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IP Bulletin, January 2014

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

Nutter’s IP Bulletin How-To Series on Branding 

Five “Cs” to Check-Off Your List Before You Decide on Trademarks
Third in The Series

This third installment of Nutter’s continuing series on building a brand focuses on considerations you should undertake before finalizing your selection of trademarks to build your brand. Before filing, consider taking the following five preliminary steps: (1) coordinate your efforts; (2) construct your trademark strategy; (3) conceive the overall design; (4) conduct a preliminary search; and (5) consider contacting an intellectual property professional. If you follow the five “Cs,” you can reduce the chances of finding yourself back at the drawing board coming up with a new idea for a trademark.

To read about how the five “Cs” can help make sure your branding strategy is on the up-and-up, click here. 

IP5 and Global PPH Pilot Programs Implemented on January 6, 2014

Important changes to Patent Prosecution Highway (PPH) practice at the U.S. Patent and Trademark Office (USPTO) and other intellectual property offices around the world took effect on January 6, 2014. The world’s five largest intellectual property offices (the offices in the United States, Europe, Korea, Japan, and China, collectively, the “IP5”), launched a new PPH pilot program (IP5 PPH). Simultaneously, and with the inclusion of three IP5 members, thirteen intellectual property offices launched a similar pilot program titled the “Global PPH” pilot program. These changes signal the end of myriad existing bilateral PPH programs between the IP5 nations and the thirteen Global PPH nations, such as the European-US PPH agreement, which is set to expire on January 28, 2014. The former bilateral PPH programs between the nations will likely be incorporated into the IP5 and Global PPH pilot programs. For patent owners and filers, these pilot programs should result in greater efficiencies and cost savings, both in prosecution time and attorney costs as the PPH process is further unified.

For a further discussion of the new PPH programs, click here. 

USPTO Now Gives Applicants Two Months to Reply to Restriction Requirements and Other Actions without Applicants Having to Pay a Fee

In our November issue, we highlighted some patent rule changes that have since taken effect as part of the Patent Law Treaties Implementation Act of 2012; the changes took effect on December 18, 2013. One effect of these rules not previously discussed in our earlier write-up is the additional amount of time now afforded to applicants to reply to: (1) Restriction Requirements; (2) Notices of Informal or Non-Responsive Amendments; (3) Notices of Informal or Non-Responsive RCE Amendment; (4) Notices of Required Fees Due; and (5) Letters Requiring Computer Readable Format because it was unreadable, non-compliant, or not submitted. Previously, applicants had one month to respond to the USPTO for these matters before extension fees began to accrue, but now applicants have two months to respond without paying a fee. This additional amount of allotted time harmonizes the United States laws with those set forth in the Patent Law Treaty adopted at Geneva, which require a time period for reply by applicants be at least two months. So, don’t be alarmed when your docketing department begins docketing restriction requirements for a response time of two months instead of one!

To review the new rules tied to the Patent Law Treaties Implementation Act of 2012, click here. 

The Myriad Decision: Has the Dust Settled Yet?

Six months ago, the United States Supreme Court shook up the biotechnology industry by ruling that genetic sequences are not patent eligible “simply because they have been isolated.” AMP v. Myriad Genetics, 569 U.S. 12-398 (June 13, 2013). While providing little practical guidance, the Court succeeded in raising many new questions at the core of biotechnology patenting. For example, what characteristics are required to make natural nucleic acids patent eligible? What about other natural products, such as stem cells, polypeptides, antibodies, purified enzymes, and hormones? While many questions remain unanswered, some insight can be gained from post-Myriad developments.

For a further discussion of post-Myriad developments, click here. 

The Evolution of Copyright Law in the Digital Age—Google Books Project Deemed Fair Use

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.

To read the Google Books decision, click here. 

Crafting Continuation Claims to Avoid Issue Preclusion

The U.S. Court of Appeals for the Federal Circuit recently decided Ohio Willow Wood Co. v. Alps South, LLC (Fed. Cir. 2013), which involved various legal issues, including collateral estoppel, obviousness, and inequitable conduct. The collateral estoppel aspects of the case are of particular interest because the issue preclusion finding was based on a different, related patent.

Ohio Willow Wood (OWW) owns a family of patents relating to cushioning devices that are placed over the residual stumps of amputated limbs to make prosthetics more comfortable. OWW asserted its ‘237 patent against Alps, and the litigation was stayed pending reexamination. During the stay, OWW asserted its ‘182 patent (which is a continuation of the ‘237 patent) against another defendant (Thermo-Ply). The ‘182 patent was held to be invalid as obvious in the Thermo-Ply litigation. Based on that result, the district court in the Alps litigation granted summary judgment of invalidity of the ‘237 patent on a collateral estoppel theory. The Federal Circuit affirmed this decision, agreeing that both patents recited substantially the same cushion liner, albeit using slightly different language. The court held that the mere use of different words in portions of a claim do not create new issues of validity.

A careful approach to building a portfolio of related patents can help avoid this type of collateral estoppel issue. For example, when drafting continuation claims, practitioners should avoid simply rearranging words or replacing them with equivalents, and instead consider including features which are different from those covered in parent cases yet still read on competitor products.

House Passes Controversial Innovation Act

Both the legislative and judicial branches of the United States are currently engaged in attempts to curb so-called “patent trolling” – the use of patents solely for litigation instead of innovation, development, and protecting marketed products. Rising concerns over this behavior led to the recent passage of H.R. 3309 (the “Innovation Act”) with overwhelming bipartisan support, only about a month after the bill was introduced to the House. The Innovation Act aims to encourage innovation by creating a number of alleged procedural safeguards against frivolous patent infringement claims and by making post-grant review procedures before the Patent Trial and Appeal Board a more attractive alternative to challenging patents in court. Although generally supported by several large companies, the Innovation Act raises concerns for small corporate or individual patent owners, who worry that the bill may unfairly limit the rights of all patent owners, and for certain members of the judiciary, who feel that the bill is an improper legislative encroachment on judicial authority.

For a further discussion of the controversy surrounding this proposed legislation, click here. 

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. 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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