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PTAB Denies Request to Stay Pending Applications

Posted Wednesday, May 13, 2015 by Jim Ruttler

The Patent Trial and Appeals Board issued an order in an Inter Partes Review proceeding this past week that provides a clue on how to defend against attacks on existing patents. The IPR system was set up in the America Invents Act and has been widely criticized by patent holders because it has made it easier for infringers to challenge issued patents. Once an IPR is initiated by the Patent Office it results in invalidation most of the time. So, much discussion has centered on how to appropriately defend against such patent challenges. As I said, the Board has now provided a good clue: make sure to keep an application pending at the Patent Office once your patent issues.

In IPR2014-01240, the Petitioner successfully initiated an IPR challenge against the patent owner. However, the patent owner also had another set of applications pending at the Patent Office. The Petitioner got the idea to petition the Board to stay examination of the pending patent applications to prevent them from issuing. To which the Board responded that those pending applications were outside the jurisdiction of the Board and untouchable until after they issued.

This order means that the patent owner can see how the IPR plays out before taking an allowance in the pending patent applications. Should the IPR invalidate the patent owner’s claims, amendments can be made to the pending patent applications to avoid the same outcome.

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Pending Patent Reform Bills

Posted Friday, May 8, 2015 by Jim Ruttler

A number of patent reform bills are pending in congress. Here is a brief summary of each. The INNOVATION ACT includes fee-shifting provisions where the loser of a patent infringement suit pays for the opposing side’s legal fees. Also included is a provision for courts to stay litigation against a customer if a lawsuit is better directed at a manufacturer. This Act is still in committee.

The TROL ACT requires that patent demand letters not be in bad faith and not include false or misleading statements. This act would also authorize states to bring actions and would preempt existing state laws relating to assertion of patent rights. This Act has been approved by committee and is now before the full House of Representatives.

The INNOVATION PROTECTION ACT would allow the Patent Office to keep its collected fees and end fee-diversion to other parts of the government.

The STRONG PATENTS ACT would make some changes to the new post-grant review proceedings at the Patent Office. It would require that issued patents be presumed valid. The Act would also end Patent Office fee diversion and curtail fraudulent/misleading demand letters.

The PATENT ACT would provide for higher pleading standards, allow for customers to stay litigation in favor of manufacturers, and direct the Patent Office to provide information on patent ownership about patents involved in disputes.

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Trademarking Product Shape

Posted Tuesday, April 28, 2015 by Daniel Mills

There are two essential elements when it comes to getting a trademark for a product’s design or in Trademark lingo “product configuration”. The first element, is that the shape or configuration must indicate the source of the goods or services. This is a requirement of every trademark whether it is a word or logo trademark. The other element is that the design must NOT be functional. There is another crucial element that the product’s design is distinctive, which will be the subject of another post, but one must overcome the functionality hurdle before answering the inherently distinctive question.

Whether the design is functional or not is more complicated than one might think. This post is to help sort out the basics of this distinction and provide a little bit of guidance to you if you are thinking about trademarking your product design.First, it is helpful to understand that there are three levels of functionality:

  • Nonfunctional
  • De Facto Functional
  • De Jure Functional

Nonfunctional is pretty simple, the design of the product or packaging cannot be utilitarian in any way. It must have no function. For example, if it is round, then it could have just as easily been square. The reason it is round is because of the look. The reason it is round can’t have anything to do with round making it better in any way.

De Facto functional is when the shape or configuration is involved with the function of the product. A bottle of Coke® does function to hold the beverage for consumption, not to mention, keeping your hands from getting sticky. The shape of the bottle could be square however and still achieve the same function. The distinct shape doesn’t add to or subtract from the true function of a bottle.

De Jure functional means that the design or configuration is functional as a matter of law. In other words, it meets a standard of functionality that has been determined by courts over the years. Functionality is now part of the Lanham Act Section 2(e)(5) in the list of reasons for refusal. If the product configuration or its packaging design is superior to other available designs for its intended purpose and, provides a competitive advantage, it is de jure functional. So if the bottle of Coke’s curvy design helped keep it carbonated longer, taste better, colder, etc., then it would be de jure functional.

When it comes to trademark registrability for product shape, noted trademark attorney and blogger John L Welch begins with these three questions:

  1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. If the answer is no, you still must show acquired distinctiveness, but again, more on that in my next post.

  2. If the configuration or feature has utility, is the shape the only one that will work? If no, you may be eligible for a design patent.

  3. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design is “essential to the use or purpose of the device or … affects the cost or quality of the device.”

As with anything in the law, the specific details of any case will be the most important factors in determining the outcome, but these questions are great place to start the analysis. To read John L. Welch’s post on this topic, click here.

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Google Launches Pilot Program to Purchase Patents

Posted Tuesday, April 28, 2015 by Jim Ruttler

The options for selling your patents continue to grow. Of course, there have already been a number of great patent liquidity options with intermediaries like Intellectual Ventures. A few months ago, I wrote about the Patent Utility which is a new site that matches patent owners with patent buyers. And now, Google appears to be getting into the market for patents. Google announced today that it would begin purchasing patents direct from patent owners. The program claims to offer a streamlined way to sell your patents to remove friction in the market. Google plans to pay for the purchased patents by August 2015. The program will run from May 8, 2015 to May 22, 2015. Interested sellers should visit to learn more.

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Updated Guidance on Patent Eligible Subject Matter

Posted Wednesday, March 25, 2015 by Jim Ruttler

The USPTO released additional examples to aid in determining whether a claim is directed to an unpatentable abstract idea. There is no change to the analysis framework, but the examples provided shed more light on what types of inventions remain protectable under the patent laws. The examples of unpatentable abstract ideas include claims directed toward collecting and combining data, automating the game of bingo, providing a guaranty, and using advertising as a form of currency. It is clear from these examples that subject matter directed towards business type activities is going to receive heightened scrutiny by the Patent Office and the courts. On the other hand, the guidance provided a number of examples of patent eligible subject matter. These include claims directed toward isolating and removing malicious code from electronic messages, generating composite web pages, digital image processing resulting in a computer using less memory and faster computation time, and a GPS system that improves sensitivity of a receiver in weak signal environments. While some of the examples of patent eligible subject matter seem like they aren’t too different from some of the examples of ineligible subject matter, it appears that the distinction is really whether the claims involve a business practice. More details of the claim language and accompanying analysis can be found here:

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Tuesday, April 28, 2015
Ruttler Law is now Ruttler Mills learn more +
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