue is made ... Read More ›

Benjamin Franklin is credited with coining the axiom that "an ounce of prevention is worth a pound of cure." Allegedly, Franklin actually made the statement in connection with fire safety, which was an avocation for him. Today, the axiom applies perfectly to corporate efforts to manage intellectual property (IP) issues. Many companies rely on old proprietary rights forms or use generic forms collected by the human resource department (HR) with little thought given to downstream consequences.

This article advocates for having in-house or retained counsel make periodic reviews of ... Read More ›

Propagating news program clips online, such as on social media including Instagram and Twitter, just became more difficult.

On Tuesday, February 27, 2018, the United States Court of Appeals for the Second Circuit handed down a decision holding that TVEyes, a search engine for video clips obtained through media-monitoring, was in violation of copyright law for unlawfully re-distributing the copyrighted work of others.¹ The decision reversed a 2014 holding by the District Court that the service was protected by the doctrine of fair use and as a result, has the potential to ... Read More ›

With each Olympics, the iconic five interlocking rings and Team USA paraphernalia are inescapable. The high profile and high profit marks are tenaciously protected both on an international and national stage.

The International Olympic Committee (IOC) and the United States Olympic Committee (USOC) earn billions of dollars worldwide through licensing use of their iconic rings, name, athletes’ images and other trademarks. In fact, being a top sponsor of the Olympics can cost a company hundreds of millions of dollars. Panasonic paid a cool $350 million in 2016 for an eight-year ... Read More ›

Many consumers and companies are familiar in some form or another, but until a recent Federal Circuit ruling, companies and individuals looking to pursue tongue-in-cheek or risqué marks faced an uphill battle in obtaining federal trademark registrations. On December 15, 2017, the Federal Circuit ruled in In re Brunetti¹ that the bar on registering immoral or scandalous trademarks under the Lanham Trademark Act, Section 2(a), 15 U.S.C. § 1052(a), “is an unconstitutional restriction of free speech.”

Appellant, Erik Brunetti, founded the clothing brand “fuct” in ... Read More ›

THE COLLABORATIVE SEARCH PILOT PROGRAM

In an attempt to expedite and promote the quality of patent application examination, the United States Patent and Trademark Office (USPTO) began a Collaborative Search Pilot (CSP) program in partnership with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). The program is designed to provide USPTO examiners with the best prior art by collaborating with examiners at the JPO and KIPO that are examining corresponding Japanese and Korean patent applications.

In the initial CSP program, examiners shared and ... Read More ›

Every so often, intellectual property law leaps from the backrooms of scientific exploration, labs ripe with technological advancement, or the worn desks of learned men and women, into social consciousness via an unwitting member of pop culture’s elite. Celebrities, the cult of personality that surrounds them, and the brands they establish, are still subject to the same rules of intellectual property law as less-known inventors, authors and developers. The nature of being in the public eye, and ownership of personal brands, can sometimes prove headache-inducing for the ... Read More ›

Since the passage of the Leahy-Smith America Invents Act (“AIA”), it has been extremely difficult, if not impossible, for a patent owner whose patent is challenged in an inter partes review (IPR) to amend the challenged claims. As of April 30, 2016, the Patent Trial and Appeal Board (PTAB) had completely denied 112 of 118 patent owner motions to amend and partially denied motions to amend in four of the six remaining IPRs.

Today’s en banc decision by the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. U.S. Patent and Trademark Office, Case No ... Read More ›

On Tuesday, May 30, 2017, the United States Supreme Court issued another unanimous decision in an intellectual property appeal. In Impression Products, Inc. v. Lexmark International, Inc., No. 15–1189, the Supreme Court ruled that (i) a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose, and (ii) an authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act.

The case at issue involved toner cartridges. The patent owner ... Read More ›

The United States Supreme Court issued its opinion in the much-anticipated TC Heartland LLC v. Kraft Foods Group Brands LLC case, No. 16–341, on May 22, 2017.

Under the unanimous decision, the term “reside[nce]” in the federal venue statute refers only to the state of incorporation of a U.S. corporate defendant in a patent lawsuit. This holding could eliminate the “forum shopping” that brings many defendants to particular courts.

The TC Heartland case considered the proper venue for patent cases as codified in 28 U.S.C. § 1400(b). Section 1400(b) limits venue to judicial ... Read More ›

The Supreme Court issued a decision today removing the laches as a defense to patent infringement. The case is reported at SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, et al., Slip. Op. No. 15–927 (March 21, 2017).

Historically, laches is an equitable defense to patent infringement, based upon an unreasonable and prejudicial passage of time in bringing a lawsuit. Thus, if a patent owner knew of an alleged infringer for a long period of time, an accused infringer could argue that the patent owner waited too long to sue for patent infringement and that the ... Read More ›

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their ideas.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that ...

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their idea.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that ...

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their idea.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that ...