News & Analysis as of

United States Patent and Trademark Office

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -

Don’t Fall for a Scam: Trademark Owners Targeted

Owners of federal trademark registrations and applications have been continuously targeted by scam artists who pull owner names from the United States Patent and Trademark Office (USPTO) database and contact these owners...more

Celgene Notches Rare Win On PTAB Request For Rehearing

by Foley & Lardner LLP on

The recent decisions of the USPTO Patent Trial and Appeal Board (PTAB) granting Celgene’s requests for rehearing in parallel Inter Partes Review proceedings brought by Kyle Bass’s Coalition for Affordable Drugs (CFAD) are...more

Calculating Patent Term Adjustment: Part 2

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more

Surviving Alice with an Appeal

by Fenwick & West LLP on

This third article in the “Surviving Alice” series examines how the USPTO’s Patent Trial and Appeal Board has responded to the U.S. Supreme Court’s June 2014 Alice decision. It also shows how applicants can use the PTAB’s...more

Federal Circuit: PTO Can’t Shift Burden Of Proof Of Patentability To Applicant

by Weintraub Tobin on

In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner....more

Am I Being Clear Enough? – PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward

On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme...more

Dow Takes its Gene Patents Row with Bayer to the Supreme Court to Avoid the $455 Million Arbitral Award

by Arnall Golden Gregory LLP on

When a company agrees to arbitrate an international patent licensing agreement, the avenues for the appeal of the resulting arbitral award are very limited. Even the invalidity or expiration of the underlying patents may be...more

Updating Interview Scheduling Practices with USPTOs AIR Program

Many patent practitioners have experienced the benefits of examiner interviews in achieving compact patent prosecution. Examiner interviews allow practitioners and examiners to discuss subtle but sometimes significant...more

A History Of GOLDEN GATE Trademarks For Alcoholic Beverages

In celebration of the Intellectual Property Owners Association’s Annual Meeting, currently underway in San Francisco, we offer a brief tour through some GOLDEN GATE-themed trademarks. As a prominent feature of San...more

CAFC Finds Harmless Error in USPTO Reliance On Doctrine of Inherency

by Foley & Lardner LLP on

In Southwire Co. v. Cerro Wire LLC, the Federal Circuit upheld the USPTO decision rendered in an inter partes reexamination proceeding that found Southwire’s patent invalid as obvious. Although the court found that the USPTO...more

Federal Circuit Review - August 2017

by Knobbe Martens on

District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more

Booking it to the District Court

by Dorsey & Whitney LLP on

A recent decision out of the federal district court for the Eastern District of Virginia overturned in part the Trademark Trial and Appeal Board’s decision that the mark “Booking.com” is not registrable on the basis that the...more

How Coexistence Agreements Work

by Revision Legal on

In trademark law, coexistence agreements are contracts whereby two trademark owners agree to use their similar marks, but agree to limitations. For example, the two owners might agree that their respective goods or services...more

General Plastic Industrial Co. v. Canon Kabushiki Kaisha (PTAB 2017)

In a decision entered last week, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office made clear its intention going forward to weigh seven factors in determining whether to deny follow-on inter...more

CAFC Vacates USPTO Single Reference Obviousness Rejection For Inadequate Showing Of Expectation of Success

by Foley & Lardner LLP on

In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more

eCommerce Modernization at the USPTO Enters Its Next Phase

For the past year, registered users have been able to enroll in the Pilot Program and provide feedback on the new functionality as part of the USPTO’s Enhanced Patent Quality Initiative to more efficiently streamline...more

In-n-Out Sues Smashburger Over New Burger Names

by Dickinson Wright on

On August 28, 2017, In-n-Out filed a lawsuit against Smashburger for trademark infringement in the Central District of California. In-n-Out claims that Smashburger’s TRIPLE DOUBLE mark is too similar and infringes on its...more

Federal Circuit Orders En Banc Rehearing of Decision Awarding USPTO Attorneys’ Fees in District Court Appeals from USPTO

In NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017), a Federal Circuit panel determined that 35 U.S.C. § 145 permits awarding a pro-rata share of the USPTO’s attorneys’ fees as “expenses” incurred while defending §...more

Federal Circuit’s Amicus Brief in Oil States

Although the Federal Circuit already passed on the constitutionality of Inter Partes Reviews, considering some of its recent decisions, it appears that the Federal Circuit questions the competence of the PTAB to conduct...more

PSL® Season Is Upon Us

Exult, lovers of autumn and decorative gourds – the air is crisp and the leaves are changing. And, in the treasured annual tradition, this week marked the release of Starbucks’ Pumpkin Spice Latte – or PSL® as they may prefer...more

Mylan Pharm. v. AstraZeneca AB (PTAB 2017)

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office recently issued a Final Written Decision in an inter partes review styled Mylan Pharm. v. AstraZeneca AB affirming the patentability of all challenged...more

“A Reasonable Adjudicator Would have Wanted to Review this Evidence.”

In Ultratec, Inc. v. Captioncall, LLC., [2016-1706, 2016-1707, 2016-1708, 2016-1709, 2016-1710, 2016-1712, 2016-1713, 2016-1715, 2016-2366] (August 28, 2017), the Federal Circuit vacated and remanded Board decisions...more

Inadequacy of PTAB’s Procedures for Reviewing Late-Submitted Evidence Leads to Vacatur

by Fish & Richardson on

Ultratec, Inc. v. CaptionCall, LLC, __ F.3d __ (Fed. Cir. Aug. 28, 2017) (Newman, Linn, MOORE) (PTAB) (4 of 5 stars) - Fed Cir vacates IPR determination of obviousness/anticipation. The PTAB abused its discretion by...more

Do I Need To Trademark Under State Law?

by Revision Legal on

Many are familiar with trademark registration under federal law. Some may not know that trademark registration is also available under state laws. In general, registering a trademark under state law is unnecessary, but there...more

Securus Technologies, Inc. vs. Global Tel*Link Corp. (PTAB 2017)

Telecommunication Call Processing System Held to Be Eligible for Covered Business Method (CBM) Patent Review - On August 3, 2017, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued a decision...more

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