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Prosecution Luncheon

Prosecution Luncheon. April 18, 2013. TTAB Success in 2(e) Refusals?. TTABLOG informal analysis – 139 2(e) decisions in 2012 (e)(1) descriptive – 96 aff’d, 21 rev’d (82%) (e)(2) geographically descriptive – 5 aff’d, 2 rev’d (e)(3) geographically misdescriptive – 3 aff’d

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Prosecution Luncheon

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  1. Prosecution Luncheon April 18, 2013

  2. TTAB Success in 2(e) Refusals? TTABLOG informal analysis – 139 2(e) decisions in 2012 • (e)(1) descriptive – 96 aff’d, 21 rev’d (82%) • (e)(2) geographically descriptive – 5 aff’d, 2 rev’d • (e)(3) geographically misdescriptive – 3 aff’d • (e)(4) surname – 4 aff’d, 3 rev’d • (e)(5) functional – 1 aff’d, 4 rev’d

  3. Indiana Cyberpiracy • Laporte County CAVB announced new campaign, “Visit Michigan City Laporte” • Serenity Springs then reserved and began using domain name • at bench trial – trial court held that there was TM infringement and “cybersquatting that approaches cyberpiracy.” HELD: • TM law does not apply to gov’t entities the same b/c of transparency requirement • “mark certified as a TM,” relied on Indiana registration • secondary meaning based on subsequent use • Serenity Springs v. Laporte County CAVB, 46A03-1205-MI-214 (Ind. App. 4/15/13)

  4. Indiana Cyberpiracy • Appellate Court Reverses – “clearly erroneous”: • mark is geographically descriptive • No evidence of secondary meaning, indeed not possible before use actually begins • BUT, “None of this is to say, however, that Serenity’s actions are necessarily beyond the reach of the law.” • Remanded for consideration of unfair competition claims

  5. TM Clearinghouse OPEN for gTLDs • New top gTLDs program set to launch in 2013 • The TMCH is a central database where TM owners may record information - available as of March 26, 2013. • Benefits: • Allows participation in “Sunrise Period” – 30 days for TM owners to register domain under a gTLD before registration is available to the public. • If an application is submitted for a new gTLD which matches a recorded TM, owner will be notified - Option to challenge. • Cost $150 for one year; $435/3yrs; $725/5 yrs

  6. TTAB – email service nixes 5 day extension! • opposition parties stipulated to service by e-mail while retaining the five additional days normally added if service by first-class mail. • TTAB – Not allowed • Suggestion: stipulate to service by first-class mail but with a courtesy e-mail copy sent simultaneously. • McDonald's Corporation v. Cambridge Overseas Development Inc., Opposition No. 91208437 (March 22, 13) [precedential].

  7. Black is Aesthetically Functional • FTD applies to register “black” for floral pkg. • Even if not functional in a utilitarian sense, a design feature is “aesthetically functional” if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage. • EA’s evidence: black communicates to the recipient - elegance or luxury, on somber occasions such as in the context of death or in Halloween bouquets • TTAB: competitive need, rejection aff’d • In re Florists’ Transworld Delivery, Inc., Serial No. 77590475 (March 28, 2013) [precedential].

  8. Professional Conduct Rules Revisions Patterned on ABA Model Rules “Closer conformity” with rules of 49 states + DC, “while addressing circumstances particular to [PTO] practice” • But: “decisions and opinions [of states] are not binding precedent relative to USPTO rules” • Examples • Express authorization to take interest in “patent or patent application” as part or all of fee [§ 11.108(i)(3)] • No CLE reporting requirement • May “refer not only to law but to other considerations such as moral, economic, social and political factors” relevant to client in rendering advice [§ 11.201] • Effective May 3, 2013 [see 78 Fed. Reg. 20179]

  9. Timing is Everything . . . Blue: Average time predicted by PTO for FAOM Red: Average actual time for FAOM PTO’s focus on reducing backlog seems to be bearing fruit If trend continues, may see the time between filing and FAOM down to about 12 months h/t PatentlyO.com

  10. Double Patenting with Mobile Inventor • In re Hubbell (Fed. Cir. 2013) • One common inventor, two applications • App. 1 with joint inventors, owned by Employer 1 • App. 2 with different inventor group owned by Employer 2 • App. 2 issued 2002, but is not prior art (102) to App. 1 • PTO rejected App. 1 under obviousness-type double patenting; no terminal disclaimer possible because of lack of co-ownership • FC affirmed (over dissent): double patenting applies, Employer 1 cannot receive patent without linking ownership • Is OTDP a viable doctrine following AIA? • Employers: review employment agreements, tailor obligations to assign

  11. App. 1: inventors A, B, C, assigned to Caltech App. 2: inventors A, D, E, assigned to ETH Zürich CON of App. 1 rejected under OTDP App. 2 filed App. 1 filed (invented before App. 2) App. 2 issued

  12. Another Mobile Inventor Dawson v. Dawson (Fed. Cir. 2013) • Inventor left UCSF for InSite, then filed applications • UCSF copies applications years later • Did conception occur early (at UCSF) or later (at InSite)? • PTAB: UCSF failed to prove conception at UCSF • Dawson “did not fully appreciate how [his] idea was to be implemented in actual practice. . . . [at UCSF] Dawson had a general idea for a future research plan . . .” • FC affirmed – substantial evidence supports result (deceased inventor's lack of testimony was a critical factor) • Note that prior employer may have no patent rights associated with ideas that do not amount to “conception” • May need contract language re ownership of developments stemming from work begun at the prior employer

  13. Design Patent Strategy • Rather than a single design application for a new product release, Gillette filed a group each claiming part of the overall design • Perhaps the only change needed among applications is to alter particular lines in the drawing to solid (claimed feature) or dashed (unclaimed) • One copying only a part still infringes at least one of the patents • Product design may still be covered by patent rights even after small changes • Another approach: file design cases on features related to the actual design • Create further zone of protection around product

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