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IP Bulletin, March 2013

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

Functional Claim Language – To Infringe, Must the Device be Designed to Perform the Function, or Just be Capable of Performing the Function?

Claiming an apparatus in terms of what it does, referred to as “functional claim language,” rather than the structure of the apparatus itself, is a common and useful claim drafting technique. The way the functional language is recited, however, can determine whether the claim covers any device capable of performing the function, or only devices designed or made to perform the function. Recently, the Federal Circuit took the position that some terms should typically be construed more narrowly than other terms depending on factors such as intrinsic evidence, claim differentiation, and constructions from earlier rulings. Practitioners should give consideration to the use of their preferred functional language claim terms and the various claim terms discussed by the Federal Circuit based on their desired claim scope and the relevant prior art.

For a further discussion of functional claim drafting strategies, click here.

Use Requirement for European Union Community Trademarks Defined by Relevant Market

The Court of Justice of the European Union (CJEU) recently established that use of a Community trademark within one European Union (EU) Member State is not, by itself, sufficient to constitute the requisite “genuine use in the Community.” Previously, under the prevailing interpretation of “in the Community,” use of a mark in one EU Member State was sufficient to establish “genuine use.” In July 2012, however, the CJEU set forth a new, highly fact-specific standard under which territorial scope of the use is only one factor. Under the new standard, a mark meets the requirement of “genuine use in the Community” if the mark is sufficient to create or maintain a market share within the relevant market. Trademark applicants and owners should evaluate their use of marks within the EU and take appropriate measures to ensure continued protection in any desired EU Member States by making genuine uses in such States.

For a further discussion of the use requirement for Community Trademarks, and practical tips related to the same, click here.

1.5 Years Later, Patent Applicants Can Finally Take Advantage of Micro Entity Fees

Beginning March 19, 2013, patent applicants that can certify themselves as micro entities can begin saving 75% on most patent fees. While the micro entity status has existed for one and a half years, only now has the United States Patent and Trademark Office established a fee schedule that includes reduced fees for micro entities. Some of the fees that are reduced by 75% for micro entities include: prioritized examinations, utility application filing fees, requests for continued examination, notices of appeal, ex parte reexaminations, supplemental examinations, issue fees, maintenance fees, excess claim fees, and extension fees.

To read more about how to qualify as a micro entity, and practical tips related to the same, click here.

Developments in the Domestic Industry Requirements in the International Trade Commission

In response to growing litigation costs, overseas manufacturing centers, and growing jurisdictional challenges to patent suits, the United States International Trade Commission (ITC) provides an attractive alternative to district court litigation for patent infringement cases. But to bring a complaint in the ITC, a complainant cannot be a true non-practicing entity. Rather, they must meet the Domestic Industry requirement of §337 of the Tariff Act of 1930 (as amended). Generally, in this world of patent enforcement entities, or companies formed solely for the purpose of enforcing patents, the Domestic Industry requirement can be a gating issue to an attractive enforcement strategy.

For a further discussion of the Domestic Industry requirement, and practical tips related to the same, click here.

Does My Spouse Own My Patent?

Does the spouse of an inventor have an undivided ownership interest in inventions developed by the inventor? If the inventor lives in a “community property” state, the answer is, most likely, yes! Anyone involved in the acquisition or litigation of a patented invention that was at some point owned by a married individual living in a community property state may want to confirm patent ownership before proceeding with the acquisition or litigation.

For a further discussion of community property law’s effect on patent ownership, 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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