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USPTO Clarifies Alice/Mayo Step 2A with New Patent Subject Matter Eligibility Guidance

Jan 09 2019

For the last several years, a major part of prosecuting software-related patents at the U.S. Patent and Trademark Office (“USPTO”) has been dealing with theUSPTO’s inconsistent interpretation of patent subject-matter eligibility issues under 35 U.S.C. § 101 arising from the Supreme Court’s decisions in Alice Corporation Proprietary Ltd. v. CLS Bank International[1]and Mayo Collaborative Services. v.Prometheus Labs.[2] However, new guidance from the USPTO concerning the Alice/Mayo test regarding patent subject-matter eligibility was released for public comment on January 7, 2019. This guidance attempts to provide more examination consistency for entities prosecuting software-related patents. We describe the primary features of the new guidance below and offer insights into what this means for companies pursuing such patents at the USPTO going forward.

Fashion Law – December 2018 Edition

Dec 13 2018

“People will stare. Make it worth their while.” – Harry Winston

Welcome to the latest edition of Fashion Law. In this edition we review the Australian Government’s measures to tackle modern slavery, a New Zealand trade mark opposition highlighting the importance of trade mark watching services, superannuation payments for full time, part time or casual workers, protecting brands in international markets, and the changes to parallel importation laws.

IP Exemptions to Competition Laws to be Removed: Restrictions in Licences to be Subject to Competition and Consumer Act 2010

Nov 27 2018

The Australian Federal Parliament has been debating the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill), which seeks to repeal section 51(3) of the Competition and Consumer Act 2010 (CCA).
The Bill is expected to pass during this session of Parliament (by 6 December 2018). Section 51(3) of the CCA presently provides an exemption from most of the competition law prohibitions for certain types of transactions involving intellectual property (IP). The current exemption covers conditions in licences or assignments of IP rights in patents, registered designs, copyright, trade marks and circuit layouts.

Once passed, commercial transactions involving IP rights will be subject to the same competition laws as all other transactions involving other types of property and assets. The repeal will apply retrospectively but IP owners will have six months to review existing licences and agreements. It is important for brand owners to consider their key licensing arrangements and the possible competitive implications of those arrangements.

K&L Gates releases 2017/18 Patents Year in Review – Second Edition

Nov 07 2018

2017/18 was an intriguing 12 months in the Australian patent landscape, with Courts being called upon to deliver decisions in relation to a number of issues that have not previously been judicially considered. The judgments delivered in this period have dealt with the patentability of methods claims deploying genetic information, patent term extensions for “Swiss-style” claims and whether applying to list a product on the Pharmaceutical Benefits Scheme constitutes an act of patent infringement.

A Modern Melody for the Music Industry: The Music Modernization Act is Now the Law of the Land

Oct 11 2018

On October 11, 2018, President Trump signed the Orrin G. Hatch-Bob Goodlatte Music Modernization Act (MMA) into law. The MMA is intended to “modernize copyright law” as applied to songwriters, music publishers, digital music providers, record labels, and others involved in the creation and distribution of music.

USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings

Oct 11 2018

The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings. The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”). The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.

Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

Oct 09 2018

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

A Modern Melody for the Music Industry: The Music Modernization Act Just Passed Congress and Awaits Presidential Approval

Oct 02 2018

By Mark Wittow, Katie Staba and Trevor M. Gates

On September 25, 2018, the House concurred in Senate amendments to the newly-named Orrin G. Hatch-Bob Goodlatte Music Modernization Act (the “MMA”), sending that act to the president for signature.[1] The MMA is intended to “modernize copyright law” as applied to songwriters, publishers, digital music providers, record labels, and others involved in the creation and distribution of music. The MMA consists of three parts:

Title I establishes a licensing collective for digital music service providers to grant blanket mechanical licenses to such providers and collect and distribute royalties to rights owners;
Title II creates a royalty structure to compensate owners of pre-1972 sound recordings; and
Title III provides a statutory right for producers, mixers, and sound engineers to collect royalties for digital transmissions of sound recordings.

The MMA is the result of unprecedented alignment among Republicans and Democrats, the U.S. House and Senate, and music industry stakeholders.[2] Nonetheless, this major update to copyright licensing law in the music industry may cause upheaval within the complex music marketplace structure, which encompasses songwriters, studio professionals, artists, record labels, and digital streaming services.[3]

A No Deal Brexit – how will trade marks and designs look?

Oct 01 2018

UK Government issues guidance on IP matters if there is no deal struck

Over two years after the UK voted to leave the EU, there is an increasingly likely possibility that the UK will leave the EU in March 2019 without a deal agreed (although negotiations continue). As a result, the technical guidance notes published on 24 September 2018 give businesses, brand owners and designers much needed insight into how such a scenario will look.

Blockchain Can Change Everything: Even Trademark Transactions

Sep 28 2018

K&L Gates IP Partner, Susan Kayser, co-wrote the following article published in the American Bar Association.

Key issues for many brand owners are proving use of a trademark in commerce, maintaining the integrity of the brand, and combatting counterfeits. Blockchain—by its very nature—can efficiently provide the secure, reliable, and permanent records necessary to prove up genuine trademark use and genuine products. A secure database, spread across multiple computers, with the same record of all transactions, is ideal for tracking trademark transactions, as well as for eliminating paperwork and speeding up transactions.

A trademark and a blockchain have a complementary nature: a trademark acts as a source identifier, and a blockchain can validate a source. Providing trademark owners with a permanent, time-stamped, and secured record of information that is hosted on a peer-to-peer network, blockchain has the potential to transform trademark transactions. This article explores some of the myriad number of potential uses of blockchain for trademark transactions, including in establishing, licensing, and enforcing trademark rights.

Click to read the full article.

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