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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.

Round 1 of Australia’s CRISPR patent dispute concludes

Sep 19 2018

The first round of the Australian CRISPR patent dispute has concluded, with the patent office ruling that claims directed to platform CRISPR technologies lack novelty and an inventive step.

New parallel importation laws in Australia

Aug 31 2018

Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018

The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.

Worth the fight: IP dispute resolution that won’t break the bank

Aug 24 2018

Small businesses and individual rights holders are set to benefit from the Intellectual Property National Pilot Scheme in the Federal Circuit Court

A specialist IP list in the Federal Circuit Court of Australia (FCC) is open for business, with the goal of achieving quick, cheap and effective dispute resolution of intellectual property matters.

The Intellectual Property National Pilot Scheme commenced on 1 July 2018 and appeals to small and medium-sized enterprises, individual rights holders and young innovators who may have previously avoided the court system even though they had a legitimate right or a good defence, but found that it simply wasn’t worth the fight.

US: Estoppel Attaches Even If Dismissed Without Prejudice

Aug 17 2018

On August 16, 2018, the U.S. Federal Circuit addressed when the inter partes review (IPR) time bar clock begins to tick. See Click-to-Call Tech. LP v. Ingenio, Inc., Slip Op. 2015-1242 (Fed. Cir. Aug. 16, 2018). The en banc Federal Circuit addressed whether the one year estoppel clock begins for a properly served complaint when the complaint is subsequently dismissed without prejudice. The panel found that the § 315(b) time bar applies. The filing of such a complaint, though later voluntarily dismissed, has previously formed the basis for declaratory judgment jurisdiction where the initial defendant later brings a validity challenge. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 2016).

US PTAB Trial Practice Guide Updates

Aug 16 2018

On Monday, August 13, 2018, the U.S. Patent Trial and Appeal Board (PTAB) issued a notice updating the Trial Practice Guide. The update provided revisions to Sections I.G. (Expert Testimony), II.A.3. (Word Count and Page Limits), II.D.2. (Considerations in Instituting a Review), II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies), II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike), II.M. (Oral Hearing), and Appendix A (Sample Scheduling Order). The update further contemplates additional revisions that will be released on a rolling basis when applicable.

Frucor given red card over ‘V’ green trade mark

Jul 22 2018

On 2 July 2018 the Federal Court of Australia dismissed Frucor Beverages Ltd’s appeal regarding the registrability of the colour Pantone 376C with respect to the energy drink ‘V’.

The Frucor mark in question, Australian trade mark no. 1496541, was first filed with IP Australia on 5 June 2012. Registration of this mark was opposed by the Coca Cola Company on two grounds. First, Coca Cola alleged that while the trade mark was filed for Pantone 376C, the swatch attached to the application that visually demonstrated the colour was not actually Pantone 376C. Furthermore, it argued that regardless of the colour actually filed, it was not capable of distinguishing Frucor’s goods from other similar goods and services. The Registrar of Trade Marks dismissed the first ground of opposition but supported the second and the registration was denied.

Australian liquor company may not get off scot(ch) free

Jul 13 2018

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia. The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

A [Temporary] Defeat For Copyright At The European Parliament

Jul 08 2018

It was one of those big dramatic days the European Parliament had already seen before. A YES or NO vote in Plenary charged with huge political and social pressure. And, as it is common in these occasions, Members of Parliament were called to vote not about what the text submitted to them actually and literally said (a balanced result of two years of debates, legal analysis and delicate negotiations); but about the catastrophic consequences that a positive vote would have for freedom of speech around the planet.

Internet and all its benefits were threatened if this infamous article 13 of the new Copyright Directive were to pass in its proposed text. Or so pretended the loud voices against it: “If Article13 passes it will change the way that the Internet works, from free and creative sharing to one where anything can be instantly removed, by computers”, said a powerful lobbying NGO. Both battling armies looked for external support: Wikipedia closed down its Italian and Spanish editions; Sir Paul McCartney wrote to the legislators in support of the new rules.

Round Two: Method of Treatment Claims Survive Another § 101 Challenge – Reargument Denied in Pernix Ireland Pain DAC v. Alvogen Malta Operations Ltd

Jul 02 2018

The U.S. District Court for the District of Delaware denied a motion for reargument sought by Alvogen Malta Operations Ltd. (Alvogen) in their dispute against Pernix Ireland Pain DAC and Pernix Therapeutics, LLC, (collectively Pernix) regarding the subject matter eligibility of Pernix’s patents under 35 U.S.C § 101 (§ 101).

Alvogen asserted that, in denying summary judgment, the court misapprehended the claims at issue, and had failed to individually analyze some of the claims.

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