In an opinion concerning the notice provisions of the Administrative Procedure Act (APA), the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may identify a new patentability issue regarding proposed substitute
IP Update
Exploring the Latest in Intellectual Property Law
IP Update, published by McDermott Will & Emery, focuses on developments in intellectual property law including patent litigation, design patent eligibility, inter partes review procedures, and patent office regulations. The blog covers case law analysis, procedural guidance for patent trials, and updates on patent office policies such as priority restoration and fee waivers. It addresses issues like patent infringement disputes, functional versus ornamental design patentability, confidentiality in patent hearings, and disclosure requirements in settlement agreements. The content is aimed at legal professionals and stakeholders interested in patent law, patent office practice, and related intellectual property matters.
Latest from IP Update - Page 8
Federal Circuit Confirms Color Marks of Certain “Character” Can Be Inherently Distinctive for Product Packaging
By Sarah Bro
Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product…
Belt Fastener Trade Dress Conveyed as Invalid for Being Functional
The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate…
Voluntary Dismissal Does Not Preclude Attorney’s Fees under Rule 54(d)
By Irene Lé
The US Court of Appeals for the Federal Circuit vacated a district court’s denial of attorney’s fees, finding that voluntary dismissal with prejudice constituted a final judgment for the purposes of FRCP Rule 54(d) under Ninth Circuit law. Keith Mfg.,…
Bad Faith Required to Prevent Speech Regarding Potential Patent Infringement
The US Court of Appeals for the Federal Circuit found that a district court abused its discretion in granting a preliminary injunction enjoining a patent holder from making claims of patent infringement without finding that those infringement claims were made…
Hair of the Dog? Squeaker Toy Is Expressive Work
Addressing whether a dog toy meant to humorously evoke a bottle of whiskey was entitled to First Amendment protection, the US Court of Appeals for the Ninth Circuit held that the toy was a protectable expressive work. The Ninth Circuit…
Trade Secret Claim Premised on Patent Inventorship Assertion Did Not Warrant Removal to Federal Court
Addressing a decision by California district court denying a motion to remand a trade secret case back to the California state court where it was originally filed, the US Court of Appeals for the Federal Circuit held that the removal…
Exercise of Institution Discretion During Parallel AIA and District Court Challenges
The Patent and Trial Appeal Board (PTAB) Precedential Opinion Panel (POP) refused to revisit an earlier PTAB panel decision, reiterating that it remains within the discretion of a PTAB panel to deny institution on a patent challenge because of a…
PTAB Sets Double Standard for Qualifying Reference as “Printed Publication”
The Patent Trial and Appeal Board (PTAB) designated an appeal decision as precedential, holding that an examiner may apply a lower standard for establishing public availability of a prior art reference as compared to a petitioner in an inter partes…
US Copyright Office, USPTO Act to Assist Those Affected by COVID-19
On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain…