IP Law Bulletin

Foreign filing licenses do not typically require much attention in daily practice since the license is routinely applied for and granted as a matter of course in new application filings. However, in certain situations ignoring the license may cause severe damage. 35 U.S.C. § 184 states that a person shall not file or cause or authorize to be filed a patent application (among other things) in any foreign country unless six months have passed since the United States application was filed unless otherwise authorized by a license obtained from the Commissioner of Patents, i.e., unless a foreign filing license is received from the United States Patent and Trademark Office (USPTO). A purpose for this rule is that it allows the U.S. government to protect national security by approving or disapproving the export of sensitive technologies, such as technology associated with warfare, nuclear, or security-related measures.

The European Union’s (EU) trademark regulations are undergoing a significant overhaul as of March 23, 2016. For starters, the terminology is changing: the title “Community Trade Mark” or “CTM,” will be replaced by “European Union Trade Mark,” or “EUTM.”

There are more changes than can be fully summarized within the scope of this blog post. Here are three changes in particular that brand owners should be mindful of:

The Federal Circuit’s recent decision in UltimatePointer v. Nintendo (Fed. Cir. Mar. 1, 2016) provides a reminder of the need to use caution when drafting a claim that could be read to cover both a device and a method of use.

UltimatePointer is the assignee of U.S. Patent No. 8,049,729 (the ‘729 patent), which is generally directed to a handheld pointing device that can be used to control the cursor on a projected computer screen, thereby improving a presenter’s ability to control the cursor while making a presentation to an audience. UltimatePointer asserted several claims of the ‘729 patent against Nintendo, with Nintendo’s Wii remote being the accused product. A key issue in the litigation was whether the asserted claims were invalid for impermissibly reciting both a device and a method in the same claim.

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place.

The Trademark Trial and Appeal Board—usually referred to by its acronym “TTAB,” which is spoken (most often) as four separate letters (tee, tee, ay, bee) rather than the obvious and more concise vocalization of “tee-tab”—is the tribunal where you can go on appeal if you do not like the examiner’s rejection of your trademark application. It is also the tribunal that hears and adjudicates “Oppositions” filed by third party “opposers” against “applicants” seeking registration and “Petitions for Cancellation” where third party “petitioners” proceed against “respondents” registrations they feel were improvidently granted.

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally directed towards “a method and system for entering data relating to an insurance claim for a damaged vehicle.” In each case, the PTAB sided with the Petitioner, finding that the claims were directed towards the abstract idea of valuing a damaged vehicle based on information about that vehicle and therefore not patent eligible.