oct 2013 prosecution practice group

October 2013

Prosecution Group Luncheon

October 17, 2013

Trademark Office Announcements

• Online ID Manual enhanced – more examples, more quick tips and guidance

• RFC for draft guidelines on examination of gTLDs (10/23/13)

• RFC for potential change in policy for post-registration amendments of goods/services based on changes in technology (e.g. audio tapes to music recordings, printed magazines to online publications, installed software to software as a service) (12/1/13)

“Super” Trademarks – aren’t

• App for SUPERJAWS for machine and hand

tools, including “jaws” for precision clamping

and “metal vice jaws” – rejected as descriptive

• There is no per se rule for how USPTO should treat word “super” when used in composite mark,

– if “super” is combined with word that names goods or services, or principal component, grade or size thereof, mark will be considered merely descriptive,

– if “super” is joined with suggestive term, combination remains suggestive of products and services;

• consumers would readily understand that “Superjaws” mark describes superior vice system for grasping and holding workpieces.

•  In re Positec Grp. Ltd., 108 USPQ2d 1161 (TTAB 2013)

Don’t Disparage Yourself

• Band applied to register THE SLANTS• USPTO denied as disparaging to persons of

Asian descent. • EA relied on dictionary definitions, online articles,

and applicant's own webpage and Wikipedia.– The band tried to “own the stereotype” – even if applicant is willing to take on the disparaging term as a

band name, that does not mean that all members of the referenced group share his view

• In re Simon Shiao Tam, Serial No. 85472044 (September 26, 2013) [precedential].

Did You Hehr That Mahk?

• JIN-JA for herbal tea – rejected as merely descriptive• Applicant contended that JIN-JA is an arbitrary term with

no recognized meaning in English, and that U.S. consumers would not recognize or pronounce Jin-Ja as "ginger."

• EA - the mark is the phonetic equivalent of "ginger," particularly as pronounced by persons with non-rhotic accents (i.e., a Boston accent)

• SPLIT Decision – majority found insufficient evidence, dissent suggested Examiners supply more evidence when arguing based on regional accents

• In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not precedential].

ACHOUFFE? Gesundheit

• ACHOUFFE refused for beer - geographically descriptive

• Achouffe is the name of a small village in the municipality of Houffalize, located in the Wallonia region of Belgium

• EA ‘s evidence insufficient to show that Achouffe is generally known to beer drinkers. Achouffe is "very much an obscure location and would be relatively unknown to the relevant American consumer."

• In re Brasserie D’Achouffe, Société Anonyme, Serial No. 79107741 (September 26, 2013) [not precedential].

Patent Application Initiatives Website at USPTO

After Final Pilot Program 2.0.

• The original pilot program has been re-launched.

• To be eligible for consideration under AFCP 2.0, you must: file a response under 37 CFR §1.116, which includes a request

for consideration under the pilot (Form PTO/SB/434) and amend at least one independent claim that does not broaden

the scope of the independent claim in any aspect be willing to interview

Pre and Post AIA - Design Patent Priority

• Review– No provisional application priority– May be a continuing application of a utility, U.S.

or PCT– A design application must be filed within six

months of the foreign application to be entitled to foreign priority 35 USC §§119(a)-(d), 172

– No design application priority for PCT applications

Pre and Post AIA - Design Patent PriorityApp filed in foreign country

App filed in US with priority claim

≤6 months

Pre-AIAYes, foreign priority

Post AIAYes, foreign priority

35 USC §§119(a)-(d), 172

Pre and Post AIA - Design Patent PriorityApp filed in foreign country

App filed in US with priority claim

>6 months

Pre-AIANo foreign priority

Post AIANo foreign priority

BUT…Is the foreign application prior art?

Pre and Post AIA - Design Patent Prior ArtApp filed in foreign country

Pre-AIAInventor’s own publication is not prior art.

Post AIAInventor’s own publication is prior art, but exception 102(b)(1)(A) applies

A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;

<12 months

Foreign App granted and published

Same inventor files in US

Hamilton Beach v. Sunbeam Products (CAFC)

Timeline

Feb 8, 2005

Hamilton Beach Purchase Order

Timeline

Feb 8, 2005

Hamilton Beach Purchase Order

Feb 25, 2005

Supplier confirms receipt

Timeline

Feb 8, 2005

Hamilton Beach Purchase Order

Feb 25, 2005

Supplier confirms receipt

March 2006

Hamilton Beach files Patent application – discloses clips on cooker

June 2010

Hamilton Beach files Patent application – claims clips on lid.

Sunbeam introduces Cook & Carry® designing around application with clips on lid.

Purchase order

February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker.

February 25, 2005: Supplier confirms receipt of purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release.”

March 2006: First patent application.

Hamilton Beach v. Sunbeam Products

35 U.S.C. § 102(b) Pre-AIA:

A person shall be entitled to a patent unless —

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, . . .

On-Sale Bar

Two conditions must be satisfied before the critical date:

1. The claimed invention must be the subject of a commercial offer for sale; and

2. The invention must be ready for patenting.

Question of law based on underlying factual findings.

Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998)

“. . .on sale in this country. . .”

A commercial offer for sale made by a foreign entity that is directed to a United States customer at its place of business in the United States may serve as an invalidating activity.

A commercial offer for sale under 102(b) is “one which the other party could make into a binding contract by simple acceptance.

In re Caveny, 761, F.2d 671 (Fed. Cir. 1985)Grp. One Ltd. V. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2012)

Ready for patentingAn invention is ready for patenting if the claimed

invention is:

1. Reduced to practice; or

2. Depicted in drawings or other descriptions “that were sufficiently specific to enable a person skilled in the art to practice the invention.

This does not require a detailed “element-by-element analysis on the prototypes and products samples on which it was working prior to the critical date.”

Pfaff

Purchase order

February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker.

February 25, 2005: Supplier confirms receipt of purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release.”

Purchase order

February 8, 2005: Hamilton Beach issues purchase order to foreign supplier for manufacture of Stay or Go® slow cooker.

Offer to buyFebruary 25, 2005: Supplier confirms receipt of

purchase order via email and notes it will begin production of the slow cookers after receiving Hamilton Beach’s “release.”

Offer to sell – it is at this point that the commercial offer for sale was made. Hamilton Beach could make into a binding contract by simple acceptance.

Holding

Hamilton Beach’s asserted claims are invalid under the on-sale bar of § 102(b).

Fair Use of References at the USPTO

• Magistrate judge in Minnesota finds that the copying and use of copyrighted reference at the USPTO is fair use.

• “[T]his Court concludes that [defendant] Is entitled to the fair use defense as a matter of law and recommends that the District Court grant [defendant]’s motion for summary judgment”

JEFFREY J. KEYES, United States Magistrate Judge in American Institute of Physics, John Wiley & Sons, Inc., and Wiley Periodicals, Inc., v. Schwegman Lundberg & Woessner, P.A., and John Doe Nos. 1-10

• Questions?

Pre and Post AIA - Design Patent Prior ArtApp filed in foreign country

<12 months

Foreign App granted and published

Same inventor files in US

3rd Party files or publishes

Pre-AIA3rd party’s publication is 102(e) if filed in or designated the U.S.

and published in English; or 102(a) prior art- If prior invention date, can overcome with declaration

Post AIA3rd party’s publication is prior art, but exceptions 102(b)(1)(B) or 102(b)(2)(B) apply

the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;

Pre and Post AIA - Design Patent Prior ArtApp filed in foreign country

<12 months

Foreign App granted and published

Same inventor files in US

3rd Party files or publishes

Pre-AIA-same as before-may be able to overcome with declaration

Post AIA3rd party’s publication is prior art; no exceptions apply with just

these facts

Pre and Post AIA - Design Patent Prior ArtApp filed in foreign country

Same inventor files in US

Pre-AIAPublication is prior art. 102(d) maybe even 102(b)

Post AIAPublication is prior art under 102(a)(1), exception may apply

(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

>12 months

Foreign App granted and published