• April 29, 2020

    In addition to the COVID-19-related extension that the USPTO announced on March 31, the USPTO further extended patent and trademark-related deadlines to June 1. Certain deadlines between March 27 and May 31 will be extended to June 1 if the applicant files a statement that the delay was due to COVID-19.

     

    https://content.govdelivery.com/accounts/USPTO/bulletins/288eb54

  • April 23, 2020

    The National Institutes of Health (NIH) has selected Sughrue Mion, PLLC, a preeminent full-service intellectual property law firm based in Washington, D.C., to provide patent legal services under a ten-year contract in the area of biotechnology. 

    The NIH, part of the U.S. Department of Health and Human Services, is the U.S. government’s research agency related to health and the largest biomedical research agency in the world, investing about $42 billion annually in medical research.  It is a global leader in medical/pharmaceutical research and innovation, with discoveries of new small and large molecules as well as biologics, processes and pathways, and new applications of existing medical knowledge.  NIH currently boasts an active patent prosecution docket of more than two thousand five hundred (2,500) cases, and many of the Institute’s patents are licensed to the private sector for the purpose of developing its innovations into products and services that enhance the public health.

     Sughrue Mion is one of only a handful of firms selected by the NIH to provide patent legal services in the area of biotechnology.  “We are honored and proud to be able to support the NIH’s mission over the next decade, and especially at this critical moment when the world is focused on developing safe and effective treatments and vaccines for COVID-19,” noted Dr. Alan Townsley, a Partner at Sughrue Mion and one of the leaders of Sughrue’s Biotechnology Department.   

     

    Founded in 1957, with offices in Washington D.C. and Tokyo, Sughrue has been one of the leading full service intellectual property firms in the U.S. for many decades, representing clients from all over the world, and in all aspects of intellectual property.

  • December 19, 2019
    On September 26, 2019, in Inter Partes Review Campbell Soup Co. v. Gamon Plus, Inc., 2018-2029, 2018-2030, a majority of the Federal Circuit panel held that U.S. design patent no. D512,646 was obvious in view of a combination of two prior art design patents. As is well established, a prior art reference may be used...
  • June 20, 2019
    IPR Service of Complaint Bar applies if Party was Served with a Complaint More Than One Year Before IPR Filing Date and that Party was a Real Party in Interest or Privy of IPR Petitioner as of IPR Institution Date   In Power Integrations, Inc. v. Semiconductor Components Industries LLC, 2018-1607 (Fed. Cir. June 13,...
Patent Office Trials Blog
  • April 29, 2020

    In addition to the COVID-19-related extension that the USPTO announced on March 31, the USPTO further extended patent and trademark-related deadlines to June 1. Certain deadlines between March 27 and May 31 will be extended to June 1 if the applicant files a statement that the delay was due to COVID-19.

     

    https://content.govdelivery.com/accounts/USPTO/bulletins/288eb54

  • April 21, 2020

    The National Institutes of Health (NIH) has selected Sughrue Mion, PLLC, a preeminent full-service intellectual property law firm based in Washington, D.C., to provide patent legal services under a ten-year contract in the area of biotechnology. 

    The NIH, part of the U.S. Department of Health and Human Services, is the U.S. government’s research agency related to health and the largest biomedical research agency in the world, investing about $42 billion annually in medical research.  It is a global leader in medical/pharmaceutical research and innovation, with discoveries of new small and large molecules as well as biologics, processes and pathways, and new applications of existing medical knowledge.  NIH currently boasts an active patent prosecution docket of more than two thousand five hundred (2,500) cases, and many of the Institute’s patents are licensed to the private sector for the purpose of developing its innovations into products and services that enhance the public health.

    Sughrue Mion is one of only a handful of firms selected by the NIH to provide patent legal services in the area of biotechnology.  “We are honored and proud to be able to support the NIH’s mission over the next decade, and especially at this critical moment when the world is focused on developing safe and effective treatments and vaccines for COVID-19,” noted Dr. Alan Townsley, a Partner at Sughrue Mion and one of the leaders of Sughrue’s Biotechnology Department.   

    Founded in 1957, with offices in Washington D.C. and Tokyo, Sughrue has been one of the leading full service intellectual property firms in the U.S. for many decades, representing clients from all over the world, and in all aspects of intellectual property.
  • April 2, 2020

    USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act

     

    The USPTO is now allowing patent and trademark applicants to extend certain patent and trademark due dates by 30 days if the filing is accompanied by a statement that the delay was caused by the COVID-19 outbreak. Exemplary reasons for the delay include office closure, cash flow interruption, inaccessibility of the file, travel delay, and illness.

     

     

  • March 13, 2020
    Yoshi Kishimoto published a new book on February 14, 2020 entitled “ Intellectual Property Strategies for Global Company” published by Maruzen Publishing Co., Ltd. (https://www.maruzen-publishing.co.jp/item/?book_no=303658).  The book discuses four main topics: first, intellectual property strategies for improving global industrial competitiveness; second, export control system vital to achieving proactive risk management for global company; third, intellectual property due diligence for global company; and fourth, strategies and practical tips to deal with patent infringement lawsuit in the most litigious nation in the world in both aspects of defense and enforcement of patents.  For more information, please contact Sughrue Mion Japan Office at sughruej@sughrue.com
More News
  • 4/23/2020

    On April 23, 2020, the Supreme Court ruled that willfulness is not required for there to be an award of a trademark infringer’s profits. Romag Fasteners Inc. v. Fossil Grp., Inc., No.18-1233 (April 23, 2020).

    Petitioner Romag Fasteners, Inc. (“Romag”) had a signed contract with Respondent Fossil, Inc. (“Fossil”) where Fossil is allowed to use Romag’s magnetic snap fasteners with the ROMAG trademark on Fossil’s handbags and other products. After discovering that factories Fossil was using in China were using counterfeit ROMAG fasteners, Romag sued Fossil for patent and trademark infringement. With respect to the trademark infringement, the jury found Fossil liable and awarded Fossil’s profits, but also found Fossil’s infringement was not willful. Therefore, since the jury found the infringement was not willful, the district court held that Romag was not entitled to the award of Fossil’s profits.

    Eventually this issue regarding whether willful infringement is a prerequisite for an award of an infringer’s profits under a violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), reached the Supreme Court. Given that the circuits were split in how they handle this issue, the outcome of this case was closely watched. 

    In analyzing this issue, the Court focused on the language of the statute. First, the Court reviewed 15 U.S.C. § 1117(a), which states that defendants profits may be recovered where there is “a violation under section 1125(a) or (d) of this title or a willful violation under section 1125(c) of this title.” The Court read the statute to not require willfulness under § 1125(a) since there was no specific reference to willfulness as there was for a violation under § 1125(c). Then, the Court reviewed the Lanham Act more broadly and noted that the Lanham Act would specifically note if certain damages are awarded for intentional or willful violations, further supporting the position that if willfulness was a requirement for an award of profits for a violation under § 1125(a), it would have specifically stated so. As a result, while the Court acknowledges that willfulness is an important consideration in awarding profits, it declined to find that it is a requirement.

    Since willfulness is difficult to prove in trademark infringement cases, this decision will be beneficial to trademark owners receiving just compensation for damages caused by trademark infringers.

    Author: Darlene Tzou

  • 11/15/2019
  • 10/25/2019

     

  • 10/15/2019
More Publications