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IP Bulletin, November 2014

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11.18.2014 | Legal Update

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

Case Law Emerging from the Lower Courts Five Months after Alice

In the wake of the Supreme Court’s recent decision in Alice Corp. v. CLS Bank International, a section of the patent statute once the focus of only occasional litigation is emerging as a “go to” weapon for invalidating patents directed to computer-implemented inventions. Of the 25 federal court decisions in which 35 U.S.C. § 101 (Section 101) has been invoked since Alice was handed down, 19 have resulted in declarations of invalidity. This article highlights some trends in the case law. It also examines more closely one recent Federal Circuit decision in which patent claims did not survive a preliminary challenge under Section 101, as well as the six decisions in which the claims did survive.

To learn more about case law after Alice, and practical tips that result from an analysis of the same, click here. 

Nutter’s IP Bulletin How-To Series on Branding

What to Do Once Your Trademark Registers – The Basics
Eighth in The Series

Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Over the course of the last three articles in our series, we will tackle this one, not so simple question. While a brand is nothing more than a mark (trademark or service mark) that has done well in life, like life, success comes with a little luck, and plenty of planning. Thus, obtaining the registration is truly just the beginning of your path to building a successful national or global brand. The present article will start with the basics—what you need to do to keep and maintain the trademark(s) you obtain.

To read more about keeping and maintaining your registered trademark(s) to help build and sustain your brand, click here.


Laches in Patent Cases – Landscape May Be Shifting, and Patent Owners Should Take Notice

The equitable defense of laches may not be at the forefront of most patent practitioners’ minds, but the recent Federal Circuit decision in SCA Hygiene Products v. First Quality Baby Products illustrates that the defense can have teeth. Patent owners looking to mitigate the risk of an accused infringer successfully employing the defense should consider preventative action in the period before filing a lawsuit. Practitioners may also want to continue monitoring the law in this area, as an en banc rehearing has been requested to consider the possible impact of a recent Supreme Court ruling with regard to laches in the context of copyright infringement.

To read more about ways the laches defense can help you in patent litigation, click here.

U.S. Patent and Trademark Office Extends Pilot Programs

This past September the U.S. Patent and Trademark Office (USPTO) extended two key pilot programs. The first, the Quick Path Information Disclosure Statement (QPIDS) pilot program has been extended to run through September 30, 2015. The QPIDS program provides a path for information disclosure statements to be entered and considered without a request for continued examination after the payment of the issue fee.

The second program, the After Final Consideration Pilot 2.0 (AFCP 2.0), has also been extended to run through September 30, 2015. The AFCP 2.0 program authorizes additional time for the Examiner to consider responses after a Final Office Action, including time for an interview, upon the submission of a response amending at least one independent claim and the proper request form.

For more information on QPIDS, click here.

For more information on AFCP 2.0, click here.

The “Cutting Edge” of Irreparable Harm in Trademark Law

Before the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C., it was axiomatic that, upon a showing of a likelihood of success on the merits, a trademark owner was entitled to a presumption of irreparable harm when moving for preliminary injunctive relief. But after eBay, there was no such presumption in patent cases, leaving the question open whether the presumption would apply in trademark cases. Just a few weeks ago, on October 6, 2014, the Supreme Court denied certiorari in Herb Reed Enters., LLC v. Florida Entm. Mgmt., Inc., in which the Ninth Circuit held that trademark owners are not entitled to a presumption of irreparable harm simply by making a preliminary showing of a good case on the merits. Accordingly, the Supreme Court has left it to the circuits to resolve the presumption question in trademark cases, at least for now, causing litigants to query what evidence will suffice to establish irreparable harm without the presumption and to consider the prevailing law in the various circuits when choosing a forum.

To read more about instances in which irreparable harm may lead to preliminary injunctive relief, click here. 

The Examiner Count System: Why Patent Examiners Are on Your Side

The examiner count system is the stick by which a patent examiner’s production is measured. Although the USPTO does set expected time limits for each task, examiners’ production goals are met by receiving “counts,” which are accrued by completion of various tasks associated with the examination process. Under the current count system, more counts are granted for tasks performed early in prosecution to provide an incentive for examiners to “dispose” of cases quickly—either through abandonment or the granting of a Notice of Allowance. Thus, the count system serves as a reminder that patent examiners and patent applicants are not opponents, but rather members of the same team who are intended to work together to move patent applications through the system.

To learn more about the examiner count system and how it can help patent practitioners, click here.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property practice group at Nutter McClennen & Fish LLP in Boston. Assistance in the preparation of this issue was provided by Kenneth R. Berman, Ronald E. Cahill, John J. Penny, V, Rory P. Pheiffer, David J. Powsner, Heather B. Repicky, Derek P. Roller, Joshua I. Rudawitz, 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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