Overcoming Rejections Based on Your Own References

 

While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.”

When making a prior art rejection in the US, a patent examiner distinguishes between prior art that is available under 35 U.S.C. § 102 (a)(1) and 35 U.S.C. § 102 (a)(2). Section 102 (a) provides as follows: Continue Reading

2019 has so far Shown a Continued State of Flux for 35 U.S.C. §101

Since the decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), one of the most hotly discussed topics in the US patent field has been patent eligibility under 35 U.S.C. § 101 (“§ 101”).  Certainly, countless hours have been spent debating, discussing, and arguing proper application and interpretation of § 101.  This is the result of significant uncertainty felt throughout the field with respect to application of § 101 at the USPTO and by the courts.  As 2019 has shown thus far, § 101 continues to be in a state of flux despite efforts by the USPTO and the courts to provide predictability and clarity to subject matter eligibility determinations, and thus uncertainty is likely to continue.   Continue Reading

Leading the way…

Squire Patton Boggs is thrilled that our outstanding IP team continues to be recognised for its expertise. Partner Ron Lemieux has recently been listed in the IAM Patent 1000 as one of the world’s leading patent professionals.

Ron is based in our Palo Alto office and we are so pleased that his work and dedication to the practice has been recognised. Congratulations Ron!

Hungry for change: ASA and Government target junk food ads

With childhood obesity rates in the UK among some of the worst in Europe, the Government has set a national target to halve childhood obesity by 2030. Whilst the Government acknowledges that this is a multi-faceted problem, it has reported that evidence suggests that children’s exposure to advertising of products that are high in fat, salt and/or sugar (“HFSS”) contributes to their consumption patterns.

HFSS product advertising is currently subject to content and placement restrictions under the Committees of Advertising Practice (“CAP”) broadcast and non-broadcast codes of advertising (“Codes”); however, campaigners and industry bodies have raised concerns that adverts are not being targeted correctly and that the existing rules do not go far enough. The Advertising Standards Authority (“ASA”) and the Government have taken steps in recent months to address these issues, with the ASA launching a monitoring exercise on targeted ads and the Government consulting on options to reduce children’s exposure to HFSS ads. Continue Reading

Risqué Business: US Supreme Court Opens Trademark Registry to “Immoral or Scandalous” Trademarks

On June 24, 2019, the US Supreme Court invalidated the Lanham Act’s ban on registering “immoral or scandalous” trademarks. In Iancu v. Brunetti, the Court held that that the ban, in Section 2(a) of the Lanham Act, violated the First Amendment because it required the Government to discriminate against certain viewpoints: marks considered to have “immoral or scandalous” content.  This decision was not unexpected, as it was presaged by the Court’s 2017 decision in Matal v. Tam, which invalidated the Lanham Act’s ban on registering trademarks that “disparage” persons. Continue Reading

What makes an Electronic Communications Service? (Part 2)

On 13 June 2019, the Court of Justice of the European Union (“CJEU“) published its ruling on the classification of Gmail in the EU following a request for a preliminary ruling from the German Courts. Gmail is a web-based email service, and is a type of “Over-The-Top” (“OTT”) service.

The CJEU determined that Gmail is not an electronic communications service (“ECS”), as defined in the Framework Directive (Directive 2002/21/EC, as amended) – i.e. a service consisting mainly or wholly of the conveyance of signals. As a result, Gmail should not be subject to various telecommunications regulatory obligations in the EU, including registration/notification (depending on the national regime), payment of administrative fees, security, and consumer protection measures such as minimum contract terms and transparency requirements. Continue Reading

Digital Copyright Directive published…and already the subject of complaint

The Directive on Copyright in the Digital Single Market (the Directive), has now been published in the Official Journal, and entered into force on Friday 7 June 2019.

EU member states have two years in which to transpose the Directive (which is now officially Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC). Continue Reading

The Government Does Not Have Standing to Challenge Patents Under the Leahy-Smith America Invents Act (AIA)

The U.S. Supreme Court issued a 6-3 decision on June 10, 2019 holding that the Government was not a “person” capable of instituting one of the three AIA patent review proceeding described below.  This holding overturned a prior decision by Court of Appeals for the Federal Circuit (Federal Circuit) in favor of the United States Postal Service (USPS) that the Government was a “person” eligible to petition for a covered business method (CBM) review. Continue Reading

ATB Sales Limited v Rich Energy: A ‘Staggering’ Use of Court time?

The recent judgment in ATB Sales Limited v Rich Energy Limited [2019] EWHC 1207 (IPEC) illustrates the difficulties parties will have in defending copyright infringement claims over artistic works, if they can only provide limited documentary proof of the creative design process.

Background

ATB Sales Limited (“Claimant”) brought the action against three Defendants: Rich Energy Limited (“First Defendant”); Mr William Stoney, the director and sole shareholder of the First Defendant (“Second Defendant”); and Mr Sean Kelly, the chief designer of the First Defendant’s logo (“Third Defendant”).

The dispute centred on the design of the First Defendant’s logo, which the Claimant alleged was copied from the whole, or a substantial part, of its logo. Furthermore, the Claimant argued that the First Defendant’s use of the logo on products for sale, as well as its use in promotional, advertising and marketing materials infringed the Claimant’s copyright, under sections 17, 18 and 20 of the Copyright, Designs and Patents Act 1988 (the “Act”). Continue Reading

What makes an Electronic Communications Service?

On 5 June 2019, the Court of Justice of the EU (CJEU) published its ruling on the classification of SkypeOut in the EU following a request for a preliminary ruling from the Belgian Courts. Skype is a Voice over IP service (VoIP) and the ‘SkypeOut’ component is an interconnected VoIP service that allows the service to dial out to landline and mobile numbers.

The CJEU determined that the SkypeOut service is an electronic communications service (ECS), as defined in the Framework Directive (Directive 2002/21/EC, as amended). As a result, SkypeOut should be considered a regulated telecommunications service and therefore subject to various regulatory obligations in the EU, including registration/notification (depending on the national regime), payment of administrative fees, security, and consumer protection measures such as minimum contract terms and transparency requirements. Continue Reading

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