June 2012 Prosecution Group Luncheon

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Topics discussed in this month’s prosecution group meeting include the recent U.S. Chamber of Commerce study finding that industries that depend on intellectual property rights account for more than $5 trillion of the country’s gross domestic product, the USPTO’s pilot “Deadwood” project, and the ICANN list of applied-for generic top level domains (gTLDs).

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June 2012 Prosecution Group Luncheon

  1. 1. Prosecution Group Luncheon June 2012
  2. 2. USPTO Report: Intellectual Property-IntensiveIndustries Contribute $5 Trillion, 40 Million Jobs toU.S. Economy• virtually every industry either produces or uses IP• IP-intensive industries (75) accounted for about $5.06 trillion in value added, or 34.8% of U.S. gross domestic product (GDP), in 2010.• IP-intensive industries directly accounted for 27.1 million American jobs, or 18.8% of all employment in the economy, in 2010.• Avg weekly wages for IP-intensive industries were $1,156 42% higher than the $815 weekly wages in non-IP-intensive private industries.
  3. 3. USPTO Amends Rules For Specimens of Use,Launches Pilot "Deadwood" Project• The PTO has revised the Rules regarding specimens of use, and has launched a pilot study to review a number of registrations at the Section 8 or renewal stages. – USPTO can upon request, require additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use, an allegation of use ( 1(a) or 1(b)), or an amendment to a registered mark.• These new Rules go into effect on June 22, 2012.
  4. 4. ICANN “REVEAL DAY” June 13th• ~2000 applicants for gTLDs• a rough list of the most-filed for strings: .APP 13 .INC 11 .HOME 11 .ART 10 .LLC 9 .BLOG 9 .BOOK 9 .MUSIC 8 .MOVIE 8 .DESIGN 8 .WEB 7 .HOTEL 7 Review list for conflicts?
  5. 5. Not-so-Initial Disclosures• Opposer first identified a potential witness in pre-trial disclosures. In its initial disclosures, Spier had identified another person who later left the company. 1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) the importance of the evidence; and 5) the non-disclosing party’s explanation for its failure to disclose the evidence.• TTAB granted motion to strike – should have updated• Spier Wines (PTY) Ltd. v. Ofer Z. Shepher, Oppositions Nos. 91182155 and 91182825 (June 12, 2012) [precedential].

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