April 2011 Trademark Group Lunch
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Topics covered in this month’s trademark group presentation include Trademark Document Retrieval 2.0, case law updates concerning topics including right of publicity, natural scope of expansion, bona fide intent, related goods, and Google Adwords in Europe.
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This document summarizes several 2016 Federal Circuit court decisions regarding software patentability. Key points include: patents were upheld for software solutions to technical problems, while those merely applying existing technology to a business problem were rejected. Specifically, patents on self-referential databases, distributed data enhancement networks, and automated 3D animation using specific rules were found eligible. Conversely, patents on anonymous loan shopping, content filtering, and power grid monitoring were found to recite only abstract ideas without additional inventive concepts. The document provides practice tips for drafting software patents, such as defining the technical problem and claiming the technical solution.
2017 January Patent Prosecution Lunch
The document summarizes several new patent programs and initiatives:
1) The Post-Prosecution Pilot (P3) combines features of two existing programs and allows applicants to submit proposed amendments for consideration by a panel of examiners and present to the panel.
2) The eMod Text Pilot Program allows uploading and downloading applications and office actions as text documents. It has requirements for document formatting and supported fonts.
3) Recent changes to patent procedures and laws in India, the UK, and the USPTO are noted.
2016 September Patent Prosecution Lunch
The OIG report identified significant amounts of unsupported work hours by patent examiners at the USPTO, equating to millions of dollars in potential waste. Specifically, the report found approximately 138,000 unsupported hours over 9 months and over 288,000 unsupported hours over 15 months. A number of examiners with high amounts of unsupported hours received above-average performance ratings. The report also found issues with USPTO policies that limit its ability to prevent and detect time and attendance abuse. The OIG provided recommendations to address these issues.
2016 August Patent Prosecution Lunch
This document provides information about various options for responding to a final rejection from the USPTO, including the After Final Consideration Pilot Program (AFCP), Pre-Appeal Brief Review, and the new Post-Prosecution Pilot (P3). The AFCP allows filing a response with a non-broadening amendment without an RCE fee. Pre-Appeal Brief Review involves filing a notice of appeal and brief for panel review. P3 allows filing arguments and an optional amendment for panel consideration without an RCE. The document compares the options and provides guidance on which to select based on the examiner's position and whether an appeal is ready to be filed.
Review of Recent IP Supreme Court Cases
This document summarizes several recent and upcoming Supreme Court cases related to intellectual property law. It discusses key holdings and issues in cases like Cuozzo v. Lee regarding the appealability of Patent Office decisions, Halo v. Pulse regarding standards for enhanced patent damages, and Samsung v. Apple regarding the scope of design patent damages. It also previews several patent cases the Supreme Court has agreed to hear in its upcoming 2016 term.
Defend Trade Secrets Act of 2016
The Defend Trade Secrets Act of 2016 creates a federal civil cause of action for trade secret misappropriation. It does not preempt existing state trade secret laws. The Act defines trade secret misappropriation and improper means of acquiring a trade secret. It establishes a three-year statute of limitations and allows for remedies such as civil seizure, injunction, damages, and attorney fees in cases of willful and malicious misappropriation.
July 2016 Trademark Prosecution Lunch Update
The document summarizes key points from a prosecution luncheon in July 2016. It proposes increasing USPTO fees for various filings and requiring additional specimens of use for multi-class trademark applications to ensure accuracy. It also discusses recent TTAB cases involving trademarks refused for goods not actually used in commerce, a mark found primarily descriptive for lottery services, and a mark refused as geographically descriptive without sufficient evidence the location was known to US consumers.
2016 07-Patent Prosecution Lunch
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Federal Rules Update
The Federal Rules of Civil Procedure were updated effective December 1, 2015. Key changes include:
- Forms like the patent infringement complaint form were eliminated. Pleading standards were not altered, though legislation could heighten them.
- The time limit to serve defendants was shortened from 120 to 90 days.
- Rule 26 on the scope of discovery was rephrased to focus on relevance, proportionality, and that discovery need not be admissible to be discoverable.
- Rules regarding the timing of Rule 34 requests and responses were adjusted. Objections to requests must now state if materials are being withheld.
- Rule 37 on sanctions for lost ESI was amended to address prejudice and
January 2016 Trademark Prosecution Lunch
The document summarizes key trademark cases and updates from January 2016. It discusses the 10th edition of the Nice Classification taking effect, an USPTO shutdown over winter holidays, a case finding TTAB opposition decisions have preclusive effect in infringement suits, a case requiring proof of bona fide intent to use a mark, a case finding user manuals are not goods, and a case where a single local pizza restaurant did not prove interstate commerce.
In re tam presentation
Simon Tam filed to register the trademark "THE SLANTS" but was rejected by the US Patent and Trademark Office under Section 2(a) which prohibits disparaging marks. The Federal Circuit took the case en banc and held Section 2(a) unconstitutional as a violation of free speech rights. The court found the provision was not viewpoint or content neutral, regulated expression rather than commercial speech, and significantly chilled protected expression. This ruling calls into question the pending Redskins trademark case and suggests Section 2(a) restrictions are an unconstitutional limitation on free speech.
January 2016 Patent Prosecution Lunch
This document summarizes several topics from a prosecution luncheon in January 2016. It describes recent outages on the USPTO EFS-Web system and an upcoming Supreme Court case on inter partes review. It also summarizes a Massachusetts Supreme Court decision on subject matter conflicts and new features for filing a corrected or enhanced initial web-based application data sheet. Finally, it lists upcoming events from the Indianapolis Bar Association.
International Copyright Protection Primer
The document discusses key aspects of international intellectual property law and agreements. It summarizes the Trans-Pacific Partnership agreement which establishes minimum standards for intellectual property protection among member countries. It then explains some fundamental concepts, including that copyright protects the expression of ideas but not the ideas themselves. International treaties establish minimum protections while national laws govern within each country, meaning intellectual property rights are territorial in nature.
2015 October Patent Prosecution Lunch
The document discusses several new initiatives and programs from the USPTO, including:
1) A web-based issue fee form (Web 85b) that allows electronic filing of issue fees and reduces errors;
2) An extension until September 30, 2016 of the After Final Consideration Program 2.0 and Quick Path IDS programs, which allow examination of amendments and IDSs after payment of issue fees;
3) The Quick Path IDS program allows examiners to consider an IDS through a petition to withdraw from issuance and conditional RCE instead of a petition to withdraw and RCE.
CLE - Introduction to IP Law
The document discusses several key points regarding intellectual property (IP):
1) IP is likely the most valuable asset of many businesses, as the value of intangible assets like trademarks, patents, and copyrights makes up the majority of market value for S&P 500 companies.
2) All businesses, not just technology companies, rely on some form of IP like trademarks, copyrights, and trade secrets.
3) Failing to properly protect and manage IP can kill business deals and leave companies vulnerable to lawsuits. Proper ownership and licensing of IP is important.
August 2015 Patent Prosecution Lunch
The document provides information about upcoming events for patent prosecutors including the IPO Annual Meeting, an Indiana State Bar Association lunch and meeting, and new USPTO guidelines. It also summarizes proposed changes to PTAB rules regarding new evidence submissions, misconduct policies for practitioners, and motions to amend practices. Finally, it discusses the transition to classifying patents with the new Cooperative Patent Classification system including search strategies.
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