PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Third and Last of a Series)

Introduction

In two recent articles (see parts one and two of series), we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[i]  This article completes that discussion, addressing motions for joinder, and procedures regarding remands and the PTAB’s default protective order.

1. Motions for joinder

A party may seek to join a proceeding by filing a motion within one month of the date of institution of the proceeding.  The July 2019 Update lists identifies the following factors that the Board may consider in deciding a motion for joinder: Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Second of a Series)

Introduction

In a recent article, we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[1]  This article continues that discussion, addressing institution decisions on multiple petitions, and motions to amend.

1. Multiple petitions challenging the same patent

The July 2019 Update discusses the preferred practice based on the PTAB’s experience when there are multiple petitions filed at or about the same time, challenging the same patent.  While recognizing that there are circumstances warranting more than one petition challenging patent claims, the Update states: Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (First of a Series)

Introduction

In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i]  The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions.

The US Patent and Trademark Office’s announcement of the Update identifies eight areas of additional guidance.[ii]  This post discusses the first three areas, relating to additional discovery and oral testimony; the revised claim construction standard; and submission of testimonial evidence with a patent owner preliminary response.  Later posts will discuss the remaining areas, relating to institution decisions on multiple petitions; motions to amend; motions for joinder; procedures on remand; and procedures regarding the PTAB’s default protective order. Continue Reading

Artificial Intelligence Inventor Asks If ‘WHO’ Can Be an Inventor Is the Wrong Question?

Recently a group out of the University of Surrey provided a new challenge to the definition of inventor, asking “who what may be an inventor on a patent?” The group has created an artificial intelligence (AI) named DABUS. Using a first system of networks to generate new ideas, and second system of networks to determine consequences, DABUS invented a beverage container and a flashing device used for search and rescue that are the subjects of patent applications filed in the United States and Europe (which have not yet been published).

Regarding who can be an inventor, the America Invents Act (AIA), 35 U.S.C. § 100(f) defines the term inventor is as: “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Ryan Abbott, the leader of the University of Surrey group, hoping for an Air Bud  scenario (a Disney movie about a golden retriever who is able to join a basketball team when it is discovered there is no rule expressly prohibiting dogs from playing in the league) said “In these applications, the AI has functionally fulfilled the conceptual act that forms the basis for inventorship.” The term “individual” allows for a broad interpretation that does not necessarily exclude AI from being credited as an inventor. If an AI can perform the functions required to be an inventor and is not expressly excluded by the definitions in the statutes, why couldn’t an AI be credited as an inventor?

Continue reading at here.

Ford Scores Win at the Federal Circuit in Design Patent Case

In its recently issued opinion in Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit reaffirms the importance of design patents and their value in an overall patent portfolio strategy for automotive manufacturers and others who may be threatened by aftermarket sales of replacement parts.  It also provides guidance on the arguments that can and cannot be used to invalidate a design patent based on functionality of the design and whether, and to what extent, the concepts of patent exhaustion and repair rights can be used to protect potential infringers.

Continue Reading

Before The DST Settles: United Kingdom Pushes Ahead With Digital Services Tax

On Thursday 11 July 2019, the UK government confirmed that it will bring forward legislation for a new Digital Services Tax (DST) to take effect from April 2020.

Squire Patton Boggs’ Tax team have prepared an alert, analysing the proposed legislation and assessing its possible impact and wider implications, which can be downloaded here.

For more information, please contact Jeremy Cape or Jeff VanderWolk.

Harmful Gender Stereotypes Banned in UK Advertising: An Update

As we reported earlier this year, following a six-month adjustment period, a new rule dealing with the depiction of harmful gender stereotypes, has been introduced into the CAP and BCAP Codes, which came into force on 14 June 2019. Despite being just a month in, the ASA has already received complaints about adverts which appear to be in breach.

The new rule applies to broadcast and non-broadcast media advertisements (including online and social media ads) and states that adverts or marketing communications “must not include gender stereotypes that are likely to cause harm, or serious widespread offence”. It was introduced following a public consultation and review of gender stereotypes in advertising by the ASA, which found that the reinforcement of harmful stereotypes can negatively affect individuals, by restricting their aspirations and opportunities for progression in either their personal or professional lives. This in turn, plays a part in the unequal gender outcomes experienced in society.

Whilst the ASA recognises that not all ads featuring gender stereotypes will cause offence, or have a harmful impact; and that ads are not the only factor reinforcing stereotypes in society, the ASA has introduced the new rule to make the advertising industry a more positive and progressive force on society.

Guy Parker, chief executive of the ASA, commentedOur evidence shows how harmful gender stereotypes in ads can contribute to inequality in society, with costs for all of us. Put simply, we found that some portrayals in ads can, over time, play a part in limiting people’s potential. It’s in the interests of women and men, our economy and society that advertisers steer clear of these outdated portrayals, and we’re pleased with how the industry has already begun to respond.

The Committees of Advertising Practice (CAP) published guidance setting out key considerations to take when determining whether an advert may fall foul of the new rule. It specifically states that neither the rule, nor the guidance, is intended to prevent ads from featuring:

  • glamorous, attractive, successful, aspirational or healthy people or lifestyles;
  • one gender only, including ads for products/services targeted at one gender specifically; or
  • gender stereotypes as a means to challenge negative effects.

However, care must be taken to ensure that the ads do not suggest that:

  • happiness or emotional well-being is dependent upon conforming with a particular body shape or physical attributes;
  • stereotypical roles or characteristics are always uniquely associated with one gender, are the only options available to one gender, or never carried out or displayed by another gender;
  • a particular product, activity or pursuit or choice of play or career is appropriate for one or another gender; and
  • people should be mocked for not conforming to gender stereotypes, including in a context intended to be humorous.

In its guidance, the ASA flags that gender stereotypes can also have a harmful impact on persons sharing the protected characteristics of gender reassignment, pregnancy and maternity, sex or sexual orientation. The use of other stereotypes, including race, age, disability, religion or belief, can compound the effect of gender stereotypes and increase the likelihood of harm or serious widespread offence occurring.

Less than a month after the introduction of the rule, it has been reported that the ASA has received complaints over Philadelphia’s latest cream cheese advert, which depicts fathers being distracted by the cheese spread long enough for their babies to end up on a conveyor belt of Philadelphia, resulting in an embarrassed dad saying “let’s not tell mum”.

The ASA has said that it will deal with any complaints it receives on a case-by-case basis and will assess both the content and context of any advert complained about. The effectiveness of the new rule will be reviewed in a year’s time, to determine whether it is suitable in helping the advertising authority meet its objective to prevent harmful gender stereotypes.

Aside from falling foul of the new rule, research from Kantar suggests that two-thirds of women skip adverts if they feel they negatively stereotype women and 85% of women surveyed considered that the film and ad industries did a poor job of depicting real women. So behind the new rule, there is a clear business case for adverts to promote less stereotypical roles.

If you are an advertiser and want to know whether the new rules may affect a campaign, please contact Squire Patton Boggs for practical guidance and advice.

“It’s Unbelievable Jeff” – The ASA Overturn Sky Bet’s ‘Request a Bet’ Ad Ruling

The Advertising Standards Authority (ASA) recently announced that it has overturned its original ruling published on 13 March 2019 relating to a Sky Bet TV ad promoting their ‘Request a Bet’ service.

As reported by Carlton Daniel in this blog and in Law360, the ASA had previously found that the advertisement contravened the advertiser’s duty to be socially responsible (outlined in Section 16 of the CAP Code and Section 17 of the BCAP Code), when Sky Sports presenter Jeff Stelling told viewers to “spark your sports brain” and asked, “how big is your sports noggin?” The ad only received two complaints but the regulator considered that the ad inflated the extent of a gambler’s control over the outcome of a wager and erroneously implied that if one generally has good knowledge of sports, they are likely to be a successful gambler. Both elements in turn could potentially generate irresponsible gambling practices. Continue Reading

But life isn’t fair….

Anyone who negotiates contracts for a living has their own personal war stories of dealing with other parties whose significant negotiating leverage meant they ended up accepting terms which in an ideal world they wouldn’t. But could having the upper hand and using that to extract the best possible deal come back to haunt you? A recent Court of Appeal decision suggests not.

The basic facts of Times Travel (UK) Ltd v Pakistan International Airlines Corporation [2019] EWVA Civ 828 are straightforward: Times Travel was a ticketing agency whose business was almost entirely based on sales of tickets for Pakistan International Airlines (PIA); PIA got into a dispute with Times Travel (and other ticketing agencies) over unpaid commission and during that dispute terminated its contact with Times Travel in accordance with its terms, offering a new contract in its place on less favourable terms and in particular, a requirement that Times Travel waive its claim for unpaid historic commission.

Times Travel took the new contract but subsequently sought to argue that it was still entitled to the unpaid commission because the new contract had been entered into by it under duress.

Continue Reading

You could be a celebrity without knowing it if you have 30,000 followers on social media

In a landmark decision, the Advertising Standards Authority (ASA) in the UK recently ruled that, for the purposes of the CAP Code at least, a social media user may be considered a celebrity where they have 30,000 followers or more.

In this case, the ASA found that an influencer breached the CAP Code when she published an Instagram post promoting an over-the-counter sleeping tablet produced by Sanofi. The caption for the post was marked ‘AD’ and included the statement:

… I tried out Phenergan Night Time… It is a pharmacy only, short term solution to insomnia for adults which works by inducing a sleepy effect thanks to its active ingredient, promethazine hydrochloride, helping you to sleep through the night. … #AD #sleep”.

Although health professionals and celebrities can advertise or endorse cosmetic products, CAP Code Rule 12.18 states that “Marketers must not use health professionals or celebrities to endorse medicines.” Continue Reading

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