USPTO Archives

Sep 21, 2017

SGR Client InfoGation LLC Survives Google IPR Challenge

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

Aug 8, 2017

Increasing Trademark Scams Discussed at USPTO Forum

Last week, the USPTO and TPAC (the Trademark Public Advisory Committee) hosted a public roundtable entitled “Fraudulent Solicitations to Trademark Owners.” The roundtable was chaired by Mary Denison, Commissioner for Trademarks; opening remarks were provided by Joseph Matal (currently performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO). Members of the public were invited to attend and participate in the roundtable. Speakers included both outside counsel and corporate practitioners and representatives of other organizations, as well as Darlene S. Klinksieck from the Washington, DC office of Smith, Gambrell & Russell,… Read more

Jul 11, 2017

USPTO Issues New Guidance to Examiners in Light of Tam Ruling

On June 26, 2017, the U.S. Patent and Trademark Office (USPTO) issued Examination Guide 1-17 to address the Supreme Court’s decision Matal v. Tam, 582 U.S. ___ (2017), which held that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), constitutes viewpoint discrimination and is facially unconstitutional under the First Amendment’s Free Speech Clause. Starting in March 2016, the USPTO began suspending applications for marks subject to refusal under the disparagement and scandalousness provisions of Section 2(a) pending decisions on the constitutionality of these provisions in Tam (disparagement) and In re Brunetti, No. 15-1109 (Fed…. Read more

Jun 19, 2017

THE SLANTS Mark Registrable as Prohibition of “Derogatory” Marks Held Unconstitutional By the Supreme Court

By: Jim Bikoff, Darlene Tzou, and Holly Lance On June 19, 2017, the United States Supreme Court issued a landmark decision in Matal v. Tam, 582 U.S. ____ (2017), unanimously holding the disparagement clause in the Lanham Act unconstitutional on the ground that it violates the First Amendment. This decision upends over 70 years of practice under Lanham Act § 2(a) (15 U.S.C. § 1052(a)). The case will likely have an immediate effect on other pending “derogatory” mark cases, including Blackhorse v. Pro-Football, Inc., 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015) (the “Redskins” case) and may signal… Read more

Jun 16, 2017

Fourth Circuit Holds that Policy Requiring Payment of USPTO Attorneys’ Fees Stands

On March 31, 2017, the U.S. Court of Appeals for the Fourth Circuit declined to review its decision affirming the district court’s award of attorneys’ fees to the U.S. Patent and Trademark Office (USPTO), approving the new USPTO policy of requesting attorneys’ fees from applicants that appeal to the U.S. district courts. In 2013 the USPTO broke its more than 170-year-old practice of not requesting attorneys’ fees in ex parte appeals to the US district courts and began requiring appellants seeking de novo review to cover the USPTO’s attorneys’ fees. The USPTO claims the authority to obtain these fees based… Read more

May 18, 2016

Promising News For Software Patents: Federal Circuit Upholds Patent-Eligibility For Computer-Implemented Invention

By: Greg Kirsch, SGR Partner, Head of Intellectual Property Department The past two years have been challenging times for developers of software and other computer-implemented technology seeking to patent their inventions. In June 2014, the US Supreme Court handed down its Alice Corp. v. CLS Bank decision, which created new stricter rules for determining whether such inventions may be deemed eligible for patent protection (regardless of whether they are novel and non-obvious). The new rules comprise a two-step inquiry: (1) determine if a patent-ineligible concept is claimed (law of nature, natural phenomena or abstract idea), and if so, (2) determine… Read more

May 11, 2016

Further guidance and the light at the end of the tunnel

By: J. Gibson Lanier, Ph.D Just when the patent prosecution community thought that, for better or worse, the standards relating to the subject matter eligibility of claims were set for examination, the standards have moved again following the Mayo/Alice decisions. On Thursday, the USPTO released its latest subject matter eligibility examination guidelines for 35 U.S.C. § 101, evidencing just how unworkable the Mayo/Alice test is from a practical standpoint. This iteration of guidelines for examination is the third such revision and provides new examples of what may be subject matter eligible for biotechnology patents, but does not provide additional examples… Read more

Apr 23, 2015

USPTO Patent Quality Assurance Practices – Quality Not Quantity

In a report issued on April 10, 2015, the United States Department of Congress, Office of Inspector General, provided its final report on the U.S. Patent and Trademark Office’s (USPTO’s) patent quality assurance practices. The audit was conducted to (1) determine the sufficiency of the USPTO’s quality assurance program’s processes to prevent the issuance of low-quality patents and (2) assess the additional quality reviews performed to measure examiner performance and ensure that examiners are fully qualified to issue patent determinations without supervisory review. It identified four areas of concern: 1. USPTO’s performance appraisal plan and related policies are ineffective at… Read more