IP Bulletin, May 2014Print PDF
The Nutter IP Bulletin provides periodic IP news updates and practical tips
Two U.S. Supreme Court Decisions Make It Easier to Award Attorney Fees in Patent Infringement Cases
The U.S. Supreme Court handed down two recent decisions in April, both reviewing the substantive standard for determining attorneys fees in exceptional cases pursuant to 35 U.S.C. §285. In Octane Fitness, LLC v. Health & Fitness, the Court determined that “exceptional cases” under Section 285 means “one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” The Court, in Highmark Inc. v. Allcare Health Management Systems, Inc., determined that the standard of review for a district court’s determination under Section 285 should be “abuse of discretion.”
Nutter’s IP Bulletin How-To Series on Branding
How to File a Trademark Application: The Guts of a U.S. Trademark Application (Part 1 of 2)
This fifth installment of Nutter’s continuing series on building a brand focuses on the essentials of filing a U.S. Trademark Application. The four commonly asked questions addressed in this article are: (1) what trademark application form should I use; (2) what classes of goods or services should I include in my application; (3) how do I decide what items I should include in my description of goods and services; and (4) what is an appropriate and acceptable specimen of use? Questions pertaining to color and design features, filing basis, dates for first use, and other considerations that should be made when preparing a U.S. trademark application will be included in our July edition.
Revisions to the AIA Technical Corrections Act Affecting Patent Term Adjustment Published by the U.S. Patent Office on May 15, 2014
On May 15, 2014, the U.S. Patent and Trademark Office (USPTO) published rules to implement the patent term adjustment (PTA) provisions of the Leahy-Smith America Invents Act (AIA) and the AIA Technical Corrections Act, the latter of which was summarized in the January 2013 issue of the Nutter IP Bulletin. Under the new rules, the fourteen (14) month PTA period and the three (3) year PTA period are measured from the same date: the date on which an application was filed under 35 U.S.C. § 111(a) in an application under 35 U.S.C. § 111; or the date of commencement of the national stage under 35 U.S.C. § 371 in an international application. The rules also revised the provisions for notifying applicants of PTA determinations and the time period for requesting reconsideration (now by the date of issuance of the patent, and by seven months from the date of notification, respectively) and judicial review of the USPTO’s PTA determinations and decisions (now 180 days from the date of the USPTO’s decision on the patentee’s request for reconsideration). The new rules do not come as a surprise—rather, they adopt the interim rule published April 1, 2013, which are discussed in greater detail in an article from the May 2013 issue of the Nutter IP Bulletin.
In connection with the new rules, the USPTO is also providing an optional procedure for requesting a recalculation of PTA, as an alternative to the usual petition and fee otherwise required to request reconsideration of a PTA determination, for patents issued between January 14, 2013 and May 20, 2014 that resulted directly from international applications. This is because the USPTO used an incorrect fourteen (14) month/three (3) year date. Owners of patents issued during this period should consider using the USPTO’s optional procedure for requesting a recalculation of PTA, rather than a petition. Practitioners and patent owners should also ensure that proper PTA calculations are occurring for patents issued after May 20 as well.
Evaluating When USPTO Actions Should Be Made Final
As patent practitioners are well aware, U.S. patent examiners will issue a first action on the merits of a patent application as non-final and typically issue a second action on the merits as final. The finality of second actions is so universal that the finality of an action may be accepted as proper by a patent applicant when, in fact, the action was improperly deemed final. It therefore behooves applicants to always evaluate whether a final action on the merits was properly made final to have improper final actions withdrawn before the applicant incurs unnecessary costs and/or delays in prosecution.
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.
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