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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!”

Can Conspiracies to Better the World Be Anticompetitive?

The Federal Trade Commission (FTC) screwed up. At least that’s how it explains what it calls the “lock[ed] in exploitative business models and monopoly power” of today’s internet giants. It blames “delayed government action.” But the agency says it won’t allow the same thing to happen with artificial intelligence (AI). With AI, the FTC “plan[s] on using the full scope of [its] authority to make sure that history does not repeat itself.”       

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.

How the UPC Courts Have Ruled on Security/ Bonds for Initiating Actions

An interesting decision of the Unified Patent Court’s (UPC’s) Munich Local Division, issued on April 23, 2024 (UPC CFI No. 514/2023), confirmed that “the prerequisite for a successful application (for security/bond) would be a demonstration that the financial circumstances of the other party give rise to fears that any claim for reimbursement of costs cannot be satisfied or that, despite sufficient financial resources, enforcement of a decision on costs appears to be impossible or fraught with particular difficulties.”

Former USPTO Officials Urge Vidal to Immediately Withdraw NPRM on Terminal Disclaimers

On May 28, a group of five former Directors, Deputy Directors and Patent Commissioners at the U.S. Patent and Trademark Office (USPTO) sent a letter addressed to current USPTO Director Kathi Vidal in opposition to a rule package on terminal disclaimer practice proposed earlier this month. This group of highly-ranking former government officials join a growing chorus of voices who are concerned by the apparent overreach of the nation’s patent granting agency into substantive rulemaking that would create enforceability issues for companies making use of terminal disclaimers to obtain patent rights.

Winning Strategies at the Federal Circuit

Knowing your way around the U.S. Court of Appeals for the Federal Circuit (CAFC)—the specialized appellate court that has exclusive jurisdiction over patent cases—is essential to success in patent appeals. Founded in 1982, the Federal Circuit is the thirteenth federal court of appeals, and has nationwide jurisdiction over many types of cases, including international trade, government contracts, patents, trademarks, certain monetary claims against the United States government, federal personnel, and veterans’ benefits, among others.

Export Control Issues in U.S. Patent Prosecution

Under U.S. law, filing a patent application in a country other than the United States is considered to be an “export” of the invention that is described in the patent application. Therefore, the export control laws of the United States apply to patent prosecution. All U.S. patent applications except for plant applications are screened for possible national security concerns by the Licensing & Review branch of the U.S. Patent and Trademark Office (USPTO), which determines whether foreign filing will be permitted and whether the patent application must be placed under a secrecy order. 35 U.S.C. 181-186; 37 CFR Part 5.

Latest Bid to Review Rule 36 Practice Shot Down by SCOTUS

Following the denial of another petition for certiorari in March, Jodi A. Schwendimann today lost her bid for review at the U.S. Supreme Court on the question of whether it is permissible for the U.S. Court of Appeals for the Federal Circuit (CAFC) to issue a Rule 36 affirmance of claims as being anticipated when, according to the petition, two different venues issued inconsistent claim constructions and it isn’t clear which the CAFC has deemed correct.

The Path to Worldwide Patent Rights

For better or for worse, there is no such thing as a worldwide patent. Generally speaking, patent rights need to be obtained in individual countries, although there are notable global filing strategies that can be used to effectively lock in the possibility of obtaining patent protection across the globe or region. But there is no way around it—obtaining worldwide patent protection is expensive. In fact, obtaining worldwide patent rights is typically cost prohibitive.

Recent Boards of Appeal Decisions on Added Matter: Holding up the Standard

The European Patent Office’s (EPO) Boards of Appeal have displayed a stringent approach towards added subject matter in recent decisions, particularly in comparison to other jurisdictions. This stringency is rooted in the provisions of Article 123(2) of the European Patent Convention (EPC), which prohibits amendments that extend beyond the content of the original patent application. The primary objective is to maintain the correlation between the granted patent’s scope of protection and the technical disclosure initially provided in the application.

Winning Strategies at the PTAB, Part II: Common Pitfalls That Patent Owners Should Avoid

Part I of this article discussed how the Patent Trial and Appeal Board (PTAB) is a very different tribunal from district courts. It is a venue where fact and issues of law are decided by technical specialists, who are also highly trained in patent law, instead of lay judges and juries. It also discussed the formidable challenge presented to patent owners by the PTAB, where inter partes review (IPR) institution rates are about 67% and final written decisions find all challenged claims unpatentable up to 70% of the time. Part II will discuss strategies that give patent owners a better chance at successfully navigating the IPR process.