Imagine That IP Law Blog

In the United States, trademark rights flow from use, not registration. A business may be afforded a certain level of trademark protection in its geographic area simply by being the first to use a mark in commerce in connection with its goods or services. However, any unregistered or “common law” rights may be limited geographically. There are critical differences between common law trademark rights and trademark rights obtained via a federal trademark registration with the United States Patent and Trademark Office (USPTO). As discussed in this article, priority battles can ... Read More ›

Juno Therapeutics v. Kite Pharma

Kite Pharma appealed a final judgement that (1) claims 3, 5, 9, and 11 of U.S. Patent No. 7,446,190 (the ’190 Patent) are not invalid for lack of written description or enablement, (2) the ’190 patent’s certificate of correction is not invalid, and (3) Juno Therapeutics, Inc., and Sloan Kettering Institute for Cancer Research (collectively, Juno) were entitled to $1,200,322,551.50 in damages. Let that sink in. $1,200,322,551.50 in damages.

The ’190 Patent related to CAR T-cell Therapy. T-cells are part of your immune system, and have ... Read More ›

For an estimated $1.6 million, soccer superstar Cristiano Rinaldo will advertise a product in an Instagram post to his 329 million followers. Other celebrities who command more than $1 million per endorsement include Ariana Grande, a handful of Kardashians/Jenners, and The Rock. This practice, known as “influencer marketing,” has ballooned from a $1.7 billion market size in 2016 to an expected $13.8 billion in 2021,  while at the same time upending traditional print and broadcast advertising.

Now, a trademark lawsuit threatens to derail the gravy train. What happens when an ... Read More ›

GlaxoSmithKline v. TEVA
Fed. Cir

Patent and U.S. Food and Drug Administration practices are complex. But these two fields were further complicated by meshing them together in a design intended to both (1) reward drug innovators but then (2) insure that cheaper, generic versions of drugs hit the market quickly after the innovator patents expired. One aspect of this tangled net of highly specialized legal fields was brought to light in the recent case GlaxoSmithKline v. Teva, 2018-1976, 2018-2023 (Fed. Cir., August 15, 2021). This post covers only a small, but still complicated ... Read More ›

One year ago, on July 16, 2020, the Court of Justice of the European Union (CJEU) issued a landmark decision in Data Protection Commissioner v. Facebook Ireland and Maximillian Schrems (Schrems II). At issue were data transfers between the EU and the U.S.

In a decisive blow to normal operating procedures for thousands of U.S. businesses, the Schrems II court upended two mechanisms that most companies relied on to transfer data – the EU-U.S. Privacy Shield and standard contractual clauses (SCCs). The Privacy Shield was determined inadequate for data privacy protection and ... Read More ›

One month ago, the idea of a meat processing plant as the subject of a cyberattack seems almost inconceivable to the average person. Yet, in early June, JBS, the world’s largest meat supplier, wrestled to resolve a massive breach that shut down parts of its supply chain in the U.S. and Australia. Three weeks before, a similar attack had disrupted the Colonial Pipeline’s computer infrastructure, causing soaring gasoline prices and temporary shortages in the southeastern U.S.

These attacks highlight a vulnerability facing all organizations in today’s rapidly changing ... Read More ›

Well trained inventors are essential to building a high-quality patent portfolio that won’t blow the budget. The questions below are based on an informal poll of questions frequently asked of patent attorneys by inventors within large organizations, but they also apply to smaller companies and startups. They can form a starting point or a supplement to your inventor training.

Before reviewing the questions, inside counsel should first ask “Who trains my inventors?” and “How often?” Hopefully, the answer is not “nobody” and “never,” but even if it is, this ... Read More ›

In patent law, the doctrine of “assignor estoppel” refers to barring a party who assigned a patent from later challenging the validity of the patent. Assignor estoppel is an equitable doctrine that has been relied upon in order to prevent someone who has assigned the rights to a patent (or patent application) from later contending that what was assigned was, in fact, worthless. The doctrine has been applied to not just inventors, but also parties in privity with the original inventor, such as a corporation founded by the inventor. Essentially, the doctrine of assignor estoppel is ... Read More ›

In its recent opinion in Free Stream Media Corp. v. Alphonso Inc. on May 11, 2021, the U.S. Court of Appeals for the Federal Circuit confirmed that abstract idea claims directed to “targeted advertising” are patent ineligible subject matter under 35 U.S.C. § 101. Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l in 2014, which provides the current authority for determining whether a proposed invention is patent eligible under § 101, the Supreme Court has not provided additional guidance in the area of subject-matter eligibility, and courts have been unable ... Read More ›

Under US law, to obtain a trademark registration, an Applicant must demonstrate a bona fide use of the mark in the ordinary course of trade. In recent years, there has been a dramatic increase in trademark applications that falsely claim a bona fide use in trade. As a result, the United States Patent and Trademark Office (“USPTO”) has been issuing and maintaining registrations for trademarks that should never have issued. When such fraudulent registrations remain on the Trademark Register, they block the legitimate efforts of businesses to launch new trademarks into the ... Read More ›