The general rule is that a patent claim’s preamble does not limit the claim unless the preamble breathes life and meaning into the claim. The Federal Circuit’s recent decision in Pacing Techs. v. Garmin Int’l, No. 2014-1396 (Feb. 18, 2015) highlights some application drafting choices that, under post-issuance scrutiny, resulted in limitations being read into an independent claim. Considering lessons of this case when drafting U.S. patent applications and when interpreting issued claims with respect to possible infringement can help practitioners write better applications and make better arguments during litigation or other post-issuance activity.
From 1 March 2015, a new agreement will come into force that allows European patents to be validated in Morocco. This is the first time that a non-member country of the European Patent Organisation will have recognised European patents as national patents. It takes the number of countries in which patent protection can be obtained with a single European patent application to 41.
A request for validation in Morocco will be automatically included in any European or international application filed from 1 March 2015. For the request to take effect, however, a validation fee of €240 must be paid to the European Patent Office within 6 months of the publication of the European search report or on expiry of the time limit for regional phase entry of an international application, which is the same period within which the designation and extension fees are due. Limited and costly remedies for late payment of the validation fee will be available.
Similar agreements are expected to enter into force in Tunisia and Moldova in the future, pending ratification by their respective national governments.
On February 6, 2015, a US District Court issued a ruling which underscores the territorial nature of trademark rights and the need to seek formal protection for your marks where possible in all countries of interest. The US District Court for the Eastern District of Texas reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC which held that the Paris Convention does not grant trademark rights that are protectable under certain Sections of the United States Trademark Statute (the Lanham Act). The District Court’s decision allows Belmora LLC’s US trademark registration for FLANAX to stand even though Bayer holds trademark protection for FLANAX for a very similar product. Bayer’s registration of FLANAX is in Mexico and its similar product in the US is marketed under the brand Aleve. Read more analysis of this important decision on the Copyright & Trademark Matters blog.
The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition system, any party, including non-interested parties and straw men, will be able to file an opposition within 6 months of patent issuance and thus potentially cause invalidation soon after patent grant. In anticipation of the new system less than four months away, parties may wish to begin preparing now and consider being more aggressive in monitoring competitors’ Japanese patent applications and allocating resources to file oppositions, as discussed further below. Continue Reading
On Thursday, February 5, 2015, the en banc Federal Circuit heard oral argument in the matter of Suprema, Inc. v. ITC, reviewing its controversial panel decision holding that in ITC investigations induced infringement cannot be found where no direct infringement occurs until after importation. Complainant Cross-Match Technologies, Inc. filed an ITC investigation accusing Mentalix of infringing claim 19 of its U.S. Patent No. 7,203,344 by importing fingerprint scanners made by Suprema and incorporating them with certain Mentalix software post-importation. The Commission found that operation of the Mentalix software on the scanners infringed claim 19 and that Suprema induced that infringement. A Federal Circuit panel overturned, finding that the necessary direct infringement of the method claim did not occur until after importation, and, consequently, the articles were not infringing at the time of importation, putting the scanners outside the reach of § 337. At the en banc argument, the attorneys representing the parties almost exclusively responded to intense questioning, although the questioning did not reveal a clear majority for either side. Interestingly, the Court focused many of its questions on the enforcement of ITC decisions and the ramifications of entirely excluding from importation an article that might be used for non-infringing uses. Please check back for a detailed analysis of the en banc opinion once it issues. Continue reading for a summary of the Appellants’ presentations.
In order to qualify as a protected trademark, US based trademark registrations are required to prove both the use and a bona fide intent to use the mark before it can be protected. For non-US based registrations, under Sections 45(e) or 66(a) of the US Trademark Act, trademarks do not have to prove such use, and are instead only required demonstrate the intent to use the trademark.
Section 45 of the US Trademark Act, which states that trademarks can be found to be abandoned in situations where the use of a mark has been discontinued without an intent to resume such use, also allows that such intent to not resume use can be inferred circumstantially from a three year period of non-use. The question of when to determine the starting point of a period of non-use of a trademark for non-US based registrants under Section 44(e) was addressed in Imperial Tobacco Ltd v. Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed, Cir. 1990), yet it was not until recently in the Trademark Trial and Appeal Board’s decision in Dragon Bleu (SARL) v. VENM, LLC, Opposition No. 91212231 (TTAB December 1, 2014) that such a question could be definitively answered for non-US based trademark registrations falling under Section 66(a). Read more about this decision and its ramifications in an extended post on the Copyright & Trademark Matter blog.
For some businesses, the creative processes associated with product branding, image crafting, or any other endeavors requiring the use of labeling a trademark can be extremely arduous. A recent New York Times Magazine article by Neal Gabler entitled, “Call It What It Is” provides excellent advice regarding methods and ideologies that can be effective for creating new product brand names. Yet, arguably more important than settling on the perfect name is protecting that name. Read more about important first steps for protecting a trademark in an extended post on the Copyright & Trademark Matters blog.
What do sports fans, party-goers, third-party advertisers, and any non NFL affiliated businesses have in common? No legal right to use the words “SUPER BOWL” without the risk of trademark infringement! The National Football League is the owner of the federally registered trademark, Super Bowl, and in recent years has taken an aggressive position in enforcing its use to only those with an official licensing agreement. As the Super Bowl approaches, notice the increased frequency of advertisement references to variants such as, “The Big Game.” The NFL enjoys considerable legal backing of this trademark due to its long-standing use, registered status, and notoriety. Read more about the NFL’s exclusive “Super Bowl” trademark privileges and what this may mean for your Sunday evening plans in an extended post on the Copyright & Trademark Matters blog.
Senator Patrick Leahy has introduced a bill (Senate bill 23) that aims to address the transfer of a copyright to the author’s spouse or next of kin following the author’s death. There is also a corresponding bill (H.R. 238) in the House, introduced by Representative Derek Kilmer.
For more information about these bills and the status of any action on them, please see the extended post on our Copyright and Trademark Matters blog.
On January 21, 2015, the US Supreme Court affirmed the Ninth Circuit in Hana Financial, Inc. v. Hana Bank, case number 13-1211 by deciding that the issue of whether two marks may be tacked for purposes of determining priority is a question for the jury.
This is the first substantive trademark decision that the US Supreme Court has issued in a decade. Justice Sotomayor, writing for a unanimous Court, took on the issue of tacking and held that when the facts do not warrant entry of summary judgment or judgment as a matter of law on the question of tacking, the question of whether tacking is warranted must be decided by a jury.
This decision highlights the importance of trademark owners diligently maintaining their archival records in order to best defend against claims of infringement.
For more information on the case, please see the full blog post on our Copyright & Trademark Matters blog.