How to Avoid Having Your Patent Interpreted as a Covered Business Method (CBM) Patent

martin-ceralde-40407Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent?  The answer is YES!

Let’s suppose you have an invention disclosure that is related to authenticating a web page and solves problems related to providing a website to customers of financial institutions.  The disclosure mentions that a customer computer may employ a modem to occasionally connect to the Internet and any merchant computer and bank computer are interconnected via a network.  How do you draft the patent application including the claims such that the patent application and resulting issued patent are not considered a CBM patent? Continue Reading

U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement

julian-o-hayon-143085Bottom Line: 

The Supreme Court’s decision sets the bar higher for design patent holders to recover for infringement and opens the door to apportionment of damages. Parties looking to file for design patents will likely consider claiming their patents more broadly, in order to avoid the specter of reduced damages in the event the design patent is infringed. They may also consider alternative forms of protection, such as trade dress and copyright if appropriate. In addition, how damages should be apportioned will now be an important part of both side’s litigation strategy.

As the Court refused to delineate a test for determining the infringing article of manufacture, address whether there must be a causal link between the total profit made and the infringing article of manufacture, or explain how to apportion “total profits” by component, further Federal Circuit decisions on these issues are likely to follow.

In its first design patent case in over a century, the U.S. Supreme Court has redefined the meaning of an infringing “article of manufacture.” In the process, it has raised the bar for obtaining damages in design patent infringement cases. Continue Reading


_8s9nemczk0-oliur-rahmanIn Denmark, certain rules must be observed, if a company wants to turn to customers by electronic means to promote or to sell products and services.

Basically, the company must have the customers consent before the company can send out marketing. If there is no consent marketing through electronic means as text messages or e-mail would be categorized as spam.

The spam rules do not apply if the messages sent has only a service content. However, the message must not contain any other information that may increase sales or awareness of the company. In practice newsletters, and invitations to competitions or events have been categorized as spam.

A company who has received a customer’s e-mail address from the sale of goods or services to the customer has also the opportunity to market “own similar products or services” via e-mail without consent. After practice, the product must be the same type of goods or services. Continue Reading

USPTO Adopts New Regulations for Trademark Specimens of Use

ziwuqmznrvs-bench-accountingUnlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use.  37 CFR Part§§ 2.161 and 7.37.

Post-registration requirements to prove use in U.S. commerce

Under § 8 of the Lanham Act, a trademark registrant must file a declaration that the mark is in current use in commerce and provide a specimen of that use between the 5th and 6th years after registration and every 10th year, when the registration is renewed.  Similar requirements under § 71 of the Act apply to owners of International Registrations with extensions of protection to the U.S. under the Madrid Protocol.   Specimens of use submitted to the PTO must illustrate how the owner is using the mark in commerce in connection with the particular goods or services identified in the application or registration.  Specimens of use for trademarks are usually photos of packaging or labeling for the goods bearing the mark or of the mark placed directly on the goods. Specimens of use for service marks are usually advertising or promotional material for the services bearing the mark.  For registrations originally based on the Madrid Protocol or on registrations obtained in other countries, the §8 or § 71 declaration of use is the first time proof of use of the mark in U.S. commerce is required. Continue Reading

Maybe Axanar Could Klingon To Its Fair Use Defense In A Parallel Copyright Universe

rtzw4f02zy8-nasaOn January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise.  Axanar has an existing twenty-one minute film Star Trek: Prelude to Axanar (“Prelude”) and at least two trailers for a planned full-length feature film (the “Axanar Motion Picture,” and, collectively with Prelude, the “Axanar Works”).  Central to the Court’s rejection of that defense was Axanar’s inability to convince the Court that the Axanar Works had the characteristics of the sort of works, such as parodies, that are recognized as deserving of a fair use defense under 17 U.S.C. § 107, as further explained by the United States Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  While seemingly a solid analysis under the applicable U.S. copyrights laws and cases, one perhaps should ask whether a different result could be supported in a parallel copyright universe.  (This does, after all, involve Star Trek, where, since the Original Series episodeMirror, Mirror” episode, examples of parallel universes have existed.)  But to get to that parallel universe here, one need not experience a transporter malfunction, nor travel multiple parsecs—one perhaps need only look the United Kingdom (not to be confused with the United Federation) and Section 30A of its Copyright, Designs and Patents Act 1988.  Understanding more fully the Axanar case and the Axanar Works will help the parallels emerge. Continue Reading

Industrial Design Protection in Canada: Changes Before the Office January, 2017

a4gptwtaajw-stephen-di-donatoIndustrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US.  They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, such as the design of a table or the shape of a computer monitor.

The Canadian Intellectual Property Office (CIPO) published six new practice notices on  January 13, 2017 regarding the industrial design registration process under the Act. Each notice came into effect immediately and affects both pending and future design applications. According to CIPO, the changes will improve client service, reduce administration and modernize Canadian practices in order to align those practices with international standards. These changes may also impact registrable subject matter (see below). Continue Reading


Serious SecretaryHow do you plead patent infringement in the United States?  Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint?  What should you do?

Let’s say your client has a United States patent that is believed to be infringed by another party.  You do not rely on the client solely for facts, but conduct your own investigation to meet a pre-filing due diligence.  You review the patent, prior art, and file history for claim construction.  You also review the accused infringing device both independently and with your client.  You prepare claim charts for all claims of the patent and apply elements of the claims to the accused infringing device in the claim chart.  You may even obtain an opinion of counsel that is reasonable, comprehensive, and competent such that a reasonable litigant could believe that an infringement claim could succeed based on the opinion.  This pre-filing due diligence will usually meet your obligation under Rule 11 of the Federal Rules of Civil Procedure.

After conducting your pre-filing due diligence, you draft a complaint for patent infringement. In the complaint, you plead the patent number, that the plaintiff owns the patent, that the defendant infringes the patent by selling products, and that notice was given to the defendant of the infringement, and request an injunction and damages.  You file the complaint for a civil action in federal court and the defendant files a motion to dismiss under Rule 12 of the Federal Rules of Civil Procedure.  What happened?  Could you have done something to prevent this?  The answer is YES! Continue Reading

The Constitutional Court has permitted to reduce IP compensations below the minimum amount

vq__yk6faoi-claire-andersonOn December 13, 2016, the Russian Constitutional Court has published its Ruling on constitutionality of certain articles of Civil Code regulating the legal nature of compensation as an IP remedy.

The constitutional review was requested by the Altai Arbitrazh Court. While considering numerous IP cases (Kvadro-Publishins v. Lubivaya, Aeroplan v. Vashkevich), the court found that all respondents (local entrepreneurs) had violated several IP assets by selling a few counterfeited items. Since every such violation entails at least a minimum IP compensation (10 000 RUB), the sums of compensation could amount to significant sums in case various IP assets are claimed.

In its request the Altai Arbitrazh Court criticized this mechanism, because it did not provide the courts with the discretion to reduce compensations, even when minor entrepreneurs were made respondents. Continue Reading


js09rllu-km-nico-beardAs often as we warn our clients about unscrupulous companies that prey on trademark owners using notices and invoices that appear to come from government agencies, these worldwide scams continue to reap large quantities of fraudulent proceeds.  The U.S. Patent and Trademark Office (“USPTO”) works in a variety of ways to alert the public to these non-official solicitations.  Every Office Action from a trademark examiner contains a warning and a link to the “Non-USPTO Solicitations” page, and every issued trademark registration certificate arrives with a similar warning on bright orange paper.

The Non-USPTO Solicitations page contains the names of companies of which the USPTO is aware that make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation.  They emphasize official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require “fees” to be paid. Clicking on the company name provides an image of that entity’s solicitation.  Applicants and registrants have paid these private companies, believing that they were paying required fees to the USPTO.  Continue Reading

New Copyright Office Regulations Require Websites to Re-Register for DMCA Safe Harbor Protection

wvutnxz1hsc-green-chameleonBOTTOM LINE

Website operators and other online service providers must re-register their DMCA designated agents using the Copyright Office’s new online filing system by December 31, 2017 to avoid losing DMCA safe harbor protection.

The Copyright Office recently implemented new regulations governing how websites and other online service providers must register a designated agent for receiving copyright infringement notices under Section 512(c) of the Digital Millennium Copyright Act (DMCA) to qualify for the DMCA safe harbor from copyright infringement. Beginning on December 1, 2016, online service providers must register their DMCA agents using the Copyright Office’s new online system. More significantly, online service providers who had already registered DMCA agents must re-register using the new online system by December 31, 2017, or they will lose their DMCA protections against copyright infringement. Continue Reading