The Federal Circuit Reconsiders the Inherent Distinctiveness of Color Marks in In re Forney

On April 8, 2020, in In re: Forney Industries, Inc.,[1] the Federal Circuit reversed the Trademark Trial and Appeal Board’s finding that a color mark can never be inherently distinctive.  By so holding, the Federal Circuit controverts what had become conventional wisdom since the Supreme Court’s decisions in Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000). Continue Reading

Open COVID Pledge Seeks to Make IP Available for Use in Ending COVID-19

The Open COVID Coalition, comprising an international group of scientists and attorneys, has published the Open COVID Pledge, which calls upon organizations worldwide to make their patents and copyrights freely available to fight against the COVID-19 pandemic.  The steering committee of the Open COVID Coalition includes such legal luminaries as Mark Lemley of Stanford Law School and Diane Peters of Creative Commons. Continue Reading

Delaware 101 Pleading Analysis Leaves Parties Guessing and Prosecutors Moving to Adapt

Over the past few years, it has been common to see inconsistent approaches and analysis for 35 U.S.C. § 101 challenges, particularly those at the pleading stage.  Aatrix, Berkheimer, and subsequent decisions appear to have only led to more inconsistent approaches among district court judges, revealing the glaring flaws of 101 analysis, particularly without more Federal Circuit or Supreme Court guidance.

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4 Steps to More Effectively Use NDAs to Protect Confidential Information

Companies routinely use Non-Disclosure Agreements (NDAs) to protect confidential information shared with potential acquirers, consultants, and other third parties.  But companies cannot merely rely on stock NDAs to protect that information.  They should understand each NDA’s procedures for designating information as “Confidential” (and ensure compliance with them), and grasp the interplay between NDAs and state trade secret laws in terms of imputing duties of confidentiality. Continue Reading

AIPLA’s Updated Model Patent Jury Instructions Address “Clear and Convincing” Standard of Proof & Streamline Case Citations

At every jury trial involving patent-infringement or -invalidity claims, a judge must tell jurors what the law is and how to apply it when reaching a verdict. In the legal community, patent law is known as one of the most complicated and specialized areas of law, so this is asking a lot of most judges, who have broad and vast legal knowledge, but do not typically specialize in patent law. Fortunately, organizations including the American Intellectual Property Law Association (AIPLA) publish model patent jury instructions. These model instructions are helpful templates that ultimately save litigants and the public substantial resources compared to the alternative, where patent jury instructions would need to be drafted from scratch in every case. Continue Reading

USPTO Permitting Patent Applicants to Extend Certain Deadlines Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting patent applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States.  In doing so, USPTO director Andrei Iancu is exercising temporary authority granted to him under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27. Continue Reading

USPTO Permitting Trademark Applicants to Extend Certain Deadlines Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting trademark applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States.  USPTO director Andrei Iancu has exercised temporary authority granted to him under Section 12004(a) of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27.  The USPTO remains open for the filing of trademark and TTAB documents and fees.

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Protecting Social Media Contact Lists as Trade Secrets

Social media contact lists have become an increasingly important part of a business’s customer lists.  While courts are still grappling with who legally “owns” the data that the employee acquired on the employer’s dime—such as LinkedIn customer connections or access to a list of Twitter-feed recipients[1]—employers can still take steps to bolster the company’s claim of ownership. Continue Reading

Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 5

Introduction

This article is the fifth in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB reversed an Examiner’s Section-101 rejection of a machine-learning-based patent application’s claims. The first article of this series described the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), which was issued on January 7, 2019. The 2019 PEG changed the analysis provided by Examiners in rejecting patents under Section 101[1] of the patent laws, and by the PTAB in reviewing appeals from these Examiner rejections. This article describes another case where the PTAB applied the 2019 PEG to a machine-learning-based patent and concluded that the Examiner was wrong. Continue Reading

Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security (CARES) Act into law.  The CARES Act is a $2 trillion economic stimulus and rescue package designed to mitigate the economic impact of the COVID-19 global pandemic caused by the novel coronavirus, which has resulted in a level of societal and economic disruption that is unprecedented in living memory.  Included in the bill is a temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) during the pandemic to toll, waive, adjust, or modify any timing deadline under the patent or trademark laws.  While the USPTO Director has not pointed to any specific change that will be made under the new authorization, it is possible that at least some timing deadlines will be modified to accommodate hardships faced by stakeholders during this crisis. Continue Reading

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