Apr 1, 2020

Update on USPTO and U.S. Copyright Office Extensions and Adjustments

photo of Intellectual Property Blocks

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which provides, in part, the United States Patent and Trademark Office (USPTO) with the authority during the current emergency to “toll, waive, adjust, or modify any timing deadline established,” in the Patent Act, Trademark Act, and the Copyright Act, including regulations implementing timing deadlines. Before taking such action, the USPTO must determine that the COVID-19 emergency “(1) materially affects the functioning of the patent and trademark office; (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the office; or… Read more


Mar 25, 2020

Impact of COVID-19 on Intellectual Property

COVID 19 on keyboard

The reach of COVID-19 has been felt across all facets of life. Travel bans have been enacted. Primary schools have canceled classes, and colleges have turned to full time online education. Supplies of toilet paper and hand sanitizer are scarce. The world of intellectual property has not been spared either, but COVID-19 has not brought it to a halt. IP right enforcement means have been impacted. Trademarks, trade secrets, patents, and copyrights fall under the jurisdiction of the U.S. federal court system, the latter two exclusively. Many federal district courts have issued orders greatly reducing physical access. For example, the… Read more


Oct 21, 2019

On Second Thought, Don’t Say My Name – Registering Surnames in the United States

Surname-IP-Registration-Blog-10.18.2019-

The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.16 The Lanham Act prohibits registration on the Principal Register of marks that are primarily merely a surname. For many small businesses, this prohibition proves problematic because owners tend to want to include their own names in the business name to let customers know that they stand behind the quality of their goods or services. The United States Patent and Trademark Office applies a five-part test to determine whether registration should be denied on this basis. Its recent decisions, however, establish that some of these factors are weighted… Read more


Aug 15, 2019

Trademark Owners, Watch Out! USPTO Getting Strict on Trademark Specimens

Trademark Photo

In order to register a trademark based on use in commerce, or to renew a registration based on a foreign or international registration, trademark owners are required to verify that the mark is in use in U.S. commerce with all goods or services listed in the application or registration. In addition, the mark owner must file proof of use (a “specimen”) that demonstrates use of the mark in commerce in connection with at least one good or service in each International Class. The USPTO has announced that it will be rolling out new regulations in October 2019 that will tighten… Read more


Apr 11, 2019

Federal Circuit Declines to Give Deference to the USPTO

USPTO - Patent Stamp

More patents directed to diagnostic methods were found to be invalid as directed to the ineligible subject matter in Cleveland Clinic Foundation v. True Health Diagnostics, LLC, Case No. 2018-1218 (Fed. Cir. April 1, 2018). The Court of Appeals for the Federal Circuit applied the “Alice two-step” test and found the claims in U.S. Patent Nos. 9,575,065 and 9,581,597 invalid under § 101. This holding may come as a surprise to some because Cleveland Clinic argued, among other things, that the claims at issue mirrored Example 29-Claim 1 in the USPTO guidance published on May 4, 2016 (“referred to as… Read more


Jan 24, 2019

More on the Revised Subject Matter Eligibility Guidance

patent applications: patent definition

In a recent edition of our IP newsletter, we introduced the U.S. Patent and Trademark Office’s (USPTO) new guidelines for subject matter eligibility. Below, we provide additional thoughts and strategies for pursuing patent applications in light of these new guidelines. The “2019 Revised Subject Matter Eligibility Guidance” (Revised Guidance), effective January 7, 2019, varies the analysis for patent examiners and administrative patent judges in applying the Alice/Mayo test. Analysis under the Revised Guidance begins with a consideration of whether the claim limitations recite a process, a machine, a method of manufacture, or a composition of matter. This is Step 1… Read more


Jan 16, 2019

New Guidelines for Patent Subject Matter Eligibility from the USPTO

Alice/Mayo Test Steps 1 & 2

On January 7, 2019, the new guidelines for patent subject eligibility went into effect at the United States Patent and Trademark Office (“USPTO”). These guidelines, titled “2019 Revised Patent Subject Matter Eligibility Guidance” (herein “2019 Guidelines”), were the fifth update issued by the USPTO regarding subject matter eligibility since the Supreme Court’s opinions in the Myriad, Mayo, and Alice cases. As a result of the trio of cases, the USPTO had developed the Alice/Mayo test to determine subject matter eligibility. The Alice/Mayo test was a two-step test, with Step 1 determining whether the claim is directed to a process, machine,… Read more


Jun 21, 2018

SGR’s Kirsch to Present at the European Patent Office in The Hague, Netherlands

Speaker at European Patent Office

SGR’s Greg Kirsch, partner and Head of the firm’s Intellectual Property Department, has been invited to make a presentation at the European Patent Office (EPO), in the Hague, Netherlands, on July 5, 2018. The EPO, established in 1977 and operating under the European Patent Convention, in parallel with but separate from the European Union, is a major regional authority that receives and reviews patent applications, and grants patents for its member countries.  Patents granted by the EPO can thereafter be nationalized in any and all of the member countries, and are thereafter enforceable in such countries.  Along with the US… Read more


Nov 25, 2017

SGR Partner Scott Woldow Hosts USPTO Dialogue with INTA: “View from the Outside”

Trademark Attorney

SGR Partner Scott Woldow was recently featured in the International Trademark Association’s monthly bulletin regarding a Panel Discussion Scott gave to the Trademark Examination Division.  The topic he spoke on was called “A View from the Outside”.  Former Trademark Examiners discussed the differences between being an Examiner with the USPTO and being a trademark attorney in outside practice.


Sep 21, 2017

SGR Client InfoGation LLC Survives Google IPR Challenge

Patents File Folder

Smith Gambrell & Russell (SGR) attorneys Michael Makuch and  Ryan Varnum successfully defended the validity of a patent covering turn by turn navigation for our client, InfoGation LLC. On September 11, 2017, the United States Patent and Trademark Office (PTO) declined to institute an Inter Partes Review (IPR) filed by Google.  The PTO agreed with SGR’s arguments that Google’s IPR Petition failed to present sufficient grounds for instituting a review. The patent in question, U.S. 6,292,743, is being asserted by an SGR patent litigation team against handset makers HTC, ZTE, and Huawei in the Southern District of California, based on… Read more