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    Rory P. Pheiffer is a partner and the Deputy Chair of Nutter’s Intellectual Property Department. He is also a member of both the Emerging Companies and Life Sciences and Medical Devices groups. His practice covers a broad spectrum ...

Updated August 3, 2020

The coronavirus seems to be exerting itself upon all phases of life, and your intellectual property is not immune.  While you, your families, your friends, and your colleagues are getting comfortable with the new normal of social-distancing, intellectual property (IP) offices worldwide have also been grappling with how to handle the impact of coronavirus (also referred to as COVID-19).  Responses from IP offices around the world are varied and evolving, as the landscape changes in each individual country and on a global scale.  For example, some offices, such as the European Patent Office (EPO), India, and the United Kingdom, have automatically extended deadlines, while others have refrained from any extensions but permit, under certain circumstances, remedial action for rights lost due to effects of the coronavirus.  While the U.S. Patent and Trademark Office (USPTO) has not provided for automatic extensions, certain deadlines associated with patent and trademark filings and fees may be extended for small and micro entities provided the delay in filing or payment was due to the COVID-19 outbreak.  Additionally, the USPTO will waive the petition fee to revive certain lost rights resulting from a failure to take action due to effects of the coronavirus. 

In recognition of the high interest level in the program, the PTO recently announced it is increasing the annual limit on Track One Prioritized Examinations from 10,000 to 12,000, effective September 3, 2019, to prevent exceeding the limit this fiscal year, which concludes on September 30. 12,000 will be the new limit going forward as well.

A trademark is a word, phrase, symbol, design, color, sound, or a combination thereof, that serves to identify the source of goods or services from those of another. Questions frequently arise about how trademarks should be used and about when and how trademark symbols should be used.

On December 5, Rory P. Pheiffer’s term as president of the Boston Patent Law Association (BPLA) drew to a close. A partner and the deputy chair of Nutter’s Intellectual Property Department, Rory will serve an eighth and final year on the board. Under Rory’s leadership, the BPLA accomplished several key initiatives under his banner of “collaboration” – please click to learn more.

The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.

You don’t need to register a trademark to establish and assert trademark rights in the U.S. Merely using a mark commercially so that consumers come to view the mark as identifying a source is enough to qualify for protection. So, given the prospect of enforceable unregistered rights (known as “common law” rights), why bother with federal trademark registration expense and effort? There are number of good reasons beyond the most obvious one – use of the ® symbol alongside your mark.

Posted in Branding, Trademarks

Graphic of a red boat sailing away from a fleet of white boats, going in its own directionWelcome!

The word “brand” has come to be used broadly as a business buzzword, and with good reason. A brand often is comprised of a company name or a product name - but it is much more than that. It is a projection and reflection of goodwill. It is a promise, a feeling, an ethos, a lifestyle statement. It acts as a reassuring signpost for consumers in a busy marketplace, signaling a trusted source and a consistent level of quality. 

Successful brands are not attention-grabbing gimmicks. A product or service name, however clever, merely is a shell, and hopefully that shell is filled with and overflows with positive consumer sentiment that results from a consistently good user experience – whether that experience is eating a taco, using a travel booking website or interacting with an accounting professional. 

This blog post is an introduction to a series of posts that address legal brand protection. Legal measures cannot provide the most fundamental underpinnings for a successful brand, such as quality, consistency, authenticity and good timing in terms of meeting a market demand. Legal measures can, however, position businesses to stake out, defend and protect their brands. Legal brand protection measures include pre-filing and pre-use diligence, registration and policing, and each of these categories involves an array of nuanced considerations that this blog series will address.

Posted in Litigation, Patents

In a stinging decision that will impact its patent portfolio, Arthrex recently suffered a setback in a patent dispute over suture anchors with Smith & Nephew. The Federal Circuit upheld a PTAB judgment entering adverse judgment against claims 1-9 of Arthrex’s U.S. Pat. No. 8,821,541, which S&N challenged in a 2016 IPR. This decision will affect the related patent portfolio because of the estoppel provisions of 37 CFR 42.73.

Rory P. Pheiffer, a partner in Nutter’s Intellectual Property (IP) Department, has begun his term as President of the Boston Patent Law Association (BPLA), one of the oldest, continuously active IP-based law associations in the country. Founded in 1924, the BPLA is a nonprofit association that includes more than one thousand IP professionals across New England. The BPLA is dedicated to provide educational programs and a forum for the interchange of ideas and information concerning patent, trademark, and copyright laws. Rory has served on the BPLA Board of Governors for the past six years, including in the roles of Secretary, Treasurer, Vice President, and President-Elect. He has also served as co-chair of both the BPLA’s New Lawyers and Law Students Committee and the BPLA’s Invented Here! Committee.

Tags: Patents

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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