Filewrapper®

Category: News


Rapper Sues the Makers of Fortnite Claiming Copyright Infringement of Dance Moves
December 07, 2018
Post by Brandon W. Clark
Rapper 2 Milly has filed a copyright and right of publicity lawsuit against the makers of the Fortnite video game claiming that they are illegally using a dance move that he created in their wildly popular video game. The Brooklyn-based rapper, whose real name is Terrence Ferguson, alleges that Fortnite-maker Epic Games is misappropriating his dance moves without permission, compensation, or credit........
Read More


Music Modernization Act Signed Into Law
October 11, 2018
Post by Brandon W. Clark
Earlier today, the Music Modernization Act (MMA) was signed into law. The MMA is a sweeping reform to music licensing and copyright related royalty payments and marks the first significant copyright legislation passed in decades. The House unanimously approved the bill in April followed by the Senate unanimously approving the legislation in September. The MMA then returned to the House for approval of th.......
Read More


Being Old Does Not Equate to Being Less Valuable
July 30, 2018
Post by Blog Staff
Last Friday, a Delaware federal jury awarded IBM Corp. more than $82 million after finding Groupon Inc. infringed four e-commerce patents (5,796,967; 7,072,849; 5,961,601; and 7,631,346). These patents relate generally to online customized advertisement services and so-called single-sign-on technology. The oldest patent has a priority date of July 15, 1988 and was granted on August 18, 1998, almost 20 ye.......
Read More


AUTM’s Recommends Narrow Changes to NIST on the ROI Initiative
July 27, 2018
Post by Oliver P. Couture, Ph.D.
The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative. The Association of Technology Managers (AUTM), who supports the ROI Initiative, stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly contributed to the comm.......
Read More


Copyright Office Proposes New Fee Schedule
June 28, 2018
Post by Brandon W. Clark
The Copyright Office recently announced a new proposed fee schedule that would increase the majority of fees associated with filings at the Copyright Office. The proposal comes after an extensive assessment performed by consultants Booz Allen Hamilton. The proposed fee increase would help the Copyright Office offset regular costs, while also providing the Copyright Office additional resources to moderniz.......
Read More


Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court
April 24, 2018
Post by Jonathan L. Kennedy
The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigni.......
Read More


Patent Proposals in Congress
March 21, 2018
Post by Kirk M. Hartung
Since the creation of patent reviews at the Patent Office Trial and Appeal Board (PTAB) by the America Invents Act of 2011, a very high percentage of reviewed patents have been declared invalid. Now, a bill has been introduced in the House of Representatives which could change these statistics. The bill also could revive issuance of injunctions against adjudicated infringers, which has been very difficul.......
Read More


Federal Judge Rules Embedded Tweet Violated Copyright
February 21, 2018
Post by Brandon W. Clark
In a surprising ruling, U.S. District Court Judge Katherine B. Forrest, recently ruled that several news organizations and publishers violated a photographer’s copyright when they “embedded” a photo from Twitter on their websites without permission. Judge Forrest’s decision to grant the plaintiff’s motion for partial Summary Judgement is sure to be controversial and could prove to be very significant, po.......
Read More


USPTO Releases Patent Fee Schedule for 2018
November 20, 2017
Post by Jonathan L. Kennedy
This past week, the USPTO released its final patent fee schedule for 2018. The USPTO has been actively seeking to reduce the overall patent pendency, number of unexamined applications, and reduce its appeal backlog. Part of these efforts have been the continual recruiting and training of new examiners and new Administrative Law Judges at the Patent and Trial Appeal Board. The USPTO is also working on upd.......
Read More


Outside an infringement claim: the use of sovereign immunity and an attempt to limit its’ use
November 08, 2017
Post by Patricia A. Sweeney - Of Counsel
The sovereign – that is the government or government owned entities – are immune from lawsuit by the Eleventh Amendment. Thus, the United States government, state government, or a state-owned university are protected from legal action, including a lawsuit for patent infringement. Universities that are state owned thus can proceed with their research without concern of an infringement action, unless an exce.......
Read More


Hollywood Studios Prevail Against Family-Friendly Video Streaming Site
September 14, 2017
Post by Brandon W. Clark
In a 3-0 ruling, a federal appeals court sided with Disney, Warner Bros., and Twentieth Century Fox by affirming an injunction that shut down movie filtering service VidAngel, Inc., saying that a ruling to the contrary would “create a giant loophole in copyright law”. VidAngel is a video filtering service that lets users stream films without nudity, violence, and alcohol and drug use. The company buys DVDs o.......
Read More


Surge in Patent Applications Related to 3D Printing: Is Yours One of Them?
July 26, 2017
Post by Jonathan L. Kennedy
The USPTO recently released statistics that over 8,000 patent applications were filed in 2016 related to 3D printing (additive manufacturing). Some of the interesting 3D printing inventions that have been subject to publicity include,prosthetic hands and fingers for children without fingers, three-dimensional bioprinting of human-compatible vascularized tissue developed by graduate students at Harvar.......
Read More


Spotify Settles Class Action Lawsuit for $43.4 Million
May 31, 2017
Post by Brandon W. Clark
In February of last year, I wrote a blog discussing the filing of a class action lawsuit against Spotify seeking $150 million in unpaid mechanical royalties (Read the previous post here). In a settlement announced on Friday, Spotify has agreed to set up a fund worth $43.4 million to compensate songwriters and publishers whose compositions were used without paying mechanical royalties. Mechanical royalties are a .......
Read More


USPTO Heightens Post-Registration Requirements for Trademarks
March 16, 2017
Post by Brandon W. Clark
The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the registrati.......
Read More


Does Spotify Owe You Money? Streaming Service Sued for $150 Million in Unpaid Royalties
February 24, 2016
Post by Brandon W. Clark
Brandon W. Clark David Lowery, the frontman of Cracker and Camper Van Beethoven, has recently filed a class action lawsuit seeking at least $150 million dollars in damages against Spotify. Lowry alleges Spotify knowingly, willingly, and unlawfully reproduces and distributes copyrighted compositions without obtaining mechanical licenses. According to the complaint, which was fil.......
Read More


Streamlined, Expedited Patent Appeal Program for Small Entities Announced by USPTO
September 23, 2015
Post by Blog Staff
As of September 18, 2015, small or micro entities with only a single ex parte appeal pending before the Patent Trial and Appeal Board (PTAB) will be able to expedite review of their appeal in exchange for streamlining the process. According to the information provided on the USPTO website, the criteria for qualification for this new program include: The appeal must not involve any cl.......
Read More


Patent Office Extends After Final Consideration Pilot Program
September 17, 2015
Post by Blog Staff
. The After Final Consideration Pilot (AFCP 2.0) program provides patent applicants at the USPTO with the opportunity to address issues that may remain in an application after a final rejection has issued. The AFCP 2.0 program is something of an exception to typical procedure, wherein a patent examiner has considerable discretion as to whether to even consider an amendment submitted a.......
Read More


White House Calls for Modernization of Biotechnology Regulations
August 04, 2015
Post by Blog Staff
Biotechnological innovation is potentially subject to a variety of governmental regulations. For example, therapeutics for disease treatment or prevention in humans are subject to review and approval by the Food and Drug Administration (FDA). Innovations relating to crops or livestock may be subject to the Department of Agriculture (USDA). However, the regulations promulgated by thes.......
Read More


Blurred Lines in Copyright Law Following 'Blurred Lines' Jury Verdict
March 17, 2015
Post by Blog Staff
Under the Copyright Act of 1909, a work was protected when it was published with the notice of copyright protection. Although changed by the Copyright Act of 1976, releasing a sound recording of a composition under the 1909 act (i.e., musical notes and lyrics) did not constitute "publication"of a musical work. Thus, for musical works before the 1976 Act, protection was not typically afforded .......
Read More


Michelle Lee Confirmed as USPTO Director
March 10, 2015
Post by Blog Staff
The Senate on Monday confirmed the White House's nominee for the long-vacant director position at the USPTO. Director Lee had been serving as Deputy Director and acting Director for over a year, pending the nomination process. Director Lee takes over for former-Director Kappos, who left the position in February 2013. The confirmation has been both long-expected and long-awaited. .......
Read More


Alternative Patent Reform Legislation Proposed in Senate
March 06, 2015
Post by Blog Staff
Even though the America Invents Act is just over 3 years old, patent reform legislation has arisen on several occasions over the past years. The most visible legislative efforts have involved the "Innovation Act" proposed by Senator Goodlatte in 2013, and again in 2015. The version of the Innovation Act introduced in 2013 stalled out in the Senate, but has been re-introduced in the H.......
Read More


Update on "Patent Troll" Legislation in the Wake of the 2014 Elections
December 17, 2014
Post by Blog Staff
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 controve.......
Read More


USPTO Releases New Guidelines on Patent Subject Matter Eligibility
December 16, 2014
Post by Blog Staff
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 th.......
Read More


USPTO Publishes its 2014 Patent Public Advisory Committee Annual Report
December 03, 2014
Post by Jonathan L. 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........
Read More


STEM Education Linked to Increased Innovation, Patenting
November 07, 2014
Post by Jill N. Link, Pharm.D.
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 s.......
Read More


2014 World Food Day and Borlaug Dialogue Takes Place in Des Moines Iowa
October 17, 2014
Post by Jill N. Link, Pharm.D.
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.......
Read More


FDA Releases First "Purple Book" for Biosimilar Products
October 01, 2014
Post by Blog Staff
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 h.......
Read More


Should Trade Secret Misappropriation be Federalized?
September 17, 2014
Post by Blog Staff
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 protection.......
Read More


USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations
June 19, 2014
Post by Blog Staff
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.......
Read More


USPTO Glossary Pilot Program
June 16, 2014
Post by Blog Staff
The USPTO has instituted a new program, the Glossary Pilot Program, which began June 2, 2014. The program will allow applicants for computer-related inventions to petition to make special entry into the Glossary Pilot Program with the filing of an application. Applications accepted into this pilot program will receive expedited processing and be placed on an examiner’s special docket prior to the first offic.......
Read More


Jury Returns Verdict for Apple in Patent Infringement Suit
May 06, 2014
Post by Blog Staff
On Friday, May 2, 2014 a jury found Samsung Electronics Co. ("Samsung") liable for infringing two patents owned by Apple, Inc. ("Apple"). The two patents are U.S. Patent No.5,946,647, which is directed to systems and methods that analyze text for things that can be hyperlinked, e.g., email addresses, websites, and phone numbers, and then provides quick link options; and U.S. Patent No.8,046,72.......
Read More


Bring on the New Year - What is in Store for IP in 2014?
December 31, 2013
Post by Blog Staff
Happy New Year to all of our FilewrapperÒ followers! We hope 2013 was a productive year and wish you the best in 2014. As the New Year quickly approaches we would like to share with you a few predictions for 2014 for you to look forward to and for which to prepare! · Increased opportunities for quasi-litigation under AIA. Various new mechanisms are available to challenge patents under the Am.......
Read More


H.R. 3309 - The Innovation Act
December 17, 2013
Post by Blog Staff
On December 5, 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act", with bipartisan support by an overwhelming margin of 325-91 votes. H.R. 3309 was drafted to address the perceived growing problem of abusive patent litigation attributed to alleged "patent trolls." Early next year, the Senate will likely consider a companion bill, S. 1720, the "Patent Transparency and Improv.......
Read More


Changes to Implement and Guidelines for Examination under AIA
March 19, 2013
Post by Blog Staff
The United States Patent and Trademark Office has released its rules regarding changes under first inventor to file provisions of the Leahy-Smith America Invents Act. The rules published by the USPTO in the Federal Register on March 16, 2013 provide guidelines for implementing the new patent law and guidelines for examination of patent applications under the new standards. The documents cover a broad range of t.......
Read More


New and Useful - January 23, 2013
January 23, 2013
Post by Blog Staff
· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks&mdas.......
Read More


New and Useful - Janurary 14, 2013
January 14, 2013
Post by Blog Staff
· The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. Th.......
Read More


Another Billion Dollar Patent Verdict
January 03, 2013
Post by Blog Staff
Another billion dollar verdict has been handed out in a patent case. Read the verdict in Carnegie Mellon University v. Marvell Technology Group, LTD. here. This latest case continues a string of billion dollar verdicts highlighted by Jonathan Kennedy in the latest edition of MVS Briefs. Carnegie Mellon brought suit alleging infringement of two of its patents, Patent No. 6,201,839 and Patent No. 6,438,180, relat.......
Read More


USPTO will remain open until April 18 in the event of government shutdown
April 08, 2011
Post by Blog Staff
In a press release, the USPTO stated it has sufficient available funds not tied to the current fiscal year that it will be able to remain open for six days following any shutdown of government functions. Based on the current appropriations, that would put the USPTO open until April 18, assuming a shutdown begins April 11. After that time, limited functions should still be available, including accepting new elec.......
Read More


Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets
July 26, 2010
Post by Blog Staff
Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA"). As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works. For example, it is arguably a violation of the DMCA to use a program to "break" the content scrambling system ("CSS&q.......
Read More


USPTO proposes tiered system for patent application examination speed
June 03, 2010
Post by Blog Staff
In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination. This is the latest in Director Kappos' attempts to control application pendency at the Office.The "prioritized examination" track would be mu.......
Read More


USPTO to allow accelerated examination for "green" applications without examination support document
December 08, 2009
Post by Blog Staff
In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start of the United Nations Framework Convention on .......
Read More


Highlights from oral arguments in Bilski v. Kappos
November 11, 2009
Post by Blog Staff
On Monday, the Supreme Court heard oral argument in Bilski v. Kappos in an effort to determine the proper test to be applied to determine whether a claim is patentable subject matter under § 101. The oral argument transcript is available from the Court's website here. Click below for our thoughts on the arguments and some of the more interesting quotes from the Justices' questioning. From the outse.......
Read More


USPTO announces e-Office Action program for patent applications
July 22, 2009
Post by Blog Staff
In a press release, the USPTO announced the availability of the e-Office Action program for patent applications. Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR. This avoids the time delay of mailing the office action, thereby getting notice of the action sooner than pr.......
Read More


Obama to nominate David Kappos for USPTO director
June 18, 2009
Post by Blog Staff
According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office. The nomination does not yet appear on the White House's nominations and appointments page (Update: here is the While House press release). Back in May, it was speculated that Mr. Kappos may.......
Read More


Pirate Bay operators guilty of criminal infringement in Sweden; no webcast of US file sharing case
April 17, 2009
Post by Blog Staff
In the past day, there has been two interesting bits of news in the world of cases alleging copyright infringement by way of peer-to-peer file sharing.The first is that the individuals who operate and maintain the servers that host The Pirate Bay, the world's largest bittorrent tracker, were held to have committed criminal copyright infringement by a Swedish court. The four individuals were each sentenced to.......
Read More


Patent Reform Act of 2009 back before Senate Judiciary Committee today to consider compromise
April 02, 2009
Post by Blog Staff
Today at 10:00 Eastern time the Senate Judiciary Committee will hold an executive business meeting to discuss the Patent Reform Act of 2009. The committee will consider some proposed amendments that represent a compromise on several key issues that have been points of contention over the course of the past several years when patent reform has been on the legislative agenda. Among these is the issues of damage.......
Read More


Patent reform back again for 2009
March 04, 2009
Post by Blog Staff
Yesterday Senators Patrick Leahy and Orrin Hatch (chairman and ranking member of the Senate Judiciary Committee) and Representatives John Conyers and Lamar Smith (chairman and ranking member of the House Judiciary Committee) introduced the Patent Reform Act of 2009. Click below for more detail of the newly-introduced legislation, as well as links to other coverage of the legislation and press releases by .......
Read More


Patry copyright blog is no more
August 03, 2008
Post by Blog Staff
It's a sad day in the blogosphere, as Bill Patry, author of Patry on Copyright and the Patry Copyright Blog, has announced he is shutting down his blog. We've linked to Professor Patry's commentary on copyright law on many occasions, and his additional insight into copyright issues will be missed.Other blogs noting his departure:Chicago IP litigation blog Fire of Genius Patently-O Rob HyndmanHe prov.......
Read More


Patent litigation by the numbers
June 11, 2008
Post by Blog Staff
PricewaterhouseCoopers recently published its annual litigation study entitled 2008 Patent Litigation Study: Damages awards, success rates and time-to-trial. The study examined a wide range of variables pertaining to patent litigation from 1995 to 2007. With the number of patents granted increasing every year, the number of patent cases has continued to grow. Also, with the number of cases growing the amount o.......
Read More


USPTO proposes fee increases for Fiscal 2009
June 03, 2008
Post by Blog Staff
In a Federal Register notice today, the USPTO has proposed fee increases for its Fiscal Year 2009, which begins October 1, 2008. The increases are based on the projected Consumer Price Index for the period ending September 30, 2008, which is 4%.Comments on the proposed changes are due by July 3, 2008. Click below for tables comparing the current fees to the proposed new fees.To read the full notice, click here. ....
Read More


Highlights from Drake Law School Summer Institute in Intellectual Property, Biotech, and Ag Sciences
May 21, 2008
Post by Blog Staff
The Drake University Law School Summer Institute in Intellectual Property, Biotechnology, and Agricultural Sciences was held in Johnston, Iowa on May 19-20. The event, sponsored by Pioneer Hi-Bred International, addressed diverse topics including the impact of recent U.S. Supreme Court decisions on biotechnology patents, the patent landscape of the nascent biofuel industry, ethical considerations in life scien.......
Read More


Wal-Mart learns a lesson in copyright licensing the hard way
April 10, 2008
Post by Blog Staff
A story in yesterday's Wall Street Journal (via Bill Patry) illustrates how important it is for parties to a transaction to know what they're getting up-front.Starting way back in the 1970s, Wal-Mart hired an outside company, Flagler Productions, to document various aspects of Wal-Mart's operations. Flagler produced videos of Wal-Mart corporate officers and directors, "often in unguarded momen.......
Read More


Summary of today's summary judgment hearing in the claim and continuation rule cases
February 08, 2008
Post by Blog Staff
As we reported earlier, Judge Cacheris took the parties' motions for summary judgment under advisement in the consolidated cases challenging the USPTO's claim and continuation rules. Below is a summary of the hearing from our representative who was in attendance. Tafas and GSK butted heads with the USPTO again today in front of a packed courtroom in the Eastern District of Virginia. Interested onlookers.......
Read More


All versions of MPEP now available on USPTO website
February 08, 2008
Post by Blog Staff
The USPTO has now made available all prior editions of the Manual of Patent Examining Procedure on its website here. This is great news for those who have ever had to try to track down a version of the MPEP that was more than about 10 years old, as they had not previously been easily accessible online.....
Read More


Motions for summary judgment in claim and continuation rules case taken under advisement
February 08, 2008
Post by Blog Staff
We've just received word that the hearing on the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules has concluded, and the motions have been taken under advisement. So, no ruling from the bench today, and no hint as to when a ruling might be expected.....
Read More


Reply briefs filed in claim and continuation rules case; administration opposes patent reform
February 04, 2008
Post by Blog Staff
Late Friday, the parties filed their reply briefs in the cases challenging the USPTO's claim and continuation rules. As with the parties' opposition filings, these briefs largely represent another repetition of the arguments raised in the parties motions for summary judgment. The motions have now been fully briefed, and the hearing on the parties' motions is scheduled for Friday, February 8 at 10:00.......
Read More


Patent Reform Act of 2007 scheduled for consideration this month
February 01, 2008
Post by Blog Staff
The Patent Reform Act of 2007 (S. 1145) is now officially back on the radar. It was recently placed on the Senate's calendar, and is likely to be considered by the full Senate sometime this month. This has resulted in a corresponding increase in the lobbying efforts by those on both sides of the debate. Click below for more detail regarding the various lobbying efforts, as well as additional commentary on .......
Read More


EU highest court rules ISPs not required to identify P2P users allegedly infringing copyrights
January 29, 2008
Post by Blog Staff
In a decision released today, the highest court in the EU, the European Court of Justice, ruled that under EU law, internet service providers (ISPs) are not required, in the course of a civil lawsuit, to disclose the identity of an individual subscriber associated with a particular IP address. The case arose out of an attempt by PROMUSICAE, a trade group representing the music industry in Spain and the rough equ.......
Read More


USPTO to start enforcing requirement that inventor oaths include reference to duty of disclosure
January 23, 2008
Post by Blog Staff
In a notice dated yesterday, the USPTO announced that it will begin enforcing compliance with 37 C.F.R. § 1.63(b)(3), which requires that inventor oaths include an acknowledgement of the duty to disclose information material to patentability under 37 C.F.R. § 1.56. Oaths filed on or after June 1, 2008 will have to have the language from the rule, or the USPTO will reject the oath as defective.The USPT.......
Read More


Patent Reform Act of 2007 to be passed in 2008?
January 16, 2008
Post by Blog Staff
The internet is abuzz with talk that the much-maligned Patent Reform Act of 2007 (H.R. 1908 & S. 1145) may be passed in some form this month. A draft version of the Senate Judiciary Committee's report on the bill was released earlier this week, and while it does not contain any revised provisions, it does offer a fairly detailed description of the Senate version of the bill as it currently stands. .......
Read More


USPTO to be closed December 24
December 14, 2007
Post by Blog Staff
In a press release today, the USPTO announced it will be closed on December 24. December 25 is, of course, a federal holiday, meaning the USPTO will be closed for four consecutive days.From the release:Any action or fee due on those days (or the preceding Saturday (December 22, 2007) or Sunday (December 23, 2007)) will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059.......
Read More


USPTO releases 2007 annual report, Patent Reform Act to be considered in January?
November 15, 2007
Post by Blog Staff
The USPTO has released its 2007 Performance and Accountability Report. Here are a few highlights:Average time for first office action (patent): 25.3 monthsAverage total application pendency (patent): 31.9 monthsPercent of patent applications filed electronically: 49.3%Average time for first office action (trademark): 2.9 monthsAverage total application pendency (trademark): 15.1 monthsPercent of trademark a.......
Read More


Claim and continuation limit rules preliminarily enjoined
October 31, 2007
Post by Blog Staff
According to reports, enforcement of the USPTO's new claim and continuation limit rules has been enjoined. Judge James C. Cacheris issued the ruling from the bench after the hearing today on GlaxoSmithKline's motion for preliminary injunction.We'll have more as it develops, including any orders or decisions issued by the court.Update: More detail regarding the hearing and arguments from John White ov.......
Read More


AIPLA seeks leave to file amicus brief supporting Glaxo in its challenge to the new USPTO rules
October 25, 2007
Post by Blog Staff
Today the American Intellectual Property Law Association filed a motion for leave to file an brief as amicus curiae in support of Glaxo's motion for preliminary injunction to enjoin implementation of the USPTO's new claim and continuation limit rules. The proposed brief is specifically directed toward the irreparable harm that would result if the rules are applied to already-filed applications. For exa.......
Read More


USPTO moves to strike former USPTO director's declaration supporting Glaxo's PI motion
October 22, 2007
Post by Blog Staff
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? Mr. Manbeck was the director of the USPT.......
Read More


No more first office actions for applications with 25+ claims? (updated 10/19)
October 18, 2007
Post by Blog Staff
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 vigorously defend the new rules in court.Update (10/17): Looks like this can now b.......
Read More


Proposed IDS rules challenged before Office of Management and Budget
October 18, 2007
Post by Blog Staff
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 on July 27; you can read the submission challenging.......
Read More


Glaxo's preliminary injunction motion to be heard October 31, consolidated with earlier challenge
October 18, 2007
Post by Blog Staff
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 the validity of the rules, and reassigned to the j.......
Read More


Glaxo files motion for preliminary injunction and TRO to stop new rules, hearing on October 26?
October 17, 2007
Post by Blog Staff
On Monday, Glaxo filed a motion for preliminary injunction and temporary restraining order in its lawsuit seeking to prevent implementation of the new USPTO rules regarding claim and continuation limits. The court has set a hearing for October 26, which the USPTO has requested by extended to October 31 in order to give it the full 11 days it would otherwise get to file a brief in response. The case is number .......
Read More


No more first office actions for applications with 25+ claims?
October 16, 2007
Post by Blog Staff
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 vigorously defend the new rules in court.Update (10/17): Looks like this can now b.......
Read More


Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter
October 11, 2007
Post by Blog Staff
Pharmaceutical giant GlaxoSmithKline filed a lawsuit in the Eastern District of Virginia seeking to stop implementation of the new continuation and claim limit rules. The lawsuit, filed Tuesday, seeks a preliminary and permanent injunction against the rules' implementation. The complaint has eight counts:The Rules are ultra vires because the USPTO does not have the statutory authority to issues substantive.......
Read More


USPTO gives applicants a bit of a break during transition to new continuation and claim limit rules
October 11, 2007
Post by Blog Staff
In an announcement yesterday, the USPTO clarified some aspects of the new continuation and claim limit rules. Of particular note are the following:For applications filed before November 1, 2007, applicants need not identify all applications and patents having a common inventor, common assignee, and a priority date within two months. Applicants will still have to identify applications and patents having the sam.......
Read More


Are the new continuation and claim limit rules the "cure all" for the USPTO?
October 08, 2007
Post by Blog Staff
It looks like the USPTO is hoping that the new rules limiting the number of claims and continuation applications will solve its problems in other areas, particularly examiner retention. Last week, the Government Accountability Office (GAO) issued a report entitled "U.S. Patent and Trademark Office: Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog." An excerpt of the summar.......
Read More


More examination outsourcing by the USPTO?
September 17, 2007
Post by Blog Staff
According to a news release published today, the USPTO is exploring the feasability of having the Swedish Patent and Registration Office (PRV) perform the search and examination of international applications filed under the PCT in the U.S. receiving office. In the release, the USPTO notes that it receives about 50,000 international applications and about 400,000 national applications per year. The pilot progr.......
Read More


Is fair use more valuable to the economy than copyright?
September 14, 2007
Post by Blog Staff
A study released this week by the Computer and Communications Industry Association (CCIA) attempts to quantify the value that fair use, the restriction on a copyright holder's ability to assert infringement claims, has to the U.S. economy. The study attempted to ascertain the economic output of "fair use industries," that is, either "industries that produce goods and services whose activities .......
Read More


Third Circuit: Patentee's intentional falsehood to standards body can support antitrust claim
September 05, 2007
Post by Blog Staff
Maybe it's time for Qualcomm to rethink how it approaches standard-setting organizations. In a decision today, the Third Circuit reversed in part a district court's dismissal of rival Broadcom's antitrust claims, finding that Broadcom had adequately pleaded actions by Qualcomm that, if true, would constitute an antitrust violation.The facts of the case are similar to those in a recent case in Calif.......
Read More


IEEE voices opposition to the Patent Reform Act of 2007
August 28, 2007
Post by Blog Staff
As reported at the Patent Prospector, the U.S. organizational unit of the Institute of Electrical and Electronics Engineers (IEEE-USA) has sent a letter to Senate Majority Leader Harry Reid and Speaker Nancy Pelosi opposing the Patent Reform Act of 2007.In a nutshell, the IEEE-USA's view is:We believe that much of the legislation is a disincentive to inventiveness, and stifles new businesses and job growt.......
Read More


Trademark licensing hall of shame: why trademark owners need to monitor their licensees
August 27, 2007
Post by Blog Staff
Owners of trademarks should take care that they control how licensees use their marks. This should be common knowledge for most trademark owners, as inconsistent or unauthorized use of a trademark can dilute its distinctiveness, and in extreme cases, cause loss of rights.The owners of one of the most famous trademark brands, the New York Yankees, have found out that monitoring licensees closely can also avoid pub.......
Read More


Patent Reform Act of 2007 hitting a snag?
August 27, 2007
Post by Blog Staff
In today's Wall Street Journal, there is an article noting that the Patent Reform Act of 2007 (S. 1145, H.R. 1908) may be coming up against some resistance when Congress returns from its August recess. The article notes that the AFL-CIO has warned that if the Act is passed in its current form, "innovation—and union-backed manufacturing jobs—might be at risk."This warning from the manuf.......
Read More


Federal Circuit changing its domain name effective October 1
August 24, 2007
Post by Blog Staff
According to an announcement on the Federal Circuit's webpage, the court will be changing its domain name effective October 1, 2007. The change from www.fedcir.gov to www.cafc.uscourts.gov will bring the Federal Circuit in line with the other courts of appeal, whose domain names are www.ca#.uscourts.gov (where # is the circuit number or "dc" for the DC Circuit).The new site is not yet up and runn.......
Read More


USPTO publishes Federal Register notice of revised patent fees
August 23, 2007
Post by Blog Staff
While most of the focus on USPTO rulemaking this week has been on the continuation and claim limit rules published on Tuesday, yesterday the USPTO published its revised list of patent fees. The new fees are designed to reflect changes in the CPI, and are effective September 30.Update (10/1): The USPTO has published a second notice correcting some of the amounts listed in the first notice. Some examples of the .......
Read More


First lawsuit to stop implementation of continuation and claim limit rules filed
August 23, 2007
Post by Blog Staff
As reported on Patently-O (and predicted here), yesterday a lawsuit was filed against the USPTO and its director, Jon Dudas, to prevent implementation of the new rules limiting continuations and the number of claims in patent applications (expect a more detailed post about the new rules later today).The lawsuit alleges that the regulations are invalid for many reasons, including:Exceeding the USPTO's Congre.......
Read More


New continuation rules published
August 21, 2007
Post by Blog Staff
As noted yesterday, the new continuation rules have been published in today's issue of the Federal Register. The bulk of the publication is responses to the numerous comments sent to the USPTO after the rules were initially published in January 2006. The introductory material explains the gist of the new rules, and runs from page 46716-44, with the text of the new rules begins on page 46835.Click here for .......
Read More


More new USPTO rules on the way, this time for information disclosure statements and Markush claims
August 10, 2007
Post by Blog Staff
The USPTO rulemaking machine just keeps chugging along. In today's Federal Register, there are new USPTO proposed rules regarding claims using "alternative language," such as Markush claims. Also, on July 27, the USPTO submitted new rules regarding information disclosure statements (IDSs) to the OMB for review. These rules look as though they adhere to the current USPTO theme: make applicant.......
Read More


Judge sanctions Qualcomm for concealing over 200,000 pages of documents, providing false testimony
August 08, 2007
Post by Blog Staff
It's been a rough week for Qualcomm. On Monday, the Bush administration let stand the ITC ruling barring import of mobile phones using certain Qualcomm chips unless a license fee is paid to Broadcom, a competing company who holds patents covering the power management technology used in the chips. Also Monday, a federal judge in California found that Qualcomm had committed serious litigation misconduct in a.......
Read More


$1.5 billion infringement verdict against Microsoft vacated
August 07, 2007
Post by Blog Staff
A judge in the Southern District of California yesterday set aside a $1.5 billion infringement verdict against Microsoft in favor of Alcatel-Lucent (more detail on the facts of the case can be found in this post). The judgment was the largest ever in a patent infringement lawsuit, and has been used as an example (see page 15 of Anthony Peterman's testimony before the House, which specifically references .......
Read More


Summary of proposed final KSR examining guidelines surfaces
August 06, 2007
Post by Blog Staff
The Patent Prospector is reporting that the summary of the USPTO's post-KSR obviousness examination guidelines recently sent to OMB has apparently surfaced. Note that this summary is not confirmed, but it comes from a typically reliable source. Either click below or head over to the Patent Prospector to read the summary.Update (11:15): another source has confirmed the accuracy of the summary.Further .......
Read More


Revised TTAB rules published, some take effect August 31, others November 1
August 01, 2007
Post by Blog Staff
As noted last week, the revised TTAB rules were published in today's Federal Register. The final rules are somewhat different than those proposed last January. Some of the new rules include:Opposers/Petitioners will serve copies of the notice of opposition or cancellation petition on the opposing party directly, rather than having the TTAB send out the papers [Revised 37 C.F.R. § 2.105]Adoption of mand.......
Read More


USPTO proposes new BPAI rules to cope with upcoming increase in appeals
July 31, 2007
Post by Blog Staff
In a Federal Register notice yesterday, the USPTO promulgated revised rules for practice before the Board of Patent Appeals and Interferences. The USPTO will accept comments on the proposed rules until September 28, 2007 via email, fax, or postal mail. Many of the proposed rules appear designed to advance the USPTO's current trend toward finding waiver of arguments or evidence not presented at the first o.......
Read More


KSR in litigation: Summary judgment of obviousness granted post-KSR after denial pre-KSR
July 31, 2007
Post by Blog Staff
The Wall Street Journal today is reporting about a patent infringement case in the Northern District of California that is believed to be the first instance where a district court has changed its opinion regarding the validity of a patent as a result of KSR. The court found two principles from KSR to "guide" the obviousness analysis:First, "[w]hen a patent 'simply arranges old elements with .......
Read More


Revised TTAB rules coming soon
July 27, 2007
Post by Blog Staff
The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week. The summary of the rules as initially proposed is as follows:The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter par.......
Read More


UK rejects proposal for 20 year copyright extension for sound recordings
July 26, 2007
Post by Blog Staff
Yesterday the UK Department for Culture, Media & Sport issued a report rejecting a suggestion to push for an extension of copyright term in the EU for sound recordings of 20 additional years, from 50 to 70 years. Citing the Gowers Review of the UK's intellectual property framework, the report notes:[The Gowers Review] concluded that an extension would not benefit the majority of performers, most of wh.......
Read More


Senate Judiciary Committee passes Patent Reform Act of 2007 out of committee
July 23, 2007
Post by Blog Staff
On Thursday, the Senate Judiciary Committee passed its version of the Patent Reform Act of 2007 (S. 1145, House version H.R. 1908) out of committee by a vote of 13-5. The bill is cosponsored by the chairman of that committee, Senator Patrick Leahy, who issued a press release regarding the passage.As with the House version that also passed out of committee last week, the controversial damages apportionment pro.......
Read More


200 companies express further concerns over Patent Reform Act of 2007
June 20, 2007
Post by Blog Staff
The hits just keep on coming for the Patent Reform Act of 2007 (H.R. 1908 and S. 1145). Over the past two weeks, Chief Judge Paul Michel of the Federal Circuit sent two letters criticizing portions of the Act. Before that, a group of Senators noted their concerns with the Act. Just after the Act was introduced, a coalition of over 100 companies expressed their concerns about the act. Now, many of those sa.......
Read More


Chief Judge Michel offers additional thoughts on the Patent Reform Act of 2007
June 18, 2007
Post by Blog Staff
Back when the Patent Reform Act of 2007 (H.R. 1908 and S. 1145) was first introduced, Chief Judge Paul Michel of the Federal Circuit wrote a letter to Senators Patrick Leahy and Orrin Hatch (the Senate sponsors of the Patent Reform Act of 2007) discussing the practical implications of certain provisions of the bill on the courts.As it turns out, this wasn't the Chief Judge's last word on the subjec.......
Read More


Peer to Patent "community" patent review officially launches
June 18, 2007
Post by Blog Staff
The Peer to Patent project (previously blogged about June 7, March 5, and February 28) is now up and running for its one year trial period. As noted previously, only computer-related applications are eligible for this pilot program. Thus far, there are five applications in the system:User selectable management alert format (assigned to Hewlett Packard) Register tracking for speculative prefetching (assigned to .......
Read More


Senators express concern over Patent Reform Act of 2007
June 12, 2007
Post by Blog Staff
In a letter to the Chairman and Ranking Member of the Senate Judiciary Committee (which held hearings on the Patent Reform Act of 2007 last week), several Republican members of the committee expressed reservations about the current version of the bill. The contingent, made up of Senators Sam Brownback (R-KS), Tom Coburn (R-OK), Chuck Grassley (R-IA), Jon Kyl (R-AZ), and Jeff Sessions (R-AL), noted the .......
Read More


Senate hearings on the Patent Reform Act of 2007
June 07, 2007
Post by Blog Staff
As noted previously, the Senate yesterday held hearings on the Patent Reform Act of 2007 (S. 1145). The witnesses were:Jon W. Dudas, Undersecretary of Commerce for Intellectual Property and Director of the USPTOBruce G. Bernstein, chief intellectual property and licensing officer, InterDigital Communications Corp. Mary Doyle, Senior Vice President, General Counsel, and Secretary, Palm, Inc. John A. Squires, Chief.......
Read More


Patent Office officially announces pilot plan for submission of prior art by third parties
June 07, 2007
Post by Blog Staff
The USPTO yesterday officially announced the institution of a pilot project concerning "public submission of peer reviewed prior art." As we previously blogged on March 5 and February 28, the pilot project will be voluntary, and limited initially to the "computer arts." It will be handled on the Peer-to-Patent website, developed by the Community Patent Review Project at New York Universi.......
Read More


KSR at the USPTO: sea change?
May 29, 2007
Post by Blog Staff
Over at The Fire of Genius, Joe Miller of Lewis & Clark Law School has compiled a list of cases citing KSR. As of today, there are 2 Federal Circuit decisions (blogged about here and here), 2 district court decisions [Update (6/2) there is now a third], and a whopping 31 Board of Patent Appeals and Interferences decisions [Update (6/2) there are now 45 Board decisions] citing KSR. According to Miller:The.......
Read More


Preliminary injunction against Google image search's display of copyrighted images reversed
May 18, 2007
Post by Blog Staff
In a lengthy and tech-heavy opinion [Update (12/4): the court has released an amended opinion, available here], the Ninth Circuit this week reversed a preliminary injunction against Google restricting its image search from displaying thumbnails of images copyrighted by Perfect 10, Inc. There are several aspects of the ruling of interest, such as:Holding that Perfect 10 failed to show Google would not likely p.......
Read More


House subcommittee sends Patent Reform Act of 2007 to full Judiciary Committee
May 18, 2007
Post by Blog Staff
The House subcommittee on Courts, the Internet, and Intellectual Property this week has approved the House version of the Patent Reform Act of 2007 (H.R. 1908). The bill now goes to the full House Judiciary Committee for further review before going to the House for a full vote.Although this is a key first hurdle for patent reform legislation this legislative session, many of the subcommittee members expressed .......
Read More


Coalition of over 100 companies expresses concerns over the Patent Reform Act of 2007
May 16, 2007
Post by Blog Staff
In a letter to democratic and republican leadership as well as the members of the House and Senate judiciary committees, the Innovation Alliance, along with over 100 other companies, expressed concern over many of the proposed reforms in the Patent Reform Act of 2007 (H.R. 1908 and S. 1145). The group states that many of the reforms in the Act are contrary to Speaker Pelosi's Innovation Agenda. The gro.......
Read More


More continuation rules rumormongering: 2 continuations + 1 RCE?
May 11, 2007
Post by Blog Staff
With the AIPLA 2007 spring meeting going on in Boston this week, there has been no shortage of rumors flying about the substance of the new continuation rules expected to be issued by the USPTO in July. According to multiple reports (all apparently originating with Hal Wegner), the substance of the rules is likely to be:Applications yet to receive a first office action:A "2+1" limit on continuations w.......
Read More


Academy of Motion Picture Arts and Sciences sues Oscarwatch.com for trademark infringement
May 08, 2007
Post by Blog Staff
The Academy of Motion Picture Arts and Sciences (AMPAS) has sued the operator of the website oscarwatch.com for trademark infringement based on the use of "Oscar" in the website's address. AMPAS holds several federal trademark registrations for "Oscar" for various goods and services, such as "telecasts in connection with recognition of distinguished achievement in the motion pictur.......
Read More


Roundup of media coverage of KSR and Microsoft
May 01, 2007
Post by Blog Staff
Below is a sampling of various media reports regarding yesterday's two Supreme Court patent decisions, KSR Int'l Co. v. Teleflex, Inc. and Microsoft Corp. v. AT&T Corp.:"Court douses patent wildfire" (Chicago Tribune)"Ruling toughens patent process" (USA Today) "Patent protections tempered by Supreme Court rulings" (Los Angeles Times) "High court puts limits on pa.......
Read More


New rules on continuations: coming to a CFR near you this July?
April 30, 2007
Post by Blog Staff
If the latest rumors are true, the USPTO may be giving inventors and patent prosecutors the newest summer blockbuster. According to Hal Wegner, on April 10, 2007, the USPTO submitted two rules to the Office of Management and Budget (OMB) for review, one related to continuation practice and "patentably indistinct claims," and another related to examination.As reported by Dennis Crouch at Patently-O, th.......
Read More


House subcommittee holds first hearings on Patent Reform Act of 2007
April 27, 2007
Post by Blog Staff
Yesterday a subcommittee of the House Judiciary Committee, the Subcommittee on Courts, the Internet and Intellectual Property, held the first hearings on the House version of the Patent Reform Act of 2007 (HR 1908). The witnesses were:Gary L. Griswold, President and Chief Counsel of Intellectual Property 3M Innovative Properties, St. Paul Minnesota (testimony on behalf of the Coalition for 21st Century Patent .......
Read More


Compulsory patent licenses for AIDS drugs: the beginning of an international trend?
April 26, 2007
Post by Blog Staff
The global concern over the spread of AIDS, particularly in developing countries, is prompting some countries to take action to make patented drugs more accessible to its citizens. Earlier this year, Thailand decided to "break," or require a compulsory license to, the patent for Efavirenz, marketed as Sustiva® and Stocrin®, patented by Merck (Orange Book entry). Thailand has also now enacted .......
Read More


Patent Reform Act of 2007
April 19, 2007
Post by Blog Staff
As noted yesterday, four members of Congress (Leahy and Hatch in the Senate, Berman and Smith in the House) announced introduction of new patent reform legislation yesterday. Also as predicted yesterday, it is similar in many respects to patent reform legislation introduced in 2005 and 2006, but with a few new twists.More details of the proposed changes after the jump. The changes proposed by the bill can.......
Read More


Patent Examiner groups air their grievances
April 18, 2007
Post by Blog Staff
In an open letter to the heads of the United States, European, Canadian, German, and Austrian patent offices, an international coalition of patent examiner groups seeks changes in the demands on patent examiners, stating that the increase in productivity demands and the number of applications to be examined, combined with the increased complexity of applications is leading to a decline in patent quality. The gr.......
Read More


Congress to introduce patent reform bills today
April 18, 2007
Post by Blog Staff
In a press conference scheduled for 2:30 2:15 pm EDT this afternoon, Senators Patrick Leahy (D-VT) and Orrin Hatch (R-UT), with Representatives Howard Berman (D-CA) and Lamar Smith (R-TX), are expected to announce introduction of identical bills in both the House and Senate in an effort to reform the patent system. [Update (4/19): see this post for more detail on the proposed legislation.] Senator Leahy.......
Read More


Splenda leaves a bitter taste in competitors' mouths
April 10, 2007
Post by Blog Staff
The business may be all about sweetness, but the competition can be bitter. That's the story right now in the artificial sweetener business, with much of the action centered around sucralose, the sweetener in Splenda®. The sweetener is the subject of several currently pending cases.In the first, rival sweetener maker Merisant, maker of Equal® and Nutrasweet®, have sued the producer of Splenda&re.......
Read More


USPTO to partner with National Inventors Hall of Fame and Ad Council to promote innovation in youths
April 06, 2007
Post by Blog Staff
Today the USPTO scheduled a press conference for Tuesday, April 10, to discuss details of a new public service advertising campaign to "engage a new generation of children to make innovation, invention and technological development an integral part of their lives." The USPTO will be partnering with the National Inventors Hall of Fame Foundation, operators of Camp Invention®, Club Invention®, a.......
Read More


Reebok files patent infringement against Nike over collapsible shoes
April 05, 2007
Post by Blog Staff
Earlier this week, #2 shoe manufacturer Reebok sued #1 shoe manufacturer Nike for patent infringement. The patent at issue, number 7,168,190, just issued in the end of January, and relates to collapsable shoe technology. The idea is that the shoe design allows it to be rolled or folded for easier packing into, for example a gym bag. The lawsuit alleges that at least 12 different styles of Nike shoes infringe th.......
Read More


Trademark infringement helping the needy?
March 28, 2007
Post by Blog Staff
In November, 2006, approximately $200,000 worth of action figures were detained at the United States-Canada border by US Customs and Border Protection. They were stopped under the authority granted to the US Customs and Border Protection office, to prevent importation of goods that violate another company's trademark or copyright rights. In order to take advantage of these enforcement powers, a company that owns.......
Read More


USPTO releases strategic plan for 2007-2012
March 26, 2007
Post by Blog Staff
Today the USPTO released its strategic plan for the next five years, 2007-2012. The summary is available here, and the full plan here. Some thoughts on the strategic plan after the jump.After a quick read-through, much of the strategic plan appears to be a "let's keep doing what we're doing right and stop doing what we're not" kind of document, but there are a few items that should be n.......
Read More


Wall Street Journal on Viacom v. YouTube
March 23, 2007
Post by Blog Staff
Walter Mossberg of the Wall Street Journal has a column discussing the Viacom v. YouTube case (previously blogged about here). Mr. Mossberg thinks the problem is not confined to the particular dispute between Viacom and YouTube/Google, but rather is indicative of a need for greater guidance in copyright law from Congress. The Digital Millennium Copyright Act (DMCA), which was supposed to help to bring copyright la.......
Read More


Leo Stoller v. Google: the final chapter?
March 21, 2007
Post by Blog Staff
Over at the TTABlog, John Welch has a report about what appears to be the final chapter in notorious "intellectual property entrepreneur" Leo Stoller's fight with Google over the rights to the Google trademark. Mr. Stoller, through his various entities, had both opposed Google's application to register the Google mark and also filed for registration on the Google mark for exercise balls and other sports equipment.......
Read More


FTC charges various invention promotion companies with contempt
March 21, 2007
Post by Blog Staff
The Federal Trade Commission (FTC) has filed contempt charges against several companies and individuals who had been found to be swindling inventors under the guise of providing so-called "invention promotion services." In 1998, the U.S. District Court for the Eastern District of Virginia entered an order preventing these individuals and companies from fraudulenty promoting: the likelihoo.......
Read More


First patent issues from USPTO's accelerated examination program
March 15, 2007
Post by Blog Staff
On Tuesday, Brother, the company best known for printers and copiers, received the first patent issued based on an application filed under the USPTO's accelerated examination program. The patent, number 7,188,939, relates to ink cartridges, and resulted from an application filed on September 29, 2006, just over a month after the accelerated examination procedure became available. Many are somewhat .......
Read More


Viacom sues YouTube, Google for copyright infringement
March 13, 2007
Post by Blog Staff
In a press release today, Viacom, owner of the MTV and Comedy Centraltelevision networks (among others), announced it is suing YouTube and its parent company, Google, for copyright infringement. The lawsuit seeks over $1 billion in damages. The parties had been in negotiations for YouTube/Google to have a license to provide Viacom's content on YouTube, but negotiations broke down, and .......
Read More


USPTO to institute pilot project to allow public comments on pending applications
March 05, 2007
Post by Blog Staff
The Washington Post today provided more detail about a pilot program previously mentioned in this post. Under the program, the USPTO would post pending patent applications that have become accessible to the public (such as after they have been published). Members of the public would then be able to comment on the applications, and even provide additional prior art that the patent office could consider during exa.......
Read More


New rules limiting continuation applications coming soon?
March 02, 2007
Post by Blog Staff
According to multiple rumors, the USPTO may be nearing publishing its final rules regarding limits on continuation applications. When initially announced in January 2006, many patent practitioners and law professors, including now-Federal Circuit Judge Kimberly Moore, believed the limits to be beyond the scope of the USPTO's authority to enact, instead requiring a statutory change by Congress. The .......
Read More


USPTO Director Jon Dudas talks patent reform
February 28, 2007
Post by Blog Staff
Over at ZDnet there is very good coverage of a recent speech about patent reform by USPTO director Jon Dudas. Mr. Dudas spoke at the Tech Policy Summit on the issue of whether the patent system was hurting innovation. Mr. Dudas stated that the biggest problem leading to bad quality patents is the obviousness requirement, which the Supreme Court is addressing in the KSR v. Teleflex case argued last .......
Read More


On this date: 1842
February 21, 2007
Post by Blog Staff
William Greenough patents the first sewing machine. Patent available at the USPTO here, and at Google here.....
Read More


Where is the real "Icebox of the Nation"?
February 20, 2007
Post by Blog Staff
In what can only be described as a chilling trademark dispute, the cities of International Falls, Minnesota and Fraser, Colorado are battling over the right to call their respective cities the "Icebox of the Nation." At issue is International Falls' trademark registration, number 1599660, for "COLD WEATHER TESTED CITY OF INTERNATIONAL FALLS IN THE ICEBOX OF THE NATION." The cities were in.......
Read More


Happy National Inventors' Day!
February 11, 2007
Post by Blog Staff
Today is National Inventors' Day, a day to celebrate the contributions that inventors have brought into our lives. National Inventors' Day is today (February 11) because it is also the birthday of one of the most prolific inventors of all time, Thomas Alva Edison, who was awarded 1,097 patents over the course of his lifetime, including most famously the incandescent light bulb (Patent No. 223,898). Nat.......
Read More


Inventors Hall of Fame announces 2007 inductees
February 10, 2007
Post by Blog Staff
The National Inventors Hall of Fame has announced this year's inductees. In all, 16 inventors were inducted, 7 living and 9 posthumously. Those honored include: Paul Baran and Donald Davies for digital packet switching Paul Lauterbur and Peter Mansfield for Magnetic resonance imaging (MRI) Emmett Chappelle for Bioluminescence techniques Leroy Hood for the.......
Read More


Bush proposes 8% increase in USPTO funding for fiscal 2008
February 06, 2007
Post by Blog Staff
In his proposed budget released on Monday, President Bush proposed $1.9 billion in funding for the USPTO in fiscal year 2008. In addition to this amount, USPTO fees would also not be diverted to cover other government programs, instead permitting the USPTO to use the full amount of collected fees for operating expenses, including hiring and training additional examiners. If approved, the budget wou.......
Read More


Are wedding receptions full of copyright infringers?
February 06, 2007
Post by Blog Staff
Maybe, if you ask Richard Silver. Mr. Silver claims to have invented the dance known as the "Electric Slide" at a disco in 1976. He registered a copyright on his performance of the dance in 2004. While Mr. Silver's claims may seem dubious (such as, for example, his claims on his website that he also invented break dancing and "the robot" dance), he has, thus far, been vigorous in using copyright l.......
Read More


Federal jury finds H.264 video compression standard does not infringe patent
January 30, 2007
Post by Blog Staff
A federal jury in San Diego recently found that Broadcom, a company that produces chips used in everything from mobile phones to next-generation DVD players, does not infringe two patents held by Qualcomm on video compression technology. Why is this finding important? Qualcomm asserted its patents covered the H.264 video compression standard, which is the standard used by everything from DirecTV and Dish Network.......
Read More


On this date: 1886
January 29, 2007
Post by Blog Staff
Karl Benz patents his "Motorwagen," the first automobile. Below are figures from the patent: The full patent (in German) is available here.....
Read More


Federal Circuit proposes revised circuit rules
January 23, 2007
Post by Blog Staff
The Federal Circuit Court of Appeals has proposed changes to its Circuit Rules. The revised rules would require parties, in addition to filing paper copies of briefs and appendices, to also file the briefs and appendices in electronic form unless counsel certifies that filing an electronic copy would not be practical or constitute hardship. The purpose of the new rule is to facilitate posting of the briefs and a.......
Read More


Cisco's General Counsel blogs about dispute with Apple over iPhone trademark
January 23, 2007
Post by Blog Staff
In an interesting PR move, Mark Chandler, Senior Vice President and General Counsel of Cisco Systems, has posted an informative description of the Apple-Cisco iPhone trademark lawsuit on one of Cisco's blogs. Commentary on the blog, while mixed, appears to be predominantly positive, particularly by those who did not understand Cisco's legal position when the lawsuit was announced. This could be a foresha.......
Read More


Ketchup makers battle over rights to "red zone"
January 22, 2007
Post by Blog Staff
Ketchup giant Heinz and rival ketchup maker Red Gold are embroiled in a trademark dispute over the right to use "Red Zone" in promotions associated with football games. In football, the red zone is the common name of the area between the 20-yard line and the end zone, and a team's offense is often measured by how well they perform once they enter into the opponent's red zone. Red Go.......
Read More


University of Texas sues over use of "sawed-off" horns logo
January 22, 2007
Post by Blog Staff
The University of Texas has sued Aggieland Outfitters, a retailer in College Station, Texas (home of rival university Texas A&M) over its use of a modified version of the Texas Longhorns logo. The original logo and the modified version appear below: The retailer has been selling merchandise bearing the "sawed off" logo since 1997, but Texas did not object until it filed suit on December 4, 20.......
Read More


Starbucks loses Korean appeal, Starpreya can continue to use name there
January 12, 2007
Post by Blog Staff
The Korean Supreme Court today denied an appeal by Starbucks to cancel a rival's trademark there. Specifically, the Court noted that Starbucks was not well-known in Korea when the rival coffee provider (who uses a similar logo) registered its trademark. MVS previously blogged about the appeal here. This case, along with the ongoing saga between Budweiser and Budvar, show the difficulties that can arise when.......
Read More


Cisco sues Apple over iPhone trademark
January 11, 2007
Post by Blog Staff
Apple, the company that dominates the digital music player market with the iPod, announced this week at the annual MacWorld show in San Francisco that Apple will be entering another lucrative consumer electronics market: the mobile phone. Apple CEO Steve Jobs announced his company's newest offering: the iPhone. Apple's stock increased 10% just from the announcement of the iPhone, although they will not.......
Read More


Sioux Falls inventor files one millionth electronic trademark application with USPTO
January 10, 2007
Post by Blog Staff
The USPTO recently received the one millionth trademark application filed electronically via its TEAS system. It took just under ten years for the one millionth electronic application to be filed, as the TEAS system first became available in November, 1997. The applicant, Donald Junck of Sioux Falls, South Dakota, was flown out to the USPTO in Alexandria, Virginia, and will take part in a commemoration ceremony .......
Read More


Anheuser-Busch and Budvar reach agreement, but trademark fights continue
January 09, 2007
Post by Blog Staff
United States brewer Anheuser-Busch, maker of Budweiser beer, has reached an agreement with Czech brewer Budejovicky Budvar, to distribute Budvar's Czechvar lager. This agreement is interesting because the two companies have been involved in trademark disputes around the world over which company has the right to use the name "Budweiser." Budvar's beer is sold as Budweiser Budvar in several coun.......
Read More


MIT Offers Free Course Materials on United States Copyright Law
January 05, 2007
Post by Blog Staff
The Massachusetts Institute of Technology (MIT) is offering an introductory course to Copyrights via its OpenCourseWare website. The website describes the course as "an introduction to copyright law and American law in general." Topics covered include: 1) Structure of federal law 2) Basics of legal research 3) Legal citations 4) How to use LexisNexis? 5) The 197.......
Read More


Celebrities are inventors too
January 04, 2007
Post by Blog Staff
Inventors come from all walks of life, so it shouldn't be a surprise that celebrities are inventors also. One blogger used the new Google patent search to search for famous names as inventors of patents. Click here for the list of patents he discovered. Figures from a few of my favorites after the jump. Click on the images see the full patent (and the inventor). ....
Read More


Speculation not required: IP litigation in 2006 produced $3.4 billion
January 04, 2007
Post by Blog Staff
Contrary to the statement in the previous post, apparently speculation is not required to determine the amount of money that changed hands as a result of intellectual property litigation in 2006. According to a survey [subscription required to view full story] by IP Law 360, intellectual property litigation resulted in a combined $3.4 billion in settlements and judgments in 2006. This total was down from 2005, p.......
Read More


Patent cases in 2006 result in over $1 billion in damages awarded
January 03, 2007
Post by Blog Staff
According to a study released by Bloomberg, United States juries in patent cases awarded a total of over $1 billion in damages in cases that went to jury trial in 2006, the largest single year ever. The largest award went to Rambus, a California maker of computer memory chips, who won a $307 million verdict against South Korean rival Hynix Semiconductor in April, although the verdict was eventually reduced to $13.......
Read More


USPTO releases 2006 annual report
December 27, 2006
Post by Blog Staff
Just before Christmas, the United States Patent and Trademark Office released its 2006 annual report. Among the highlights: 332,000 patents were examined, the most ever 54% patent allowance rate, the lowest on record (comment: apparently the USPTO considers granting a lower percentage of patents to be good news) 3.5% patent allowance error rate (comment: this statistic is compiled by the "Office of Paten.......
Read More


Starbucks appeals denial of cancellation of Korean company's trademark
December 21, 2006
Post by Blog Staff
Starbucks is appealing a decision denying cancellation of a Korean company's trademark, asserting it infringes Starbucks' trademark. The Korean company, Starpreya, uses a green circular logo that Starbucks asserts is confusingly similar to its logo. Below are the two logos: Starbucks has already unsuccessfully opposed Starpreya's mark in two cases before the Patent Court of Korea. The appeal w.......
Read More


New GAO report suggests that some patents may hamper development of new "innovative" drugs
December 21, 2006
Post by Blog Staff
A report released by the Government Accountability Office indicates that while expenditures on research and development by drug companies have increased, this has not resulted in a commensurate increase in new drug applications (NDAs) with the FDA. In fact, NDAs have decreased by 21% from 1999 to 2004. The larger concern raised by the report is the decrease in the number of NDAs for "new molecular .......
Read More


Protecting a business name: the basics
December 19, 2006
Post by Blog Staff
MSNBC has published an article with some basic tips for businesses to protect their trade names as trademarks. While the suggestions are fairly generic, it does at least provide some simple guidance for individuals who do not have any experience with intellectual property law in general or trademark law in particular. This piece is similar to a Forbes article we blogged about a few weeks ago regarding marketing .......
Read More


UK considering peer review for patent system
December 15, 2006
Post by Blog Staff
After a review of Great Britain's intellectual property laws, the UK patent office is considering implementing a peer review procedure as part of its patent examining process. This was one of the recommendations of the Gowers Review of Intellectual Property, published on December 6. The idea is based in part on the Peer to Patent Project, described in a recent article by NYU law professor Beth Noveck in the Harv.......
Read More


Holy trademark infringer, Batman!
December 14, 2006
Post by Blog Staff
The Russian Main Intelligence Directorate, commonly referred to as the GRU, appears to use a somewhat famous mark as part of its logo. The GRU's logo is shown below: Even Russian President Vladimir Putin appears to notice the distinctive logo at GRU headquarters: Of course, there are sovereign immunity issues that likely prevent DC Comics from actually being able to sue for trademark infringement, but .......
Read More


Google launches new patent search
December 14, 2006
Post by Blog Staff
Last night, search engine giant Google launched a new service, Google patent search. The search allows users to search all United States patents since 1790. It also provides links to each U.S. patent listed in the prior art statement as well as other patents that cite the patent in their own prior art statements. The advanced search function allows search terms to be limited by field, such as inventor, assignee.......
Read More


Fort Des Moines Museum and Education Center Elects New Board President
December 13, 2006
Post by Blog Staff
The Fort Des Moines Museum and Education Center has a new president. Attorney and Iowa Army National Guard colonel, Janet E. Phipps Burkhead, was elected to the position at the Annual Meeting of the Museum and Education Center Board on December 12, 2006. The park and center were established to honor and recognize Fort Des Moines as the U.S. Army's first and only officer candidate class for African A.......
Read More


Nintendo hit with patent infringement lawsuit over "Wiimote"
December 12, 2006
Post by Blog Staff
Nintendo, makers of one of the hottest Christmas gifts this year, the Wii, is being sued for patent infringement. Interlink is suing the electronics giant over the "Wiimote," the common name for the Wii's controller. Below is the Wiimote and Figure 1 of Interlink's patent:Interlink's patent is directed toward a "trigger operated electronic device," and asserts that the Wiimote'.......
Read More


Man upset over patent, kills three at Chicago law firm
December 10, 2006
Post by Blog Staff
On Friday, a gunman forced his way into the Chicago offices of intellectual property law firm Wood, Phillips, Katz, Clark & Mortimer. The gunman, Joe Jackson, killed three employees of the firm before being fatally wounded by Chicago police. Among those killed were two patent attorneys, Michael McKenna and Allen Hoover, and a mail clerk, Paul Goodson. The firm has issued a press release about the incident. .......
Read More


Prepaid cellular phone seller sues over DMCA exception
December 06, 2006
Post by Blog Staff
TracFone Wireless, the largest seller of prepaid cellular phone service in the United States, has sued the Librarian of Congress and Register of Copyrights, alleging that one of the DMCA exemptions granted last month is unlawful. Specifically, TracFone is upset about the exemption permitting cellular phone users to "unlock" their phones in order to use them with another service provider.TracFone makes m.......
Read More


Roundup of media coverage of "KSR v. Teleflex"
December 04, 2006
Post by Blog Staff
After last week's arguments before the Supreme Court in KSR v. Teleflex, the media has begun to offer its perspective on the case. Below is a sampling of the media coverage, which generally appears to think that the teaching-suggestion-motivation (TSM) test will either be scrapped entirely, or at least allow other ways to prove an invention is obvious, and therefore not patentable.New York TimesUSA TodayLos Angel.......
Read More


Buffett settles with alleged trademark infringer
November 29, 2006
Post by Blog Staff
Jimmy Buffett reached a settlement with a man he accused of selling merchandise that infringed his trademarks. The alleged infringer, Robert Akard, was selling Buffett-themed merchandise via his website. The judge in the case ordered Mr. Akard's website shut down until the conclusion of the case and to disclose how much money he had made via his online sales. On Monday, however, Mr. Akard was found to be in con.......
Read More


Johnson selected for TAI Board of Directors
November 28, 2006
Post by Blog Staff
The Technology Association of Iowa (TAI) today announced the names of eight newly-elected industry leaders to its Board of Directors. The executives share a strong commitment to develop Iowa's information technology (IT) sector as an engine for broad-based economic prosperity. The newly appointed board members are: John-Paul Besong, Senior Vice President of e-Business and Lean Elec.......
Read More


Mattel sues makers of Bratz dolls for trade secret misappropriation
November 27, 2006
Post by Blog Staff
Mattel, the manufacturer of Barbie dolls, sued a former employee, Carter Bryant, for trade secret misappropriation in 2004. Now, Mattel is attempting to add MGA Entertainment, makers of the relatively new Bratz dolls, to the case. Mattel alleges that Mr. Bryant conceived of the Bratz doll design while working for Mattel, and therefore Mattel owns the rights to Bratz dolls.Mattel is also attempting to register se.......
Read More


US Copyright office issues new exemptions from DMCA
November 25, 2006
Post by Blog Staff
Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA"). The DMCA was enacted in 1998. As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works. For example, it is a violation of the DMCA to use a program to "break" the content scramble system ("CSS") encr.......
Read More


Washington Apple Commission takes on Chinese trademark office
November 21, 2006
Post by Blog Staff
The Washington Apple Commission has filed suit against the Chinese Trademark Review and Adjudication Board over its refusal to register a trademark. The mark at issue is shown below:This mark is registered in the United States, but in China, "well-known" geographical names cannot be used as trademarks unless there is also another meaning. The Apple Commission contended that "Washington" was a.......
Read More


Jimmy Buffett sues website owner for trademark infringement
November 17, 2006
Post by Blog Staff
Singer Jimmy Buffett has sued an individual operating a website that he asserts sells trademarkeditems without his permission. Apparently the website (which is currently down) states it is "Jimmy Buffett's Online Store for Merchandise." He previously sued and won a judgment and injunction against this individual in the past in Nevada, but now he has moved to Texas, and allegedly continues to infringe.The alleged.......
Read More


University of Alabama sues artist for trademark infringement
November 16, 2006
Post by Blog Staff
The University of Alabama has sued Daniel Moore, an artist who paints pictures of various sporting events. Among his work is a picture entitled "The Sack," depicting a play in a 1986 college football game where Cornelius Bennett of the University of Alabama sacked Notre Dame's Steve Beuerlein. The university claims that Mr. Moore is infringing the its trademark rights, including its "famous crimson.......
Read More


View all Filewrapper® Posts

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.