Gibbons Law Alert

Gibbons Law Alert

Author: Christopher H. Strate

Revisiting the America Invents Act

by

Posted in Patent

On December 19, 2012

On November 30, 2012, Representative Lamar Smith introduced H.R. 6621 to “correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.” The act seeks to provide a number of technical corrections to a variety of issues, including: eliminating a 9 month dead zone for inter partes review allowing inter partes reviews to be filed at any time for applications with an effective filing date before March 16, 2013; extending the time for filing the inventor’s oath or declaration until the payment of the issue fee; eliminating the prohibition on post grant review for reissue patents with narrowing amendments; clarifying the standards for initiating derivation proceedings; clarifying the calculation for patent term adjustment; and repealing 35 USC 373, which restricted the types of inventors or applicants that could file PCT applications at the U.S. Patent Office.

Did You Submit an IDS During Reexamination? Does It Matter?

by

Posted in Patent

On November 5, 2012

Earlier this month, the Federal Circuit in Belkin Int’l, Inc. v. Kappos, 2012-1090, published an important decision potentially limiting the scope of both ex-parte and inter-partes reexaminations. Traditionally during reexamination, practitioners submit information disclosure statements (IDS) to the Patent Office disclosing patents and printed publications with the understanding that the examiner would consider those references in relation to the claims subject to reexam. Very often, if the references were properly submitted, the examiner would record that the references were considered, but would not apply the references against the claims. The benefit to the patent owner is that this could create a heavy burden for subsequent defendants to show that the claims were invalid in view of this prior art. Belkin v. Kappos may change this practice and understanding.

Protecting Fashion Designs: The Innovative Design Protection Act of 2012

by

Posted in Copyright

On October 2, 2012

Just as design patents for smart phones and yoga pants are recently making headlines, the Senate Judiciary Committee has approved a bill, S. 3523, entitled the Innovative Design Protection Act of 2012, which would extend copyright-like protection to fashion designs (the “Act”). The protection of the proposed Act would extend to “fashion design[s],” defined as the appearance as a whole of an article of apparel including men’s, women’s or children’s clothing, including undergarments, outer wear, gloves, footwear, headgear, handbags, purses, wallets, tote bags, belts and eyeglass frames. Given that many other countries already have laws that provide design protection for fashion design, the passage of the Act has the potential to help encourage and sustain the U.S. fashion industry.

USPTO to Expand Its Regional Office Program

by

Posted in USPTO

On July 5, 2012

On July 2, 2012, the United States Patent and Trademark Office announced that it will be expanding its regional office program to include Dallas, Texas, Denver, Colorado and San Jose, California. The first regional office, the Elijah J. McCoy United States Patent and Trademark Office, in Detroit, Michigan, is scheduled to open on July 13 of this year. Section 23 of the America Invents Act required the USPTO to establish at least 3 additional satellite offices by September 2014.

Patent Office Introduces After Final Consideration Pilot

by

Posted in Patent

On April 18, 2012

On April 2, 2012, the United States Patent and Trademark Office announced the implementation of a new After Final Consideration Pilot. The AFCP will allow an examiner to consider and enter amendments submitted after a final rejection that will require new searching by the examiner. For a long time the Patent Office has been monitoring the length of time that applications have been pending and the increasing number of applications filed. The Patent Office has proposed numerous solutions that attempt to bend the application curve, including accelerated examination, pre-appeal brief conferences, and limiting the number of requests for continued examinations and continuation applications. The AFCP is another effort that has the potential to help reduce the application volume.

2011: The Year Inequitable Conduct Changed

by

Posted in Patent

On February 8, 2012

2011 was a significant year for the “atomic bomb” of patent defenses, inequitable conduct. Inequitable conduct is a defense to patent infringement that potentially renders a patent, and its family, unenforceable when a patent applicant breaches its duty of candor and good faith to the USPTO. Two traditional hurdles for succeeding on an inequitable conduct defense were showing that withheld information or falsely disclosed information was material and the patent applicant intended to deceive the USPTO.

America Invents Act Introduces First-to-File to the United States

by

Posted in Patent

On September 14, 2011

On Thursday, September 8, 2011, the Senate passed the America Invents Act and President Obama is expected to sign the legislation this week. Every 2 years since 2005, Congress has taken up the issue of patent reform to address issues surrounding patent validity (e.g. first-to-file v. first-to-conceive; best mode), patent prosecution (e.g. opposition proceedings; inventor’s oath), and patent litigation (e.g. forum shopping, damages, willful infringement, patent unenforceability).

A Challenge to Color Trademarks in the Field of Fashion: Christian Louboutin v. Yves Saint Laurent America

by

Posted in Trade Dress / Trademarks

On August 17, 2011

The U.S. District Court for the Southern District of New York’s August 10, 2011 decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., questions whether a single color may serve as a trademark for fashion. That case arises from an action for trademark infringement brought by luxury shoe designer, Christian Louboutin, against Yves Saint Laurent America (“YSL”). Louboutin is well-known for his collection of high end women’s shoes, which have bright red glossy soles. He also owns U.S. Trademark Registration No. 3,361,597 for “a lacquered red sole on footwear.”

Connect:

About Gibbons

With 200 attorneys, Gibbons is a leading law firm in New Jersey, New York, Pennsylvania, Delaware, Washington, DC, and Florida, ranked among the nation’s top 200 by The American Lawyer. More…

Subscribe

Archived Blog Posts

Categories