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Tag Archives: USPTO

Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional

Posted in IP, Patent Law

In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution.  The… Continue Reading

Federal Circuit Holds That Claim Language Can Limit the Scope of a Design Patent

Posted in IP, Patent Law

In Curver Luxembourg SARL v. Home Expressions Inc., case number 18-2214, the U.S. Court of Appeals for the Federal Circuit recently held that the claim language of a design patent can limit its scope where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures. Plaintiff Curver… Continue Reading

Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment

Posted in IP, Patent Law

In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment. Regarding the constitutional issue of whether the retroactive application of IPRs… Continue Reading

Rule Change Requires U.S. Counsel for Foreign-Domiciled Trademark Applicants

Posted in IP, Trademark Law

The United States Patent and Trademark Office (the “USPTO”) explains that “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate… Continue Reading

When is an Invention Obvious?

Posted in IP, Patent Law

To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO).  First, the invention must be novel.  This means that the same invention cannot have been disclosed in a single prior art reference.  The prior art is all of the publicly available information that existed before… Continue Reading

Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

Posted in Patent Law

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners. When a patent… Continue Reading

Unprotectable Generic Trademarks + Top-Level Domains = Protectable Trademarks

Posted in Trademark Law

Generic trademarks are those which, due to their popularity and/or common usage, have become synonymous with the products or services. Such trademarks include Kleenex, Band-Aid, Jeep, Aspirin, and Cellophane. Such marks, generally, cannot be federally registered or protected under the Lanham Act due to the marks direct reference to the class of product or service… Continue Reading

USPTO Proposes Change in Claim Construction Standard for PTAB Proceedings Under the AIA

Posted in IP Law Blog Lawyers In The News, Patent Law

Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts and the International Trade Commission (“ITC”).  The USPTO construes claims to have their broadest reasonable interpretation (“BRI”) while district courts and the… Continue Reading

Tavern on the Green Trademark Battle Round #2

Posted in Trademark Law

The City of New York has reignited the battle over the trademark TAVERN ON THE GREEN. Last month the City of New York filed a lawsuit for trademark infringement against Tavern on the Green International LLC, the successor-in-interest to Tavern on the Green operator, LeRoy Adventures, Inc. LeRoy Adventures operated Tavern on the Green from… Continue Reading

The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims

Posted in Copyright Law, Patent Law, Trademark Law

Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts.  The answer is “No.” For over 100 years, the USPTO has used the “broadest reasonable construction” standard to interpret patent… Continue Reading

Supreme Court Battle Set Over Prohibition of Disparaging Trademarks

Posted in Patent Law, Trademark Law

Section 2(a) of the Lanham act bars the registration of “scandalous, immoral or disparaging trademarks.” The USPTO has used this applied this provision to refuse the registration of marks such as F**K PROJECT, PORNO JESUS, ASSJACKED and NO $#!+. The USPTO also invoked this provision when it upheld an examiner’s refusal to register the mark… Continue Reading