Dramatic change in UK trademark policy; Australia eliminates obligation to disclose search reports There have been two interesting changes in foreign IP practice over the past month. Effective October 1, 2007, the UK Trade Marks Office changed its policy such that it will no longer raise objections to applications based on prior existing applications/registrations. Instead, it will be the policy to write to owners of earlier potentially conflicting […] Continue Reading →
USPTO moves to strike former USPTO director’s declaration supporting Glaxo’s PI motion On Friday, the USPTO filed a motion to strike the declaration of Harry F. Manbeck, Jr. in support of Glaxo's motion for a preliminary injunction barring implementation of the USPTO's new claim and continuation limit rules, claiming it constitutes improper expert testimony and impermissibly augments the administrative record in the case. Why is this interesting? […] Continue Reading →
Senate Judiciary committee to hold hearings about federally-funded university research and patents On Wednesday at 1:30 eastern time, the Senate Judiciary Committee will hold hearings entitled "The Role of Federally-Funded University Research in the Patent System." Those testifying will be: Arti K. Rai, professor, Duke University School of Law (testimony) Elizabeth Hoffman, Executive Vice President and Provost, Iowa State University (testimony) Robert Weissman, Director, Essential Action (testimony) […] Continue Reading →
Sixth Circuit: ratio of punitive to compensatory damages too great in copyright case In a decision Wednesday, the Sixth Circuit affirmed in part and reversed in part a district court judgment awarding $366,939 in compensatory damages, $3.5 million in punitive damages, and $150,000 in statutory damages (to a second plaintiff) in a copyright infringement case. The case was brought against the music publishers behind The Notorious B.I.G. album […] Continue Reading →
Proposed IDS rules challenged before Office of Management and Budget Apparently the USPTO's recent forays into rulemaking are not winning friends and influencing people. The rules limiting claims and continuation applications are currently being challenged in court, and now a group of companies is challenging the proposed IDS rules before the Office of Management and Budget (OMB). The rules were submitted to the OMB back […] Continue Reading →
No more first office actions for applications with 25+ claims? (updated 10/19) As noted on Patently-O, it appears the USPTO has stopped issuing first office actions on the merits in applications that exceed the 5/25 claim limitations. An example: This news, combined with the fact that the new rules may be considered by USPTO management as their fix for the Office's examination woes, expect the Office to […] Continue Reading →
Infringement finding and denial of permanent injunction in favor of ongoing royalty affirmed In a decision today, the Federal Circuit affirmed a jury verdict finding infringement under the doctrine of equivalents of a patent relating to hybrid engines used in motor vehicles. The court also affirmed the district court's denial of a permanent injunction and its award of an ongoing royalty on infringing vehicles, rejecting the argument that […] Continue Reading →
Glaxo’s preliminary injunction motion to be heard October 31, consolidated with earlier challenge In orders yesterday in GlaxoSmithKline's effort to stop implementation of the new continuation and claim limit rules, the USPTO's request to continue the preliminary injunction hearing until October 31 was granted in order to give the Office more time to respond to the motion. Also, Glaxo's case was consolidated with an earlier case filed challenging […] Continue Reading →
Fourth Circuit: Claim preclusion prevents new determination of actual damages against licensees Yesterday, the Fourth Circuit decided another copyright infringement case based on use of the logo for the Baltimore Ravens football team. The court had previously affirmed two cases involving the same logo, where copyright infringement was found but no damages were issued. In this case, several hundred licensees were sued for using the infringing logo.The […] Continue Reading →
Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don’t warrant dismissal On Monday, the Ninth Circuit addressed the issue of a federal court's subject matter jurisdiction over a trademark declaratory relief action when an infringement action has not been brought and proceedings related to the trademark are pending at the Trademark Trial and Appeal Board (TTAB). The district court dismissed the case as not presenting a […] Continue Reading →