On January 7, 2019, the United States Patent and Trademark Office (“USPTO”) released its 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), which revises the procedures for determining whether a patent claim is directed towards a judicial exception. Based upon post-Alice Federal Circuit decisions, the Guidance modifies the grouping of abstract ideas, and adds an intermediate step to determine whether a judicial exception is integrated into a practical application of the judicial exception. Continue Reading
USPTO Issues New Guidance on Patent Subject Matter Eligibility
The United States Patent and Trademark Office (USPTO) has announced revised guidance (2019 Revised Patent Subject Matter Eligibility Guidance) for evaluating subject matter eligibility of patent claims. The new guidance, published in the Federal Register on January 7, 2019, and effective immediately for all applications, is intended to help Examiners determine whether a proposed patent claim is directed to an abstract idea. Continue Reading
New Requirements for Foreign Companies filing Trademark Appeals in China
The Beijing IP Court has exclusive jurisdiction over appeals concerning rejection and invalidation of trademarks in China. To initiate an appeal to this Court, foreign companies must provide a notarized and legalized power of attorney and a legalized certificate of good standing of the foreign company. Until recently, it was an accepted practice to have the Chairperson of the Board sign such documents. But recent cases show that the practice of the Beijing IP Court has changed, and more formal requirements appear to be necessary to lodge an appeal successfully.
In recent administrative proceedings concerning the appeal of trademark rejection or invalidation decisions, the Beijing IP Court has indicated the appeal would likely be rejected if the appellant did not provide legalized evidence – such as the company Bylaws or relevant laws and statutes – to show the signatory’s power to sign the documents. This new procedural standard presents a challenge to the right holder and risks rejection of these kind of appeals.
Firstly, there is a timing issue. A trademark appeal must be filed within three months from the notification of the rejection or invalidation decision to the right holder. A few weeks is needed to respond to the request of the IP Court and to provide the required supplemental evidence in legalized form, so it is possible the filings may not arrive in time. The Beijing Court has refused to accept evidence scanned and sent to the court via email on the last valid day, and has refused to provide even a few days’ extension of time to provide such evidence.
Secondly, there is an evidentiary issue. In some cases, there are no express minutes or board decisions or bylaws directly addressing the power of the chairman or other members of the board to sign Power of attorneys on behalf of the whole Board. In this case, an appeal may not be possible. In other cases, there will be general provisions in the company Bylaws providing power to execute legal instruments, but these may not be sufficient. As a result, and considering the very high degree of discretion of the Chinese judges, the risk of rejection of an appeal is now high.
The change in the practice by the Beijing IP Court has not been announced or publicized in any form, and seems to be the result of an internal administrative policy change. In view of this change, companies may want to consider amending their Bylaws or adopting a Board decision that specifically empowers individual members of the Board, or the Chairperson, to sign power of attorney documents on behalf of the Board. Such action may help ensure that companies are able to make appeals to the Beijing IP Court.
USPTO Issues New Guidance on Computer-Implemented Means-Plus-Function Claim Terms
On January 4, 2019, the United States Patent and Trademark Office (USPTO) announced new guidelines for “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.” These guidelines, published in the Federal Register on January 7, 2019, take immediate effect and apply to all pending applications and issued patents.
While nothing in these guidelines appears to alter the current framework for analyzing computer-implemented means-plus-function claim terms, the guidelines nonetheless provide both patent prosecutors and patent litigators with a helpful reminder of certain additional considerations encountered when a patent claims software or other computer-implemented function. This is both useful and important because software is frequently and most easily described in terms of a goal or objective to be implemented on a computer, and so software claims raise particular problems with respect to the written description, enablement, and definiteness requirements of 35 U.S.C. § 112. Continue Reading
Paying “Large Entity” U.S. Patent Office Fees as an Insurance Policy
You are the CEO of a startup company with lots of inventive ideas, and the company is applying for patents. Patent counsel tells you there are fees to pay to the US Patent and Trademark Office (USPTO) in connection with the company’s patents, and that the fees depend on whether your company is a “large” entity, a “small” entity, or a “micro” entity. Micro entity fees are minimal but rarely apply. But small entity fees may apply, and are usually half of those for a large entity.
Which fees can you pay? Which fees should you pay? Continue Reading
Securing the Internet of Things
The ‘Internet of Things’ (IoT) – a rather vague collective term for the random mix of new technology which has now infiltrated our lives. In simple terms, it is the group of devices that are connected to the Internet. From the fridge which tells its owner that the milk is running low, the interrupting virtual digital assistants, to the latest generation of baby monitor which enables you to watch your off spring from the pub. The list and scope of ‘things’ falling in this definition arguably justifies the rather random collective noun. And the rapid growth of this area is predicted to increase exponentially.
Whilst these devices do unquestionably enhance the convenience of our busy lives, there is a worry about the potential invasion to the privacy of homes, the security implications and the unquantifiable levels of data that must be accumulated somewhere.
The UK Department for Digital, Culture, Media and Sport together with the National Cyber Security Centre have developed a Code of Practice for Consumer IoT Security (Code) to implement some controls to protect consumer security around how these devices and technology should operate in homes. Not surprisingly, the Code has identified that a significant number of devices on the market today lack basic security measures.
Obviousness-type Double Patenting Does Not Limit an Otherwise Validly Obtained Patent Term Extension
The United States Court of Appeals for the Federal Circuit has ruled that obviousness-type double patenting does not invalidate an otherwise validly obtained patent term extension (PTE) under 35 U.S.C. § 156. The decision in Novartis AG v. Ezra Ventures LLC affirmed the Delaware District Court’s similar judgment, and demonstrates that a patent with an earlier expiration date, including one that is terminally disclaimed over other patents, can be extended beyond one or more patents with later expiration dates. Continue Reading
Not so super? BCAP issues strict new guidance on the use of superimposed text in TV ads
The Broadcast Committee of Advertising Practice (“BCAP”) has recently issued revised guidance on the use of superimposed text (“supers”) in TV advertising. Advertisers often use supers to help avoid misleading viewers, as supers can convey information (required for legal or regulatory purposes), to qualify claims made in television ads. However, research by the Advertising Standards Authority (“ASA”) established that some consumers find certain supers difficult to read and comprehend, with viewers expressing particular concerns around the elongation of letters and text having poor background contrast.
Are Trademark Licensees Protected In A Licensor Bankruptcy?
The Supreme Court Is Now Poised to Answer This Question.
Certain licensees of intellectual property are expressly given expanded rights when their licensors file bankruptcy. But, what about trademark licensees? Trademarks are not among the defined categories of “intellectual property” for bankruptcy purposes. Nonetheless, are trademark licensees otherwise protected in a licensor bankruptcy? The U.S. Supreme Court is poised to finally answer this question now that it has granted certiorari in Mission Product Holdings, Inc. v. Tempnology, LLC, 879 F.3d 389 (1st Cir. 2018). Continue Reading
More “NetCourts” Opening in China
In September 2018, Beijing inaugurated China’s second internet court, or “NetCourt,” just one year after China’s first NetCourt opened in the city of Hangzhou. Two more NetCourts have opened in Beijing and Guangzhou. What are these courts? What matters do they adjudicate? How are they relevant to foreign businesses?
