Litigation news from around the web
LJN - Intellectual Property Strategist The newsletter publishing arm of ALM, publishers of The National Law Journal, The American Lawyer and legal newspapers of record throughout the U.S.
- The Madrid System Turns 30: The Pros and Cons of Using the Madrid Protocol in the United States and for U.S. Based Companieson October 1, 2019 at 7:21 am
This summer, the Madrid System turned 30 years old, and as two more countries prepare to join the Madrid Protocol we look at how the Madrid System has grown as it enters full adulthood.
- Exploring the Nebulous Boundaries of Trade Dresson October 1, 2019 at 7:17 am
Now that we are in the digital age, questions have been raised about the trade dress of websites and apps.
- Damages for Extraterritorial Infringement of U.S. Patentson October 1, 2019 at 7:08 am
A look at the gray area of infringement of U.S. patents in the U.S., but with related consequences or actions outside the U.S.
- IP Newson October 1, 2019 at 7:02 am
Penn State Files Trademark Lawsuit against Sports Beer Brewing Company Can OSU Trademark the Word "The"?
- Seeing Green: Protecting Brands In the Cannabis Industryon September 1, 2019 at 7:40 am
Branding is not a new concept, nor are the various intellectual property laws that protect brands. What is new to most is how this burgeoning industry can take advantage of those laws within the context of state and federal restrictions.
Planet Depos We Make It Happen
- Divorce and Depositions: What You Need To Knowby Planet Depos on October 2, 2019 at 5:00 pm
Getting to the truth of the matter in a divorce is key. Guest author Russell Knight discusses divorce and the role discovery and depositions play in the process. The post Divorce and Depositions: What You Need To Know appeared first on Planet Depos.
- Taking Depositions of Remote Witnesses in Truly Remote Placesby Suzanne Quinson on September 25, 2019 at 5:00 pm
To take a deposition of a remote witness, mobile videoconferencing is a great option when travel is not an option and traditional videoconferencing is tough. The post Taking Depositions of Remote Witnesses in Truly Remote Places appeared first on Planet Depos.
- Preparing For That First Court Reporting Assignmentby Darlene Williams on September 4, 2019 at 3:00 pm
Planet Depos wishes to share with court reporting interns the following tips to help them transition from their student role to the official reporter on any assignment: As you begin your internship, prepare to upgrade from your student version of software to a professional version (Case CATalyst, Eclipse/Advantage, ProCAT, StenoCAT, DigitalCAT). Learn how to run The post Preparing For That First Court Reporting Assignment appeared first on Planet Depos.
- The Amazing Globetrotting Court Reporters (Updated)by Suzanne Quinson on August 21, 2019 at 5:00 pm
These days, with transnational litigation a fairly common occurrence, depositions are often in far-away locations, and our reporters are ready to go. The post The Amazing Globetrotting Court Reporters (Updated) appeared first on Planet Depos.
- 3 Tips for Taking Depositions in Hong Kong (Updated)by Suzanne Quinson on August 7, 2019 at 3:00 pm
Here are several tried-and-tested tips for saving time and money for your client when taking depositions in Hong Kong. The post 3 Tips for Taking Depositions in Hong Kong (Updated) appeared first on Planet Depos.
Director's Forum: A Blog from USPTO's Leadership Updates from America’s innovation agency
- Expansion of prioritized examinationby USPTO on October 11, 2019 at 1:17 pm
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu, and Commissioner for Patents Drew Hirshfeld Innovation and the protection of it are hallmarks of America’s competitive edge. To help businesses and innovators move through the patent process quickly so they can make informed decisions on developing and marketing more of their products and services, the Leahy-Smith America Invents Act (AIA) established the Track One program. This program provides for the prioritized examination of patent applications. The program works extremely well. As shown on our Patents Dashboard, the average pendency from filing a Track One request to a first office action has been 3.0 months in fiscal year 2019. Customers who took advantage of the program during the same period received, on average, final disposition within 7.8 months. For businesses and inventors who need to have their applications examined quickly, the Track One program offers a great solution. The AIA originally stipulated that the United States Patent and Trademark Office (USPTO) could not grant more than 10,000 requests for Track One prioritized examinations in any fiscal year. To meet the needs of our stakeholders, we recently issued regulations to increase the number of Track One requests that we could grant. Effective September 3, we increased the limit to 12,000 each fiscal year, as detailed in our Federal Register Notice. Shortly after issuing that notice, the USPTO granted its 10,000th Track One request for fiscal year 2019 and continued processing additional requests throughout the remainder of the fiscal year. The higher limit provides the opportunity for more interested stakeholders to participate in, and benefit from, prioritized examination in the cases they deem appropriate. With respect to the Patent Office as a whole, as we recently announced, the USPTO improved overall pendency to an average of 14.7 months for first office actions and 23.8 months total. This program allows even faster action in cases applicants select based on their own needs. Applicants have embraced the Track One program due to the speed with which the applications are handled and the high-quality examinations that they receive. The USPTO remains committed to meeting the needs of our applicants through innovative programs such as this, and will continue its work to improve the experience of those who come before us.
- USPTO meets critical goals to reduce patent examination pendencyby USPTO on October 9, 2019 at 4:21 pm
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu and Commissioner for Patents Drew Hirshfeld For many years, the United States Patent and Trademark Office (USPTO) has been working to reduce patent pendency times. And since 2018, the agency has had specific goals of under 15 months for first office actions and under 24 months for total pendency, on average. We have now achieved these goals! As of September 30, 2019, which is the end of our 2019 fiscal year (FY), the averages are 14.7 months for first action pendency and 23.8 months for total pendency. All along, we have maintained and indeed improved the quality of our examination. This achievement marks the USPTO’s lowest first action pendency since January 2002, despite total application filings nearly doubling in that time, from 353,000 in FY 2002 to 667,000 in FY 2019. Our success in meeting these goals is the direct result of the efforts of our employees, at all levels, to drastically improve analyses, streamline processes, and clarify approaches that benefit all applications. At the patent examining level, supervisors and examiners undertook and implemented complex data analyses to better prioritize applications and balance workloads without sacrificing quality. At the application processing level, the team focused on increasing efficiencies to accelerate the overall patent examination process. These actions led, for example, to a decrease in the average processing time for an amendment filed in a patent application from 26.2 days to 6.8 days. And, of course, we increased the examiner ranks and we improved examiner training so that today the USPTO boasts the best examining corps anywhere in the world. But our work does not stop here. We will in fact redouble our efforts to optimize pendency using considered analytics that make sense. Among other changes, we are improving how cases are routed to the right examiner and how time is allocated to each examiner based on a number of factors. And we will focus on areas that need most attention and strive to meet in as many cases as possible the time frames outlined by the patent term adjustment statute (35 U.S.C. 154b). This means, for example, issuing a first office action in as many applications as possible in no more than 14 months. Processing and examining patent applications in a high quality and timely manner, a primary tenet of our 2018-2022 Strategic Plan, advances economic prosperity and supports a business environment that protects, cultivates and promotes innovation and entrepreneurship. In turn, this helps grow the economy, create jobs, and ultimately improve the way we all live. Born of the Constitution and steeped in our history, the American patent system is a crown jewel, a gold standard. The USPTO’s more than 12,000 employees come to work every day dedicated to ensuring its continued success. Timely and quality patent examination are key components. We are proud of our achievements as stewards of this treasured system.
- Spotlight on Commerce: Jim Alstrum-Acevedo, Supervisory Patent Examiner, USPTOby USPTO on October 7, 2019 at 8:13 pm
A blog about the USPTO from the Department of Commerce. Guest blog by Supervisory Patent Examiner Jim H. Alstrum-Acevedo Jim Alstrum-Acevedo, Supervisory Patent Examiner at the USPTO. (Photo by Jay Premack/USPTO) I am a Supervisory Patent Examiner (SPE), whose team examines pharmaceutical and biotechnology patent applications. My skilled team of fifteen examiners evaluates patents concerning short polypeptides having less than 100 amino acids, compositions containing these polypeptides, and methods of making and using these compounds. Examples of polypeptides examined by my team include insulin derivatives used to improve the treatment of diabetes mellitus as well as polypeptides with uses as antibiotics effective against antibiotic resistant bacteria, immunosuppresants useful in organ transplantation, and polypeptides to control blood clotting for the treatment of clotting disorders, such as, hemophilia. In short, the patents issued by my team help promote the well-being and health of people all over the country by facilitating intellectual property protection for new peptidic drugs, pharmaceutical compositions, and treatments for chronic diseases (e.g. diabetes) and public health concerns, such as bacterial infections caused by methicillin resistant S. aureus (MRSA). I was born in Bogotá, Colombia to a Connecticut yankee, who was a former Peace Corps volunteer and an aspiring literature and Spanish language professor, and his smart Colombian wife, who was a high school English teacher. My family moved first from the high mesa of Bogotá to Laramie, Wyoming and Oxford, Mississippi, before settling down in Normal, Illinois, where my father was a Spanish language and Colombian literature professor, and my mom was a family counselor, after finishing a master’s degree in counseling. I grew up in an environment that emphasized education, learning, and helping others. My parents set a great example for me and my three siblings by their love of books, teaching, and service to others through their chosen professions, and work helping out the local Latino community in central Illinois. Unlike patent examiners in many other areas of patents at the USPTO, I’m not an engineer. I have a Ph.D. in inorganic chemistry from UNC Chapel Hill. For my dissertation, I worked on the synthesis of photoactive inorganic coordination compounds that I appended to organic polymers to obtain an “artificial photosynthetic system.” I did a short post-doc and was hired to be a patent examiner in Technical Center 1600 in 2005. After a few years of patent examining, I decided to get a juris doctor (JD) in the part-time program at The George Washington University and passed the Virginia bar in 2012. Having a law degree has helped me better understand case law, the positions advocated by applicants’ attorneys during patent prosecution, and to facilitate communication between examiners and applicants. I am a people person and helping others is something I really enjoy and find rewarding in my job as a SPE and in other interests that I have. For example, I am a member and president of the USPTO professional chapter of the Society of Hispanic Professional Engineers, an affinity/employee resource group, which seeks to promote STEM education at all levels, provide a sense of family to SHPE members at the USPTO, and help with recruitment of talented Hispanics into STEM-based positions at the USPTO. I’m also involved in a local non-profit called Asian American Success (AASuccess), which provides life skills training to Asian American youth, especially from the local Vietnamese community and remotely to a community in Vietnam. AASuccess tries to inspire youth to make giving back a key facet of their lives as they acquire life skills that will help them succeed in their chosen careers. Hispanic Heritage Month runs each year from September 15 through October 15 and highlights the many contributions Hispanics have made and continue to make to our great nation in various areas ranging from science and technology, to service in the armed services, and enriching our culture through new creative works, such as Lin-Manuel Miranda’s recent musical, Hamilton. This yearly celebration is also a great opportunity to inspire Hispanic youth, who are under-represented in STEM fields, to strive for careers in STEM so they can become tomorrow’s innovators, physicians, and educators who will continue to improve the lives of people all across the world. My advice for today’s youth interested in a career as a patent examiner or in STEM generally is to follow your passions, believe in yourself, ask questions, and always try to keep learning something new, regardless of where your life path takes you. Ed. note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce Hispanic employees in honor of Hispanic Heritage Month (September 15--October 15).
- Recent advances in ex parte appeals and hearings before the Patent Trial and Appeal Boardby USPTO on October 2, 2019 at 4:16 pm
Guest blog post by Chief Judge of the Patent Trial and Appeal Board Scott Boalick While recent changes to Patent Trial and Appeal Board (PTAB) practices for America Invents Act (AIA) trials have garnered a significant amount of attention recently, the Board has also been making major strides in ex parte appeal pendency as well as improving accessibility to hearings in both types of matters. The Board brought the ex parte appeal inventory down from a high of over 26,000 appeals in 2012 to less than 8,700 as of the end of the fiscal year. This is the lowest inventory in over a decade. The Board’s significant reduction in ex parte appeal inventory means a corresponding significant reduction in ex parte appeal pendency. Judges obtain and decide cases faster, which translates to a shorter wait time for patent applicants to receive a decision regarding their patent applications. In fact, the average ex parte appeal pendency, which is measured from receipt at PTAB after completion of all appeal briefing through the mailing of a decision on appeal, has been cut by 50% from about 30 months in 2015 to about 15 months at the end of the fiscal year. And we are working to resolve pendency even more. Chief Judge Boalick meets with his team. (Photo by Jay Premack/USPTO) The Board has updated the notice of hearing in ex parte appeals. The updated notice allows the appellant to designate any regional office where they want to appear to argue their case. The updated notice also allows the appellant to request remote viewing of the hearing from any regional office. For example, an appellant may elect to appear for their hearing in Denver and request remote viewing for in-house counsel in San Jose. Further, the Board has replaced its electronic docket management system for ex parte appeals to better assign, manage, and track cases and workloads. In December 2016, the USPTO deployed a new IT system called PTAB End-to-End (E2E) to receive and manage AIA trial filings. In July 2018, the USPTO expanded the functionality of PTAB E2E to manage ex parte appeal filings. Through this expansion of E2E for ex parte appeals, the USPTO retired its legacy IT system previously used for appeal management. While the public will continue to file appeals through EFS-Web, judges will use PTAB E2E to process appeal decisions in more streamlined way, which means better customer service for applicants. Separately, the Board has been making hearings more accessible and transparent. Among other improvements, the Board recently published a Hearings Guide to help parties prepare for a hearing. While this document did not create any new rules or procedures, it brought together separate descriptions of existing procedures so that parties have a single easy reference guide for any hearings-related questions. Additionally, the Board recently renovated the hearing room in its Rocky Mountain regional office to reconfigure the layout for better space utilization, and we are about to begin renovating and expanding one of the hearing rooms at our headquarters in Alexandria so that more members of the public can attend important hearings in person, such as our new precedential opinion panel hearings. We likewise are planning to update the audiovisual equipment in the other hearing rooms over the next 24 months. We are proud of the strides that we have made to lower the inventory and pendency in ex parte appeals to better serve our stakeholders. And we hope these updates will give stakeholders more information and options to enhance their appeals practice. We will continue to make improvements and welcome your suggestions, which can be emailed to PTAB_Appeals_Suggestions@uspto.gov.
- Inventors converge at Invention-Con 2019by USPTO on September 30, 2019 at 12:38 pm
Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Director of the USPTO Laura Peter Can a 16-year old young woman change the world? Grant her a patent and watch her! Recently, we were privileged to hear an inspiring keynote from Kavita Shukla—an innovator, entrepreneur, and CEO—who is the force behind Freshglow Co. and inventor of FreshPaper. Her patented technology prevents food spoilage and helps avert hunger around the world. After receiving her first patent at the age of 16 and selling FreshPaper at farmers markets, she built her business from the ground up and became an award winning and successful entrepreneur. Invention-Con keynote speaker Kavita Shukla describes her journey as an inventor and entrepreneur. (photo by Cynthia Blancaflor/USPTO) She joined other notable speakers Invention-Con 2019, hosted by the USPTO at our headquarters in Alexandria, Virginia. Invention-Con is an outstanding opportunity for inventors, makers, and entrepreneurs to meet and learn from each other, attend workshops, and hear from our officials and intellectual property (IP) experts. Agencies including the Small Business Administration and Copyright Office also presented useful educational materials during the conference. As it has been the last several years, the two-day event was completely sold out, with over 170 in-person attendees and over 4,000 unique online viewers. Many attendees were new to IP and wanted to learn whether it’s worth patenting their idea or registering a trademark for their product or business. IP professionals from the USPTO and other agencies were able to provide them with an introduction to IP and helped guide them to the resources they needed. Other attendees were already patented inventors who have a product ready for manufacture and wanted to know how to get it from the workshop to the marketplace. For them, we showcased entrepreneurs like Kavita to share their stories and offer hard-earned lessons. We were lucky to hear from many speakers who shared their stories about obtaining IP protection, developing a business, and commercializing a product. Past Invention-Con favorite, Howie Busch, an inventor and entrepreneur, hosted a panel of Shark Tank contestants. These Shark Tank speakers had great advice to share with our attendees on how to stand out, develop, fund, and market their products. Entrepreneur Howie Busch (right) moderates the panel “Swim with the Sharks: Learn how national exposure changes your business,” comprised of past Shark Tank contestants. (Photo by Cynthia Blancaflor/USPTO) It is not uncommon for inventors to return to Invention-Con, year after year. One example is Ruth Young, who after attending in 2017 and 2018 took advantage of the USPTO’s Law School Clinic Certification, Pro Bono, and Pro Se programs. This year, she joined us as a panelist and shared her inspirational invention journey. Prior to joining the USPTO, I worked with high-tech startups as an IP attorney in Silicon Valley. I know that launching a business can often be an overwhelming and intimidating experience, and the patent process is one more task that is added. The USPTO issues nearly 25% of patents to small and micro-entities, and the percentage of micro-entity patents has grown every year since the USPTO introduced that category for patent applications. In fact, the USPTO issues over 300,000 patents a year, and over 7,500 of those are to micro-entities, including to independent inventors. It only takes one really good idea to launch a successful enterprise, and it is inspiring to see that many of them are also looking to help society. Consider, for example, the story of Alice Chun, whose company Solight Design was a winner of the 2018 Patents for Humanity award for the SolarPUFF™, a compact foldable light made of a flexible waterproof material with a solar panel on top. Alice was inspired after the 2010 earthquake in Haiti to create a product that made light after dark available for the 1.6 billion people still living without electricity. Although the SolarPUFF™ was designed with developing countries in mind, this unique light has also found a market in camping and other outdoor uses. By issuing patents to independent inventors like Alice Chun, in addition to larger entities, the USPTO is helping sow the seeds of success for many other small companies that will continue to invigorate our thriving innovation economy. History has shown that IP rights have been indispensable to our country’s prosperity and economic growth. In fact, our founders thought IP rights were so important, they had the foresight to enshrine them in our Constitution. In Article I, Section 8, Clause 8, they granted Congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Since then, we have benefitted from the development of electric lighting, powered flight, DNA synthesis, the internet, and countless other transformational technologies. At the USPTO, we are seeing an increasing number of developing technologies that we will benefit from tomorrow, such as artificial intelligence, autonomous vehicles, and biotechnology. IP is of key importance to this progress. A 2016 report by the USPTO estimated that in 2014, IP-intensive industries supported 45.5 million jobs in the U.S. and contributed $6.6 trillion to the U.S. economy, equivalent to 38.2% of GDP. It is in our interest—in fact, it is our mission—to help all inventors achieve their goals by protecting the fruits of their imagination and determination. Every day, our patent examiners and trademark examiners work with inventors and businesspeople to secure and protect their IP rights for their innovations and brands. Innovation is the great equalizer. It doesn’t matter who you are or where you came from. It’s what you can do that gets you IP rights. And, the USPTO’s doors are open to everyone, from all walks of life. Inventors and entrepreneurs are the heart and soul of innovation in America. We at the USPTO remember that every day as we walk through these doors. Together with Deputy Commissioner for Patents Andrew Faile and Commissioner for Trademarks Mary Boney Denison, it was a pleasure to meet so many innovative and creative entrepreneurs. If you missed Invention-Con, you can watch recordings of the sessions in the videos section of the USPTO Facebook page. The Invention-Con 2019 booklet also provides a valuable list of services we offer to support inventors, as well as who to contact to learn more. We hope you can join us next year for another incredibly educational and useful Invention-Con!
Above the Law A Legal Web Site – News, Insights, and Opinions on Law Firms, Lawyers, Law School, Law Suits, Judges and Courts
- Morning Docket: 10.14.19by Staci Zaretsky on October 14, 2019 at 1:03 pm
* Remember how EU ambassador Gordon Sondland was forbidden to testify before Congress? And how he texted the Ukrainian ambassador that the president wanted "no quid pro quo’s of any kind"? He's about to testify that language was dictacted by Trump himself. Hmm... [Washington Post]* Rudy Giuliani, Trump's personal attorney who Trump is attempting to distance himself from, is reportedly being investigated by federal prosecutors over his ties to the removal of former Ukranian ambassador Marie L. Yovanovitch and whether he violated lobbying laws in the process. [New York Times]* After much negative publicity and a student protest, Louis Lehot, the DLA Piper partner who was accused of sexual assault by a fellow partner, was kicked to the curb by the firm. [American Lawyer]* Art Lien, who brings the Supreme Court to life for the rest of us, is one of the last courtroom sketch artists in the nation. The justices are still against cameras in the highest courtroom in the land, but even Lien thinks his days may be numbered. [Quartz]* In case you missed it, the jury in the Dan Markel murder trial convicted Sigfredo Garcia of first degree murder but declared a mistrial for his co-defendant, Katherine Magbanua. Garcia faces the death penalty, and Magbanua will remain jailed until her case is retried. [Tallahassee Democrat]* Sign up here if you’d like to take part in a conversation between best-selling author John Grisham and former U.S. attorney Preet Bharara (S.D.N.Y.) this Wednesday. I’ll be there to cover the event for Above the Law, and I hope to see you there. [TimesTalks]
- Mid-Level Shareholder Activism Associate [Sponsored]by Kinney Recruiting on October 12, 2019 at 12:18 am
If you've been reading about the growth of shareholder activism and wondering how to get into the field, we can show you.
- This Week Has Been A Long Year — See Alsoby Elie Mystal on October 11, 2019 at 10:18 pm
TRUMP LOSES AGAIN IN COURT: But the dissent tells you how the Republicans plan to save him.WHITE HOUSE COUNSEL SLAMMED BY FORMER CLASSMATES: This usually only happens to Jones Day lawyers, but Pat Cipollone comes from Chicago Law by way of Kirkland.HERE'S SOME MORE DUNKING ON CIPOLLONE: Noted liberal cuck... Ilya Somin, can't even defend the guy.GET WHILE THE GETTING IS GOOD: Biglaw firm founder retires amid misconduct investigation.IN SPORTS NEWS: I do wonder if China will let us play basketball this year.
- Banksy’s Fake Store Is An Attempt To Abuse Trademark Law To Avoid Copyright Lawby Techdirt on October 11, 2019 at 9:47 pm
Well this isn't very anti-commercial.
- WALL Is Back On Holdby Elie Mystal on October 11, 2019 at 9:36 pm
Federal judge blocks Trump's WALL, this time on national emergency grounds.
LJN - Internet Law & Strategy The newsletter publishing arm of ALM, publishers of The National Law Journal, The American Lawyer and legal newspapers of record throughout the U.S.
- Exploring the Nebulous Boundaries of Trade Dresson October 1, 2019 at 7:17 am
Now that we are in the digital age, questions have been raised about the trade dress of websites and apps.
- Legal Tech: Demystifying Social Media Discoveryon October 1, 2019 at 5:03 am
Social Media Escapes an Easy Definition, But You Know It When You See It While it would be helpful to understand the technical details of collecting data from various social media platforms, what's more important is what parts of social media might be relevant to a dispute and what that means for both the requesting and producing parties.
- EU E-Commerce Proposal Aims to Eliminate Barriers; Calls for E-Signatures and Net Neutralityon June 1, 2019 at 5:11 am
The European Union has put forth an ambitious proposal for how countries can eliminate barriers to e-commerce and protect businesses and consumers engaged in online transactions. But parts of the proposal, published as part of a World Trade Organization initiative that includes the U.S. and China, are likely to face opposition.
- Social Media Influencers: Basic Tax Issueson June 1, 2019 at 5:11 am
This article discusses the basic tax issues facing social media influencers, who have become an important element in the entertainment industry.
- Are Online Reviews Threatening Your Online Reputation?on June 1, 2019 at 5:09 am
An attorney's reputation may be one of the most important factors that clients consider before hiring counsel. In today's world of online reviews, managing your reputation can be challenging. How should you manage online reviews to ensure your reputation and trustworthiness are intact?