Prosecution Luncheon May 2012


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Prosecution Luncheon May 2012

  1. 1. Prosecution Group Luncheon May 2012
  2. 2. New Top Level Domain Names (gTLDs)• Process suspended, will reopen for five days – June ??• “Reveal Day” delayed – starts objection period• More than 2000 applicants so far … – Types, new business models?  industry (.bank, .bike, .ski, .health, .gay, .movie)  brand (.canon, .deloitte, .hitachi)  charitable (.eco, .green, .fam) – Will be processed in batches, 1st operating early 2013? Next batch in 2014?• New “Clearinghouse” for objections, sunrise reservations/ blocks, details TBD???• Watch out for solicitations/warnings offering to reserve/ block/ register for your clients
  3. 3. John Walsh’s• Suggestion that willful blindness may be enough in recent article by TTAB Judge
  4. 4. Can’t Kutt the Reverse Rap• Rapper Melvin "Kutt" Calhoun applied for KUTT CALHOUN for clothing• Rejected in view of Supplemental Registration for the mark CALHOUN for "sports shirts.“• Kutt claimed his fame coupled with the weakness of the cited mark (surname), makes confusion unlikely.• Backfired – fame would exacerbate rather than obviate confusion – reverse confusion• In re Melvin Calhoun, Jr., Serial No. 77946290 (April 27, 2012) [not precedential].
  5. 5. You Can Fall off the wagon – but not the Horse• Design for clothing opposed by Polo• Fame of “POLO” conceded• Respondent intended to "parody the elite in society as embodied by the sport of polo."• TTAB: parody is not a defense if the marks are otherwise confusingly similar … “parodying a life style is not a parody of a trademark.”• PRL USA Holdings Inc. v. Thread Pit, Inc., Cancellation No. 92047436 (May 14, 2012) [not precedential].
  6. 6. Quick Path Information Disclosure Statement pilot program (QPIDS)• IDS submissions post-payment of issue fee – Examiner will consider, reopen prosecution only where necessary to address an item in the IDS – Otherwise, return to issue – Utility or reissue application, issue fee paid but not yet issued• Submission via EFS-Web• Effective May 16, 2012, through September 30, 2012
  7. 7. PTO On The Clock• Good News: backlog of unexamined cases down ~10% (-71K cases) since early 2011• Bad News: wave heads downstream – RCE backlog up 50% (+28K cases) – BPAI backlog up 25% (+5.5K cases)• BPAI: backlog growing, but more slowly – 911 disposals in Mar. 2012 – 1,343 new appeals docketed
  8. 8. Mayo Fallout—Software Next?• WildTangent v. Ultramercial (U.S., No. 11-962, May 21)• US 7,346,545 (internet distribution of copyrighted products)• FC (Rader): patent-eligible under Section 101 – Computer used to perform the method – Programming complexity required – “[M]ere idea that advertising can be used as a form of currency is abstract . . . the 545 patent does not simply claim [that] age-old idea . . . . Instead, [it] discloses a practical application of this idea."• S.Ct.: grants cert., vacates, remands
  9. 9. Recapture Rule in Reissue• In re Youman, No. 2011-1136 (Fed. Cir. May 8, 2012)• Rule: cannot regain in reissue that given up in prosecution to avoid art• Three step test: – Determine in what aspect reissue claims are broader than issued claims – Determine whether broader aspects relate to surrendered subject matter – Determine whether surrendered matter has crept into reissue claims• Rejects view that any broadening of added limitation invokes rule – Elimination of a limitation added during prosecution is recapture – Modification of that limitation may not be• Reissue claims must be materially narrowed relative to surrendered matter – Cannot recapture full scope of what was surrendered – Narrowing “must render the reissue claim narrower than it is broader in a manner pertinent to the subject matter surrendered during prosecution”
  10. 10. Anticipation BasicsIn re Montgomery, No. 2011-1376 (Fed. Cir. May 8, 2012)• Fundamentals of anticipation – Broadest reasonable interpretation of claims during examination – Reference must disclose every limitation (expressly or inherently)• Broadest reasonable interpretation – Consistent with, in light of specification as understood by POSA – Question of law (de novo review)• Inherent result must inevitably result from disclosure, not by probabilities or possibilities• Anticipation “requires an enabling disclosure, not “actual creation or reduction to practice”
  11. 11. AIA Update• Rules on post-grant procedures in process – Focus on efficiency, cost-effectiveness – Technical, administrative expertise within PTO – Board expansion: 120+ judges, many from outside PTO• Judicial Panel on Multidistrict Litigation (“JPML”): AIA does not affect authority to transfer and centralize patent litigation – In re Bear Creek Tech., Inc. (J.P.M.L. May 2, 2012)
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