• Posts by Derek Roller

    Derek Roller is a partner in Nutter’s Intellectual Property Department who has a wide range of experience spanning both patent prosecution and contested proceedings. Clients rely on Derek to help them navigate through patent and ...

Posted in Branding, Trademarks

Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us into the realm of marketing, as most of what makes a mark into a brand is the result of marketing investment around the mark. However, there are still many legal considerations to keep in mind as you begin using your mark and building it into your brand.

On May 13, 2015, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs will go into effect in the United States. The Hague system will, in effect, introduce a design patent analog to the current Patent Cooperation Treaty (PCT) international patent application and Madrid Protocol international trademark registration systems. Rather than filing for design patent protection in foreign jurisdictions individually, applicants will be able to file a single application at the USPTO to pursue protection in multiple jurisdictions. Other participating countries at the time of writing include the European Union and South Korea. Japan will adopt the agreement on the same date as the U.S., and Canada, China, and Russia are all said to be exploring the possibility of participation.

In mid-January, the USPTO published a notice that its Extended Missing Parts Pilot Program would continue through the end of 2015. Originally introduced in 2010, the Extended Missing Parts Pilot Program allows applicants to delay the payment of fees required for examination (i.e., the search fee, examination fee, any excess claims fees, and surcharges for late fee payment) by up to 12 months, allowing a sort of “extension” to the term of a provisional patent application. To take advantage of the program, applicants must submit a certification and request to participate when filing a nonprovisional or plant application that validly claims the benefit of a provisional application (applicants also must not have filed a nonpublication request). The Extended Missing Parts Pilot Program can be an effective tool to further delay costs associated with filing and prosecuting a patent application, thereby allowing funds to be put toward commercial development. However, the program does not affect the 12-month priority period for foreign filing under the Paris Convention, so applicants should be careful to complete any desired foreign filings within 12 months of their provisional application filing date.

Click here to read the Federal Register notice regarding the Extended Missing Parts Pilot Program.

Posted in Branding, Trademarks

When last we met, you had successfully navigated the trademark-examination process and were gazing with pride and happiness upon your Certificate of Registration from the United States Patent and Trademark Office.

Posted in Litigation, Patents

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.

On November 1, 2014, the European Patent Office (EPO) will implement a revision to Rule 164 EPC that allows Patent Cooperation Treaty (PCT) applicants to have more than one invention searched when a unity of invention objection is present, regardless of whether the EPO was selected as the International Searching Authority (ISA) during the international phase. Under current practice, if the EPO is not the selected ISA, a supplemental European search report will address only the first invention mentioned in the claims, and any further inventions can only be pursued through divisional practice. Conversely, however, if the EPO is the selected ISA, applicants can request and pay for additional searches before selecting the invention to be pursued.

Posted in Patents

On the same day in early June, the United States Supreme Court issued two opinions addressing patent law issues related to inducement and indefiniteness —Limelight Networks, Inc. v. Akamai Technologies, Inc. and Nautilus, Inc. v. Biosig Instruments, Inc., respectively. In both cases, the nation’s highest court unanimously reversed the Federal Circuit. In doing so, the Court simultaneously raised the bar for patentees with respect to patent infringement and lowered the bar for alleged infringers with respect to invalidity. The decision provides a salient reminder of some important claim drafting strategies for current and future patent applicants.

Active Inducement of Infringement

The Patent Act provides that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” In Limelight, the accused infringer Limelight Networks, Inc., was alleged to have actively induced infringement of a method patent by carrying out some steps of the claimed method and encouraging its customers to carry out the remaining steps. For purposes of this case, the Supreme Court assumed that infringement of all the method steps could not be attributable to a single party, either because Limelight had not actually performed the steps or because it did not direct or control others who performed them. Accordingly, the Supreme Court reversed the Federal Circuit’s decision and found that Limelight could not be liable for active inducement of infringement. In doing so, it reinstated the principle that liability for induced infringement must be predicated on direct infringement. The Court, however, made specific note that the Federal Circuit on remand will have the opportunity to revisit the question of direct infringement by Limelight under 35 U.S.C. § 271(a). For the time being, however, Limelight has escaped a finding of liability by dividing the performance of method steps between more than one party.


In addition to reversing the Federal Circuit’s holding concerning active inducement of infringement, the Court in Nautilus set forth a new test for patent definiteness when considering validity of a patent claim in view of 35 U.S.C. § 112. In particular, the Court held that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” This new standard replaces the Federal Circuit’s long-standing “insolubly ambiguous” test, which directed lower courts to invalidate claims only if they are not “amenable to construction,” meaning that claims should survive so long as a court could “ascribe some meaning” to them. In overturning that standard, the Supreme Court found that it “can leave courts and the patent bar at sea without a reliable compass.”

Because the Court remanded the case back to the Federal Circuit with the instruction to apply the new standard to the claims at issue, the application and breadth of the newly pronounced indefiniteness standard are uncertain. While the Court found that the old standard was too lenient toward ambiguous claims, it cautioned that “[s]ection 112…entails a ‘delicate balance’” that “must take into account the inherent limitations of language,” and allow for “[s]ome modicum of uncertainty,” while also requiring claims to “be precise enough to afford clear notion of what is claimed.” The Court also pointed out the importance of viewing the claims from the point of view of a person skilled in the art, and that such an investigation “may turn on evaluations of expert testimony.” Thus, the new standard appeals to a rule of reason, and its application likely will involve an intense factual investigation. In addition, the Court restricted its holding to the 2006 version of the Patent Act, which was in effect prior to enactment of the Leahy-Smith America Invents Act in 2012. It will thus be left to future cases to determine whether the Supreme Court’s new standard will be applied to patents filed after September 16, 2012.

Claim Drafting

Even with the uncertainty surrounding indefiniteness, patent applicants can employ certain claim drafting strategies to protect their interests in view of Limelight and Nautilus. For example, to circumvent the divided infringement issue in view of Limelight, method claim language can be drafted from the perspective of a single actor that practices all of the steps of the claimed process. While this can in some cases be more difficult and awkward, claims that focus on the behavior of one actor are more likely to hold up in infringement litigation and afford patentees the greatest likelihood of protection.

Further, while the exact meaning of the new “reasonable certainty” standard for claim definiteness is unknown, it seems evident that a greater level of clarity in describing the scope of an invention will be required going forward. For example, certain claim limitations based on inherent characteristics and functional language may not be sufficient to satisfy definiteness under 35 U.S.C. § 112 after Nautilus. To guard against this possibility while retaining the broadest coverage, applicants should ensure that their specification includes broad disclosure along with more specific examples of the embodiments of the invention. Applicants should also be sure to draft claims in the same manner, e.g., by including broader functional language in an independent claim and more specific limitations in dependent claims. Under such a strategy, the invention can remain protected under the new standard by the narrower claims even if the broader claims are deemed indefinite.

While these strategies themselves are not novel, their importance is highlighted by the Supreme Court’s recent decisions.

This update was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

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.

Following closely on the heels of the United States Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. ___ (2014) (CLS Bank), the United States Patent and Trademark Office (USPTO) has issued guidelines for the examination of patent applications claiming abstract ideas, particularly, as those implemented on computers. The guidelines went into effect yesterday, but are preliminary: the USPTO indicates that it will issue additional guidance after further consideration of the Court's decision and public feedback. 1

Posted in Copyright

In November 2013, a federal judge in the Southern District of New York dismissed a lawsuit against Google, Inc., finding that Google’s copying of print works in connection with its Google Books project represents fair use under 17 U.S.C. § 107. The Google Books project includes two main programs: a “partner” program, in which Google stores and displays material provided by book publishers or other rights holders, and a “library” project, in which Google digitizes the entire collection of a library to make its text available for search and other uses. Back in 2005, The Authors Guild, Inc., along with several individual authors, brought suit against Google for copyright infringement based on unauthorized copying that occurs in connection with the digitization of printed works. In the opinion, Circuit Judge Chin analyzed the alleged copyright infringement in view of several fair use factors laid out in § 107, including the purpose and character of the use of copyrighted material, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use on the potential market for the work. Judge Chin found that the Google Books project provides many previously-unavailable benefits to the public without superseding or supplanting the books themselves, and therefore held that any copyright infringement associated with the program represents fair use under the law. This decision highlights the ever-changing landscape of fair use—and copyright law in general—in the digital age. Practitioners dealing with fair use and other copyright issues should be mindful of the dynamic landscape surrounding copyright and digital media.

Posted in Branding, Trademarks

In our first installment, we considered what a trademark is and its relation to a brand. To recap, a trademark is a source-identifier: (in the drugstore) “Ooooh, there’s my CREST toothpaste! I don’t know who makes it, but I do know it will always come from the same place and will always make my mouth feel minty-fresh!”

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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