Trademark Basics and How to Spot Potential Issues for In-House Counsel

At times, corporate stakeholders may consider IP due diligence as slowing down business instead of creating and preserving value. However, pro-active trademark portfolio development and management can often streamline business resources, help jumpstart new brand initiatives, generate added asset valuations, and minimize downtime when expanding into new territories. This article discusses important trademark basics as well as common questions and issues in-house counsel often encounter during due diligence or IP audits.

What is a Trademark?
At a very high level, a ... Read More ›

My Co-inventor Never Sleeps

In 2022, when asked whether an artificial intelligence could be an inventor on a patent, the United States Court of Appeals for the Federal Circuit definitively answered “no.” Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). But does this mean that inventions made with AI systems are completely ineligible for patenting? In a new memo published Tuesday in the Federal Register, the United States Patent and Trademark Office (USPTO) also says “no.”  “Inventorship Guidance for AI-assisted Inventions,” 89 FR 10043 (USPTO, February 13, 2024).

In Thaler v. Vidal, the ... Read More ›

Posted in: Patents

Strategies for Conditional Claiming in Method Claims: Finding the Patentable Weight

When drafting method claims, a strategic patent practitioner must keep in mind whether any portion of the claim language will be interpreted by a Patent Examiner, PTAB tribunal, or Federal Circuit as conditional. Initial considerations may include whether conditional claim language will even serve the objective of protecting an invention and what types of claim terms may explicitly or implicitly invoke a conditional limitation. If claims include a conditional limitation, how might that affect an Examiner’s prior art search, and what would be required for infringement? A ... Read More ›

You’re not my Pal, World

The Pokémon Company considers legal action against Palworld for intellectual property violations. On January 25, The Pokémon Company issued a statement on its Japanese website where it confirmed it intends to investigate “another company’s game” that was released in January 2024.

For gamers, this is an obvious nod to Palworld which has made headlines since its recent launch as many believe the animated world has strong similarities to Pokémon.  With over 8 million downloads in six days, legal action by The Pokémon Co. and its co-owner Nintendo appears imminent. The value ... Read More ›

A Court Cannot Balance That Which It Does Not Weigh

On January 9, 2024 Relish Labs LLC (Relish) and its parent corporation The Kroger Co. (Kroger) filed a Petition for a Writ of Certiorari to the U.S. Supreme Court, seeking review of the Seventh Circuit’s refusal to issue a preliminary injunction against Grub Hub’s use of the orange fork and knife logo. Grubhub Inc. v. Relish Labs LLC, 80 F.4th 835 (7th Cir. 2023). Relish Labs LLC owns the HOME CHEF logo that also utilizes a fork and knife design. See Petition here.

Kroger’s Petition asks SCOTUS to determine once and for all if the determination of a likelihood of confusion is a factual ... Read More ›

What Online Sellers and Brand Owners Need to Know about “Schedule A” Litigation

Online sellers whose primary income results from sales on third party marketplaces must be vigilant in making sure they have notice of lawsuits filed against them or their products. A litigation process referred to as “Schedule A” that is becoming more prevalent has provided patent and brand owners with what can be a potent enforcement tool. These “Schedule A” cases may not put a seller on notice that they have been sued for intellectual property infringement. A temporary restraining order (TRO) could issue against an online marketplace, which could result in an immediate ... Read More ›

The Syntax of Markush and Superguide Constructions: Strategies for Claiming Elements in Combination  

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

Posted in: Patents

USPTO’s New Semiconductor Technology Pilot Program

The U.S. Patent and Trademark Office (USPTO) recently announced on December 2, 2023 the Semiconductor Technology Pilot Program (STPP), which is designed to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 by expediting the examination of patent applications related to semiconductor technology.  More specifically, the STPP is designed to encourage research, development, and innovation in semiconductor manufacturing.

Under the STPP, an applicant must file a timely “petition to make special” using the required petition form (Form ... Read More ›

Practical Considerations for Information Disclosure Statements in Light of Elekta

The recent September 2023 Federal Circuit decision in Elekta Ltd. v. Zap Surgical Systems, Inc., Case No. 21-1985 (Fed. Cir. 2023) shows that patent applicants should give consideration to formally addressing – on the record during prosecution - the relevance of the prior art references disclosed in their information disclosure statements (“IDSs”) to avoid later misinterpretation by tribunals in potential future Inter Partes Review (IPR) proceedings and court decisions.  Such misinterpretation may lead a tribunal to combine IDS references from irrelevant fields and ... Read More ›

Posted in: Patents

Challenge to Prior Art in IPR Petitions – Is It Analogous Art?

In an Inter Partes Review (IPR), one of the arguments that a patent owner can raise against petitioner’s argument for unpatentability based on obviousness is that the asserted prior art is not analogous art.  According to the Federal Circuit, “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is ... Read More ›

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