03/14/14

Volume 96, Issue 1

The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • Title Defense: Creating Consistency in Video Game Title Trademark Law Suzanne Jackiw
  • The PTAB’s Interpretation of the Real Party in Interest and Privy Provisions in the AIA: A Look at the PTAB’s Rulings for Several Fact Scenarios Gregory J. Gonsalves and Kathy Grubbs
  • A New Approach to Combating the Piracy of Intellectual Property: Develop the Rule of Law and Increase the Supply of Legitimate Goods Andrew D. Getsinger
  • The Trajectory of China's Trademark Systems Leading Up to the New Trademark Law Taking Effect in May 2014 Jayanth S. Swamidass and Paul M. Swamidass
  • Keep It American: Preventing Foreign Acquisition of Federally Funded Intellectual PropertyBrice Lauer Biggins
  • A Critique of Recent Opinions in Patent Interferences Charles L. Gholz
The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • Title Defense: Creating Consistency in Video Game Title Trademark Law Suzanne Jackiw
  • The PTAB’s Interpretation of the Real Party in Interest and Privy Provisions in the AIA: A Look at the PTAB’s Rulings for Several Fact Scenarios Gregory J. Gonsalves and Kathy Grubbs
  • A New Approach to Combating the Piracy of Intellectual Property: Develop the Rule of Law and Increase the Supply of Legitimate Goods Andrew D. Getsinger
  • The Trajectory of China's Trademark Systems Leading Up to the New Trademark Law Taking Effect in May 2014 Jayanth S. Swamidass and Paul M. Swamidass
  • Keep It American: Preventing Foreign Acquisition of Federally Funded Intellectual Property Brice Lauer Biggins
  • A Critique of Recent Opinions in Patent Interferences Charles L. Gholz

  • Title Defense: Creating Consistency in Video Game Title Trademark LawSuzanne Jackiw

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    Video game titles are eligible for trademark registration on the first edition without meeting any additional requirements, contrary to the long standing rule for singleissue creative work titles. By creating this exception, not only are the number of video game title trademarks ballooning, creating a competitive minefield for video game developers and publishers, but the law is also showing a distressing lack of consistency in coping with new products, as compared to older established industries. To re-establish consistency and institute a higher level of accountability, this paper suggests changing the language used to review video game title trademark applications to include content change standards more analogous to those applicable to traditional creative works.

  • The PTAB’s Interpretation of the Real Party in Interest and Privy Provisions in the AIA: A Look at the PTAB’s Rulings for Several Fact ScenariosGregory J. Gonsalves and Kathy Grubbs

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    A defendant in a patent infringement lawsuit seeking Inter Partes Review (IPR) at the Patent Trial and Appeal Board (PTAB) must file a petition within one year of service of the complaint in the lawsuit. Specifically, the applicable law states that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent”.1 Similarly, the corresponding rule states that “[a] person may file a petition for Inter Partes Review unless: ... more than one year has passed since service of a complaint alleging patent infringement upon a) the Petitioner, b) the Petitioner’s Real Party-In-Interest, or c) a privy or Petitioner, Real Party-In-Interest or Privy is estopped”.

  • A New Approach to Combating the Piracy of Intellectual Property: Develop the Rule of Law and Increase the Supply of Legitimate GoodsAndrew D. Getsinger

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    The Anti-Counterfeiting Trade Agreement (“ACTA”) is an international legal framework targeted at eliminating the degree of counterfeit goods and the instances of copyright infringement on the web. ACTA’s focus, however, is misplaced. This paper argues that the best prophylactic against copyright infringement is the availability of legitimate goods. It concludes, therefore, that ACTA should focus not only on measures to reduce counterfeiting, but also on measures that increase availability of legitimate products. The enforcement approach, focusing on deterrence through punishment, assumes that the individual has elsewhere to buy the legal goods. Most of the time, in the developing world, they do not.

  • The Trajectory of China's Trademark Systems Leading Up to the New Trademark Law Taking Effect in May 2014Jayanth S. Swamidass and Paul M. Swamidass

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    A major revision to improve China’s Trademark Law was taken up for deliberation by China’s top legislature in December 2012 resulting in the much-awaited new Trademark Law passed on August 30, 2013 and expected to take effect on May 1, 2014. This article reviews the evolution in China’s Trademark Law, and fathoms the underlying trends leading up to the newly announced trademark system in China. The paper also benefits from one of the author’s first-hand observation of trademark infringement in China, and his summer law internship in Beijing, PRC. The 1950, 1963 and 1982 versions of China’s trademark laws were not based on the theory or the principle of protecting the intellectual property of the brand owner. Therefore, the complaints of brand owners seemed to fall on deaf ears, and enforcement lagged the letter of the trademark law. However, now, this may be changing for the better. Enforcement of trademark laws is not what Western businesses are used to in their homeland. This paper shows why the Chinese administrative agencies enforcing the laws may actually be changing and become better allies than the Western Businesses might expect—this is a positive development. In today’s China, enforcement of trademark laws may be no more complicated than allocating a more generous budget for these agencies to expand size and training of their enforcement staff. The willingness of the enforcement system to protect intellectual property is the most significant sign of a positive trajectory in China’s Trademark system; businesses eager for protection must recognize and take advantage of this change. Further, the amendment to the law when it was being debated included an end to, or reduce bad-faith registrations and trademark squatting. An understanding of the trajectory in China’s Trademark Laws leading to the new Law expected to take effect on May 1, should, (1) help businesses planning to operate in, or already operating in China, (2) provide a useful benchmark to those who seek to evaluate how far the new Trademark Law has left behind some of the problems of the previous Trademark regimes and underlying themes, if at all, and (3) provide the information necessary to compare with past Trademark practices, and understand as well as benefit from the areas, where the newly adopted law breaks new ground in favor of businesses. The key changes attributable to the new law going into effect in May 2014 confirms positive trajectory of China’s Trademark system; the willingness of enforcement agencies to enforce the laws multiplies the value of the coming changes.

  • Keep It American: Preventing Foreign Acquisition of Federally Funded Intellectual PropertyBrice Lauer Biggins

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    National security and innovation have a complex and at times tenuous relationship in the United States that often fails to strike a balance. Two of the primary controls for restricting foreign access to American technology and assets are the Committee on Foreign Investment in the United States, which examines foreign acquisitions of American assets for national security risks, and the Invention Secrecy Act of 1951, which allows for the classification of inventions that might pose a risk to national security. While both of these adequately address national security concerns as they apply to military or defense assets, the current law leaves a glaring hole when it comes to economic security. In particular, there is almost no protection for federally funded inventions lacking a clear defense application as with the recent acquisition of Ener1 Inc. and A123 Systems by foreign corporations. Although neither company specialized in defense contracts, both were involved in the research and development of state of the art energy sources like large capacity batteries and grid technology, which could have serious economic implications. This article addresses the need for changes to the legislation to prevent foreign entities from plundering the fruits of federally funded research. Rather than strengthening or expanding the existing national security organs, this article argues that a simple amendment to the Bayh-Dole Act, which establishes the rights of the contractor and the funding agency as they relate to federally funded inventions, would provide a solution that is both robust and flexible.

  • A Critique of Recent Opinions in Patent InterferencesCharles L. Gholz

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    This article covers (1) precedential and interesting non-precedential opinions relating to interferences published in the USPQ since those covered in my previous annual critique of interference opinions published at 95 JPTOS 24 (2013)1 and (2) precedential and non-precedential but “informative” opinions posted on the board’s website. This article covers interference opinions published in volumes 105-109 of the USPQ2d2 and opinions posted on the board’s website dated from January 1, 2013 to December 31, 2013.

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