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Prosecution Luncheon April 18, 2013

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Prosecution Luncheon. April 18, 2013. TTAB Success in 2(e) Refusals?. TTABLOG informal analysis – 139 2(e) decisions in 2012 (e)(1) descriptive – 96 aff’d, 21 rev’d (82%) (e)(2) geographically descriptive – 5 aff’d, 2 rev’d (e)(3) geographically misdescriptive – 3 aff’d - PowerPoint PPT Presentation

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Page 1: Prosecution Luncheon

Prosecution Luncheon

April 18, 2013

Page 2: Prosecution Luncheon

TTAB Success in 2(e) Refusals?

TTABLOG informal analysis – 139 2(e) decisions in 2012

• (e)(1) descriptive – 96 aff’d, 21 rev’d (82%)• (e)(2) geographically descriptive – 5 aff’d, 2

rev’d• (e)(3) geographically misdescriptive – 3 aff’d• (e)(4) surname – 4 aff’d, 3 rev’d• (e)(5) functional – 1 aff’d, 4 rev’d

Page 3: Prosecution Luncheon

Indiana Cyberpiracy

• Laporte County CAVB announced new campaign, “Visit Michigan City Laporte”

• Serenity Springs then reserved and began using domain name

• at bench trial – trial court held that there was TM infringement and “cybersquatting that approaches cyberpiracy.” HELD:– TM law does not apply to gov’t entities the same b/c of

transparency requirement – “mark certified as a TM,” relied on Indiana registration– secondary meaning based on subsequent use

• Serenity Springs v. Laporte County CAVB, 46A03-1205-MI-214 (Ind. App. 4/15/13)

Page 4: Prosecution Luncheon

Indiana Cyberpiracy

• Appellate Court Reverses – “clearly erroneous”:– mark is geographically descriptive– No evidence of secondary meaning, indeed not

possible before use actually begins

• BUT, “None of this is to say, however, that Serenity’s actions are necessarily beyond the reach of the law.”– Remanded for consideration of unfair

competition claims

Page 5: Prosecution Luncheon

TM Clearinghouse OPEN for gTLDs• New top gTLDs program set to launch in 2013• The TMCH is a central database where TM owners may

record information - available as of March 26, 2013. • Benefits:

– Allows participation in “Sunrise Period” – 30 days for TM owners to register domain under a gTLD before registration is available to the public.

– If an application is submitted for a new gTLD which matches a recorded TM, owner will be notified - Option to challenge.

• Cost $150 for one year; $435/3yrs; $725/5 yrs

Page 6: Prosecution Luncheon

TTAB – email service nixes 5 day extension!

• opposition parties stipulated to service by e-mail while retaining the five additional days normally added if service by first-class mail.

• TTAB – Not allowed• Suggestion: stipulate to service by first-class

mail but with a courtesy e-mail copy sent simultaneously.

• McDonald's Corporation v. Cambridge Overseas Development Inc., Opposition No. 91208437 (March 22, 13) [precedential].

Page 7: Prosecution Luncheon

Black is Aesthetically Functional

• FTD applies to register “black” for floral pkg.– Even if not functional in a utilitarian sense, a

design feature is “aesthetically functional” if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage.

• EA’s evidence: black communicates to the recipient - elegance or luxury, on somber occasions such as in the context of death or in Halloween bouquets

• TTAB: competitive need, rejection aff’d• In re Florists’ Transworld Delivery, Inc., Serial No.

77590475 (March 28, 2013) [precedential].

Page 8: Prosecution Luncheon

Professional Conduct Rules RevisionsPatterned on ABA Model Rules

“Closer conformity” with rules of 49 states + DC, “while addressing circumstances particular to [PTO] practice” – But: “decisions and opinions [of states] are not binding

precedent relative to USPTO rules”

• Examples– Express authorization to take interest in “patent or patent

application” as part or all of fee [§ 11.108(i)(3)]– No CLE reporting requirement– May “refer not only to law but to other considerations such

as moral, economic, social and political factors” relevant to client in rendering advice [§ 11.201]

• Effective May 3, 2013 [see 78 Fed. Reg. 20179]

Page 9: Prosecution Luncheon

Timing is Everything . . .

Blue: Average time predicted by PTO for FAOM

Red: Average actual time for FAOM

PTO’s focus on reducing backlog seems to be bearing fruit

If trend continues, may see the time between filing and FAOM down to about 12 months

h/t PatentlyO.com

Page 10: Prosecution Luncheon

Double Patenting with Mobile Inventor• In re Hubbell (Fed. Cir. 2013)

• One common inventor, two applications– App. 1 with joint inventors, owned by Employer 1– App. 2 with different inventor group owned by Employer 2– App. 2 issued 2002, but is not prior art (102) to App. 1

• PTO rejected App. 1 under obviousness-type double patenting; no terminal disclaimer possible because of lack of co-ownership

• FC affirmed (over dissent): double patenting applies, Employer 1 cannot receive patent without linking ownership

• Is OTDP a viable doctrine following AIA?

• Employers: review employment agreements, tailor obligations to assign

Page 11: Prosecution Luncheon

App. 1: inventors A, B, C, assigned to Caltech

App. 2: inventors A, D, E, assigned to ETH Zürich

App. 1 filed (invented before App. 2)

App. 2 filed

App. 2 issued

CON of App. 1 rejected under OTDP

Page 12: Prosecution Luncheon

Another Mobile InventorDawson v. Dawson (Fed. Cir. 2013)

• Inventor left UCSF for InSite, then filed applications– UCSF copies applications years later– Did conception occur early (at UCSF) or later (at InSite)?

• PTAB: UCSF failed to prove conception at UCSF– Dawson “did not fully appreciate how [his] idea was to be

implemented in actual practice. . . . [at UCSF] Dawson had a general idea for a future research plan . . .”

• FC affirmed – substantial evidence supports result (deceased inventor's lack of testimony was a critical factor)

• Note that prior employer may have no patent rights associated with

ideas that do not amount to “conception”– May need contract language re ownership of developments

stemming from work begun at the prior employer

Page 13: Prosecution Luncheon

Design Patent Strategy• Rather than a single design application for a new

product release, Gillette filed a group each claiming part of the overall design– Perhaps the only change needed among applications is

to alter particular lines in the drawing to solid (claimed feature) or dashed (unclaimed)

– One copying only a part still infringes at least one of the patents

– Product design may still be covered by patent rights even after small changes

• Another approach: file design cases on features related to the actual design– Create further zone of protection around product

Page 14: Prosecution Luncheon

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