MVS Filewrapper® Blog: U.S. Takes Final Steps in Joining International Industrial Design System

Post by blog staff

The Hague system for registration of industrial designs offers applicants the potential for obtaining protection in a number of member countries and intergovernmental organizations by means of a single international application.  The system offers possible increased filing efficiencies and cost savings in pursuing protection for designs.

On February 13, 2015, the USPTO announced that the United States had deposited with the World Intellectual Property Organization (WIPO) its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, representing the last step for the United States to join the Hague system. As a result, the treaty, which has already been ratified but not put into law, will go into effect in the U.S. on May 13, 2015.

As discussed in a prior blog post, the proposed rules will allow applicants to file a single international design application, potentially seeking protection of their industrial design in more than 40 countries. U.S. applicants would be able to file their applications with the USPTO as an “indirect filing” and the USPTO would then transmit the application to WIPO for review. The USPTO will continue its examination of design applications and grant patents, whether the application is filed under the Hague Agreement or as a U.S. design patent application.

Final rules will soon be published in the Federal Register and are expected be effective on May 13, 2015. U.S. design patents granted on or after this date will have a 15 year term.

More information on the Hague industrial design system is available here and here, and the USPTO press release is available here.

MVS Filewrapper® Blog: Updates to the Innovation Act

Post by Jill Link

 

 

The Filewrapper® Blog has previously reported on the Innovation Act as passed by the U.S. House of Representatives on December 5, 2013 (H.R. 3309) and the companion bill subsequently failing to pass in the senate (S. 1720). Last week a bipartisan bill was introduced by House Judiciary Committee Chairman Bob Goodlatte (R-Virginia) and again referred to as the "Innovation Act" (H.R. 9). The bill is now co-sponsored by Representatives Peter DeFazio (D-Oregon), Darrell Issa (R-California), Anna Eshoo (D- California), and Lamar Smith (R-Texas). To be clear, this is the same legislation passed in 2013 by the House of Representatives and now brought during the inauguration of the 114th U.S. Congress.

The Innovation Act is primarily focused on addressing perceived increases in abusive patent litigation by non-practicing entities (often referred to as “patent trolls”). Supporters of the bill state their intention of curbing patent litigation which only seeks to obtain settlement payments from defendants in an effort to pay the millions of dollars it can cost to proceed through a patent infringement trial.  The bill outlines heightened pleading standards, including requiring a patent plaintiff to name the owner of the patent and whether there is any financial harm as a result of the alleged patent infringement. In addition, the bill provides for a fee-shifting provision that requires courts (with some exceptions) to award the prevailing parties reasonable attorneys' fees and other expenses when the court concludes the action was a frivolous lawsuit or claim. 

The Innovation Act also requires a court to make early decisions regarding patent validity in an effort to avoid a patent case being litigated when claims may ultimately be found to be invalid. For example, there would be required delays in the discovery process until after claim construction is determined. In addition, the Judicial Conference would be required to set forth rules aimed to decrease costs associated with discovery (which often creates a barrier to small businesses and other entrepreneurs pursuing patent litigation).

There is also a voluntary process for small businesses to postpone patent lawsuits while larger sellers complete similar patent lawsuits against the same plaintiff. Similarly, the act allows a manufacturer to intervene in a lawsuit against its customers and have the action stayed for the customer if both the customer and manufacturer agree. 

MVS and the Filewrapper® Blog will continue to bring updates on the progress of the House and Senate as the Innovation Act is again considered in 2015.

 

 

MVS Filewrapper® Blog: Update on "Patent Troll" Legislation in the Wake of the 2014 Elections

Post by Luke Holst

In December of 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act," ostensibly to address the problem of abusive patent litigation, sometimes referred to as patent trolling.  While H.R. 3309 passed with bipartisan support by an overwhelming margin of 325-91 votes, its companion bill failed to clear the Senate.  Failure of the Senate bill is attributable to removal of controversial fee-shifting language from H.R. 3309 by Judiciary Committee Chairman Patrick Leahy, D-Vt. The fee-shifting provisions required losing parties in patent litigation to pay their opponent's legal fees—a situation critics argued would discourage the filing of meritorious patent suits by small businesses.  After votes on the Senate counterpart bill stalled repeatedly, Senator Leahy withdrew the bill from the Senate Judiciary Committee's agenda last May.

 

In the wake of the 2014 midterm elections, Republicans have vowed to take up the legislation again early in 2015.  House Judiciary Committee Chairman Bob Goodlatte, R-Va., recently stated that a new version of the Innovation Act, and two companion bills addressing trade secret protections, should be reintroduced in the U.S. House of Representatives in January and pass with bipartisan majorities.  The trade secrets legislation looks to create private civil trade secret misappropriation lawsuits under the federal Economic Espionage Act, which currently only allows prosecutors to bring criminal cases.  On the Senate side, Senator Charles Grassley, R-Ia., is expected to replace Leahy as Chairman of the Judiciary Committee as the Republicans take over the Senate majority in January.  Senator Grassley has signaled his intention to make patent reform a priority in the new Congress and believes patent reform can be accomplished early next year.  In addition, the White House has signaled its support for legislation curbing abusive patent litigation, signaling that this may be an issue for which meaningful legislative action could be seen during the 2015 term.

 

 

MVS Filewrapper® Blog: USPTO Releases New Guidelines on Patent Subject Matter Eligibility

Post by Dan Lorentzen

The USPTO today released new Guidance on Patent Subject Matter Eligibility.  The new guidance comes nearly 9 months after the first set of "2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products"  were released in March 2014.  The March guidelines sought to implement new procedures to address changes in the laws relating to patent subject matter eligibility under 35 U.S.C. § 101 in light of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. However, a new set of guidelines have been expected based on the more recent Supreme Court decision in Alice Corporation Pty. Ltd. V. CLS Bank International, and based on numerous comments and criticisms of the original guidelines. 

 

The new guidance presents a number of changes in relation to the March guidelines.

The new guidance also includes a new set of examples for "Nature-Based Products."  These examples replace the set of examples that were included with the March guidelines.  Additional explanatory example sets relating to claims that do and do not amount to significantly more than a judicial exception are apparently being developed to be issued at a future date.

 

A more detailed discussion of the new guidelines is forthcoming.

 

 

 

 

MVS Filewrapper® Blog: USPTO Publishes its 2014 Patent Public Advisory Committee Annual Report

By Jonathan Kennedy

The Patent Public Advisory Committee (PPAC) for the USPTO published its Annual Report for the 2014 fiscal year.  The annual report is directed to the President of the United States and addresses many issues faced in the previous fiscal year, summaries of goals met, and recommendations for the future. 

The 2014 report expressed concerns over the effect of sequestration and the USPTO's budget.  At the end of the 2014 fiscal year, the USPTO netted $129 million in fees.  The report notes the USPTO's continued concern over high user fees and beginning in the 2015 year is conducting a biennial fee review to assess any chilling effect on innovation and disclosure due to patent office fees.  This will include an assessment of whether the fees are commensurate with the USPTO's projected needs. 

The 2014 report discussed many goals that were achieved during the 2014 fiscal year including a significant reduction in the backlog of Requests for Continued Examination (RCEs).  Between October 2009 and March 2013, the number of RCEs awaiting examination grew from approximately 17,000 to over 110,000.  As of October 2014, this number has been reduced to 46,441.  The PPAC recommends that the Office establish a goal that all RCEs be examined within four months at the latest—four months is currently the average for when an RCE is examined.  This would help to progress the examination of applications.

The 2014 report also highlights the importance of some programs instituted by the USPTO to decrease patent pendency.  During the 2014 fiscal year total patent application pendency was reduced to an average of 27.4 months.  Specifically the report highlights the use of the After Final Consideration Pilot 2.0, Track One Prioritized Examination, Patent Prosecution Highway (see our recent series on ways to accelerate examination, which addresses both the Track One Prioritized Examination and Patent Prosecution Highway and other programs), and the Quick Path Information Disclosure Statement (QPIDS).  The report notes that QPIDS allows applicants to have new prior art considered by the USPTO without the need for an RCE after payment of the issue fee.  In the 2014 fiscal year there were 2,241 QPIDS requests filed and 1,934 continued on to issue with an RCE.  This program appears to be quite effective.

The report also addressed the opening of satellite offices in Denver, Colorado, Silicon Valley, California, and Dallas Texas, in addition to the satellite office already opened in Detroit, Michigan.  The USPTO hired an additional 137 patent examiners and 47 judges.  Further, the report notes an additional 112 examiners are expected to be hired in the 2015 fiscal year.  At the end of the 2014 fiscal year, the Patent Trial and Appeal Board (PTAB) had 214 judges. 

The report notes that the PTAB was kept busy during the 2014 fiscal year with appeals from examination and post-grant proceedings.  The PTAB affirmed or affirmed-in-part  67%, reversed 30%, and remanded or dismissed 3% examiner decisions on appeal.  Since the inception of the America Invents Act, the PTAB has received 2,082 petitions for post-grant proceedings—1,841 inter partes review petitions, 233 covered business method petitions, 2 post-grant review petitions, and 6 derivation proceeding petitions.   The report notes the vast majority of petitions related to the electrical and computer software arts at 71.6% of petitions.

MVS Filewrapper® Blog: STEM Education Linked to Increased Innovation, Patenting

An interesting new discussion paper from John V. Winters at Oklahoma State University highlights the connection between foreign and native college graduates with science, technology, engineering, and math (STEM) degrees and per capita patenting. The data appear to disclose that the amount of STEM degrees per metropolitan area significantly increases the amount of patents issued per area. This correlation is also suggested to lead to "increase[d] innovation and provide[s] considerable economic benefits to regions and nations."

 

The study examines in particular the causal effects of STEM graduates produced by the U.S. educational system (as opposed to those educated outside the U.S.) in an effort to "help policymakers assess the benefits of higher education policies, especially policies intended to affect the domestic production of STEM graduates."  The study points to increased innovation and patenting as particular social benefits linked to STEM education.

 

It is important to note, however, that while the correlative data is interesting, it is difficult to make conclusions about causation. For example, at noted elsewhere, using patent as the indicator of innovation is somewhat complicated by spectrum of patented subject matter, which is not reflected in the data.  Nonetheless, the paper does help to underscore the importance of continued investment in STEM education.

 

The complete discussion paper is available on the Social Science Research Network (SSRN).

MVS Filewrapper® Blog: 2014 World Food Day and Borlaug Dialogue Takes Place in Des Moines Iowa

Post by Jill Link

 

The 2014 theme for World Food Day was “Family Farming: Feeding the world, caring for the earth.”  This event took place during the 2014 Borlaug Dialogue International Symposium held in Des Moines, Iowa.  MVS was represented by attorney Scott Johnson to honor the 2014 Laureate, Dr. Sanjaya Rajaram for his work in developing wheat varieties. The various events taking place this week are raising awareness of the impact of family farming and smallholder farmers.

 

These events highlight the significant efforts of Dr. Rajaram and other individuals implementing biotechnology tools to achieve significant advancements in the effort of feeding the world's population.  It is estimated that over 9 billion people will inhabit the planet earth by 2050 and biotechnology tools are providing significant advancements to achieve the goals and vision Dr. Borlaug set forth. Biotechnology has significantly aided variety development in various crops for use throughout the world. These crops provide opportunity to increase global food security through their increased crop yields, decrease in production costs, and often their decrease in the "environmental footprint" of farmer. The World Food Prize events provide great opportunity to recognize the beneficial impact and humanitarian opportunities afforded by using biotechnology in plants.

 

The annual event originates from Dr.  Norman Borlaug's work in developing wheat varieties suitable for farming in various conditions throughout the world, including Mexico, Asia and Latin America. These efforts were focused on feeding the world and preventing hunger and famine (for which Dr. Borlaug was awarded a Nobel Peace Prize). Dr. Borlaug's efforts to recognize others seeking to meet the challenge of sustainably feeding the world's population resulted in the establishment of The World Food Prize.

  

To learn more about The World Food Prize or the 2014 events taking place in Des Moines, Iowa please visit http://www.worldfoodprize.org/.

MVS Filewrapper® Blog: FDA Releases First "Purple Book" for Biosimilar Products

The Biosimilars Act (BSA) was passed into law on March 23, 2010 with the goal of encouraging the market entry of generic products, similar to the system that exists for generic drugs under the Hatch-Waxman Act.  The BSA sets forth an abbreviated approval pathway for biologics through a regulatory demonstration of biosimilarity (i.e. interchangeability).

 

More than 4 years after the BSA went into effect, the FDA has released its "Purple Book" listing biological products, including any biosimilar and interchangeable biological products licensed by FDA.  The Purple Book is intended to serve a similar function to the "Orange Book" that lists drug products with therapeutic equivalence evaluations that have been approved by the FDA.  The release of the Purple Book follows closely behind the filing of the first two applications for approval of biosimilar products.

 

For more information about the BSA, see the June 2014 issue of MVS Briefs, available here. 

More information on the "Purple Book"—including current lists of licensed biological products— is available from the FDA website here.

 

 

 

 

 

MVS Filewrapper® Blog: Should Trade Secret Misappropriation be Federalized?

The legal community (along with bipartisan legislation) has been discussing the creation of a private cause of action under federal laws for trade secret misappropriation – or trade secret theft. In light increased cyber-espionage and the apparent ease in which trade secrets can be misappropriated in the marketplace, Congress has taken an apparent interest in "strengthening" trade secret protections.

 

Currently, trade secrets are a matter of state law. This means that each state has established requirements for trade secret misappropriation. In sum, these require a finding that a trade secret holder has a "secret" with value as a result of it not being generally known by others (i.e. competitors), that the trade secret holder has taken efforts to maintain secrecy, and that the party alleged to have access or appropriated the secret used some sort of improper means. Although the precise definitions for these standards may vary among the states, there are relatively small distinctions among the states.

 

Both the House and the Senate may consider bills introduced as early as this fall to consider federalizing this cause of action. The "Defend Trade Secrets Act of 2014" ("DTSA") (S. 2267) and the "Trade Secret Protection Act of 2014" (H.R. 5233) have been introduced to create a private cause of action under the existing Economic Espionage Act of 1996.  The DTSA as drafted would authorize a trade secret owner to bring a civil cause of action in federal court for either (1) a violation of the Economic Espionage Act (which criminalized types of trade secret theft), or (2) a “misappropriation of a trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce.” The Judiciary Committee has held a hearing to discuss the benefits of the federal cause of action. A few of the purported benefits of establishing federal legislation would be to grant access to federal forums (based on the subject matter instead of matters of diversity and/or supplemental jurisdiction), along with granting access to federal remedies for seizures to prevent irreparable harm caused by trade secret misappropriation.

 

As expected, there are vocal critics of such federalization, including a group of legal scholars and professors (see opposition letter at http://cyberlaw.stanford.edu/files/blogs/FINAL%20Professors%27%20Letter%20Opposing%20Trade%20Secret%20Legislation.pdf). As stakeholders continue to voice opinions (and concerns) over pending legislation, more information will be provided through Filewrapper.com.

MVS Filewrapper® Blog: USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations

The United States Patent and Trademark Office issued a decision yesterday cancelling six federal trademark registrations owned by the Washington, D.C. National Football League franchise.  The cancellation proceeding was brought by five Native American petitioners on the basis that the marks disparage persons or bring them into contempt or disrepute in violation of 15 U.S.C. § 1052(a).  The Trademark Trial and Appeal Board (TTAB) panel of three Administrative Trademark Judges sided with the petitioners, cancelling all six of the challenged registrations. 

 

The registrations in question were all obtained between 1967 and 1990 on behalf of the Washington NFL franchise, and are all word marks.  The registrations were previously challenged in 1992 in a similar proceeding that also challenged the team logos without the word marks.  In the prior proceeding the TTAB held that the marks were disparaging to Native Americans when registered and ordered the registrations canceled.  The Washington NFL franchise appealed the decision in the prior proceeding to the U.S. District Court for the District of Columbia, who reversed the decision as barred by the doctrine of laches. 

 

The TTAB panel found that the five petitioners had standing to bring the cancellation proceeding, and were not barred from doing so by the doctrine of laches. The TTAB panel further found that the alleged honorable intent and manner of use of the term did not contribute to the determination of whether the marks were disparaging, but rather the sole issue was whether a substantial composite of the referenced group found the term to be disparaging in the context of the Washington NFL franchise during the time period when the registrations were obtained (1967-1990). 

 

The TTAB consulted evidence that reflected the sentiments of Native Americans, including a resolution passed by the National Congress of American Indians, various reports and testimony, newspaper articles, official records, and letters, and concluded that the substantial evidence may have disparaged a substantial composite of Native Americans at the times of the registrations.

 

Administrative Trademark Judge Bergsman dissented in the opinion on the basis that the petitioners had not shown by a preponderance of the evidence that a substantial composite of Native Americans found the marks to be disparaging in connection with the Washington NFL franchise during the relevant time frame.

 

The full decision and additional information are available here.  

More Entries

BlogCFC was created by Raymond Camden. This blog is running version 5.8.001.