Posts in IPWatchdog Articles

The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country.  This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.

On Friday, November 2nd, the Court of Appeals for the Eighth Circuit issued a decision in Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., et. al. which reversed various parts of the lower court’s decision in the trademark infringement case brought by Sturgis, which claimed to own trademarks covering merchandise related to a well-known motorcycle rally which has taken place in Sturgis, SD, going back to 1938. While the appellate court affirmed the district court’s denial as a matter of law to the defendants’ as to Sturgis’ claims of deceptive trade practices, false advertising and trademark infringement claims, the Eighth Circuit reversed the lower court’s findings that various marks asserted by Sturgis were valid because it found that Sturgis didn’t provide the jury with sufficient proof regarding validity.

For the innovators capitalizing on the legal growth, distribution, and commercial sale of cannabis, the procurement of intellectual property rights can go a long way in the monetization of their ideas, products, and services. As with any new venture, solidifying an IP protection strategy early on can maximize the benefits of a new invention and minimize risk the of potential infringement. This rings especially true in a field where so few patents, copyrights, and trademarks have been issued… It is not impossible to secure IP rights on cannabis-related inventions, but there are a number of factors to consider and a number of complexities to be aware of.

In May 2018, Scott Cooper and his companies, World Patent Marketing Inc. and Desa Industries Inc., agreed to a settlement with the Federal Trade Commission that bans them from the invention promotion business, and ordered payment of $25,987,192. The FTC charged World Patent Marketing with being nothing more than a scam, bilking millions of dollars from inventors. “The record supports a preliminary finding that Defendants devised a fraudulent scheme to use consumer funds to enrich themselves,” concluded United States District Judge Darrin P. Gayles as he issued a preliminary injunction in August 2017. Matthew G. Whitaker, the Acting Attorney General of the United States who ascended to the position with the resignation of Jeff Sessions, served on the advisory board of World Patent Marketing. Worse, Whitaker was involved in some of the egregious intimidation that led to the charges, issuance of an injunction and ultimately the settlement.

When Congress permitted sound recordings to be copyrighted over four decades ago, it didn’t extend that coverage to pre-1972 recordings. This issue, and the piecemeal nature of licensing for digital music on a per-work, per song basis, were part of the impetus for the stakeholders in the music industry to work together to create the Music Modernization Act, signed into law on October 11, 2018… Not all issues in the music industry were solved by the Music Modernization Act: licensing of physical sound recordings (vinyl and CDs) will still occur on a per-work, per song basis. Terrestrial radio pays songwriters and publishers royalties for playing music, but it doesn’t pay performance or sound-recording royalties. And while the goal of one public database is laudable, the responsibility still lies with songwriters and publishers to submit copyright applications and to submit all of their musical works and sound recordings to the MLC… While there is still work to be done, the Music Modernization Act does solve some long-standing issues in the music industry.

Early protection of intellectual property rights is a critical component in any business’ efforts to secure a competitive advantage in the marketplace. A recent report has found that patenting activity for cannabis food and drink has seen a large increase in global activity, in the last five years. 242 simple patent families have been filed in 2015, up from only 144 simple patent families filed in 2012. However, not a single food and beverage company was found to be among the top 10 applicants. Is this a sign that food and beverage companies are not well positioned to benefit from ongoing cannabis legalisation?

Director Iancu did not make much, if any, news speaking at PPAC today. He did, however, indicate that at least for now his major initiatives to reform the Patent Trial and Appeal Board (PTAB) have been rolled out, albeit with the last phase still in proposed rule form. Director Iancu indicated that he believes it is necessary now to carefully assess the implementation of these PTAB reforms and consider stakeholder reaction to the changes.

An administrative law judge at the U.S. International Trade Commission recently found patent infringement in Qualcomm’s case against Apple, but then inexplicably refused to recommend that the commission issue an exclusion order against infringer Apple. Is there some new standard that “established and profitable companies” are no longer deserving of ITC action?  The International Trade Commission is in danger of causing the same harm to patent rights as the U.S. Supreme Court has inflicted on patent owners with the court’s lame-brained eBay decision.

The Alliance of U.S. Startups and Inventors for Jobs (USIJ) recently released a report detailing the organization’s research into serial attacks on high quality patents at the Patent Trial and Appeal Board (PTAB). The USIJ’s research shows that, far from being a cheaper alternative venue for small businesses to challenge the validity of weak patents being asserted against them as was originally intended, the administrative tribunal has instead become a tool for rich, sophisticated companies who are able to harass owners of valuable patents with duplicative petitions filed either by themselves or by profiteering entities which weren’t envisioned when the Leahy-Smith America Invents Act (AIA) of 2011 was passed into law.

In patenting, one size does not fit all. There are many clients and there should be as many strategies, and those many strategies should change as the needs and ambitions of your clients change. Each client has unique business objectives. A patent strategy should be conceived to support and achieve those objectives. How does this occur? 

Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining traction or being unable to stop infringers from using your brand name. Below are 5 of the most common mistakes businesses make with trademarks and what you can do to avoid them.

Secretary of Commerce Wilbur Ross today announced the appointment of Laura Peter as deputy under secretary of commerce for intellectual property and deputy director of the United States Patent and Trademark Office (USPTO), effective November 13, 2018.

Today the flash of creative genius test has reared its ugly head once more, this time as a consideration under a patent eligibility inquiry and 35 U.S.C. 101 instead of under an obviousness inquiry and 35 U.S.C. 103. Today, thanks to the Supreme Court’s unintelligible Alice/Mayo framework, one must ask whether significantly more has been added to a patent claim such that the claim does not merely claim an abstract idea, law of nature or natural phenomenon. This final step in the Alice/Mayotest is referred to by the Courts as the hunt for the inventive concept. It is difficult not to notice the similarity between this hunt for the inventive concept that takes place when reviewing a claim under 101 and the supposedly defunct flash of creative genius test Congress attempted to write out of patent law in 1952.

Once we go down a path of government price controls and compulsory licensing we will have foregone opportunities for other, more rational policy choices and will soon find ourselves in a race to the bottom. Of course, making prescription drugs more affordable must be an important, shared goal. But the solutions we pursue cannot risk choking off America’s innovative ecosystem that leads the world in discovering new cures and treatments. As Nobel laureate and NIH Director Harold Varmus said in 1995, one must first have a new drug to price before one can worry about how to price it.  Letting our federal government import foreign price controls and expropriate patents is not the way to go about it.

According to statistics provided by the USPTO, since the beginning of fiscal year 2012, the Office has received a total of only 1,584 third-party submissions of prior art for consideration by patent examiners. The high water mark occurred in 2016, when the office received a total of 329 third-party prior art submissions. This declined to 266 submissions in 2017 and in fiscal year 2018, the USPTO received a total of only 141 prior art submissions.