AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still invoke AFCP 2.0 with some frequency. The USPTO has renewed the program each year since inception.

This renewal provides a timely opportunity to discuss briefly what might make participation in the AFCP 2.0 program worthwhile. Continue Reading

Federal Circuit Allows Service by Alternative Means Under Rule 4(f)(3) in Patent Cases

Serving a district court complaint for patent infringement on a foreign defendant usually requires compliance with the Hague Convention on Service. A recent Federal Circuit decision, however, endorses alternative options under Federal Rule 4(f)(3) that could significantly simplify the process for plaintiffs and make it more difficult for foreign defendants to avoid service and delay participation in patent litigation in the United States. Continue Reading

The Covid Conundrum – CMA Closes its Investigation into Covid Consumer Refund Rights

The Competition and Markets Authority (CMA) has today announced it is closing its investigation into the refusal of British Airways and Ryanair to provide refunds to consumers who were unable to travel on previously booked flights as a result of Covid lockdown restrictions due to uncertainty in the underlying law. Continue Reading

UK Regulators Show Unjustified Green Claims in Advertising the Red Light

Certified Organic logo“Green”, “organic”, “eco-friendly”, “recyclable”, “natural”. These are just a few ‘green claims’ that consumers are increasingly used to seeing on the products and services they buy. However, how accurate are these claims and are organisations using them correctly?

UK regulator, the Competition and Markets Authority (CMA), has now published the Green Claims Code to help businesses understand their obligations under consumer protection law. It contains key principles, which require that all green claims must be truthful, accurate, clear, unambiguous and substantiated. Further, the CMA prohibits claims that omit or hide important information, and requires advertisers to consider the whole life cycle of their products and services when making environmental claims. Continue Reading

ITC Section 337: Tips for Avoiding Discretionary Denials at the PTAB

patent and related wordsWe previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death for PTAB Proceedings. Below, we provide several tips for petitioners faced with a real or imminent parallel proceeding at the ITC to avoid a discretionary denial at the PTAB. Continue Reading

The Proposed New EU Regulatory Regime for Artificial Intelligence (AI)

In April 2021, the EU Commission (EC) proposed a suite of new legislative and non-legislative proposals related to artificial intelligence: in a proposed Regulation laying down rules on Artificial Intelligence (“Artificial Intelligence Act – AIA”), the EC attempts the first-ever comprehensive legal framework for this highly debated and fast-developing family of technologies. As summarized below, and as set forth in more detail in our recent article, we identify key policy considerations and proposed new restrictions, risk-classifications and related obligations for AI providers and users stemming from this landmark proposal. Continue Reading

Plaintiffs Beware – Disclose all Evidence of Lost Profits Damages During Discovery

In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove its entitlement to lost profits damages. A recent decision from the District of Delaware is a salient reminder that this burden may be particularly hard to meet in cases where multiple related entities are collectively seeking lost profits damages. As explained below, parent/subsidiary plaintiffs should beware when one entity is the patent owner and the other entity sells the item on which the lost profits are based. Continue Reading

ITC Section 337: Kiss of Death for PTAB Proceedings

When considering a petition for post-grant review (PGR) or inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) has discretion to deny institution under 35 U.S.C. §§ 314(a) and 324(a). The PTAB’s Consolidated Trial Practice Guide provides that, when exercising its discretion, the Board may consider “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC.” As recent petitioners have found, a co-pending ITC Section 337 investigation virtually guarantees that the PTAB will exercise its discretionary power to deny institution.

For example, in an August 9, 2021 decision regarding a petition filed by Kiss Nail Products, the Board exercised its discretion and denied institution of PGR of a Lashify, Inc. patent directed to artificial eyelash extensions. The Lashify patent is involved in three parallel proceedings—an ITC Section 337 investigation, and two district court litigations (both of which have been stayed pending resolution of the ITC investigation). Relying on the PTAB’s precedential 2020 decision in Apple Inc. v. Fintiv, Inc., the Board in Lashify applied the “Fintiv factors” and determined that instituting a post-grant review would be an inefficient use of Board resources. Here are several key takeaways that highlight the importance and desirability, as a patent owner, of enforcing patent rights under Section 337 at the ITC. Continue Reading

Last Call! To Claim an EU Priority on UK Trade Marks and Designs, That Is

With the end of the Brexit transition period on 31 December 2020, the EU legislation governing the EU trade mark and design system ceased to apply to the UK.

For the holders of existing European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) including EU designations under the Madrid system, the UK IPO created over 2 million comparable trade marks and re-registered designs (“clones”) that have the same legal status as if they had been applied for and registered under UK law.

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