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IP Bulletin, March 2014

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03.17.2014 | Legal Update

The Nutter IP Bulletin provides periodic IP news updates and practical tips

Nutter’s IP Bulletin How-To Series on Branding 

Where to File a Trademark Application: A Territorial Question
Fourth in The Series

Once you’ve checked off the five “Cs” and decided on the trademark you want to protect as part of building your brand, you next must decide where you want to file for protection. You see, even though Thomas Friedman has been driving the globalization “Lexus” since before the 21st century, and the reaches of the geography-obliterating, all-encompassing Internet and Mother Web connects Afghanistan to Zimbabwe, trademark rights themselves remain territorial. A single trademark application will not provide global property rights. This fourth article of Nutter’s branding series explores a trademark applicant’s various options regarding where to file a trademark application.

To read about three important territorial questions to consider when preparing a trademark application, click here. 

Recycled Priority Claim Can Result in an Invalid Patent

The Federal Circuit’s recent decision in Medtronic v. Edwards Lifesciences highlights the importance of maintaining accurate priority claims in patent applications, particularly those with multiple generations of priority. In Medtronic, even though the asserted patent properly recited the complete priority chain, the court held that it was not entitled to the earlier filing date due to defective priority claims in intermediate applications, resulting in an ultimate finding of invalidity.

For tips in avoiding problems related to claiming priority, click here. 

Prosecution History Estoppel Exists for Design Patents Too

In view of various Federal Circuit decisions regarding design patents in recent years, and the relative ease and low cost of obtaining design patents, design patents have been gaining popularity among large and small companies alike. However, as the Federal Circuit’s recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats demonstrates, the seemingly easy process of obtaining a design patent can be a trap for the unwary. In particular, prosecution history estoppel, a well-established doctrine applied to utility patents, can apply in design application cases as well.

For further discussion of design patents in light of this court decision, click here. 

Can the Term “Receiver” be a Means-Plus-Function Claim Element?

It can sometimes be difficult to determine whether or not a certain term in a claim will be considered a means-plus-function claim element when the term is not in the typical “means for” format. The Federal Circuit recently provided some guidance related to making this determination in EnOcean GMBH v. Face Int’l Corp., where the term “receiver” was ruled to not constitute a means-plus-function claim element. Although the same claim terms can be interpreted differently in different patents due to, for example, differences in detail provided in the specification, EnOcean nevertheless provides patent practitioners with helpful guidance with respect to the commonly used term “receiver” as well as an informative review of means-plus-function analysis for claims lacking the typical “means for” language.

Patentees Bear the Burden of Proving Infringement in Declaratory Judgment Actions

In the recent case of Medtronic v. Mirowski, the Supreme Court held that “when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee.” This decision extends the Court’s MedImmune ruling, which allows a licensee to challenge the validity and/or infringement of a patent without repudiating the underlying license. It remains an open question whether Medtronic presents a default rule that can be contractually modified, or if any such modification would be unenforceable as a matter of public policy.

For further information about this decision and its implications, click here. 

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. Assistance in the preparation of this issue was provided by Rory P. Pheiffer and Michael P. Visconti, III. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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