Imagine That IP Law Blog

The holiday industry in the United States is a multi-billion dollar business.  In 2016, U.S. consumers spent $655.8 billion dollars between Black Friday and Christmas Eve and the average household budget for holiday gifts came in at approximately $588.90.¹ Given the volume of consumer spending devoted to holiday cheer, most companies aim to capture a slice of the proverbial fruitcake.  Occasionally, this battle for profit can pit companies against one another, leading to less-than-cheerful legal showdowns. One case in particular comes down to a battle over a quintessential ... Read More ›

Patent Term Adjustment (PTA) is additional time added to the term of a patent based on delays by the United States Patent and Trademark Office (USPTO) during prosecution. The PTA is determined after an application has been granted a patent. An applicant or patent prosecutor should be cognizant of PTA during prosecution because any gain of PTA due to USPTO delay is reduced by applicant delay. In the lifetime of a patent that covers a successful product or technological standard, every day can be highly valuable. This is especially true for biotechnology and pharmaceutical patents for ... Read More ›

The United States Supreme Court’s decision in TC Heartland jolted the IP law community by displacing long-standing Federal Circuit precedent and leaving a divide amongst district court judges, as well as a bevy of unanswered questions.¹ Since TC Heartland, two more decisions from the U.S. Court of Appeals for the Federal Circuit help clarify the landscape for patent litigators. Additionally, a study from Lex Machina further outlines the shifting horizon of forum shopping.

In 1990, the U.S. Court of Appeals for the Federal Circuit decided in VE Holdings v. Johnson Gas ... Read More ›

THE COLLABORATIVE SEARCH PILOT PROGRAM

In an attempt to expedite and promote the quality of patent application examination, the United States Patent and Trademark Office (USPTO) began a Collaborative Search Pilot (CSP) program in partnership with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). The program is designed to provide USPTO examiners with the best prior art by collaborating with examiners at the JPO and KIPO that are examining corresponding Japanese and Korean patent applications.

In the initial CSP program, examiners shared and ... Read More ›

Every so often, intellectual property law leaps from the backrooms of scientific exploration, labs ripe with technological advancement, or the worn desks of learned men and women, into social consciousness via an unwitting member of pop culture’s elite. Celebrities, the cult of personality that surrounds them, and the brands they establish, are still subject to the same rules of intellectual property law as less-known inventors, authors and developers. The nature of being in the public eye, and ownership of personal brands, can sometimes prove headache-inducing for the ... Read More ›

Since the passage of the Leahy-Smith America Invents Act (“AIA”), it has been extremely difficult, if not impossible, for a patent owner whose patent is challenged in an inter partes review (IPR) to amend the challenged claims. As of April 30, 2016, the Patent Trial and Appeal Board (PTAB) had completely denied 112 of 118 patent owner motions to amend and partially denied motions to amend in four of the six remaining IPRs.

Today’s en banc decision by the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. U.S. Patent and Trademark Office, Case No ... Read More ›

In 1886, Dr. John Pemberton created the formula for Coca-Cola.¹ The formula for Dr. Pemberton’s beverage sensation did not even make it onto paper until 1919 when the recipe was secured in a vault where it remained for 86 years until its relocation to an exhibit at The World of Coca-Cola.² The Coca-Cola Company formula, one of the world’s most famous trade secrets, has been kept secret for more than 125 years.³ While trade secrets enjoy certain protections, such a formula could potentially benefit from patent protection. With its long history, the question remains: does ... Read More ›

Throughout time industries have developed techniques and processes that are believed to be essential elements that contributed to the company's success.  For almost as long, companies have sought and devised ways to protect those techniques and processes that constituted the company's intellectual property. Many companies turned to federal patent protection, others chose to treat the information as trade secrets, and others chose to use contractual obligations to protect their intellectual property. These various forms of protection were especially meaningful in what ... Read More ›

Kids are so indulged these days! They get to play with a new toy known as a “fidget spinner,” in contrast to previous generations who grew up creating their own, low-quality “fidget spinners” by spinning a ruler around the tip of a pencil. The official fidget spinner, the hottest toy fad of 2017, is a two or three prong gadget with a bearing in the center which allows the contraption to simultaneously balance and spin utilizing one or both hands. Although, as the name suggests, the toy is ideal for those who cannot remain still, all ages and levels of fidgeters are buying the “fidget ... Read More ›

On Tuesday, May 30, 2017, the United States Supreme Court issued another unanimous decision in an intellectual property appeal. In Impression Products, Inc. v. Lexmark International, Inc., No. 15–1189, the Supreme Court ruled that (i) a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose, and (ii) an authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act.

The case at issue involved toner cartridges. The patent owner ... Read More ›