Pennsylvania Company Files Patent Infringement Suit

Posted on April 21, 2010 | Leave a comment

N.A. Water Systems, LLC (“NAWS”) filed suit for patent infringement in the Western District Court of Pennsylvania on April 14, 2010.

The complaint alleges that Aquatech International Corporation and Debasish Mukhopadhyay infringe NAWS’s rights as an exclusive licensee of U.S. Patent No. 5,250,185 entitled “Reducing Aqueous Boron Concentrations with Reverse Osmosis Membranes Operating at a High pH.” NAWS seeks various declarations that:

1. NAWS’s process known as OPUS does not infringe U.S. Patent Nos. 5,925,255 and 6,537,456 owned by Mukhopadhyay;
2. Any actions by NAWS relating to promoting the OPUS process do not contribute to or induce infringement of Mukhopadhyay’s above-referenced patents; and
3. Mukhopadhyay’s above-referenced patents are invalid and unenforceable.

An answer has not yet been filed.

- Katie Cooper

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Posted in Intellectual Property Law, Litigation, Patent, Patent Law

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USPTO Proposes Change to the Provisional Patent Application Period

Posted on April 6, 2010 | Leave a comment

In an April 2, 2010 Press Release, the USPTO proposed a change that would effectively provide a 12-month extension to the provisional patent application period. The proposed change would “give applicants greater flexibility, reduce costs, and conserve agency resources.”

The change would be implemented through the missing parts practice in nonprovisional applications. The proposed change is expected to benefit the USPTO and the public by adding publications to the body of prior art and by removing nonprovisional applications for which applicants have decided not to pursue examination from the USPTO’s workload.

The proposed change would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application. Applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application is filed, pay the basic filing fee, and submit an executed oath or declaration. The nonprovisional would need to be in a condition for publication and the applicant would not be able to file a nonpublication request.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said he learned at roundtables that were held with inventors across the country that additional time flexibility during the provisional period would greatly benefit them “because the existing 12-month provisional period may provide too little time for inventors to test the marketplace.”

The USPTO is seeking public comment on the proposed change.

- Katie Cooper

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Posted in Intellectual Property Law, Patent, Patent Law

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Trademark and Copyright Infringement Case Filed Against Pittsburgh Company

Posted on February 24, 2010 | Leave a comment

A California company and a Nevada limited liability company filed suit in the Western District Court against Pittsburgh company QuestMark LLC for trademark infringement, false designation of origin, false advertising, copyright infringement, misappropriation of trade secrets, breach of contract, and unfair competition.

The Amended Complaint filed February 11, 2010 alleges the following claims of trademark infringement under the Lanham Act:

1. Defendants’ use of the mark CREATING AN ACCOUNTABLE CULTURE constitutes infringement of Plaintiffs’ federally registered CREATING A CULTURE OF ACCOUNTABILITY;
2. Defendants’ use of the mark ACCOUNTABLE CULTURE constitutes infringement of Plaintiffs’ federally registered CULTURE OF ACCOUNTABILITY;
3. Defendants’ use of the mark KEYS TO ACCOUNTABILITY constitutes infringement of Plaintiffs’ federally registered STEPS TO ACCOUNTABILITY; and
4. Defendants’ use of the mark ACCOUNTABILITY WORKSHOP constitutes infringement of Plaintiffs’ federally registered ACCOUNTABILITY TRAINING.

The Amended Complaint also alleges copyright infringement of a customer proposal brochure and a document that lists training modules used by the California company in its leadership-training and management-consulting services. The document also outlines the key “take away” points from the various modules.

An Answer has not yet been filed.

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Posted in Copyright, Copyright Law, False Advertising, Intellectual Property Law, Litigation, Trade Secret, Trade Secret Law, Trademark, Trademark Law, Unfair Competition

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President Obama’s $2.322 Billion Fiscal Year 2011 Budget Request for USPTO

Posted on February 4, 2010 | Leave a comment

On February 1, 2010, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos announced President Obama’s $2.322 billion fiscal year 2011 budget request for the USPTO. The President’s budget request will support a five-year plan designed to significantly reduce the patent pendency periods, improve patent quality, and enhance intellectual property protection and enforcement. To achieve these goals, the USPTO will:

(1) achieve 3% annual efficiency gains in patents processing through the re-engineering of management and workflow processes; and (2) initiate a targeted hiring surge and hire 1,000 patent examiners annually during FY 2011 and FY 2012, targeting former patent examiners and IP professionals who will require minimum training and can be productive virtually from the start of their employment.

The FY 2011 budget request projects fee collections of $2.098 billion and the administration is proposing an interim fee increase on certain patent fees which is estimated to generate $224 million.

- Katie Cooper

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Posted in Intellectual Property Law, Patent, Patent Law

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Patent Term Adjustment Interim Procedure

Posted on January 31, 2010 | Leave a comment

The USPTO announced that it is providing patentees with a new interim procedure for requesting Patent Term Adjustment recalculation.   The new procedure allows for the request without a fee or petition that is usually required under 37 CFR 1.705(d).  This procedure is being put into place to comply with the Federal Circuit Decision in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir., Jan 7, 2010).  In order to qualify the request must meet the following:

(1)   be filed no later than 180 days from the issue date of the patent;

(2)   be filed prior to March 2, 2010; and

(3)   the alleged errors must be the ones specifically identified in Wyeth.

 

John C. Thomas III

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Posted in Patent, Patent Law

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Disclaimer of the word “CENTER”

Posted on January 24, 2010 | Leave a comment

If the mark you are trying to register contains the word “CENTER” be prepared for a descriptiveness rejection and a disclaimer requirement if the description of goods contains merchandise.  Some Examining Attorneys will make the rejection, others will not.  Searching the register it appears that some registrations have the disclaimer while others do not.   The basis for the descriptiveness rejection is that “the wording CENTER is defined as ‘a store or establishment devoted to a particular subject or hobby, carrying supplies, materials, tools, and books as well as offering guidance and advice.’”  Therefore, the word CENTER merely describes a feature of the applicant’s goods and services, namely, that they are provided or found in a particular store or establishment.  Applicant can argue the commercial impression of the mark as whole does not allow for the conclusion that CENTER is descriptive. 

 An old case that might be able to be used in support of the argument that “CENTER” is not always descriptive of merchandise is In re Tennis in the Round Inc., 199 U.S.P.Q. 496 (TTAB 1978).   In re Tennis found that the mark “TENNIS IN THE ROUND” is not descriptive of a tennis facility containing eleven tennis courts and the facility was a round shape.  

 John C. Thomas III

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Posted in Intellectual Property Law, Trademark, Trademark Law

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Correction to Inventorship After Filing an Unsigned Declaration

Posted on January 17, 2010 | Leave a comment

Often times when a new Patent Application is filed in a rush it is filed with an unsigned declaration listing inventors. In this situation the U.S. Patent Office will issue a Notice of Missing Parts requiring that an executed declaration be submitted. Sometimes during the process of attempting to obtain signatures from the inventors, it is found out that either not all of the listed inventors are not inventors or that there is an additional inventor. 37 CFR 1.48 covers Correction of Inventorship in Patent Applications. Fortunately, the fix to this situation is currently rather simple. 37 CFR 1.48(f)(1) specifically addresses the issue. All that is that is required is to file the signed declaration with the correct inventors.

Nonprovisional application-filing executed oath/declaration corrects inventorship. If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pendency of the application will act to correct the earlier identification of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 naming an inventive entity different from the inventive entity set forth in the international stage.

37 CFR 1.48(f)(1).

John C. Thomas III

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Posted in Intellectual Property Law, Patent, Patent Law

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Penntech Industrial Tools, Inc. Sued for Patent Infringement

Posted on January 13, 2010 | Leave a comment

Max Co. Ltd., a manufacturer of industrial and office products, located in Japan, filed suit against Penntech Industrial Tools, Inc. in the U.S. Court for the Western District of Pennsylvania on December 9, 2009 for patent infringement.

Max Co. designed a “battery-operated reinforcing bar tying machine designed to replace the manual process of tying rebar.” Max Co. claims that Penntech infringed Max Co.’s U.S. Design Pat. No. 527,041 titled “Wire Bobbin of the Binding Machine” and U.S. Pat. No. 6,000,443 titled “Brake Mechanism of Wire Reel for Reinforcing Bar Binding Machine.”

Penntech Industrial Tools is “a leading supplier of productive cost saving metal fabricating and metal stamping machinery, accessories and related tooling products.”

- Katie Cooper

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Posted in Intellectual Property Law, Litigation, Patent, Patent Law

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Smiley Face Cookie Trademark Infringement Suit

Posted on January 5, 2010 | Leave a comment

On December 31, 2009, Eat’n Park, a restaurant group with its principal place of business in Pittsburgh, filed suit against Crumb Corps, a Texas corporation, for trademark infringement, trademark dilution, and unfair competition.

The complaint alleges that Crumb Corps sells “Smiley Faces” cookies which have a design that is confusingly similar to the registered trademark of Eat’n Park and are directly competitive products to the Eat’n Park SMILEY face cookies. Crumb Corps’s cookies are available via retail stores, catalogs, and online. Eat’n Park alleges that Crumb Corp’s sale of cookies using its smiling face design and the SMILEY word mark constitutes unfair competition.

- Katie Cooper

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Posted in Intellectual Property Law, Litigation, Trademark, Trademark Law, Unfair Competition

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Accelerated Review of Green Technology Patent Applications

Posted on December 14, 2009 | Leave a comment

On December 7, 2009, the USPTO announced a pilot program for accelerated review of certain green technology patent applications. The accelerated review will help keep America competitive by bringing new technologies to market faster.

Pending patent applications in green technologies will be eligible for expedited examination. The accelerated review is projected to reduce the time it takes to patent these technologies by approximately one year.

“The average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision. Under the pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the agency will examine the applications on an accelerated basis.”

- Katie Cooper

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Posted in Intellectual Property Law, Patent, Patent Law

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