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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Preliminary Injunction Denied in Barnes & Noble nook Case

Posted on December 6, 2009 | Leave a comment

Spring Design Inc. filed suit against Barnesandnoble.com, LLC in the United States District Court for the Northern District of California alleging three causes of action: (1) breach of written non-disclosure agreement, (2) misappropriation of trade secrets, and (3) common law unfair competition. Plaintiff “delivers innovative e-reader solutions and products to the e-book market.”

The factual allegations are as follows:

February 12, 2009 – Plaintiff and Defendant entered into a non-disclosure agreement. February 17, 2009 – Plaintiff presented its design for a dual-screen navigation electronic reader to an e-reader product consultant hired by Defendant.
May 13, 2009 – Plaintiff gave a presentation to a group of Defendant’s executives including a PowerPoint presentation with an overview of its design for an Android-based eReader named “Alex.” The PowerPoint slides indicated that they were confidential and subject to the NDA.
July 23, 2009 – Defendant emailed Plaintiff requesting a summary of Plaintiff’s product development. Plaintiff provided Defendant with an update, including a PowerPoint slide explaining how specific features of Alex represented a unique departure from Amazon’s Kindle 2, the main competitor of Defendant’s planned e-reader.
October 20, 2009 – Defendant announced the release of nook, its Android-based interactive dual-screen electronic reader that included features of Alex.

On November 30, 2009, the Court held a hearing and denied Plaintiff’s Motion for a Preliminary Injunction.

- Katie Cooper

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Posted in Intellectual Property Law, Litigation, Trade Secret, Trade Secret Law

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