USA – Page 4 – IP Law Watch

New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

Dec 20 2019

On Tuesday July 31, 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, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.

The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:

electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.

Unconstitutionality of PTAB judges corrected by Federal Circuit decision

Nov 03 2019

In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.

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.

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.

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