Imagine That IP Law Blog

One of the main advantages of hiring outside patent counsel is the ability to pass invention materials to a drafting attorney to prepare a patent application. This work transfer reduces the in-house counsel’s burden, freeing them to devote more of their time to strategic portfolio management rather than the minutiae of preparing an individual application.

Too frequently, however, the invention materials provided to outside counsel are incomplete. The understanding is that the drafting attorney will be able to use their engineering acumen to sort through the pieces, determine ... Read More ›

The conflicts over sovereign immunity date back to our country’s founding when states were concerned about possible overreaching by a central government. An early Supreme Court decision in Chisholm v. Georgia, 2 US 419 (1793) rejected sovereign immunity and held that the federal government had sovereign immunity but the states did not. Congress quickly responded with the 11^th Amendment, which was ratified in 1798, stating:

“The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United ... Read More ›

On July 16, 2020, the Court of Justice of the European Union (CJEU) issued a highly anticipated ruling in Data Protection Commissioner v. Facebook Ireland and Maximillian Schrems (Schrems II). The case centers on the validity of two key data transfer mechanisms: Standard Contractual Clauses (SCCs) and the EU-U.S. Privacy Shield (Privacy Shield) – both of which are methods widely used by U.S. businesses to comply with the EU’s laws regarding the transfer of personal data to countries outside the EU. In considering the effectiveness of data protection in cross-border data ... Read More ›

Trademarks function to identify the source or origin of products or services and distinguish them from the products or services of others. On the other hand, generic terms are used by consumers to refer to a type of product or service that cannot function or be registered as a trademark. For example, one cannot register COMPUTER as a trademark for laptops and personal computers. Likewise, one cannot register “APPLE” to identify a fruit (as opposed to “APPLE” to identify computer technology).

However, what if a generic term is combined with “.com” or another top-level ... Read More ›

In November 2019, the China National Intellectual Property Agency (“CNIPA”) issued new Patent Examination Guidelines for applying China’s “inventive step” requirement, the patentability standard roughly equivalent to the US patent requirement of “non-obviousness.” Chinese Patent Law defines “inventive step” such that the invention has a prominent substantive feature and represents notable progress. Under the new Guidelines, inventive step can be determined as a whole from a perspective of “invention concept.”

Regarding “inventive step,” ... Read More ›

Fiction and reality collide. The Netflix series Designated Survivor included a story line about a viral outbreak in Louisiana; a devastating pandemic was looming. Fictional president Tom Kirkman learns that the fictional cancer drug Extasis, being developed by fictional Pharm. Co. Benevax, showed promise to defeat the virus. Fictional CEO Carlton Mackie and the fictional President had a heated exchange in the oval office where Carlton Mackie ineptly tried to explain the economics of drug development. The fictional President chewed him out, and then used a political strategy to ... Read More ›

On Thursday, April 23, 2020, in the case Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court held that the statutory provision governing remedies for violations in the Trademark Act, §1117(a), does not require a showing of willfulness in order for a plaintiff to recover profits in an infringement action arising under Trademark Act, 15 U.S.C. § 1125(a). This decision could tip the scales in favor of trademark owners.

The case involved a fastener manufacturer, Romag, that originally contracted with Fossil, to allow Fossil to use Romag’s magnetic snap fasteners for ... Read More ›

In the current business environment, companies are justifiably concerned about the uncertain future and controlling the cost associated with managing their IP portfolios and engaging outside counsel. In-house counsel also knows that IP is part of the long game and sacrificing company IP now to save costs may cast a long cloud over the future. So, how can the company’s IP interests be effectively managed under current conditions and the required service be provided by outside counsel?

In more conventional time, automatically turning to outside counsel based on past engagements ... Read More ›

In Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals, Inc., the Federal Circuit reversed the District Court of New Jersey’s grant of summary judgement in favor of Valeant that claim 8 of U.S. Patent 8,552,025 (the ‘025 patent)  owned by Valeant.

The message is clear for pharmaceutical formulation patents. To establish a prima facie cases of obviousness, compounds having similar structure and function can be used as the basis for establishing similar properties.Read More ›

Businesses rely upon color for a variety of purposes. For example, colors may provide ornamentation, or may serve to allow a product to blend in with its surroundings (camouflage for hunting gear) or indicate a product’s flavor (yellow for lemon). Importantly, colors can serve as trademarks, but only if they function as a source identifier.

While colors are not included within the statutory definition of trademarks, since 1985, singular colors and color combinations can be trademarked as part of a product, package or service, if, like any other trademark, they serve a source ... Read More ›