On September 3, 2021, the US Patent & Trademark Office (USPTO) will announce that it is modifying the COVID-19 Prioritized Examination Pilot Program to accept an unlimited number of applications until December 31, 2021. 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.
Timing is Essential for Filing Interlocutory Appeals — Do Not Wait for All Issues to be Resolved
The Federal Circuit recently dismissed an interlocutory appeal filed by LG Electronics as untimely because LG filed its notice of appeal more than seven months after the district court’s order disposing of all LG post-trial motions except for its post-trial motion on damages. The opinion stands as a lesson to all parties contemplating an appeal of issues related to a district court patent litigation decision to promptly do so despite other pending unresolved issues. Continue Reading
FDA Proudly Announces Its First Approval of an Interchangeable Biosimilar
On July 28, 2021, the Food and Drug Administration (FDA) announced the approval of the first “interchangeable biosimilar”—in this case Mylan Pharmaceticals Inc.’s Semglee® (insulin glargine-yfgn), which is both biosimilar to, and interchangeable with, its reference product Lantus® (insulin glargine), a long-acting insulin analog. Acting FDA Commissioner Janet Woodcock, M.D. called it a “momentous day.”
A Reminder to Patentees Suing for Infringement: Your Allegations Must be Sufficient to Show Plausibility that the Accused Product Infringes
A recent Federal Circuit decision has re-affirmed prior guidance on the pleading requirements for a plaintiff alleging patent infringement. The decision was issued in Bot M8 LLC v. Sony Corp. of Am., Case No. 2020-2218, on July 13, 2021. In short, while a plaintiff need not prove its case at the pleading stage, a plaintiff must plead facts sufficient to show it is plausible that an accused product infringes the patent claim. A plaintiff may not just recite the claim elements and conclude that the accused product has infringed those elements. Continue Reading
New from China: Light Administrative Injunctions Now Available for Patents, Designs, and Copyrights
On June 21, 2021, the Shenzhen Administration for Market Regulation (Shenzhen AMR) issued the first ever administrative injunction against the alleged infringement of a design patent. The decision was based on a set of local IP regulations implemented in 2019 to increase protection of intellectual property (IP) rights associated with the booming local innovation in key new technologies. The trend set by the Shenzhen AMR may now expand to local administrative enforcers in other cities and provinces and could revolutionize the way certain IP rights, including design, patent and copyright, have been so far enforced. Continue Reading
The Cat and Mouse Game of Fighting Counterfeit Goods
Counterfeit electronics coming from China are increasingly problematic for many companies. The proportion that are seized by US customs is miniscule compared to those that make it into the country, despite recent efforts. Raids on the sources of such goods (e.g. a factory) may not help much because, in many cases, other sources can quickly take over production.
This issue was recently discussed (here) by The Information’s reporter Wayne Ma, who interviewed Squire Patton Boggs’ expert on this subject, Paolo Beconcini. In his article Ma focuses in particular on the increasing counterfeiting of Apple AirPods and the repercussion of such illicit trade on Apple’s business. Paolo Beconcini highlights some of the legal challenges and possible strategies to reduce brand owners’ risk and the economic impact of counterfeits on their business.
Patents for Humanity: The USPTO Recognizes Innovation Relating to COVID-19
The United States Patent and Trademark Office (USPTO) has announced the final deadline for submission of applications for its Patents for Humanity COVID-19 award: The submission deadline is 5 p.m. ET, September 30, 2021.
Patents for Humanity is the United States Patent and Trademark Office’s (USPTO) awards competition recognizing innovators who use game-changing technology to meet global humanitarian challenges.
Will Patents Become More Political? The PTO Begins to Implement Arthrex
In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) (see our prior blog here).
The U.S. Patent and Trademark Office has begun charting its path forward for devising and implementing agency rules in response to the U.S. Supreme Court’s decision in United States v. Arthrex.
