USPTO Suggests New Effort to Clarify Patent Eligibility

USPTO Director Iancu recently proposed new patent eligibility guidelines at the quarterly meeting of the Patent Public Advisory Committee (PPAC).  Iancu noted that clarity is needed both by examiners and applicants asking, “how can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an “inventive concept” and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?”  Hopefully the new guidelines will address these issues and give some much needed clarity.

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Supreme Court Holds that Tribal Sovereign Immunity Cannot Be Used to Shield Against USPTO Proceedings

Drug company Allergan transferred its Restasis drug patents to a Mohawk tribe in upstate NY.  Under the deal, Allergan paid the Indian tribe $13.75 million and agreed to further payment of $15 million in annual royalties while the patents were in force. In exchange, the tribe agreed to lease the patents back to Allergan and promised to claim sovereign immunity in any USPTO patent challenges.  Under the law, Indian tribes possess inherent sovereignty; however, this sovereignty may be limited through treaty or federal statute. Additionally, Congress possesses plenary power over tribes, allowing it to alter or abolish tribal sovereignty at will.  The US Supreme Court recently held that Indian tribes cannot use sovereign immunity to shield themselves from patent challenges brought within the USPTO.  The court did not decide whether sovereign immunity claims could be used by states.

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Supreme Court to Hear On-Sale Bar Case

The Supreme Court recently granted a petition for writ of certiori in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc.  The court will be asked to determine whether the Leahy-Smith America Invents Act (AIA) bars an inventor from selling to a third party when that third party has a duty of confidentiality to the seller.  Such an “on-sale” bar would prevent the inventor or assignee from filing a patent for that invention.

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Update:  Supreme Court holds that that a secret sale qualifies as prior art.

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Is it Safe to Use a “Dead” Trademark?

Cancellation of a trademark registration does not extinguish common law trademark rights. If the owner continues to use the mark after abandonment or cancellation by the USPTO, that owner will still enjoy common law protections allowing for use within the current “zone of commerce.”  While it may possible to register a canceled or abandoned mark, one should think carefully and research any potentially confusingly similar uses.

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Louis Vitton Doesn’t See the Humor

A hand bag company called My Other Bag (MOB) has been engaged in a long legal battle with Louis Vitton.  The company claimed that MOB’s canvas tote bags depicting images of Louis Vitton bags was an infringing use of their copyrights and trademarks and was diluting their brands. The District Court for the Southern District of New York held that such use amounted to parody and was an acceptable use.  The Second Circuit affirmed and the Supreme Court rejected Louis Vitton’s appeal. 

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Use Caution When Threatening an IP Action in the U.K.

“Threatening” a potential infringer for acts performed in the UK will now be governed by a new Intellectual Property Unjustified Threats Act. The act took effect on October 1, 2017 and outlines “permitted communications” between potential adversaries in patent, trademark and designs.  It should be noted that the act will not apply to copyright infringements, assertions of passing off or trade secret actions. 

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Number of Patents for Cannabis Grows

A recent Forbes article notes that nearly 1500 utility and plant patent applications have been filed since 1942.  Half of those applications were filed in the last 25 years and there are 500 active patent applications for cannabis related products.  The data shows that about half of these applications have been approved. 

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