• 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

    米国特許商標庁(USPTO)がコロナウイルス対策関連法(Coronavirus Aid, Relief, and Economic Security Act)に基づき特許・商標の一部の期限延長措置を発表

    USPTOは現在、特許・商標出願の一部の手続きに関して、同出願人がCOVID-19による遅延理由を記した供述書を添付して提出することにより30日の期限延長を認めています。遅延理由には、例えば事務所閉鎖、キャッシュフローの悪化、ファイルへのアクセス不能、輸送遅延、疾病などが含まれます。

  • March 13, 2020

    シュグルー・マイアン東京オフィスの代表パートナー・岸本芳也弁護士による新刊書『グローバル企業の知財戦略』が2020年2月14日、丸善出版社より出版されました。

    本書は大きく分けて4つのテーマから構成され、「グローバル企業の知財戦略」を多面的・多角的に解説している。
    第1に、「グローバルな企業にとっての知財活用とマネジメント」について、グローバルな産業競争力を取り戻すために日本企業が今後どのように知財戦略を駆使していくかについて提言した。
    第2に、「グローバル企業にとってリスク管理上不可欠な輸出管理制度」について日本と米国の制度を概括するとともに、米国現地法人と日本本社間での技術情報の移転に関する留意点についても解説を加えた。
    第3に、「グローバル企業の知的財産デューデリジェンスの実務と留意点」について解説した。
    第4に、「訴訟大国米国での訴訟対応」というテーマを取り上げ、特許権の行使に対する防御・攻撃の両面から訴訟前・訴訟後の手続きと具体的な実務対応について詳説した。

    本書の詳細は以下のサイトでご覧ください。
    https://www.maruzen-publishing.co.jp/item/?book_no=303658

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  • 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
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