On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced a new program for expediting certain COVID-19 related patent applications. Under the COVID-19 Prioritized Examination Pilot Program, the USPTO will grant requests for prioritized examination to small or micro entity status applicants without requiring payment of the typical prioritized examination fees. Also under this program, the USPTO will endeavor to reach final disposition of applications within six months if applicants are responsive.
Prosecuting and maintaining a patent portfolio costs many organizations millions of dollars. These costs should be continuously managed and controlled. However, many organizations allow these tasks to slip when times are good. Under the current circumstances, it is worth revisiting some ideas that go beyond the basics of implementing and practicing a good patent management system.
In our recent Immigration Alerts, we discussed United States Citizenship and Immigration Services (USCIS) closures and updates regarding labor condition posting notices in the context of nonimmigrant visa applications in light of the "new world" of telecommuting during the COVID-19 era. We also recently discussed travel restrictions to and from the United States. This alert includes further updates that are worthwhile to relay to our readers at this time.
In the past calendar year, we saw several significant decisions from the Supreme Court pertaining to trademarks.
In this Alert, we reported on the new email address rule. The U.S. Patent and Trademark Office (USPTO), based on objections from trademark attorneys throughout the U.S., has now modified the new email address rule to permit appointed attorneys to both establish and monitor the new email address for trademark applicants and registrants.
As of February 15, 2020, all new trademark applications and post-registration filings (such as proof of use and renewals) must include an email address of the applicant(s) in addition to the name, email address, and postal address of an attorney who is an active member in good standing of the bar of the highest court of a state in the United States.
In 2019, both the Supreme Court and the Court of Appeals for the Federal Circuit issued decisions that will significantly affect patent law practice.
It is very likely the U.S. President will soon sign the newly amended United States-Mexico-Canada Agreement (USMCA), which is intended to replace NAFTA. Mexico has already ratified the amended USMCA and Canada is expected to ratify soon. This trade agreement has important implications for intellectual property rights and the recent amendments will especially have an impact on the biopharma industries.
As we start a new year, we would like to share with you some of our most popular legal alerts from 2019. Our top-read alerts range from construction, labor & employment, tax, immigration, trusts & estates, cooperatives & condominiums, real estate, corporate & securities, litigation and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
In 2019, New York's state legislature did not pass the NYPA: the New York Privacy Act. For the moment, there is no state law governing privacy, although the NYPA may be part of the 2020 legislative agenda. However, the SHIELD Act (Stop Hacks and Improve Electronic Data Security Act) was signed into law by the Governor. SHIELD modified New York's data breach notification law and the state technology law (N.Y. General Business Law (GBL) §899-aa and N.Y. State Technology Law (STT) §208). The STT governs the obligations of state agencies if there is a data breach; the GBL relates to everyone else. SHIELD also imposes new data security obligations. SHIELD is effective as of March 21, 2020.
The U.S. Food and Drug Administration (FDA) announced plans to withdraw the approval of 249 Abbreviated New Drug Applications (ANDAs), since their manufacturers have failed to submit annual reports. This should serve as a wakeup call to all delinquent ANDA holders.
On January 1, 2020, the most restrictive data privacy act in the United States, the California Consumer Privacy Act (CCPA), went into effect. This law is not limited only to businesses that are established or have locations in California. To the contrary, the CCPA applies to any for-profit business “doing any business in California” which collects personal information from California residents and satisfies just one of these criteria: (a) has a gross revenue of greater than $25 million dollars, (b) annually buys, receives, sells or shares personal information of more than 50,000 consumers, households or devices for commercial purposes or (c) derives more than 50% of its annual revenues from selling consumers’ personal information.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg authored an article featured in Law360 titled, “Navigating Amazon Marketplace IP Disputes.” In the article, Mark focuses on Amazon’s evolved processes, procedures and issues for IP disputes arising from the Amazon Marketplace, including the Amazon Brand Registry and the Neutral Patent Evaluation Procedure.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg authored an article featured in Intellectual Property Magazine titled, “Amazon Assistance.” In the article, Mark discusses Amazon’s neutral patent evaluation program, which creates an alternative to federal court proceedings in patent infringement disputes on its website.
Intellectual Property Group co-chair Philip Braginsky authored an article featured in Medical Device and Diagnostic Industry (MD+DI) titled, “Patent Considerations for Connected Medical Devices.” In the article, Phil discusses why developing new solutions, the Internet of Things (IoT) and Blockchain must be important components of a medtech company’s strategic planning.
Canada and Brazil have signed on to the Madrid Protocol, which established "one-stop shopping" for filing an international trademark application. The Protocol came into effect in Canada on June 17, 2019 and will come into effect in Brazil on October 2, 2019, bringing the total of Protocol nations to 121.
On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States. This rule becomes effective on August 3, 2019.
The Food and Drug Administration (FDA) recently enhanced its Paragraph IV (PIV) Certifications List with additional data fields. The PIV Certification List regularly publishes information regarding the 180-day exclusivity provided under 505(j) of the Federal Food, Drug, and Cosmetic Act (FD&C Act). Historically, the information has included the name of the drug product, dosage form, strengths, RLD/NDA numbers and the date of first filing. The new data fields added by FDA will further help generic drug companies plan product development more strategically and are intended to increase approvals of more generic drugs.
The road to permitting the registration of George Carlin's seven dirty words began in 2017, with the Supreme Court holding unconstitutional the Trademark Act's prohibition against registration of trademarks which are disparaging. That decision permitted the registration of the mark "THE SLANTS" for entertainment in the nature of live performances by a musical band.
As we head into summer, we would like to share with you some of our most popular legal alerts from the first half of 2019. Our top-read alerts range from construction, labor and employment, tax, corporate and securities, immigration, cooperatives and condominiums, commercial leasing, real estate, litigation and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
Intellectual Property counsel Janet Linn’s recent LexisNexis Lexis Practice Advisor article is published in Law360 titled, “Hatch-Waxman Pre-Suit Considerations For Generics: Part 1.” In the first of the two-part article, Janet addresses how counsel for a generic drug company should prepare for patent litigation under the Drug Price Competition and Patent Term Restoration Act of 1984, better known as the Hatch-Waxman Act.
Often, an Amazon seller accused of patent infringement finds itself in a frustrating predicament. The seller receives an email from Amazon notifying it that the seller’s product is being removed from the site and stating that if the seller believes that the infringement allegation is incorrect, the seller should directly contact the patent owner. Not surprisingly, the seller’s or its attorney’s good faith explanation as to why there is no infringement often falls on deaf ears. And, the seller’s appeals to Amazon for assistance in rectifying the situation are usually fruitless. Earlier this year, Amazon introduced a pilot program that may remedy this situation in a way that benefits both patent owners and Amazon sellers.
On May 20, 2019, the U.S. Supreme Court issued a long-awaited and important decision in Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. __ (2019) (the Supreme Court decision), resolving a split amongst various Circuit courts concerning the impact of rejection of trademark licenses by debtor-licensors in a bankruptcy case.
Intellectual Property counsel Janet Linn authored an article featured in LexisNexis’s Lexis Practice Advisor titled, “Hatch-Waxman Pre-suit Considerations from the Generic Perspective.” In the article, Janet discusses how counsel for generic drug companies should prepare for patent litigation under the Drug Price Competition and Patent Term Restoration Act of 1984, better known as the Hatch-Waxman Act.
In an important decision for the personal care and ingredients industries, the U.S. Court of Appeals for the Federal Circuit recently vacated a district court decision that held patent claims invalid as being directed to non-patent eligible subject matter in Natural Alternatives Int'l v. Creative Compounds, LLC (Case No. 18-295).
As an addition to our ongoing series designed to help board members properly discharge their fiduciary duties in relation to company intellectual property, our next topic is the board’s obligations relating to executive qualification and officer oversight. It has become well established that in the United States, intellectual property and other forms of intangible assets make up a greater portion, than was the case a few years ago, of a business enterprise’s balance sheet. We do not anticipate this trend ending any time soon and as such, the need for intellectual property proficiency must be a priority for all governing bodies.
There are three types of Premarket Notification 510(k)s that may be submitted to the U.S. Food & Drug Administration (FDA): Under the recently finalized Safety and Performance Based Pathway guidance, FDA has expanded the Abbreviated 510(k) route for certain well understood device types. The FDA expects to begin implementation of this pathway as soon as the device types and performance criteria are identified. Once implemented, a medical device manufacturer will be able to use performance criteria instead of direct comparisons to show substantial equivalence for qualifying devices.
The news cycle is filled with the raucous activity of the UK Parliament with regard to Brexit, the "exit" of the UK from the European Union. On March 29, even Theresa May's offer to resign did not persuade Parliament to approve of the Withdrawal Agreement. As of yesterday, Brexit Day has moved to October 31, 2019, but the EU's extension obligates the UK to vote in parliamentary elections in May (or Brexit Day will be June 1). The EU will convene a summit in June to review the UK's progress towards Brexit.
Are you and your family first in line at your hometown stadium on Opening Day? Do you regularly visit museums and attractions? Have you seen your face on the big screen or posted your own pictures on social media? Most likely, your answer is “Of course!” But have you read the fine print that governs what the venue is permitted to do with your name, likeness, image, voice and uploaded photos? Visitors to the new Hudson Yards attraction in NYC, named the “Vessel,” which opened on March 15, were taken by surprise at the scope of the rights that they gave away by buying tickets and visiting the building.
Yesterday, the U.S. Supreme Court unanimously decided that a copyright registration is required in order to sue for copyright infringement. The various appellate courts had been split: some had permitted copyright owners to sue even before an application had been granted, while others required the registration prior to suit. The issue arose due to this language in Section 411(c) of the Copyright Act: "no civil action for infringement of the copyright in any United States work shall be instituted until ... registration of the copyright claim has been made in accordance with this title." (emphasis added) The next sentences of Section 411(c) allow a plaintiff to sue even if the Copyright Office has rejected the application - but only if the plaintiff notifies the Copyright Office of the lawsuit.
Intellectual Property co-chair Amy Goldsmith authored an article featured in Law360 titled, “Copyright Protection For Jewelry Seems Tangled.” In the article, Amy discusses registering copyrights for jewelry, which has become increasingly difficult based on recent trends in the U.S. Copyright Office.
This past December, the U.S. Food and Drug Administration (FDA) issued a biosimilar industry guidance on a variety of topics. Mostly overlooked was a Q&A regarding safety protections in a 351(k) application. The FDA Commissioner thought the matter was important enough to single out in his comments released the same day, calling it a "critical issue."
As we start a new year, we would like to share with you some of our most popular legal alerts from 2018. Our top-read alerts range from construction, corporate and securities, labor and employment, tax and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
Intellectual Property co-chair Amy Goldsmith authored a Lawline blog post, “IPoems, Patent Law Edition.” The blog post contains poems written by Amy that are designed to break down complex terms of patent law to make them easier to digest. Amy states, “If a picture is worth a thousand words, an informative limerick might be worth an entire law review article.” She goes on to share her original poems on patent law and gives correlating explanations for each.
Intellectual Property co-chair Amy Goldsmith wrote an article that was featured in IP Watchdog on “Musically Inclined: The Music Modernization Act of 2018.” In the article, Amy explores the recent disputes between Flo & Eddie, the owner of pre-1972 musical recordings, and Sirius XM, which publicly performed those recordings, regarding whether common law or statutory copyrights existed and if so, what level of compensation was due.
In a 7-2 decision, its first to address the extraterritorial scope of patent damages since passage of the modern patent act, the U.S. Supreme Court in WesternGeco LLC v. Ion Geophysical Corp., No. 16-1011 (June 22, 2018), held a patentee can recover its foreign lost profits as damages.
On June 28, the California legislature passed the California Consumer Privacy Act, the toughest data privacy law in the country. The law, which will take effect in 2020, imposes new requirements on businesses in an approach similar to the recently passed European General Data Protection Regulation (GDPR). It aims to put ownership and control of personal information back in the hands of consumers, and to hold businesses accountable for any data security breaches.
In a closely watched case involving South Dakota’s 2016 law requiring the collection of state sales tax by out of state retailers who have no physical presence in the state, in a 5 to 4 decision, the Supreme Court yesterday decided to overturn two of its older decisions prohibiting the practice in South Dakota v. Wayfair, Inc. No. 17-494. Many states have been waiting for this decision and are likely to pass their own remote taxation laws, and online sellers will then need to collect and remit tax to each such state.
The European Union has enacted a new General Data Protection Regulation (GDPR) that will take effect on May 25, 2018 regarding how businesses, wherever they are located around the world, must manage the personal data of European "data subjects."
The Sixth Annual Best Practices in IP Conference in Tel Aviv, which covered global best practices for issues affecting companies' IP, was another great success. Attendees benefited from top-notch educational opportunities and introductions to innovative companies.
I recently had the opportunity to speak about intellectual property (IP) issues at ASD Market Week, a twice-yearly B2B trade show featuring a wide range of retail merchandise, and SourceDirect, a wholesale trade show for global sourcing professionals such as importers, distributors, wholesale manufacturers and product development companies. Topics covered included domestic and international IP filings, clearing products to avoid IP infringement, IP litigation and indemnification for IP infringement.
Intellectual property can present operational risks - knowledge and protocols can help.
Although one might occasionally come across an article touching on intellectual property (IP) concerns in the corporate boardroom, not enough has been said on this topic. This is the first in a series of articles that are designed to help board members satisfy their duties of care regarding the various risks that IP often carries.
The U.S. Food and Drug Administration (FDA) recently finalized its publication on additive manufacturing (commonly referred to as 3-D printing) for medical devices.According to FDA Commissioner Scott Gottlieb, the guidance is meant to "help manufacturers bring their innovations to market more efficiently by providing a transparent process for future submissions and making sure our regulatory approach is properly tailored to the unique opportunities and challenges posed by this promising new technology."
The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the USPTO.
Over the past few years, owners of U.S. patents and trademarks have used the appearance of Chinese companies at a trade show as infringement "traps." These patent owners have commenced infringement cases against Chinese companies based on those companies' activities at the trade show.
The U.S. Food and Drug Administration (FDA) recently updated the Orange Book to include patent submission dates. A patent submission date is the date the FDA receives patent information from the NDA holder. For each patent that claims a drug substance (active ingredient), drug product (formulation and composition), or method of use, the FDA requires all NDA applicants to submit the detailed patent information provided for under on 21CFR314.53. Now, the dates of these submissions are being recorded and published by the FDA.
The U.S. Food and Drug Administration (FDA) recently published a draft guidance summarizing the differences between abbreviated new drug applications (ANDA) and 505(b)(2) applications. Both sections were added to the FD&C Act to provide new routes for obtaining approvals for drug applications. The guidance focuses on ANDA submissions under Section 505(j) of the FD&C Act, petitioned ANDAs under Section 505(j)(2)(C), and NDAs pursuant to Section 505(b)(2) and discusses the regulatory and scientific considerations for determining whether to file an ANDA or 505(b)(2) application.
The European Patent Office recently revised its Examination Guidelines. These Guidelines are primarily directed to the patent examiners and formalities officers of the EPO, but they are also helpful to anyone practicing before the EPO. This year the update contains a few important changes.
Generally, a patent owner's rights are exhausted after an authorized sale; the patent owner cannot sue a downstream customer who purchased an authorized patented product from a third party reseller. So how can a patent owner control the resale of a patented product?
For decades, companies have been subject to patent infringement lawsuits almost anywhere that they had sales, whether through a physical store or online. Often, based on online sales, the defendant corporation could be brought into any location where the end customer was located, even if only one product was sold in that state. Based on a new Federal Circuit decision (In re Cray Inc.), that is no longer true.
For close to 30 years, patent owners have been able to strategically select the best location for a patent litigation, assuming that the defendant sold the contested product in that location. Popular courts include the Eastern District of Texas and the Eastern District of Virginia. But not anymore... Last week, in a unanimous decision, the U.S. Supreme Court narrowed the possible venues for bringing patent infringement suits, holding that a defendant can be sued only as a "resident" of its state of incorporation, not in any state where it sells products. TC Heartland LLC v. Kraft Foods.
The U.S. Supreme Court recently held in a recent decision in Life Technologies Corp v. Promega Corp. that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to § 271(f)(1) liability."
The Digital Millennium Copyright Act (DMCA) established a safe harbor for online service providers (OSPs) which benefits any website that contains content from third parties.
An increasing number of our clients have received letters from companies that appear to be government agencies with names such as "U.S. Trademark Registry," "U.S. Trademark Registration Office" and "Registration & Monitoring Division."
In the recent decision Trading Technologies International, Inc., v. CQG, Inc. et al., the Federal Circuit affirmed a district court's ruling that a software patent on a graphical user interface was patentable subject matter, and not directed to an abstract idea under Alice.
In December 2016, the FDA published an industry guidance related to the Biologics Price Competition and Innovation Act. This guidance offers suggestions to sponsors on the design and use of clinical pharmacology studies to support a claim of biosimilarity to a reference product.
This month, a California woman sued Chipotle for $2.2 billion based on the burrito chain's unauthorized use of her photograph in its promotional materials.
Branded companies make millions of dollars each day that a generic version of a drug is held from the market.
Over the past two years, owners of U.S. patents have used Chinese companies' appearances at a trade show as a patent infringement "trap."
Intellectual Property partner Amy Goldsmith and Construction partner Laurie Stanziale wrote, “Whose Line, Drawing Or Plan Is It Anyway?" which was part 2 of a two-part article for Law360. The article addresses owner-architect agreements and instruments of service for the parties to set forth rights and obligations.
Intellectual Property partner Amy Goldsmith and Construction partner Laurie Stanziale wrote “Whose Line, Drawing Or Plan Is It Anyway?”, which is part 1 of a two-part article, for Law360.
On June 23rd, the UK voted to leave the European Union (Brexit).
An interesting decision was recently issued by the Trademark Trial and Appeal Board rejecting a trademark application for pizza in connection with a single location restaurant.
With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.
Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.
The patent landscape has changed regarding business method patents.In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.
Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”
In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.
Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.
Clearly define the grant provisions of all of your IP contracts. If you want to transfer or receive "intellectual property" or "technology," ensure that these terms are well defined and unambiguous. Definitions matter! By making the contract terms clear, you can potentially reduce (or eliminate entirely) future litigation costs.
When you upload content on Instagram, you can choose to make your post "public" or "private." According to Instagram, not only is the public content accessible and searchable by Instagram's users, the content is also subject to use by them on their websites via Instagram's application programming interface or "API."
Now more than ever before, almost everyone is online, both personally and for business purposes. There is a lot of confusion about posting pictures and images on social media - Instagram, Facebook, Pinterest and other platforms. What is legally permitted and what isn't?
The U.S. Food and Drug Administration (FDA) recently published a new guidance (the Guidance) related to medical device shortages or potential shortages during the COVID-19 pandemic The Guidance is meant to implement Section 506J of the Federal Food, Drug, and Cosmetic Act (FD&C Act) (21 U.S.C. 351 et seq.), which was added under Section 3121 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).
In a follow up to our alert issued on April 2, 2020, in accordance with The Coronavirus Aid, Relief and Economic Security Act (CARES Act), on April 28, 2020, United States Patent and Trademark Office (USPTO) Director Andrei Iancu issued public notices regarding the further extension of certain patent and trademark deadlines to June 1, 2020.
On April 23, 2020, the U.S. Supreme Court issued its long-awaited decision on whether "willful" infringement was a prerequisite to an award of the infringer's profits as damages. In Romag Fasteners, Inc. v. Fossil Group, Inc., Case No. 18-1233, the Court held that a "plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff's trademark as a precondition to a profits award" and, thus, brought to an end the division of the courts of appeals on this topic.
Under what circumstances can a building owner legally remove artwork from a building? In 2018, a group of graffiti artists was awarded $6.75 million dollars for the improper removal of their art. On February 20, 2020, the United States Court of Appeals for the Second Circuit upheld that lower court's ruling. In Castillo vs. Cohen et al, 950 F.3d 155 (2d Cir. 2020), known as the 5Pointz case, the appellate court issued a decision that provides needed guidance to building owners and graffiti artists alike.
The COVID-19 pandemic has had an impact on patent and trademark offices and operations globally. Below is a summary of changes seen over the past few weeks.
On March 31, 2020, in accordance with The Coronavirus Aid, Relief and Economic Security Act (CARES Act), United States Patent and Trademark Office (USPTO) Director Andrei Iancu issued a public notice regarding the extension of certain patent and trademark deadlines.
Mark Rosenberg, Intellectual Property partner and Reputation Management practice co-chair, recently authored an article for Modern Aesthetics magazine titled, "Handling Negative Reviews in the Internet Age." In the article, Mark explores how physicians can protect themselves against negative reviews posted to Internet sites such as Healthgrades, Vitals or Yelp, noting that these reviews "can damage a doctor’s reputation and can have significant ramifications for his or her practice."
Intellectual Property co-chair Amy Goldsmith wrote “IPoems: Lessons from the World of Intellectual Property” for Inside, a publication of the corporate counsel section of the New York State Bar Association.
An article on right of publicity issues by Intellectual Property partner and Reputation Management co-chair Mark Rosenberg was featured in the Luxury Daily. The article delves into the implications of a California woman’s $2.2 billion lawsuit against restaurant chain Chipotle, which used her photograph in its promotional materials without her consent.