Tag: Patents

Sufficiency of Drawings in Design Patent Applications

Suppose that you want to file a design patent application for an article that is three-dimensional.  What views of the article will you need for the design patent application that will be sufficient to support your claim?  The answer is a sufficient number of views to constitute a complete disclosure of the appearance of the … Continue Reading

BLOCKING PATENTS CAN MOOT OBJECTIVE INDICIA OF NON-OBVIOUSNESS

In a recent precedential decision, a split Federal Circuit (Judges Dyk and Taranto in the majority, Judge Newman, dissenting) issued a lengthy, 53-page decision, regarding the obviousness doctrine.  Judge Taranto, writing for the majority, engaged in a fact-intensive analysis to determine that a ‘blocking patent’ mooted evidence of objective indicia of non-obviousness and found the … Continue Reading

Establishment of Korea’s International Court for International IP Cases

IP cases, by their nature, proceed in more than one country simultaneously.  For instance, the patent lawsuits between Samsung and Apple have occurred at the same time in the courts of more than 10 different countries including Korea, the U.S., Germany, Japan, the Netherlands and Australia.  Because these cases are proceeding simultaneously, IP right holders … Continue Reading

UNITED STATES SUPREME COURT TO CONSIDER ‘ON-SALE BAR’ DOCTRINE

Recent focus on the United States Supreme Court has surrounded who President Trump will nominate to replace retiring Associate Justice Anthony Kennedy.  (The nominee is Brett Kavanaugh of the D.C. Circuit.)  However, once October is here, the 2018 Term begins and focus will shift back to the cases before the Court.  One of those issues … Continue Reading

IP Court restrained to sell and market a generic drug until the patent expiry

On 24 April 2018 the Intellectual Property Court published its Decision in case A41 85807/2016 between Swiss-based Novartis AG and local generic Nativa LLC. The IP Court’s position in this case may result in an extra defense granted for patent holders against unfair practice of registration of generics drugs until patent expiry.… Continue Reading

European Unified Patent Court agreement ratified by the UK

On 26 April, the UK ratified the EU’s Unified Patent Court (UPC) agreement. Although much of intellectual property law and practice is already harmonised amongst EU member states, a UPC would set up a common patent court for the hearing of intellectual property cases, and the direct applicability of its rulings, across all EU member … Continue Reading

Fast-track trademark and patent registration has become available in Russia

Recently Rospatent officially launched a service for fast-track registration of trademarks and patents. The fast-track option has become available for those applicants who ordered and payed an official trademark search report in Rospatent in respect of all 45 Nice classes. The official fee for this service is EUR 1 500 (RUR 94 400), the term is 10 … Continue Reading

Trade Secrets as Part of Your IP Portfolio: The Case of Col. Sanders

Trade secrets, together with patents, trademarks, and copyrights, are one of the four main types of intellectual property.  Unlike the three other types of IP, trade secrets are never made public.  Trademarks and service marks are obtainable only through public use that creates an association between the mark and the origin of specific goods or … Continue Reading

Greek Supreme Court contests the validity of Philips’ EFM+ (DVD) Patent

Summary In its decision no 1589/2017 the Greek Supreme Court upheld the appeal brought by the Greek company “DPH” against the Dutch company “P”. The Supreme Court held that the Court of Appeals’ decision, which had upheld definitely the lawsuit of “P” against “DPH” for breach of “P”’s essential patents, was wrong in finding they … Continue Reading

Korean Patent Court Finds: Use of Outback motel mark unfairly competes with mark for restaurant services

In a suit alleging trademark infringement and unfair competition, the Korean Patent Court concluded that the use of the mark “” in connection with “unmanned lodging services” used for so-called love motels with an image of a naked woman, did not infringe Outback Steakhouse’s trademark.  But it did constitute unfair competition because that use harmed … Continue Reading

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 … 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 … Continue Reading

EXHAUSTION OF PATENT RIGHTS & DIRECT INFRINGEMENT RE-EVALUATED:THE MPEG LA / DPH CASE

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 … Continue Reading

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

Suppose 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 … Continue Reading

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

Bottom 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 … Continue Reading

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

Industrial 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, … Continue Reading

PLEADING PATENT INFRINGEMENT IN THE UNITED STATES?

How 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 … Continue Reading

Supreme Court Reverses Apple v. Samsung Design Patent Damages Award

On December 6, the Supreme Court reversed Apple’s $399 million patent infringement verdict against Samsung.  The decision – the first from the Supreme Court to interpret design patent damages since 1886 – arguably raises more questions than it answers. In a series of widely-publicized cases around the globe, Apple and Samsung have been battling over … Continue Reading

Provisional applications and licensing of unregistered patents may appear in Russia

In August 2016 Rospatent has initiated a public discussion on provisional applications and licensing of unregistered patents in Russia. In Rospatent’s view, provisional applications are designed to establish an effective 12-month term, within which applicants may file their non-provisional (“ordinary”) applications. In order to register a provisional application an applicant should disclose a technical decision … Continue Reading

WITHOUT PATENT PROTECTION, CAN YOU PROTECT THE DESIGN OF A PRODUCT IN THE UNITED STATES?

Suppose that you have a unique design for your product but no patent protection in the United States?  Can you protect your product design to prevent a competitor from producing the same or similar design?  Is there anything you can do? Let’s say you created a unique design for a product such as a smart … Continue Reading
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