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On July 24, 2023, the United States Patent and Trademark Office changed its procedures for the PTO Director’s review of certain decisions by the Patent Trial and Appeal Board.  The decisions in question are those decisions of the Patent Trial and Appeal Board to deny or grant petitions to institute proceedings under the America Invents Act.  Those proceedings include inter partes review and post grant review.  This change follows two years of an interim process and public comment period.Continue Reading PTO Allows Another Bite at the Apple

Quick answer: no!

The Federal Circuit Court of Appeals recently tangled with a patent application for an invention that did not have scientific support.  The court affirmed a decision of the Patent Trial and Appeal Board rejecting a patent application on these grounds.  While this is not a common occurrence, in this case, it’s an easy conclusion to reach.

In In re Huping Hu, 2021 U.S. App. LEXIS 7776, the inventors applied for patents for inventions related to “quantum entanglement.”  According to the inventors, quantum entanglement is “quantum spins of photons, electrons and nuclei.”  The inventors explained that “quantum spins of photons, electrons and nuclei have now been successfully entangled in various ways for purposes of quantum computation and communication.”  The inventors said that quantum entanglement is a phenomenon that happens if particles, such as photons and electrons, become linked, and, when separated, the mechanical states of the molecules are still linked such that if the state of one particle is changed, the linked particle is affected.  The PTO explained the inventors’ method as using quantum entanglement “to change the characteristics of one substance via the manipulation of a completely physically separate substance.”  The PTO did not dispute the existence of quantum entanglement, but said that the phenomenon has been seen in very specific conditions for only a fraction of a second.
Continue Reading Can a Patent Violate the Laws of Chemistry and Physics?

For some time there has been a split among the Federal circuits as to whether evidence of willfulness is required in order to award disgorgement of profits for trademark infringement under Section 1125(a) of the Lanham Act.  The split stems from how each Federal circuit interprets Section 1117(a) of the Lanham Act which was amended in 1999.  The section reads as follows:

When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled . . . subject to the principles of equity, to recover (1) defendant’s profits . . .

A number of Federal Circuits, including the Second and the Ninth, have interpreted the above to require a showing of willfulness for disgorgement in Section 1125(a) cases.  Six Federal Circuits do not.  On April 23, 2020 the United States Supreme Court made clear where it stands.
Continue Reading Trademark Infringers Beware – Willfulness Not Required for Disgorgement

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. The CARES Act authorizes the PTO to toll, waive, or modify any patent or trademark deadline in effect during the COVID-19 emergency. The announcements were made in written Notices of Waiver, one each for patents and trademarks, posted on the PTO’s website.

In order to exercise the power under the CARES Act, the PTO Director must determine that the COVID-19 pandemic materially affects the functioning of the PTO; prejudices the rights of patent applicants, trademark registrants, or patent/trademark owners; or prevents patent applicants, trademark registrants, or patent/trademark owners from making a filing or paying a fee in the PTO.
Continue Reading Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19