Posts in Guest Contributors

Enfish bothers me. The Federal Circuit decision puts forth some great phrases, but I am concerned that Enfish will not be as useful as hoped in overcoming §101 Alice rejections. The patents at stake in Enfish appear to have been written with a confident view of the prior art and of the invention. So, if a specification does not confidently emphasize the “invention,” its “benefits over” conventional prior art, and “disparage” the prior art, will examiners and judges continue Step 1 characterizations at “such a high level of abstraction”? Is Enfish merely much ado about nothing?

Every year countless stories arise of individuals, churches, and small businesses, receiving cease and desist letters from the NFL or NCAA for unauthorized use and reference to their respective SUPER BOWL, MARCH MADNESS, and other trademarks. The success of these enforcement letters comes from a mixture of the organizations’ trademark rights under the Lanham Act and the fear that these financially well-endowed organizations could sue. The International Olympic Committee (“IOC”), and its national governing bodies, like the USOC (collectively the “Olympic Committee”), also aggressively enforce their rights in their Olympic trademarks, slogans, and symbols (the “Olympic properties”). The Olympic Committee not only employs the traditional methods of other sport organizations, but has several additional weapons that provide a true monopoly on the Olympic properties; thus, significantly increase its success.

The pending report of the UN Secretary General’s High Level Panel on Access to Medicines not only attacks the patent system as predicted, but proposes giving the organization oversight of drug development. If you think United Nation functionaries would be more effective than entrepreneurs, you’ll be delighted. If you live in the real world where bureaucracy is the enemy of innovation, you don’t know whether to laugh or cry.

Over the last ten years, one bad patent reform bill after another has been introduced and then pushed by a fantastic lobbying and public relations effort that has dumped hundreds of millions of dollars on Washington DC. eBay v. MercExchange is not the only legislation enacted by the courts in their effort to avoid Congressional meddling with their turf. Legislation was introduced related to damages, willful infringement, inequitable conduct and obviousness, all of which were enacted in whole or in part by the courts, presumably to avoid passage of the legislation in Congress.

Biopharmaceutical innovation is difficult, expensive, time-consuming, and risky. More so now than ever. A 2014 study by Tufts University’s Center for the Study of Drug Development calculated that a mere one in eight (11.8%) of all drugs that enter clinical trials are ultimately approved by the U.S. Food and Drug Administration. The drug development gamble appears to be getting riskier. A report released on May 25th by the Biotechnology Innovation Organization (BIO), the biotechnology industry’s national trade group, finds that fewer than one in ten (9.6%) of drugs that enter clinical trials will gain approval by the U.S. Food and Drug Administration.

Design patents cover visual, nonfunctional characteristics embodied in, or applied to, an article of manufacture. They may relate to the configuration or shape of an article, the surface ornamentation applied to an article, or to a combination of the two. Ultimately, a design patent protects only the appearance of the article and not its structure or functionality. Trade dress is a type of trademark that refers to the image and overall appearance of a product. Trademarks protect brands and the goodwill associated with the brand. A trademark is used to identify the source of goods or services and is used to distinguish the goods and services of one seller or provider from another. Trade dress can include product packaging, product shape and color, and the look and feel of a restaurant or retail store.

The Federal Circuit found that the specification explicitly supported the district court’s claim construction, which precluded a finding of infringement. Two passages specified the meaning of, and provided context for, a claim term that referred to the relative location among certain claim elements. A “relative location” claim term is often read in light of, and by relying on, the written description. Because the district court’s claim construction was proper, the Court found the grant of summary judgment of non infringement was proper.

A few years ago, a clearly irritated client asked me why European maintenance fees were so expensive. Apparently, he had consulted the EPO schedule of fees and found my recent quote to be much higher than the government fee. The final quote in this case was more than double the government fee, which itself is not a small amount as any practitioner who prosecutes European patent applications knows. I had not realized that the annuity payment firm I was using had slowly increased its rates over the years to an unreasonable level. This started a reflection on how to minimize costs to my clients while still ensuring that the maintenance fees were paid.

Amici agree with Petitioner that this procedure was beyond Congress’s power to impose, and its underpinning rationale—that patents are a matter of administrative largesse, rather than the constitutionally protected property right—is constitutionally infirm. Amici write separately because this case presents an issue of enormous significance with far-reaching consequences for inventors, investors, and small-business owners. The institution of IPR review has made patents more expensive to obtain and defend, and has introduced uncertainty in patent rights that makes patents less valuable to their holders, less attractive to inventors, and less safe for investors. This devaluation of patent rights has measurably diminished the value of all patents.

Would you climb Everest without an expert guide? You shouldn’t navigate the global IP landscape without one either. The global intellectual property terrain is becoming increasingly complex. Across the world, the quantity of patent applications has almost doubled since 2000 (source: WIPO), and the largest single contributor, China, reported over 300,000 patents granted in the chemistry sector in 2015 alone, a 30% increase from the year before (source: STN®, database: CAplus?, accessed 2/15/2016). Consequently, having a patent search professional who can work with your team is more important than ever. Being able to efficiently and expertly research the IP considerations that impact key business decisions can you save time and money, while also providing you with invaluable topical and global insight.

In a May 13, 2016 decision, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision upholding an Examiner’s denial of registration based on a finding that the term CHURRASCOS was generic as used for a restaurant, because the word “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.”

This case presents an important constitutional question which the court below decided based on an incomplete analysis of the Supreme Court’s jurisprudence. In the case below, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit decided that a patent is a “public right,” and that these Article I trial proceedings are not unconstitutional. Significantly, the Federal Circuit reached its conclusion without considering more than a century of precedent by this Court recognizing that an issued patent is a property right, at least for purposes of determining if a “taking” has happened. James v. Campbell, 104 U.S. 356, 358 (1882); see also Horne v. Dep’t of Agric., 135 S. Ct. 2419, 2427 (2015) (quoting with approval James).

On its face, the new guidance seems to urge examiners to develop well-reasoned, substantive rejections rather than conclusory rejections which provide little basis for applicants to advance applications toward allowance, particularly in the complex areas of vaccines, diagnostics, methods of treatment, and screening for genetic alterations, where the new examples are focused. Furthermore, compared with prior guidance, the new examples include more claims that are considered patent eligible subject matter. Some observers believe this may be an effort by the patent office to dispel hesitation that examiners have apparently had in drawing conclusions of patent eligibility when examining claims.

After several years of negotiations between the Kosovo government and the European Commission, the Stabilization and Association Agreement (SAA) entered into force on April 1, 2016. The entry into force of the SAA is an important development for Kosovo since this constitutes the first contractual relationship between Kosovo and the European Union. The SAA includes several chapters on various political and economic issues as well as provisions aiming to promote EU standards in many areas, including intellectual property. I will first highlight the main provisions of the SAA concerning IP rights and compare them with the respective provisions in a few other SAAs that the EU signed with other countries in the region. I will then analyze what the entry into force of the SAA means for the Kosovo government in terms of IP protection and how this development will positively affect trademark holders and IP practitioners.

The disparity between the art units is confused even more so when we consider the total number of Alice rejections in each art unit, rather than just counting the total number of applications receiving an Alice rejection. Doing that, we can see that, while 3622 and 3623 have almost equal numbers of applications with Alice rejections, 3623 actually has more in total. This means that applications in that art unit are more likely to receive multiple Alice rejections and take longer to prosecute.