Posts in IPWatchdog Articles

Steinfl + Bruno, LLP is Seeking a Patent Agent – Biotechnology

Steinfl + Bruno, LLP is seeking candidates with patent drafting and prosecution experience for a Patent Agent (not attorney) position. This is a full-time, permanent, remote position for the firm based in Pasadena, CA. Steinfl + Bruno’s Patent Agents participate in domestic and foreign patent prosecution and work directly with patent examiners and clients, including inventors, in-house patent practitioners, and foreign associates. They draft new patent applications, respond to Office Actions preparing substantive documents related to prosecution, and contribute to prosecution strategy. They also provide technical and legal research and analysis with respect to matters pending before the U.S. Patent and Trademark Office and participate in the planning, completion, and interpretation of literature searches using both online databases and other search techniques.

Organizations Tell USPTO Proposed 2025 Fees ‘Misuse’ Office’s Fee Setting Authority

The U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC), the Pharmaceutical Research and Manufacturers of America (PhRMA) and the Council for Innovation Promotion (C4IP) are among a number of organizations that have recently submitted comments on the U.S. Patent and Trademark Office’s (USPTO’s) proposed fee schedule for 2025 to express their concern about certain substantial fee increases.

Brazilian Congress Debates Regulatory Data Protection for Pharmaceutical Products

In May 2024, the Brazilian Senate Committee on Science, Technology, Innovation, and Informatics hosted two public hearings to discuss implementing Regulatory Data Protection (RDP) for pharmaceutical products of human use. The call for hearings (REQ 27/2023) was presented by Senator Izalci Lucas (Liberal Party). While recognizing that regulatory changes would have significant implications for the local industry, the healthcare system, and consumers, Sen. Lucas expressed concern that a lack of measures could discourage investment in R&D.

Obviousness Evolution: From PHOSITA to THOSITA to AI

The 1952 U.S. Patent Act’s section 103 takes a pass at overcoming hindsight bias by positing a hypothetical Person Having Ordinary Skills In The (relevant) Art, i.e. a PHOSITA. It took 13 years thereafter for the Supreme Court to breathe life into PHOSITA in the Graham v. John Deere, 363 U.S. 1 (1966) Trilogy, and in another 41 years it adjusted the barriers of a U.S. Court of Appeals for the Federal Circuit (CAFC) diversion of teaching, suggestion or motivation (TSM) requirements for detection of non-obviousness in KSR Int’l Co. v. Teleflex, 550, U.S. 398 (Fed. Cir. 2007).

EPO Touts Successful First Year for Unitary Patent Program Despite UPC Technical Issues

On June 1, one year after the date when patents with unitary effect became effective in the European Union (EU), the European Patent Office (EPO) announced that it had registered more than 27,500 unitary patents, representing about 25% of all European patents granted over the past year. The EPO also reported that the Unified Patent Court (UPC) has received a total of 373 case filings since that court first became operational one year ago, although news reports indicate that technical issues have caused problems for some parties appearing before the EU’s newest patent court.

INTA Backs NIGHTWATCH Decision on ‘Conversion’ of EUTMs

The International Trademark Association (INTA) filed an amicus brief on June 1 with the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal supporting the Fourth Board of Appeal’s 2022 approach to conversion of EU Trade Marks (EUTMs). The underlying case relates to the EUIPO’s decision in February 2022 to for the first time refer questions of legal interpretation of the EU Trade Mark Regulation (EUTMR) to the enlarged Board of Appeal.The EUIPO’s Executive Director, João Negrão, asked the Grand Board of Appeal to weigh in on five questions concerning the practice of “conversion,” which allows an EU Trade Mark (EUTM) application or registration to be converted into one or more national applications when necessary.

Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’?

“Unfrosted,” Jerry Seinfeld’s unauthorized (and totally made up) history of Pop Tarts, dropped on Netflix on May 3, 2024, to mixed reviews and 7.1 million viewers in its first week. Many of those who watched probably assumed Seinfeld had Kellogg’s permission to use the Pop Tarts trademark – such is the success that brand owners have had in convincing the public of the brand owners’ exclusive control over their marks. However, brand owners do not have control over all uses of their marks.

Gene Quinn Presented with Friend of American Invention Award

On Thursday, May 23, Gene and I attended the Eagle Forum Annual Briefing and Dinner, an event hosted by conservative public policy and grassroots organization Eagle Forum Education & Legal Defense Fund. I was so proud of my husband as he, along with Representative Kevin Kiley (R-CA), was honored to be presented with the Phyllis Schlafly Friend of American Invention Award.

Prost Dissents from CAFC’s Denial of New Trial on Damages for Google

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, June 3, issued a precedential decision affirming a district court’s orders in favor of EcoFactor, Inc. against Google, whose appeal in part asked for a new trial on damages due to prejudicial error. Judge Prost dissented-in-part. EcoFactor sued Google for infringement of its U.S. Patent No. 8,738,327 relating to smart thermostat technology. EcoFactor said Google’s Nest thermostat products in particular were infringing. Google moved for summary judgment that certain claims of the patent were invalid as abstract under Section 101 but the district court denied the motion, and also denied Google’s Daubert motion to exclude the opinion of EcoFactor’s damages expert, Mr. Kennedy, whose testimony Google argued was “unreliable and therefore prejudicial,” according to the CAFC.

Noncompetitor Critics Aren’t Trademark Infringers: It’s Time for the Law to Make that Explicit

Can you spot criticism? An environmental group calls out an oil company over emissions. A union calls out a corporation over labor practices. A human rights group calls out the prison system. Criticism—straightforward enough. Some corporations, however, worry that some people won’t understand. They worry that consumers might think that the targeted corporations actually support the criticism. For example, consumers might think that Corporation X supports a labor union website that shows Corporation X’s logo and the phrase, “Corporation X must improve wages and working conditions!”

The Devil Made Me Do It: When are USPTO Filings ‘Involuntary’?

In Dragon Intellectual Property LLC v. Dish Network LLC, – (Fed. Cir., May 20, 2024), a divided panel of the U. S. Court of Appeals for the Federal Circuit held that a prevailing defendant in an otherwise “exceptional” patent infringement case could not recover attorney fees expended in a parallel inter partes review (IPR) proceeding because the defendant’s initiation of the IPR was “voluntary.” The court ostensibly drew a bright line between Dish’s “voluntary” U.S. Patent and Trademark Office (USPTO) filing and the purportedly “involuntary” filing at issue in a 1988 Federal Circuit case. I respectfully suggest that the earlier case was wrongly decided and that there is no meaningful difference between the fact patterns in the two cases.

Other Barks and Bites for Friday, May 31: Senator Asks USCO to Expand DMCA Exemption for Security Research on Generative AI; WIPO Adopts Historic Treaty; and the United States and Japan Lead the Pack in Alternative Protein Patent Applications

This week in Other Barks and Bites: the U.S. Court of Appeals for the Federal Circuit (CAFC) affirms a Patent Trial and Appeal Board (PTAB) ruling that clears 20 top tech companies of patent infringement in a case related to website-building technology; WIPO adopts a historic treaty that includes IP protections for Indigenous People; the EU Intellectual Property Office (EUIPO) celebrates Dieter Rams with Lifetime Achievement Award.

Beyond Blockchain: Diverse Approaches to Safeguarding Trade Secrets in the Digital Era

Blockchain is here to stay, and it’s not just for crypto. In 2023, the global blockchain market was valued at approximately $5.92 billion. It is expected to surge to over $39 billion by 2025. From being the foundational underpinning of cryptocurrency, blockchain technology has expanded in its applications to a host of industries, including the protection of IP. As the digital age continues to evolve, blockchain technology has become a significant tool for secure IP management, especially for safeguarding trade secrets.

A Healthy Patent Family Is A Tree That Continues to Bear Fruit

When the Senate Judiciary Committee convened on May 21 for a hearing on Competition in the Prescription Drug Market, Senators were besieged with an array of tired and superficial arguments against patents for biopharmaceutical innovation. The main premise seemed to be that holding more than a single patent for a single product must be anti-competitive. These arguments fly in the face of technological, economic, and legal reality, where patents cover inventions and discoveries rather than products. The ubiquitous mobile phone by one estimate contains 250,000 patented inventions, each adding a unique capability or solving a technical problem, which collectively enable the whole phone to work as intended.

NYIPLA Questions Need for Double Patenting Doctrine Under Current U.S. Patent Law

On May 28, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief with the U.S. Supreme Court in Cellect v. Vidal, urging Court to take up Cellect’s appeal from the invalidation of its patent claims to image sensors for obviousness-type double patenting (ODP). The NYIPLA’s brief contends that the Federal Circuit’s decision increases the risk of invalidity for a significant portion of U.S. patents despite the fact that the traditional basis for ODP doctrine no longer exists under U.S. patent law.

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