3rd Circuit Issues Precedential Opinion Invalidating Trade Dress Protection of a Cookie

Kaisha v Lotte Background Ezaki Glico (“EG”) is a Japanese confectionery company that developed and began selling thin, stick shaped cookies under the trade name “Pocky” in the United States in 1978.  Each cookie has some amount of the length thereof coated with chocolate, flavored cream, and/or nuts.  A portion of the length is left […]

USPTO Changes After Final Practice by MPEP Amendment

With the June 2020 revision, the patent office has changed MPEP § 706.07 to seemingly more easily allow first action final rejections, post RCE or continuation filing.  As acknowledged in the change summary (https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html), the requirement that claims be directed to the “same invention” has been replaced with language requiring that the claims be “either […]

USPTO Amends Foreign Filing License Rules

to allow the use of ePCT to prepare an international application for filing with the US Receiving Office.  FR 2020-18743  Apparently, the rules prior to amendment allowed the export of technical data to ePCT for purposes of preparing an application for filing in a foreign receiving office, but not the US Receiving Office.

WIPO Launches New Free Database of IP Legal Decisions

https://wipolex.wipo.int/en/main/judgments The WIPO announcement includes the phrase “from around the world,” which at least as of the date of this writing, is more than a tad optimistic.  Currently, 10 countries are represented and 2 of these are Jamaica and Costa Rica.  While nice places to visit, I don’t imagine their courts to be churning out […]

USPTO Provides New Anonymous Form for PTAB Decisions

https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/ptab-decision-nomination It used to be that nominations had to be submitted in writing to the Chief PTAB judge within 60 days of the issuance of the decision being nominated.  The new form is not date limited, and can be submitted without providing contact information.  And so, firms that represent both patent holders and petitioners can […]

SCOTUS grants cert in consolidated Arthrex cases

https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/19-1434.html SCOTUS has agreed to hear arguments in connection with three consolidated Arthrex cases – United States v. Arthrex (19-1434), Smith & Nephew v. Arthrex (19-1452) and Arthrex v Smith & Nephew (19-1458).  However, SCOTUS has indicated that it’s review will be limited to the issues of:   Whether APJ’s of the USPTO are principal […]

USPTO Proposes CLE Reporting

FR 2020-22420 Proposed CLE Requirement 9OCT2020 Beginning in March of 2022, the USPTO will require patent practitioners registered with the office to submit a mandatory registration statement biennially.  The registration statement includes an acknowledgement that the practitioner has completed 6 credits of CLE within the previous 24 months.  The above notice requests public comment on […]

Inventor files 19 requests for refund after win at PTAB

Alleging PTO error cost him “huge amount of fees” and “valuable time,” inventor concludes that “USPTO doesn’t have right to keep the fees paid due to the negligence, unethical practises and misconduct by USPTO employees.” Multiple petitions for refund filed for PTO error I feel ya’ buddy, I really do….

Another Amici weighs in in The Moodsters v Disney

CSEL Amicus Brief Moodsters v Disney Graphically depicted characters are not among the “works of authorship” listed in 17 USC 102(a), which, argues the Moodsters, has created the opportunity for the Circuit courts to develop their own tests to determine whether copyright protection ought to attach. The Moodsters® are five color coded characters which represent […]

Trademark Modernization Act Advances in the House

HR6196 The bill, introduced in March 2020, takes aim at fraudulent trademark filings in several ways: it codifies existing processes for third party submissions during trademark examination; it provides for expungement or reexamination procedures as alternatives to inter partes proceedings before TTAB; and it provides that a party seeking an injunction for a trademark violation […]