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IPR of pre-AIA patent not an unconstitutional taking

Jul 31 2019

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

The Scotch Whisky Saga: Where Name and Reputation is not enough

Jul 29 2019

William Grant & Sons, the distiller, blender and owner of Glenfiddich, the independent whisky company which markets itself as the “World’s Most Awarded Single Malt Scotch Whisky”, was unsuccessful in its recent opposition of Glenfield’s label trade mark application.

Back in 2018, Mumbai-based business man Vivek Anasane filed a trade mark application for the label of his ‘Glenfield’ Scotch whisky in an attempt to expand his drinks company into the UK. This was quickly opposed by William Grant & Sons who argued that the Glenfield mark was “visually and phonetically highly similar” to the Glenfiddich word mark.

Towards a Uniform Theory of Patent Law: The Federal Circuit Declines to Create Design-Patent-Specific Rules for Exhaustion or Repair

Jul 26 2019

On Tuesday July 23, 2019, the Federal Circuit declined to fashion design-patent-specific doctrines of exhaustion or repair. Automotive Body Parts Ass’n v. Ford Global Techs., LLC, Case No. 2018-1613, slip op. at 2 (Fed. Cir. July 23, 2019).

Instead, the court reemphasized that the same rules apply to utility patents and to design patents unless otherwise provided by law. Id. Also concluding that “aesthetic appeal” is not functional, the court affirmed the district court’s grant of summary judgment in Ford’s favor. Id. The decision is notable for its widening of the gap between trade dress and design patents and for its reaffirmation of the principle that design patents and utility patents should, whenever possible, receive identical treatment under the law.

New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations

Jul 24 2019

On Tuesday July 2, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on Saturday August 3, 2019.

The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.

Second update of PTAB Trial Practice Guide issued

Jul 18 2019

The Patent Trial and Appeal Board (PTAB) issued a second update to its Trial Practice Guide, clarifying a number of logistical matters for practitioners and outlining the PTAB’s expectations and preferences for certain stages of the trial process.

Producers of generic medicines and biosimilars even more supported by EU

Jul 18 2019

Effective 1 July 2019, the EU adopted a regulation by introducing a supplementary protection certificate (SPC) manufacturing and stockpiling waiver. This waiver also applies for biosimilar versions of SPC-protected medicine during the term of the SPC.

New Intellectual Property (Dispute Resolution) Bill In Singapore

Jul 18 2019

On 8 July 2019, the Intellectual Property (Dispute Resolution) Bill (Bill) was tabled in Parliament, after a public consultation on the draft Bill that was conducted in March 2019 by the Singapore Ministry of Law.

The Bill aims to ensure that the Singapore Intellectual Property (IP) regime continues to support innovative activities in Singapore and positions Singapore as a choice of venue for international IP dispute resolution.

Beauty and the Beast – A tale of (trade mark infringement) as old as time

Jul 14 2019

IPEC has ruled over the recent dispute between Beauty Bay (claimant) and Benefit Cosmetics (defendant) which arose after Benefit sold a Christmas gift set contained in a globe shaped box displaying the words “Beauty and the Bay”. The gift set was part of a 13 product collection celebrating 50 years since the Summer of Love and the company’s San Francisco heritage which included products like “Glam Francisco”, “I Left my Heart in Tan Francisco” and “B.Right by the Bay”.

Federal Circuit Upholds TTAB Ruling on Specimens of Use

Jul 10 2019

Part of the trademark registration process is submitting a specimen of the mark as used in commerce (“specimen of use”). Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld the decision of a split Trademark Trial and Appeal Board (TTAB) panel that refused to register the trademark “CASALANA” for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories,” stating that Siny Corp. (the applicant) did not submit an acceptable specimen of use. See In Re: Siny Corp. (Fed. Cir. Case. No. 18-1077).

U.S. Supreme Court strikes down ban on “immoral” or “scandalous” trademark registrations

Jun 25 2019

On June 24, 2019, the U.S. Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of “immoral” or “scandalous” trademarks violates the First Amendment. The holding was in favor of Respondent Erik Brunetti, who had been denied a trademark registration for “FUCT” in connection with various clothing items.

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