• 7/2/2020
    On June 30, 2020, the Supreme Court ruled that Booking.com is a protectable trademark. U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020).
  • 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...
Patent Office Trials Blog
  • 7/21/2020
    The USPTO recently introduced a Fast-Track Appeals Pilot Program that provides expedited review in ex parte appeals. When the application receives an appeal number, the Appellant may file a petition and pay a $400 fee for an expedited review and decision on their appeal. The USPTO target is to reach a decision on the ex parte appeal within six months after the application has been accepted into the Pilot Program. Currently, the average appeal pendency is about 15 months. See Federal Register Notice: [PDF]
  • April 29, 2020

    米国特許商標庁(USPTO)は、3月31日に発表したCOVID-19関連の期限延長に加え、特許・商標の一部の期限を6月1日まで延長しました。出願人がCOVID-19による遅延理由を記した供述書を提出した場合、3月27日から5月31日までの期限が延長されます。

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

  • April 21, 2020

    ワシントンDCに拠点を置く総合特許法律事務所であるシュグルー・マイアンは、国立衛生研究所(NIH)により、バイオテクノロジー分野において10年契約で特許法務サービスを提供する事務所の一つに選ばれました。

    米国保健福祉省の一組織であるNIHは、健康に関する米国政府の研究機関、かつ生物医学に関する世界最大の研究機関であり、医学研究に年間約420億ドルを投資しています。NIHは、新たな大小の分子、ならびにバイオ医薬品、プロセスと経路の発見、既存の医学知識の新たな活用など、医学・医薬の研究およびイノベーションにおける世界的リーダーです。NIHは現在、2,500を超える係属中の特許出願件数を誇り、NIHの特許の多くは、そのイノベーションを利用して公衆衛生を強化する製品やサービスへと発展させるために民間にライセンスされています。

    シュグルー・マイアンは、バイオテクノロジー分野の特許法務サービスを提供するようNIHにより厳選された数少ない事務所の一つです。「これからの10年間、全世界が新型コロナウイルスの安全で効果的な治療およびワクチン開発に注力してるこの重大な時期に、NIHのミッションをサポートできることは光栄であり、誇りに思います。」と弊所パートナー弁護士であり、弊所のバイオテクノロジー部門のリーダーの一人でもあるAlan Townsley博士は述べています。

    シュグルー・マイアンは、ワシントンDCと東京にオフィスを構え、1957年の設立以来何十年もの間、世界中のクライアントの皆様に知的財産のあらゆる面でリーガルサービスを提供し続けてきた総合特許法律事務所です。

  • 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。

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  • 6/15/2020

    In Uniloc USA, Inc. v. LG Electronics USA, Inc., the Federal Circuit held that certain claims of U.S. Patent No. 6,993,049 (the “’049 Patent”) are patent eligible under 35 U.S.C. § 101 because the claims “are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.”  See Uniloc USA, Inc. v. LG Electronics USA, Inc. Case No. 2019-1835 (Fed. Cir. April 30, 2020) at page 7.

    The Federal Circuit noted that the ’049 Patent is directed to a communication system including a primary station (e.g., a base station) and a secondary station (e.g., a peripheral device) of a piconet (i.e., an ad hoc Bluetooth network).  See Id. at page 2.

    Regarding conventional systems, the Federal Circuit noted that the ’049 Patent mentions that “primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet, including parked devices, to determine whether they have information to transmit.”  See Id. at page 3.

    Regarding an underlying technical problem of the conventional systems, the Federal Circuit noted that the ’049 Patent mentions that “a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.”  See Id.

    Regarding a purported technical improvement to address the foregoing technical problem, the Federal Circuit noted that the ’049 Patent mentions a technique of “including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously.”  See Id.

    Referring to FIG. 5 of the ’049 Patent shown below, the ’049 Patent mentions that a primary station may transmit a Bluetooth inquiry packet including a standard inquiry message field 502 and an extra data field 504 including polling information.  See ’049 Patent at col. 4, line 59 – col. 5, line 27.

    FIG. 5 of the ’049 Patent

    Referring to representative claim 2 of the ’049 Patent shown below, the Federal Circuit noted that claim 2 recites a primary station for use in a communication system “wherein means are provided for . . . adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.”  See Uniloc USA, Inc. v. LG Electronics USA, Inc. at page 7.

     

    Claim 2 of the ’049 Patent

    The Federal Circuit noted that “[t]he additional data field enables a primary station to simultaneously send inquiry messages and poll parked secondary stations [and that t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.  

    Further, the Federal Circuit noted that “[t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.

    LG argued that the claims of the ’049 Patent were analogous to abstract data manipulation claims previously held ineligible by the Court, and that the claims were not sufficiently directed to the purported technical improvement mentioned above because the claims recited “result-based functional language” and generic Bluetooth components.   See Id. at page 8.

    In response, the Federal Circuit noted that “[t]o the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error [because c]laims need not articulate the advantages of the claimed combinations to be eligible.”  See Id. at pages 9-10. 

    Further, the Federal Circuit concluded “that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages[, and instead] are directed to a specific asserted improvement to the functionality of the communication system itself.”  See Id. at page 10.

    Further still, the Federal Circuit noted that “[t]he claimed invention’s compatibility with conventional communication systems does not render it abstract[, nor] does the fact that the improvement is not defined by reference to ‘physical’ components.”  See Id.

    In conclusion, the Federal Circuit noted that “[t]he claims of the ’049 patent recite a specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to pass muster under Alice step one.” See Id.

    From a patent drafting perspective, Uniloc emphasizes the importance of clearly articulating a technical problem associated with a conventional system, and clearly articulating how the disclosure provides a technical improvement that addresses the technical problem.  During prosecution, the articulations can provide the basis for arguments in favor of eligibility of the claims.

    Further, the Federal Circuit noted that “[t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.

    LG argued that the claims of the ’049 Patent were analogous to abstract data manipulation claims previously held ineligible by the Court, and that the claims were not sufficiently directed to the purported technical improvement mentioned above because the claims recited “result-based functional language” and generic Bluetooth components.   See Id. at page 8.

    In response, the Federal Circuit noted that “[t]o the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error [because c]laims need not articulate the advantages of the claimed combinations to be eligible.”  See Id. at pages 9-10. 

    Further, the Federal Circuit concluded “that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages[, and instead] are directed to a specific asserted improvement to the functionality of the communication system itself.”  See Id. at page 10.

    Further still, the Federal Circuit noted that “[t]he claimed invention’s compatibility with conventional communication systems does not render it abstract[, nor] does the fact that the improvement is not defined by reference to ‘physical’ components.”  See Id.

    In conclusion, the Federal Circuit noted that “[t]he claims of the ’049 patent recite a specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to pass muster under Alice step one.” See Id.

    From a patent drafting perspective, Uniloc emphasizes the importance of clearly articulating a technical problem associated with a conventional system, and clearly articulating how the disclosure provides a technical improvement that addresses the technical problem.  During prosecution, the articulations can provide the basis for arguments in favor of eligibility of the claims.

  • 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

     

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