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Patent Office Announces First Bi-Coastal Biotechnology, Chemical and Pharmaceutical Partnership Meeting

Are you excited yet?  The Patent Office announced last week that it will hold its first bi-coastal partnership meeting in the areas of biotech, chemical, and pharma practice.

The official announcement reads:

This inaugural BCBCP expands USPTO’s long-standing partnership in the biotechnology industry sector to customers across the country. The next BCBCP Meeting will be held on September 17th and will be simultaneously available at locations on both the EAST (Alexandria, VA) and West (San Jose, CA) coasts. During the BCBCP, participants will be able to interact with Office personnel in person on both coasts, or alternatively, via webcast. The Biotechnology, and Chemical and Pharmaceutical Customer Partnership was developed to create a collaborative forum for USPTO customers in this industry sector to share ideas, experiences, and insights with USPTO staff. The BCBCP is intended to be informal in nature and will include participants from across the industry. Some of the topics to be discussed by USPTO staff and industry customers will include:

• Markush claim practice

• Patent application filing best practices

• RCE practice

• Overview of patent application initiatives

• Panel discussion on U.S. Supreme Court decisions

(e.g. Alice Corp., v. Cls Bank International. 134 S. Ct. 1537 (Supreme Court March 21, 2014); and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 186 L.Ed. 2d 124 (2013))

This will be an important meeting because it will be the first since a number of recent Supreme Court cases which have somewhat muddled the water.  Explanation and education from the Patent Office is generally a good thing in working toward clarity and transparency.


Arizona State Library Patent Presentation

It is a bit late notice, but tomorrow I will be speaking at the Arizona State Library at noon.  The topic will be patent basics, and the audience will be entrepreneurs, business service providers, and librarians.  More information is in this flyer.

Chisum on Supreme Court’s Recent Alice Patent Decision

I’ve just gotten around to reading Professor supreme courtChisum’s  take on the Supreme Court’s recent Alice v. CLS Bank decision on patent subject matter eligibility, and I heartily recommend it for those interested in looking for some small clarity in an area of law that the Supreme Court has muddied well over the past several years.

Of course, the easiest conclusion to reach from the decision is that yes, software is still patentable.  However, many have largely given a shrug to the decision – as we have become accustomed to doing when the Supreme Court weighs in on patent law.  Robert Merges likens the decision to the Hitchhiker’s Guide computer’s answer of “42” to the ultimate question of life, the universe, and everything.  One of my old professors John Duffy finds another media analogy:  “Towards the end of the [classic 1965 movie The Battle of the Bulge], the German panzer colonel believes he has succeeded in breaking through the Allied lines, and he exalts: ‘We have done it!’  His attendant asks whether ‘we have won the war.’  The colonel’s answer: ‘no.’  The attendant then whether ‘you mean we have lost.’  Again, the colonel replies, ‘no.’  The confused attendant asks, ‘What is happening?’ The happy answer from the militaristic colonel:  ‘The best thing possible is happening – the war will go on.’”

Patent practitioners are still left with more questions than answers after decision, but Professor Chisum does pull some portions of the decision that may let us better advise clients and converse with the Patent Office. Read Professor Chisum’s post here.

Section 15 Trademark Declarations

A §15 Declaration is an optional trademarktrademark filing that can be made in a trademark registration. If chosen to be made, it can only be filed after 5 continuous years of use of the registered mark. This means that the mark has to have been used for 5 consecutive years, all of which fall after the date of registration, and that the mark is still in use. A §15 Declaration asserts that the mark is incontestable. For a mark which is found to be incontestable (which is a determination made in court), the registration becomes conclusive evidence of the validity of the mark, the registration, the ownership of the mark, and the owner’s exclusive right to use the mark in commerce. This means that these issues cannot be attacked, subject to some limited exceptions.

The §15 Declaration is made with a filing at the USPTO. When a §15 Declaration complies with statutory and rule-based requirements, the USPTO will update its records to acknowledge receipt of the declaration, and will also send a notice of acknowledgment to the owner of the trademark registration. The notice is recorded in the registration’s files, which are open and provide notice to the public that the declaration has been made. This notice is somewhat limited, though: acknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration of incontestability has been filed, but it is not actually a determination by the USPTO that the registration is in fact incontestable. The question of whether the registration is incontestable is one that is made by a court should a proceeding involving the mark arise.

The §15 Declaration requires affirming that, not only has the mark been in use for 5 consecutive years, all of which fall after the registration, but that the mark is still in use. Further, the declarant must aver that there has been no final decision adverse to the owner’s claim of ownership, or to the owner’s right to register the mark or to keep the mark on the register. Finally, the declarant must state that there is no pending proceeding involving the mark, either before the USPTO or a court.

Super Lawyers 2014 Southwest Rising Stars Selection

I’m happy to report that I have been selected, for the second year running, as a Super Lawyers Southwest Rising Stars.  The patented process for selecting the best attorneys uses peer nominations and third-party research.  Only 2.5% of attorneys are selected to the Rising Stars list, and I feel honored to be among them for the second year in a row.  This comes just a few days after I bested my Ironman PR at 10:31:13, so it has been an especially great week!

Centralized Information for Patent Applications

A centralized listing of major Patent Application Initiatives is now available via the USPTO website that provides applicants with access to information on several patent initiatives designed to advance and support the examination process.

Applicants now have a single website location to compare the various patent application initiatives that are available prior to examination, during examination, or after close of prosecution. Applicants can easily evaluate and contrast the benefits of participating in patent initiatives using a comprehensive matrix of initiatives and convenient links to detailed information pages. The website also provides direct access to applicant assistance for addressing questions about these initiatives.

To access more information on Patent Application Initiatives, please visit the USPTO website here.

Re-Branding Lance Armstrong

Lance Armstrong’s confession is huge news today, mostly for the fact that it is being made and not so much for what it may or may not contain. Many are calling this an effort to re-brand Lance so that he can save his charity and continue to compete in athletic events. This blog sometimes takes on an endurance-sports bent, and it seems appropriate to discuss the effectiveness of re-branding.

Though most came to know Lance’s charity as Livestrong through the words cut into its distinctive yellow bracelets, the charity was officially known as the Lance Armstrong Foundation.  Regardless, Livestrong was proudly and widely emblazoned on a huge range of products, the proceeds of which went to the foundation.  In October of last year, the charity changed its name to the Livestrong Foundation to distance itself from its founder and to cast “a presence that was bigger than” Lance.  The Lance Armstrong Foundation has filed for 57 federal trademark registrations and owns 53 live marks.  None of them have been transferred to Livestrong yet, even those that were filed as recently as March of last year.

In November, the UK publication The Guardian attacked the re-brand of the charity as incomplete until Lance confessed to doping. “[I]n refusing to contest the doping allegations against him, Armstrong has left the brand promise undefended and lacking authenticity.” I believe, however, that in the public’s eye, the man and the charity stand separately and have done so for quite some time. Although his involvement with his charity is certainly considerable and very personal, the public doesn’t transfer Lance’s successes and failures to the charity. We saw a large rise in donations to the charity following the release of the 200-page USADA report condemning Lance’s career. His sponsors who dropped him as an athlete have continued to support the charity. I still see lots of people wearing yellow bracelets even though they don’t personally support Lance. And if see someone envisions a tarnished figurehead when they see the Livestrong name, they should think more of a person who, following cancer, roared back to compete at the very highest levels of some of the toughest endurance sports among the toughest competitors in the world. While cheating certainly helped his bike racing, it didn’t give him the mental toughness, it didn’t fuel his enormous endurance engine, and it didn’t beat his cancer. Those are all characteristics of the Lance brand that the charity need not move away from.

Can I patent something that is used for an illegal purpose?

This question was posed to me during a recent interview. Is it possible to patent something that is used for an illegal purpose or is used with an illegal substance, or is there a prohibition against such patents? Is patent protection available for radar detectors, methods of cooking cocaine?

Generally, you can patent “anything under the sun that is made by man.” One of the requirements for patentability is that an invention be of the appropriate subject matter. Tangible inventions likely meet this requirement, but there are some limitations to protection, use, and ownership. For instance, atomic weapons have been carved out of patent protection – the Atomic Energy Act specifically eliminated this category of invention from patenting (though there is a large body of patents on devices used in atomic bombs, such as a switch that triggers on a change in air pressure). In other cases, patent applications relating to national security may be classified and held secret, but they can still issue as patents. And there is precedent for the government condemning a patent, or taking ownership in a patent through eminent domain when warranted by public interest.

There isn’t a prohibition on patenting something used for an illegal purpose or with an illegal substance, however. Moreover, such patents can likely be written broadly so that they encompass legitimate purposes or substances.

The Practice of Removing Sponsored Logos in Triathlon Advertisements

Several months ago, Slowtwitch.com erupted over an altered image that had been discovered of pro triathlete Hillary Biscay. The original image showed Biscay running during an Ironman-branded race with a jersey that bears a small blue decal. That decal is the logo for REV3, which is the organizer of a series of races that compete with Ironman races. Presumably, at the time, REV3 was one of her sponsors.

The altered image appeared in a promotional piece for the World Triathlon Corporation, owner of the Ironman trademarks. In the altered image, the REV3 logo had been removed. Underneath that image ran information about Biscay and Ironman Louisville.

We frequently see the removal or blurring of logos on TV. This is often done to make it clear that the logo’s company doesn’t appear to be a sponsor of the show or the television station. But the removal of an athlete’s sponsor’s logo is something different: the athlete has a contract with that sponsor to promote the company along with his or her personality and results. The removal of the logo interferes with that the contract and the ability of the company to promote itself.

Is this something that trademark law affects? Perhaps. The doctrine of reverse passing off makes liable one who removes a trademark and attempts to pass it off as their own. The infringing party need not replace the mark with its own; instead, merely leaving the product unbranded is enough for liability. The underlying harm is from the infringing party thwarting the efforts of the trademark owner to identify the source of the product, to link the product with existing goodwill surrounding the mark, and to advertise itself. The de-branding of athletes triggers similar harms. Here, REV3’s link to a successful athlete is eliminated and the promotional value of its logo on Biscay’s jersey is prevented, and passing off seems to be a viable claim, even though WTC isn’t passing the Hillary Biscay “product” off as one of its own. Moreover, it is possible that a general claim for unfair competition may lie as well.

Despite the above, it is doubtful that the practice will be discontinued. It is fairly widespread through cycling and triathlon, and to this point, companies seem to be accepting of the fact that their marks will occasionally be removed from their products or sponsored athletes.

The America Invents Act and the Individual or Small Business Patentee

Patent reform has been making its way through Congress.  The Senate passed a bill, the House passed it in a slightly different form, and it is now going back to the Senate.  If approved by that chamber and then approved by the President, it will become law.

There are many different parts of the bill that could become law, but, if any part of it will, the provision to convert the US into a first-to-file country will be the one.

Currently, the United States has a first-to-invent patent regime.  This means that the person who develops an invention first is the only one who can patent it.  There are some minor exceptions, but this is true in the vast majority of the cases.  Some feel this is truly an American way of patenting – that is bespeaks of American ingenuity and the power of the diligent and hard worker.

The rest of the world uses the first-to-file system.  Many argue that it is administratively easier and cheaper than a first-to-invent system.  It is essentially places an inventor in a race against unknown competitors to have his or her idea described in a patent application.  America may soon be adopting this system, and it has some ramifications for the independent inventor and small businesses, perhaps the most important of which is speed.

If the law passes, delays can be fatal to an invention.  Inventors need to get started right away with the patenting process.  While provisional applications were typically used in more limited contexts under the first-to-invent regime, in the new system, they may provide a valuable way to secure as early a filing date as possible.

For large multi-national companies, not much will change.  These businesses likely frequently file in the US and abroad and so are used to foreign country’s first-to-file systems.  Because of this, they have systems in place to turn inventions into filed patent applications quickly.  They have company-wide procedures and on-staff attorneys and technical draftsmen to convert an invention disclosure into a patent application.  Smaller companies and individual inventors, however, don’t have the benefit of these resources – it will inevitably take them longer to file a patent application, and there is risk in that delay.

Unfortunately, the proposed patent reform likely means the patenting process will get more expensive.  There will be more pressure on attorneys to prepare applications faster, and the extra step of filing a provisional can increase the total cost of the process.