Proposed “Patent Agent Privilege” Promises Protection For Patent Practitioners And Clients

The United States Patent and Trademark Office (“PTO”) recently proposed a patent-agent privilege that would bring needed consistency to the discovery phase of Patent Trial and Appeal Board (“PTAB”) proceedings.

The proposed rule would recognize a privilege for certain communications between clients and non-attorney U.S. patent agents and foreign patent practitioners (“Patent Practitioners”). The proposed privilege would only apply in PTAB proceedings, and then only “where the practitioner performs legal work authorized by the jurisdiction in which the practitioner practices.”[1]  Notably, the proposed privilege would not extend to communications relating to district court litigation.

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Consumers Are Unlikely to Confuse Yelp with a Local Property Management Company Using the Same Tagline in Ads, Court Rules

In a ruling that neatly illustrates some of the challenges a company is likely to face when trying to enforce trademark rights in an advertising tagline, a federal judge in the Northern District of California recently denied a motion for a preliminary injunction seeking to enjoin Yelp’s use of a trademarked tagline.

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Don’t Lose Your DMCA Safe Harbor Protection!

The U.S. Copyright Office’s new electronic system for copyright-agent registration and maintenance goes into effect on December 1, 2016, and with it comes new rules. Beginning December 1, all online service providers must submit new designated-agent information to the Copyright Office through the online registration system. Electronic designations should be filed on December 1, 2016, or as soon as possible thereafter. Service providers who fail to timely submit electronic designations will be ineligible for the safe harbor from copyright-infringement liability provided by § 512(c) of the Digital Millennium Copyright Act.

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Ninth Circuit Retires Fee-Award Standard, Imports Octane Fitness to Trademark Cases

This week, the U.S. Court of Appeals for the Ninth Circuit joined a majority of appellate courts that have rejected rigid tests for attorneys’-fees awards in favor of flexible discretion at the district court level.  The Ninth Circuit’s pre-Octane Fitness rulings provided a safe-harbor for litigants: fees were only to be awarded in instances of “malicious, fraudulent, deliberate or willful” infringement or where a frivolous case was brought or maintained in bad faith.  That standard has been discarded and replaced by a different, more general test that asks whether the case stands out in terms of its strength or unreasonableness in the way it was litigated.

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No Protection for Network Marketing Provider That Had Knowledge and Authority to Control Deceptive Conduct of Affiliates

In Federal Trade Commission v. LeadClick Media, LLC, 2016 U.S. App. LEXIS 17383 (2nd Cir. 2016), the Second Circuit recently held that an affiliate marketing network provider could be subjected to liability under the Federal Trade Commission Act (“FTC Act”) for deceptive marketing materials published by the affiliates.  It also concluded that Section 230 of the Communications Decency Act (“CDA”) did not immunize the network provider from liability.  In doing so, the Second Circuit emphasized that the network provider had knowledge of and the authority to control the content of the affiliate websites.  This ruling could increase the exposure of internet businesses to liability for deceptive acts or practices engaged in by third-party vendors or independent contractors.

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Software and Business Method Inventions After Alice

Patent attorneys are often asked the question: “Is my idea patentable?”  Often the idea is related to software or business methods.  Well-known business methods include Amazon’s “1-click shopping” and Priceline’s “reverse auction.”  In the new digital economy, innovative software and business method models have given rise to new very successful companies such as LinkedIn, Uber, and Airbnb.  As important software and business method inventions are in the new digital economy, it is often unclear whether they can be patented.  This uncertainty is largely due to a legal rule that “abstract ideas” are not eligible for patent protection.  This rule originates from a long line of U.S. Supreme Court cases, with Alice Corporation v. CLS Bank International, decided in June of 2014, being the most recent and influential of these cases.  The basic rationale for the rule is a concern over so-called “preemption” of abstract ideas.  That is to say abstract ideas are the basic building blocks of science and industry, and allowing patents to monopolize abstract ideas can preempt the use of such basic building blocks.

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Federal Circuit is In Sync with Patent’s Validity Under Section 101

The Federal Circuit overturned a District Court ruling that a patent directed to automated lip synchronization and manipulation of animated characters’ facial expressions was invalid under Section 101 as being an abstract idea. The patent disclosed that this automation is accomplished through rules that aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context.

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Parent Company Furnishes Cancellation of Subsidiary’s Trademark Registration

Does your company’s wholly-owned subsidiary own trademarks in its own name?  Has your company acquired any companies that own trademarks?  If so, your company’s use of those trademarks will not prevent cancellation of those trademark registrations unless you have proper trademark license agreements in place.  This is exactly what happened to Floorco Enterprises, LLC’s NOBLE HOUSE trademark registration.  In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) cancelled Floorco’s trademark registration because only Floorco’s parent company was using the trademark and there was no trademark license agreement in place between Floorco and its parent company.

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The Federal Defend Trade Secrets Act vs. The California Uniform Trade Secrets Act

Although some version of the Uniform Trade Secrets Act (“UTSA”) has widely been adopted by most states, including California, variations among the versions and related judicial interpretation has led to uncertainty—particularly in today’s interstate economy where trade secrets and misappropriation easily may cross multiple states.

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