On February 1, 2016, the White House announced a $1 billion program to jumpstart operation “Moonshot”, an initiative by President Obama to eliminate cancer. The USPTO responded in establishing “Patent 4 Patients”, a pilot program that will advance patent applications directed towards cancer immunotherapy out of line and applicants receiving a final decision in one year or less after they are received for free. A service that could save applicants between $1,000.00 and $4,000.00, depending on the applicant.
To be eligible for this pilot program, the application must contain at least one claim relating to the treating of cancer using immunotherapy and file a grantable petition with the USPTO to be included in the program. In addition to newly filed applications, this program is available to (1) applications that have not yet received their first Office Action; (2) applications where the petition is filed with a Request for Continued Examination; or (3) applications that are not currently under a final office action and the claim regarding the immunotherapy is the subject of an active Investigational New Drug application that has entered Phase II or Phase III clinical trials.
On Aug. 10, 2016 the Federal Circuit overturned a Patent Trial and Appeal Board final written decision in IPR2014-00208 that found various claims of U.S. Patent No. 7,917,843 obvious. In overturning the Board’s decision, the Federal Circuit found the Board had misapplied the law on the “permissible use of common sense in an obviousness analysis.”
The Federal Circuit acknowledged that “common sense,” in certain instances, has a place in an obviousness analysis, but rejected the notion that “common sense” is a substitute for a claim element missing from the prior. “Our cases repeatedly warn that references to ‘common sense’ – whether to supply a motivation to combine or a missing limitation – cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified,” the Court explained.
In a nutshell, this case should provide some much needed ammunition in combating obviousness contentions when a claim element is missing from the prior art and “common sense”alone is used to fill the gap.
Prince Rogers Nelson is known throughout the world for his endless musical and artistic greatness and his unforgettable role in the entertainment world. But a role you may not think of for Prince: branding expert. Born Prince Rogers Nelson, the artist continuously evolved his brand over the course of his career. In 1993, Prince’s frustrations with his then record label, Warner Bros., resulted in Prince changing his name to an unpronounceable symbol in an attempt to get out of his contractual obligations. This symbol famously came to be known as the Love Symbol. While this move may not have been effective for his legal obligations, it grabbed the attention of the music consuming public everywhere. Prince’s rebranding to the Love Symbol resulted in the public further evolving his brand, coining him the Artist Formerly Known As Prince. After Prince’s contract with Warner Bros. expired in 2000, he returned to his signature “Prince”, but continued using the Love Symbol on his album artwork and in the form of a guitar.
Prince knew not only how to brand himself, but just as importantly, how to protect his brand. He diligently went after unauthorized uses of his works, taking on giants such as YouTube and eBay, and even individual YouTube users; he successfully regained the rights to his music from Warner Bros. Prince went on to obtain federal trademark registrations for the Love Symbol alone, all of which are currently live:
- Registration 1849644 for “entertainment services; namely, live performances by a musical group”
- Registration 1871900 for “posters and publications; namely, fan club magazines, [ comic books, activity books ] and books pertaining to a variety of subjects; bumper stickers and stickers”
- Registration 1860429 for “clothing for men, women, and children; namely, T-shirts, shirts, jackets, footwear, socks, headbands, wristbands, jerseys, shorts, hats/caps, and scarves”
- Registration 1822461 for “sound recordings; namely, prerecorded audio cassettes, phonograph records and compact discs featuring music and entertainment; pre-recorded videotapes featuring music and entertainment”
Prince later gained the rights to a plurality of “PRINCE” trademarks.
There is a lot that can be learned from Prince: Rebranding can be successful, if it’s done right. Whether a company is looking to rebrand or an individual is seeking to change their image, rebranding should have a purpose. That purpose will give it weight and will have an actual effect on the public. A more cautionary tale for the up and coming: protect your intellectual property from the start. An artist, fashion designer, someone looking to create a public persona with a name, should recognize the importance of intellectual property and set out to acquire trademark rights in their name, before they make it to the top and get into contracts that may take those rights out from under them. There is of course a balance, as with each trademark you own comes another set of obligations to police and protect your trademark.
With his resources and creativity, Prince evolved his brand and image throughout the course of his career. Prince continued to stay relevant in an ever changing world, perhaps by staying true to his brand. It makes you wonder, what is my brand?
The Federal Administrative Court of Switzerland has tossed out an attempt by Christian Louboutin seeking trademark protection for the luxury shoemaker’s red-sole shoes. In a court opinion publicized this summer, the three-judge panel wrote that consumers mostly consider the lacquered red soles to be a decorative feature, as opposed to a source indicator for the brand.
In the designer’s defense, Louboutin cited his trademark registrations in numerous other countries, such as the European Union, Australia, Singapore, China, and Monaco. The Court ruled that Louboutin’s trademark protection in the European Union gives no weight to the ability to seek trademark protection in Switzerland, which is not a member of the European Union.
Louboutin has had to battle for its trademark protection in the past, one of which through a highly publicized case against Yves Saint Laurent in the New York Court of Appeals. That case resulted in the federal court holding that Louboutin does in fact have trademark rights in red soles, nothing that other companies may sell shoes with red soles as long as the entire shoe was red as well.
In the United States, Louboutin owns a variety of federal trademark registrations, one of which is for the same trademark he was seeking protection for in Switzerland.
On July 25, 2016, the Federal Circuit issued a precedential opinion overturning a Patent Trial and Appeal Board final decision in an inter partes review (IPR), reviving a patent owned by Magnum Oil Tools International, Ltd. The Court held the Board incorrectly shifted burden from the petitioner to Magnum by requiring Magnum to prove the patent claims were nonobvious over the prior art cited by the petitioner. Additionally, the Court rejected the USPTO’s position that the Board is free to issue a final written decision based upon an argument that could have been, but was not, made by the petitioner. Finally, the Court rejected the USPTO’s position that Magnum was required to file a request for rehearing on the final written decision with the Board before Magnum could file its appeal to the Court.
Alexandra Taylor, Esq. of Maxey Law Offices was recently published in the St. Petersburg Bar Association’s Legal Journal, The Paraclete. Ms. Taylor’s article, titled “International Trademark Protection: The Pros and Cons of Filing through the World Intellectual Property Organization”, discusses the benefits and potential downfalls of filing an international trademark application through the WIPO. The article can be viewed at http://tinyurl.com/zl8tr84
On July 11, 2016 the United States Patent and Trademark Office announced a new pilot program termed “P3,” which the USPTO hopes will reduce the number of appeals to the Patent Trial and Appeal Board and reduce Requests for Continued Examination. The program will “test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal,” the USPTO explains.
P3 begins July 11, 2016 and will run through January 12, 2017 or until the USPTO accepts a total of 1600 complainant requests across all of the technology centers, which ever occurs first. The USPTO explains that participation in P3 requires the applicant to file a request within two months from the mailing date of a final office action and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing to participate in a conference with a panel of examiners. Complete details of the program were published in the Federal Register.
The USPTO is currently seeking public comments on P3. Comments can be sent by email to: firstname.lastname@example.org or by mail addressed to: United States Patent and Trademark Office, Mail Stop Comments – Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Raul Tamayo.