Volume 102 Issue No. 1 is now available, hot off the presses! See the below cover page for its articles:
Forgot to report on this due to the fact that Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. ___ (2021) was decided by SCOTUS several days after U.S. v. Arthrex (precisely eight days later, which also cited us on page 2 of its majority opinion - see below), but Justice Amy Coney Barrett cited us on page 5 of her dissent, joined by Justice Thomas and Justice Gorsuch, specifically the article of Lechner, Estoppel Against Patent Assignors—The Scott Paper Company Case, 28 J. Pat. Off. Soc. 325, 330 (1946)! Check out the citation below.
The first page of Justice Barrett's dissent:
Attorney for Trademark/Copyright Pratice Group
Morgan Lewis, one of the world’s leading international law firms, seeks to hire a highly qualified attorney to join our trademark/copyright practice group in the Washington, DC office. This position could also be resident in Boston and San Francisco. This is a non-partnership track position and compensation is commensurate with experience.
We would like to highlight an incredible article from Volume 101, Issue No. 4, Serving America: The USPTO’s IP Attaché Program by Bratislav Stankovic and Dominic Keating. We have also uploaded the article online and you can read it by clicking the below image or here. We hope you enjoy the article's explanation of the USPTO's highly coveted "IP Attachés", who are able to perform duties in different countries across the globe as part-diplomat and part-IP-attorney. More information about the program can also be found at its official website!
Volume 101 Issue 4 is now available, hot off the presses! See below for the articles in it:
Patent Agent - Technology
Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with over 4,000 lawyers and staff in 31 offices is seeking a Patent Agent for their award-winning IP Team.
Check out the Past EICs page (you can also click on the text in the header banner immediately above to the right) to see biographical data compiled of the first fifteen Editors in Chief of the Journal: George P. Tucker, William I. Wyman, E.C. Reynolds, W.B. Johnson, V.I. Richard, C.C. Pidgeon, Max W. Tucker, Howard S. Miller, Dr. Joseph Rossman, Ph.D., P.J. Federico, Edwin M. Thomas, John H. Merchant, Milton Weissman, Gerald H. Bjorge, and Louis Zarfas.
Truly a group of remarkable and outstanding individuals, each of them having fascinating backgrounds and life stories: from the very first EIC who held a LLB from George Washington University and an LLM from American University (George P. Tucker), whose son, eight years later, served as the seventh EIC (Max W. Tucker), to an Army Captain having to leave the EIC post when called to active military duty to serve in WWII and who later became a JAG Lieutenant Colonel (Edwin M. Thomas), a Lehigh Civil Engineering graduate who "was employed on important engineering projects in New York State and elsewhere, including the Niagara Power and Development Company project and the great ship canal from Lake Erie to the Hudson River" (E.C. Reynolds), a regular contributor to Scientific American, who won first prize in a 1913 essay competition held by the publication on the subject "What Are The Ten Greatest Inventions of Our Time, and Why?" (William I. Wyman), a mathematician, Examiner-in-Chief, author of 56 JPTOS articles and co-drafter of the Patent Act of 1952 (PJ Federico), a 1915 University of California graduate who received a Master's degree in Physics at that institution and a Bachelor's degree in Electrical Engineering from Syracuse University (Howard S. Miller), a former Organic Chemistry Professor who was head of the Chemistry Department at DePauw University (Wellington B. Johnson), a Primary Examiner with over thirty years of examining experience who famously testified to the Senate Judiciary Committee in 1973 regarding the Hart Bill (Milton Weissman), a prolific author with a B.S. in Chemical Engineering from the University of Pennsylvania, a LLB and MA from George Washington University, and a Ph.D in Psychology from American University (Dr. Joseph Rossman, Ph.D), a former Treasurer of the Patent Office Society - as it was called back then (C.C. Pidgeon), a past Library of Congress employee who "obtained a working knowledge of library science" (V.I. Richard), a trademark expert who served as EIC for the longest period of 25 years (John H. Merchant), a previous Associate USPTO Solicitor, BPAI Chief Examiner and founder of the Federal Circuit Bar Journal (Gerald H. Bjorge), and a MIT graduate known as, according to Patently-O, the "primary examiner associated with the most issued design patents" (Louis S. Zarfas). Later EIC bios forthcoming soon!
The U.S. Supreme Court cited a Journal of the Patent & Trademark Office Society article on page 2 of its U.S. v. Arthrex opinion, which was decided on June 21, 2021. The article is by former Editor-in-Chief of the Journal, former Examiner-in-Chief of the Board of Appeals, and co-drafter (with Judge Giles S. Rich) of the Patent Act of 1952, Pasquale Joseph ("PJ") Federico (See also Pasquale Joseph Federico, Wikipedia), entitled "Operation of the Patent Act of 1790," 18 J. Pat. Off. Soc. 237, 338-239 (1936). This is a concrete affirmation of the standing JPTOS holds in the field of IP & Patent Law, and further motivation for publishing a forthcoming "Arthrex Issue" as well. You can see the citation below:
Everyone at the Journal would like to introduce the new Editor-in-Chief Johnathan Lindsey!
PTAB Practice Tips: Comparing Appealable and Petitionable Matters
James A. Worth
Practitioners considering an appeal to the Board should differentiate petitionable matters from appealable matters as early as possible to ensure that their arguments go to the right decision maker, and because petitionable matters have their own time clock for limitations. In an appeal, the Board is only permitted to consider the merits of an Examiner’s rejection. The Board is not permitted to review an Examiner’s other, procedural actions because the process of examination is within the exclusive purview of the Director, and is delegated by the Director to the Examiner. Thus, an applicant’s petition is reviewed by the Director, rather than the Board.
This article addresses the history of the distinction between appealable and petitionable matters, explains the modern codification of the law, and discusses examples of petitionable matters and other petitions.
Here’s a sneak peak into Volume 101 Issue 2
- PTAB Practice Tips: Comparing Appealable and Petitionable Matters
The Honorable James A. Worth
- The Inherency Doctrine: A Performance Review
Ryan Pool
- Patenting an Invention as a Free Black Man in the Nineteenth Century
Kathleen Wills
- Computer-Generated Inventions
Michael McLaughlin
- Vanda v. West-Ward: Swinging Back the Pendulum for Patenting Natural Phenomena
Kevin A. Sforza
- I Wrote This, I Swear!: Protecting the "Copyright" of Fanfiction Writers from the Thievery of Other Fanfiction Writers
Narisa Bandal
- Preambles: Form over Substance
Roy Y. Yi
Here’s a sneak peak into Volume 101 Issue 1
- Federico and Rossman Awards 2019
- PTAB Annual Meeting Keynote Address – Will You Be My Valentine: Celebrating the USPTO Examiner Through History
- The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States
- PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude
- The New Highwayman: Enforcement of U.S. Patents on Cannabis Products
- Looking for a Needle in a Haystack: Limitations of Searching Foreign Trademark on TESS
- Who Owns Fox? Possession is the Root of Title in Patent Law
- The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names
- Section 101: What’s Left to Patenting in the Life Sciences after Myriad, Mayo, and Alice?
The Effects of AI Technology on Personal Injury Litigation
By: Rae Steinbach
The history of artificial intelligence dates back to the 1950s, but it has been taking on a larger role in our personal and business lives in more recent years. Machine learning and other AI technologies have taken 450% more jobs since just 2013, and that trend is only going to continue.
While many people anticipated the gradual introduction of artificial intelligence into lower-skilled jobs, fewer expected the technology to apply to more complex settings such as the law. Personal injury lawyers and their area of practice have already been profoundly affected by the rise of AI, substantially increasing client access to legal resources.
Streamlining Claims with Artificial Intelligence
Compared to the current timeline involved in processing insurance claims, artificial intelligence promises a significant upgrade. Using AI software, claim processing time could be reduced to as little as five seconds. Efficiency is further aided by chatbots which can respond to simple customer inquiries.
The Limits of AI
While insurance companies obviously see significant potential in the integration of artificial intelligence, there may also be some cases in which the human element is needed. Personal injury lawyers will need to take on challenges made by plaintiffs who believe artificial intelligence made the incorrect decision.
Why Patent Ownership Disputes Can Make or Break Consumer Product Launches
By Bradley J. Van Pelt
In the race to produce the latest and greatest consumer products, companies working with outside consultants and manufacturers must establish clear lines indicating who are the actual patent owners and inventors of the products’ designs and concepts. If those lines of patent ownership and invention are vague or your ideas get exposed publicly before patent filings, the product launch could become mired in litigation, possibly causing the product to fail completely. Also, as companies move manufacturing out of China due to the tariff situation, they should consider how their IP will be protected as they evaluate other manufacturing sites around the globe.
1) What are the biggest risks for companies working with outside consultants and manufacturers during the development of a consumer product?
When developing or finalizing product design with an outside consultant or manufacturer (vendor) who may help in the development of the commercial product, it may become unclear who invented each aspect of the design. It is very important to file for patent protection before the company developing the product enters into any discussions with vendors.
If an application has not been filed before vendor involvement and if a vendor contributes to the invention, it may partially belong to the vendor unless there is an agreement that requires the vendor to assign the rights back your company. Without such an agreement and/or prior patent protection, the vendor may claim that the product concept is theirs and try to sell it to other customers.
Also, when vendors are helping other competitors solve similar problems or manufacture a similar product, your ideas may leak intentionally or inadvertently into your competitors’ products. For example, while visiting the vendor, a competitor may happen to see your product sample that you are developing with the vendor’s help. That competitor may then launch a product very similar to yours before you get the chance to publicize, officially launch, or file for patent protection for your product.
Written By: John Kirkpatrick
Written By: Justin Blaufeld
The Federal Circuit holds that a restriction requirement that fails to classify a few dependent claims is nevertheless sufficient to stop the clock under the Patent Term Guarantee Act.
In honor of one of the great United State Supreme Court Justices passing over the weekend, Justice Scalia said this in a past interview with Piers Morgan.
Justice Scalia: “My hardest [decision ever made]? It's the dullest case imaginable. They -- there is -- there is no necessary correlation between the difficulty of a decision and its importance. Some of the most insignificant cases have been the hardest. It would probably be a patent case. You want me to describe it really?
Piers Morgan: No, I don't. (LAUGHTER)
Justice Scalia: No. Of course. (LAUGHTER)
Written by: Justin Blaufeld
Written by: Roland Casillas, Web and Blog Editor
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., No. 14-1789 (Fed. Cir. 2015)
Appellant, Jack Wolfskin applied to the Patent and Trademark Office for a design mark consisting of an angled paw print for the use with its products, clothing, footwear, and accessories. Appellee, New Millennium Sports filed a response to oppose the application as it would likely create confusion with its own registered mark. In response, Jack Wolfskin filed a counterclaim for cancellation of New Millennium’s mark since they have abandoned said mark. The Patent Trial and Appeals Board found for New Millennium Sports, stating there was no abandonment of the mark. The Federal Circuit Court of Appeals agrees with the Board and New Millennium in finding no abandonment has taken place.
Written By: John Kirkpatrick
Appellant Achates argues that the Patent Trial and Appeal Board erred when the Board instituted an inter partes review (IPR) of Achates’ patents because Appellee Apple’s petitions for the review were time-barred under 35 U.S.C. § 315(b). The Federal Circuit (Prost, Lourie, and LINN) concludes that it lacks jurisdiction to hear Achates’ appeal because “the Board’s determinations to institute IPRs are final and non-appealable under 35 U.S.C. § 314(d).”
Written By: David Youngkin
Staub Design, LLC, v. David John Carnivale (Fed. Cir. 2015)
