Win or lose, you pay PTO attorneys’ fees for challenging decisions in District Court

When the U.S. Patent and Trademark Office (“PTO”) rejects a patent application, the applicant has two options for judicial review. It can either appeal directly to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. §141, or file a new (“de novo”) civil action against the Director of the PTO in the U.S. District Court for the Eastern District of Virginia under §145. Unlike an appeal, a de novo proceeding entitles a rejected applicant to some procedural advantages, such as the ability to conduct discovery and to introduce new evidence, rather than relying solely on the record made before the PTO in prosecuting the patent application.

In order to prevent an abuse of this civil action pathway, §145 also expressly provides that “all the expenses of the proceeding” shall be paid by the applicant, “regardless of the outcome.” Traditionally, courts have interpreted the word “expenses” to mean out-of-pocket costs the PTO incurs, such as printing, travel, and expert fees. However, in 2013, the PTO changed its position and began arguing that “all expenses” included its attorneys’ fees.  The Federal Circuit has now held that “all expenses” also applies to the PTO’s attorneys’ fees, regardless of the outcome of the suit. Continue Reading

Extraterritorial Application of Unfair Trade Laws: Foreign Government Agencies May Restrict U.S. Companies from Exercising Their IP Rights in the United States

** Originally published by DRI in August 2017 edition of For The Defense **

Intellectual property laws are aimed at allowing intellectual property owners to hold rights in their property for a certain period of time to the exclusion of all others. Exclusivity is the essential purpose of intellectual property rights. Conversely, the essence of fair trade laws is to prevent monopolies and establish fair competition. The different purposes of these laws often give rise to conflicts.

The tension between these laws is demonstrated when fair trade laws are used to prevent intellectual property owners from exercising their intellectual property rights. This happens with increasing frequency. Countries around the world have established and strengthened rules, such as the “Antitrust Guidelines for the Licensing of Intellectual Property” (prepared jointly by the U.S. Department of Justice and the Federal Trade Commission) or the “Treaty on the Functioning of the European Union” (Articles 101-102). These rules reflect the decisions of courts and administrative bodies that have held that the exercise of certain intellectual property rights can constitute unfair trade practices. Continue Reading

Russian Supreme Court recognized that non-profit organizations are eligible to protect name

On July 11, 2017 the Civil Disputes Judicial Board of Russian Supreme Court published a long-awaited Ruling in case No. 53-KG17-12.

Under the merits of the case, in 2016 the charity fund for helping children with oncohematological and other serious diseases “Podari Jizn” (CF “Podari Jizn”) filed a lawsuit against a copycat, non-profit charity fund «Podari Jizn» (NP CF “Podari Jizn”), seeking to prohibit the same word combination in the naming.

The plaintiff alleged that NP CF «Podari Jizn» contravened the exclusive right to non-profit organization name when it registered and used the same naming.

However the courts of the first and appeal instances denied the claims on the ground that non-profit organization name is not de jure listed as an IP asset in the Civil Code and therefore is not subject to judicial protection. Continue Reading


Readers of this blog may well be familiar with the regional exhaustion rule which applies to IP rights in the EU, including (for the time being) the UK.  Under this rule, IP rights can be exhausted where they are put on the market with the consent of the proprietor in one part of the EU, even if they are parallel imported to another Member State and sold there as ‘grey’ product.  But there is no international exhaustion, which would allow the sale of grey goods from countries outside the European Economic Area[i], even where they have been sold on those markets with the brand owner’s consent.  All of this is now fairly well established.

The UK, like most other EU countries, backs up civil causes of action for IP infringement with criminal sanctions to cover the most egregious cases, i.e. counterfeiting and pirating, but there has always been a question mark over the extent to which these criminal sanctions should apply to infringements relating to grey imports from outside the EEA.  A case recently came before the highest domestic UK Court – the Supreme Court – where this issue arose in the context of the offences which applied to misuse of registered trade marks for commercial purposes[ii]Continue Reading

“…as best as your interests don’t conflict with mine”: Lawyers Fighting Over Intellectual Property

When one thinks about lawyers and Shakespeare, many recall the oft-quoted and misunderstood statement “the first thing we do, let’s kill all the lawyers.”  ‘Henry VI,” Part II, Act IV, Scene II, Line 73.  But my favorite, as a better reflection of the best of our lot, is:

Sir, I shall not be slack; in sign whereof,

Please ye we may contrive this afternoon

And quaff carouses to our mistress’ health

And do as adversaries do in law,

Strive mightily, but eat and drink as friends

[Taming of the Shrew, Act I, scene 2, lines 248-52]

That represents the notion that lawyers, while representing opposing interests zealously, can nonetheless have relationships marked by civility or even camaraderie.  Continue Reading

Instagram Adds Paid Partnership Tool for Transparency

Instagram recently unveiled a new “branded content tool” that will allow influencers who are paid to endorse consumer products to tag partnering brands with an automated “paid partnership” disclosure.

This new feature is intended to create more transparency in the Instagram community and to provide sponsors and influencers the ability to track the performance of their social media content.

This new tool is being rolled out on the heels of the 90 warning letters that the Federal Trade Commission (FTC) recently sent to branads, celebrities and influencers regarding Instagram posts which failed to disclose their paid relationships, as discussed in a previous Alert, through the use of words such as “ad,” “sponsor” or “paid.” The FTC has provided guidance to brands and influencers on how to make a clear and conspicuous disclosure of their material connections, which some influencers feel limits their creativity or authenticity. Continue Reading


As part of the implementation of various changes to Canadian Trademark Laws, the Federal Government of Canada released in June, 2017 the new proposed Trademark Regulations for public consultation. Canada has been modernizing its trademark law, including by moving to join three International Treaties administered by the World Intellectual Property Organization (WIPO) dealing with trademarks.  These include the Madrid Protocol, the Singapore Treaty and the Nice Agreement.  Canada has amended the Trade-marks Act to comply with the requirements of the treaties.  It is now taking other steps toward implementation of the changes.  One of these steps is these new proposed Trademark Regulations.

The proposed changes to the Trademark Regulations are intended to compliment the amendments that were made to the Trade-marks Act.  The Regulations provide details relating to procedures and time frames for filing, prosecution and registration of trademarks with the Canadian Trade-marks Office. Continue Reading


The German Federal Court of Justice (Bundesgerichtshof) with its decision X 2r 33/10, announced on August 21, 2012, rejects claims for infringement of MPEG-2 video coding patents by a Greek DVD manufacturer: The DVD, as such, is NOT a means of infringement of the patent claim in dispute.

On August 21, 2012 the German Federal Court of Justice heard the appeal by the defendant, a Greek DVD manufacturer, in a patent infringement proceeding, and decided that the case in hand was part of a series of actions encompassing several proceedings (indeed nine actions with the same contents were filed against the defendant by nine members of the MPEG Patent pool). Continue Reading

Amendments to the pre-trial procedure for IP disputes

On June 1, 2016, the mandatory pre-trial procedure came into force. On May 26, 2017 the State Duma approved in the second reading amendments to the current pre-trial procedure.

Under the amendments, the pre-trial procedure extends only to the monetary disputes. The amendments (art. 1252 of the Russian Civil Code) also directly prescribe that the pre-trial procedure doesn`t apply to nonpecuniary claims for infringement of IP rights (for example, suppression of acts that infringe or endanger the IP rights; seizure and destruction of counterfeit goods; official publication of the court decision rendered against an infringer).

The general term of pre-trial procedure is 30 days, unless other term and (or) procedure is stipulated by law or agreement. Continue Reading

Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is YES!

Section 2(a) of the Trademark Act (15 U.S.C. § 1052) states in part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

Continue Reading