- Posts by Rory P. PheifferPartner
Rory P. Pheiffer is a partner in Nutter’s Intellectual Property Department and a member of both the Emerging Companies and Life Sciences and Medical Devices groups. His practice covers a broad spectrum of intellectual property ...
Most patent owners are aware that under 35 U.S.C. § 154(d), publication of a United States patent application confers provisional rights to the patent owner. The provisional rights allow an owner to collect damages for infringement of issued claims dating back to the date of publication provided that the claims are substantially similar to the claims that are included in the published application. It can often be difficult for a patent owner to prove that issued claims are substantially similar to published claims. However, even if a patent owner is able to prove claim similarity from publication to issuance, a further obstacle to collect pre-issuance damages was solidified by the Federal Circuit recently in Rosebud LMS v. Adobe Systems—the statutory requirement of actual notice. In the recent Federal Circuit decision, the Court found that constructive notice was insufficient to meet the actual notice requirement under 35 U.S.C. § 154(d), and that instead a patent owner must prove the infringer was actually aware of the patent at issue.
In a decision likely to be lauded by patent applicants and owners, the Federal Circuit recently issued an opinion that affirms its staunch position that the bar to prove a patent owner made a disclaimer that impacts the claim scope is high. The opinion provides some useful quotes that prosecutors and litigators representing applicants and owners will likely be interested in calling upon when presenting argument against assertions that a previously taken position amounts to a disclaimer or disavowal by the applicant/owner.
Now that our readers have had their fill of turkey and all the fixings, they can gorge on an abundance of patent petitions data. Earlier this year, Director of the USPTO Michelle Lee announced a new public, user-friendly tool to obtain information about the abundance and success rate of petitions of every nature. The information generally includes:
- The average number of days a petition is pending before a decision is made;
- The grant rate for a petition; and
- The office within the USPTO that makes the decision on the petition.
Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of this program, a patent applicant must:
- Be a small or micro entity appellant;
- Have only a single ex parte patent appeal pending before the Board as of September 18, 2015;
- Have no claim involved in the appeal that can be subject to a rejection under 35 U.S.C. § 112;
- For each ground of rejection that is applied to more than one claim, select a single claim as representative and only discuss that claim in the appeal for that ground;
- Agree to waive any requested oral hearing; and
- Acknowledge that any oral hearing fees paid in connection with the appeal will not be refunded.
Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart. Key features of the process such as low cost, anonymity, and preclusion from estoppels make it a potentially attractive tool for challenging pending applications. However, a third party’s participation in the patent prosecution process is still limited and the submitted references may even inadvertently strengthen any patent that issues from the application in which the submission is filed. Accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.
In the beginning of October, the U.S. Patent and Trademark Office (USPTO) announced that it is extending two programs that patent applicants find useful in the later stages of prosecution—the After Final Consideration Pilot 2.0 (AFCP) and the Quick Path Information Disclosure Statement (QPIDS) programs.
Recently the Federal Circuit, sitting en banc, upheld the International Trade Commission’s (ITC) interpretation of 19 U.S.C. § 1337 to allow the ITC to prevent goods from being imported into the United States when the infringement does not occur until after importation. Although the panel was split 6-4, the primary practical justification for the majority’s decision stemmed from the determination that if the decision came out the other way, it would effectively make § 1337, and thus ITC cases, inapplicable to any induced infringement claims, as well as potentially all method claims. The case involved the importation of fingerprint scanning devices by the Korean company Suprema, Inc., which were then combined with software by Suprema’s American business partner Mentalix, Inc., before the scanners were actually sold in the U.S. The sole claim of the plaintiff Cross Match Technologies, Inc. that was at issue in the en banc appeal (claim 19) was directed to a method for capturing and processing a fingerprint image.
On July 30, 2015, Drew Hirshfeld was appointed to the position of Commissioner for Patents for the United States Patent and Trademark Office (USPTO). Mr. Hirshfeld reports directly to Michelle Lee, the Director of the USPTO, and according to the USPTO website, he “is responsible for managing and directing all aspects of this organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.”
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.
As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.
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.