Posts Tagged ‘USPTO’

Do Not Try Attempt to ‘Trademark’ Covfefe

June 12th, 2017 Alexander No comments

On Wednesday, May 31st, at 12:06 a.m., President Donald Trump tweeted the following: “Despite the constant negative press covfefe”- and that was it. However, at 5:50 a.m., the tweet was deleted.

At 8:49 a.m., Kenneth L. Gallman applied at the USPTO to register “Covfefe Coffee” as a federal trademark, stating that he wants to use it to sell coffee.

Eight days after the tweet was posted, twenty-six “Covfefe” trademark applications had been filed. Some of these included clothing, beer, fragrance, and investment advice.

Trademark lawyers expected this to happen. These days, trending words from the news and pop culture are usually superseded by trademark applications. Three days after the Boston Marathon bombing, four applications had been filed for “Boston Strong.” Fifteen applications had been filed for “Nasty Woman”, the phrase Trump used to describe Hilary Clinton during a presidential debate, by the end of last year.

Mark H. Jaffe, a trademark attorney, stated that: “There’s this perception for certain people that this is somehow a money maker, this quote-unquote ‘trademarking it’. But that’s not exactly how it works.” The bulk of the rush-to-register applications are denied by the USPTO, resulting in a waste of time and money.

For more information see Law360.

Joanne Ludovici, a partner at McDermott Will & Emery LLP, said: “These types of trending phrase trademark filings are rarely productive uses of applicant resources because they rarely meet the requirements for federal registration.” In order to obtain a registration, the applicants must demonstrate a bona fide intent to use the term on a specific set of goods and services, which is something the majority of them lack. On top of this, the applicants must demonstrate that the term distinctively distinguishes the applicant as a source of goods.

An examiner stated that: “The public will not perceive the slogan as a trademark that identifies the source of applicant’s goods, but rather only as conveying an informational message: that the consumer or purchaser supports the ideas and messages conveyed by rallies and organizations dedicated to advancing women’s rights.”

For more information, see Law360.

IP Firms Changing Their Methods

June 5th, 2017 Alexander No comments

Intellectual property boutiques have acclimatized to increased prices and a deceleration in patent cases after two IP firms have closed down.

Professional state that several IP boutiques have effectively adjusted to the decrease in patent litigation after the passage of the American Invents Act in 2011. They have done this by instead focusing on USPTO proceedings developed by the government. For firms that specialize in patent prosecution, their method has been to cut rates by offering legal process outsourcing and alternative fee arrangements.

Fish & Richardson PC is the largest intellectual property boutique on the Law360 400. Finnegan Henderson Farabow Garrett & Dunner LLP come in second, and Knobbe Marten Olson & Bear LLP at third. In 2016, Fish & Richardson increased its number of attorneys by more than six percent.

Kenyon & Kenyon was no longer on the list after it merged with Andrews Kurth Kenyon LLP back in August.

While several intellectual property firms have gone out of business, others continue to expand.


The 2011 American Invents Act developed new types of post-grant proceedings, offering a low-cost method for accused infringers and third parties to contest the validity of the patent at the USTPO’s Patent Trial and Appeal Board. These reviews have increased up to more than 1,700 petitions a year. This has also caused a decrease in district court patent litigation because the cases are being put on hold for IPRs. Consequently, intellectual property firms have lost their ability to get district court work.

However, creative intellectual property boutiques have offered for IPR actions, placing themselves as go-to Patent Trial and Appeal Board attorneys. Ray, the Stern Kessler lawyer, stated that the enactment of the AIA offered an opportunity for lawyers who had some prior USPTO experience to become experts in the new proceedings.

Dealing with Price Demands

Clients are increasingly seeking to cut down on their intellectual property budget after the economic downturn in 2008. According to Ray, recent case law and legislation have also added to this by decreasing the value of the patent. Accused infringers are not likely to pay for a license or settle because now it is cheaper and easier to invalidate patents through an IPR or other post-grant proceeding at the USPTO. Patent holders view this as being more difficult to realize a profit when litigation is not likely to result in settlement or licensing fees. As a result, favorable prices are crucial for firms because companies are doubting the value of a patent portfolio and hoping to get that portfolio for a lower price. Alternative fee structures in addition to legal process outsourcing assists in increasing efficiency and decreasing costs.

Discovering Different Venues

Intellectual property firms are looking for new industries and venues in which they can develop.

The Supreme Court’s ruling in TC Heartland v. Kraft Foods Brand means that district court patent suits will change geographically very soon. Additionally, the U.S. International Trade Commission has become a more attractive venue for patent owners seeking to stop imports of infringing items. ITC cases are different from district court litigation in that they are not stayed for PTAB proceedings. This essentially means that companies are able to receive an order banning imports faster.

For more information, see Law360.

Fed. Circ. Recognizes Non-Lawyer Patent Agent Privilege

March 13th, 2016 Alexander No comments

In a case over smartphones, a split Federal Circuit ruled that communications between U.S. patent applicants and their non-attorney patent agents should be afforded some degree of privilege.

For the first time, the appeals court recognized a patent agent privilege, affording the same type of protections in attorney-client privilege to communications between registered patent agents and their clients.

Patent agents are not licensed attorneys, but they are certified to prepare and prosecute patent applications before the U.S. Patent and Trademark Office.

“We find that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege,” Circuit Judge Kathleen McDonald O’Malley wrote on behalf of the majority panel.

The scope of this privilege is limited to exclude communications that are not “reasonably necessary and incident to the prosecution of patents before the Patent Office.” For example, an opinion about the validity of someone else’s patent is something that would not be protected.

The ruling comes from a case between Queen’s University at Kingston, a research university in Ontario, Canada, and Samsung Electronics Co. Ltd.

Queen’s University sued Samsung, claiming Samsung’s Galaxy S4 and Galaxy Note 3 smartphones infringe its patents for technology that allows humans to communicate with computers with their eyes. Samsung the year before had unveiled its SmartPause feature, which enabled users to pause a video simply by looking away from the screen.

During the course of discovery, Queen’s University refused to hand over certain documents, including communications between university employees and registered patent agents talking about the prosecution of the disputed patents.

After Samsung protested, the district court ordered Queen’s University to produce the communications, finding they were not protected by attorney-client privilege and that a separate patent agent privilege did not exist. The ruling was stayed until the Federal Circuit could hear the university’s mandamus petition.

The Federal Circuit said an applicant has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be privileged.

“Whether those communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment,” the judge wrote. “Indeed, if we hold otherwise, we frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.”

For more information, see Law360.

Categories: Intellectual Property

USPTO Not Backing Down From TM Fight With Alabama Judge

October 7th, 2015 Alexander No comments

The U.S. Patent and Trademark Office has found itself in hot water: fighting back against a federal judge who ordered the Trademark Trial and Appeal Board to erase one of its precedent-setting opinions.

An Alabama federal judge approved a private settlement last year between the University of Alabama and a small T-shirt company that required the TTAB to vacate a ruling it handed down against the university. The board refused this summer, arguing the judge couldn’t overturn a ruling without reviewing it.

The TTAB is fighting back, saying such an outcome would allow parties to improperly use private settlements to wipe out valuable administrative case law simply because they don’t like it.

“It’s an interesting situation that I’ve never seen happen before,” said John L. Welch, a trademark attorney with Wolf Greenfield & Sacks PC and an expert in TTAB proceedings.

The case centers on a trademark application filed by a ‘Bama fan, for a logo with a houndstooth pattern bearing the words “Houndstooth Mafia” to be used on T-shirts and hats. The logo was inspired by the signature houndstooth fedora worn by the late, great Alabama football coach Paul “Bear” Bryant during games.

The school filed an opposition at the TTAB to block the registration on the grounds that the houndstooth pattern itself had come to be closely associated with the school such that it owned common law trademark rights to the design.

A panel of TTAB judges strongly disagreed. In a 78-page precedential opinion dismissing Alabama’s case, the board said that even though the houndstooth design was associated with Bryant and the university, consumers don’t see it as the kind of distinctive source designator that Alabama could protect under trademark law.

Even though the two sides quickly settled their dispute when the “Houndstooth Mafia” mark was assigned to Alabama, Alabama still believed that the TTAB’s decision, was “clearly erroneous in a number of material respects” and “should be vacated.”

The TTAB refused to vacate its ruling. The TTAB said Judge Proctor could only overturn the decision with some kind of judgment that the board had made real legal errors. Indeed, Judge Proctor said he had expressly intended to overrule the board’s decision. “The court got it wrong. It wasn’t even in the same ballpark,” Proctor said of the board’s ruling.

Though the judge’s mind appears made up, government attorneys moved to intervene in the case, likely to appeal the decision if he sticks to his guns. And if briefs filed in recent weeks are any indication, they plan to strongly defend the TTAB’s right to keep its ruling.

Most importantly, the government briefs point out that neither party ever ordered the record from TTAB be sent to Judge Proctor for review, meaning he couldn’t possibly have fully reviewed the board’s decision.

Experts say the government has reason to fight: Precedential opinions are hugely important to the wider trademark community and policy goals of the agency, and the TTAB should only be forced to toss them if a judge rules on appeal that they’re legally incorrect — not because two parties say they don’t like them.

“I don’t see how a court can allow two parties to just throw out a decision,” Welch said. “It’s kind of crazy to let two parties decide that, on behalf of everyone in the country, ‘We don’t like that decision, so we’ll give you some money and we’ll wipe it off the books.’”

For more information, see Law360.

USPTO Unveils Reforms After Examiner Golfed On The Job

August 24th, 2015 Alexander No comments

The Office of the Inspector General for the U.S. Department of Commerce issued a scathing review of the U.S. Patent and Trademark Office’s time and attendance policies. In particular, its oversight of the former employee identified as Examiner A, who was not authorized to telecommute and committed at least 730 hours of time and attendance abuse, resulting in the payment of approximately $25,000 for hours not worked in Fiscal Year 2014 alone. These hours amounted to about 43 percent of the total hours the employee clocked for the fiscal year.

“The evidence regarding Examiner A’s actions raise concerns about whether the agency’s internal controls to prevent such misconduct are adequate and function properly,” the Inspector General said. “Despite numerous red flags and the USPTO’s internal controls, the agency did not review Examiner A’s time and attendance records to determine if he was claiming time for work he did not perform.”

The investigation started after two supervisory patent examiners at the USPTO walked into their offices and found copies of an anonymous letter claiming Examiner A only came into work at the “end of the quarter” to submit work.

On one occasion, Examiner A left work after spending less than three hours at the USPTO, writing in an instant message to a coworker at 12:57 p.m., “ok, did u wanna [hit golf balls at Golf Bar] today at all?”

The coworker replied a minute later, “Actually yeah, let’s just go there now?”

The inspector general could not identify any data that showed the examiner worked after the IM conversation, yet Examiner A certified a full day of work.

The inspector general found that during 613 of the 730 supported hours — the equivalent of about 76 work days — there was no evidence Examiner A visited any USPTO offices, connected to the USPTO network offsite, or performed any work on his government-issued laptop when connected to the network.

“Although the vast majority of the USPTO’s almost 13,000 hard-working and highly skilled professionals perform their jobs with integrity and dedication, the agency nonetheless takes very seriously even one incidence of time and attendance abuse, such as by this particular employee, who is no longer with the agency,” the USPTO said.

The agency will consider implementation of additional improvements to identify and correct “even isolated cases of abuse,” they said.

For more information, see Law360.

Categories: Uncategorized

USPTO Examples Show What Passes Under Alice

January 31st, 2015 Alexander No comments

The U.S. Patent and Trademark Office released a list of examples applying the U.S. Supreme Court’s Alice decision to hypothetical patents, which illustrates some of the computer-related inventions that can survive challenges under the ruling restricting the eligibility of patents involving abstract ideas.

The document includes eight examples: four inventions that are eligible for a patent under Alice and four that are not. Now, there some guidance of what the patent office is looking for.

Under Alice, abstract ideas implemented using a general-purpose computer are not eligible for a patent.

Many of the examples state that ways of performing long-standing business practices on a computer are not patent-eligible, while technological innovations dealing with the way a computer functions can pass.

For example, a method of providing a secure online sales transaction is not patent-eligible because it just a computerized way of creating a contractual relationship.

“This is simply a generic recitation of a computer and a computer network performing their basic functions,” the office wrote. “The claim amounts to no more than stating create a contract on a computer and send it over a network.”

However, a method of displaying multiple merchant websites within a single page, allowing Web users to visit several stores without leaving the page, was patent-eligible.

“The claim does not recite a mathematical algorithm; nor does it recite a fundamental economic or longstanding commercial practice,” the office said. “The claim addresses a business challenge (retaining website visitors) that is particular to the Internet.”

That theme runs through many of the examples, illustrating that in order to pass muster under Alice, inventions likely need to have a component that improves the functioning of a computer, rather than simply using a computer to make an existing process run more efficiently, said Donald Daybell of Orrick Herrington & Sutcliffe LLP.

The examples of things the USPTO found to be patent-ineligible tended to be much broader than those that were found eligible and involve things that had been done without a computer for a long time.

Nevertheless, the examination of any patent application is a fact-intensive inquiry, Daybell said, so the specific examples from the USPTO have a fairly limited practical value for determining whether any future application is patent-eligible or not. So even with this guidance, it’s tough for any practitioner to know where the line is drawn.

For more information, see Law360.

Categories: Intellectual Property

Justices Threaten To Sanction Foley Partner Over Petition

December 14th, 2014 Alexander No comments

The U.S. Supreme Court made the surprising move of ordering Foley & Lardner LLP partner Howard Shipley to show why he shouldn’t be sanctioned for his conduct stemming from an apparently jumbled petition for a writ of certiorari filed in a suit over a telephone call routing patent.

The order didn’t elaborate on why the high court disapproves of Shipley’s conduct, but a reading of the attorney’s petition raises at least two possibilities. First, the petition uses seemingly random punctuation and format changes, as well as confusing language and sentence structure.

For instance, the petition begins, “This petition is a refinement of SSBG’s preceding petition [121]1), asking this Court to unmistakably clarify, to the whole patent community12), that its Mayo/Biosig/Alice decisions (‘3 decisions’) ended the claim construction anomaly2) hampering especially ET CIs1) – but meet, by their ‘ET proof’ refined claim construction, all ET CI’s needs [sic].”

Additionally, the end of the petition specifies that the patent’s primary inventor, Sigram Schindler, made “significant contributions” to the petition.

Furthermore, the high court also rejected without comment Sigram Schindler’s challenge of an April ruling by the Federal Circuit that U.S. Patent Number 6,954,453 — which covers a method and apparatus for transmitting data in a telecommunications network — was obvious.

The panel’s ruling had affirmed a finding of obviousness by the U.S. Patent and Trademark Office, which reached its decision at the conclusion of a pre-America Invents Act re-examination proceeding performed at the request of Cisco Systems Inc.

For more information, see Law360.

Categories: Uncategorized

FedEx Nabs Inter Partes Review Of Shipment-Tracking Patent

December 11th, 2014 Alexander No comments

The U.S. Patent and Trademark Office patent board recently opted to institute inter partes review of a shipment-tracking patent held by licensing company IpVenture Inc., finding that FedEx Corp. has a decent chance of showing that IpVenture’s claims are either obvious or anticipated.

The USPTO’s Patent Trial and Appeal Board panel ruled that FedEx had a shown a “reasonable likelihood” of establishing that all 30 claims in IpVenture’s tracking patent would be anticipated or obvious in light of prior art. The panel therefore instituted inter partes review of the tracking patent.

FedEx filed for inter partes review of the tracking patent in May, arguing that a 2002 patent application publication that disclosed a system for tracking packages had anticipated 16 claims of IpVenture’s patent. The rest of the claims were obvious in light of a combination of the 2002 application and two patents issued in 2005 and 2007, FedEx argued.

In response, California-based patent licensor IpVenture claimed that FedEx’s petition hadn’t given the correct claim construction and had failed to show that the two cited patents were actually prior art.

But the panel said  that IpVenture hadn’t explained how any of FedEx’s arguments are incorrect due to “allegedly faulty claim constructions” and hadn’t pointed to any claim limitations that aren’t disclosed in the 2002 application publication.

The panel also found that the two cited patents qualified as prior art for the purpose of figuring out whether to institute a trial after noting it believed the correct priority date for the challenge claims wasn’t earlier than March 26, 2003.

A FedEx spokesman stated that the company welcomes the PTAB’s decision as it believes it bolsters its case.

“We believe the U.S. Patent and Trademark Office’s decision to institute review of IpVenture’s patent supports FedEx’s position that there is no merit to the allegations in the related patent litigation,” the spokesman said.

For more information, see Law360.

Categories: Uncategorized