Intellectual Property Lawyers

Trademarking the senses: smell marks and other non-traditional marks

By Timothy J. Maier on January 18, 2012 11:30 AM | No Comments | No TrackBacks

When thinking of trademarks, logos, symbols and slogans are typically the first things that come to mind. Such visual marks have been the oldest and most accepted way to represent the sources of goods and services, with the first registered trademark being issued to Bass Ale in 1875. Indeed, the Lanham Act defines a trademark as "any word, name, symbol, or device, or any combination thereof."

Recently, however, companies have found other means to distinguish their products -- and to obtain trademark protection for those means. In some countries, businesses have even attempted to register animations, sounds, smells, and even tastes as trademarks for their products.

In the United States, color was determined to meet the legal requirements for trademark protection, in the 1995 case Qualitex Co. v. Jacobson Products Co., Inc. The Qualitex Company had been using a particular green-gold color on its dry cleaning pads, and registered the color as a trademark in 1991. After Qualitex brought a trademark infringement suit against competitor Jacobson Products, the Supreme Court held that color could be a valid trademark, as the particular color of Qualitex's pads had acquired a secondary meaning over time, sufficient to identify Qualitex as the source of the green-gold pads.

Non-visual stimuli have also been registered as trademarks. In 2009, the Argentine Trademark Office registered its first smell mark -- a fragrance of various fruits, which will be applied to containers. A total of five such marks were issued to L'Oréal. While the Argentine trademark law does not expressly cover scents, it does provide for a broad interpretation of distinctive signs, allowing for the registration of smell marks.

As smell is one of the strongest type of human memory, having potential to evoke distant images and emotions, it may even be that a distinctive scent is one of the most potent and effective ways to distinguish one's products from others on the market. Other smell mark registrations, in various countries, have included the "scent of fresh cut grass" for tennis balls, "a floral fragrance reminiscent of roses as applied to tyres," and plumeria scented sewing thread.

To be continued...

Kodak mulls Bankruptcy, looks to sell Patents

By Timothy J. Maier on January 6, 2012 4:17 PM | No Comments | No TrackBacks

In the past week it has come to light that Eastman Kodak Co. has begun preparations to file for Chapter 11 bankruptcy, a move which would mark a new low point in the storied company's slow decline. Over the past decade, as Kodak watched its core product, film, slowly vanish from the marketplace, it made the strategic decision to target the inkjet printer market, a decision that has failed to pay off.

The one asset that may allow Kodak to avoid bankruptcy is its intellectual property holdings. Kodak has been trying to follow the example of Nortel, a company that also fell behind the technological edge but was able to auction off its patent portfolio for more than $4 billion. Some experts have estimated Kodak's portfolio to be just as valuable as Nortel's, and argue that it represents the struggling company's most valuable asset.

This demonstrates once again the enormous importance of intellectual property to any company. When a business is on the cutting edge technologically, patents can provide a defense against competitor encroachment, and a lack of protection can have disastrous results, such as the nightmare scenario that Google recently avoided. Patents remain just as important, however, when a company such as Kodak falls behind the technological edge, serving as an important store of value and providing a tangible representation of a company's intangible investment in research and development.

Patent Bar Scheduled to Start Testing AIA

By Timothy J. Maier on December 14, 2011 10:14 AM | No Comments | No TrackBacks

On or around January 31, the patent bar will be updated to include some of the new laws implemented in accordance with the American Invents Act. While changes to the patent bar usually result in an increase in test takers, we do not think this update should be cause for concern. Notably, the update will only include additions which regard the rules which: "a) permit prioritized examination of patent applications (Track I) and (b) revise the standard for granting inter partes reexamination requests. Additionally, the registration examination will include questions concerning the November 22, 2011 rules governing practice ex parte appeals before the Board of Patent Appeals and Interferences."

From a practical viewpoint, it is wise to start learning the law which is currently in existence, but from a strictly test-taking viewpoint, these updates are relatively small and simple. Please keep reading for an overview of the updated rules.

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Continue reading Patent Bar Scheduled to Start Testing AIA.

Supreme Court Hears Oral Argument on Mayo v. Prometheus: §101 Issues

By Timothy J. Maier on December 9, 2011 10:43 AM | No Comments | No TrackBacks

Earlier this week, the Supreme Court heard oral arguments in Mayo v. Prometheus, an important case that deals with many of the same §101 issues as were present in Bilski earlier this year.

Briefly, Prometheus concerns patents on a method for determining optimal dosage levels for drugs used to treat autoimmune diseases. In the claimed process, a particular drug is administered to a patient, and the levels of the drug's metabolites present in the patient are then determined. The process also includes steps wherein presence of a metabolite at certain levels indicates a need to increase or decrease the amount of drug administered in the future.

This case first came to the Federal Circuit after it had decided In re Bilski, but before the Supreme Court issued its decision in Bilski v. Kappos. As a result, the Federal Circuit applied the machine-or-transformation test as the definitive test under §101, and found the claims to be patent-eligible. According to the Federal Circuit, the administering and determining steps were transformative and therefore satisfied the second prong of the test, and as a result the claims did not wholly preempt the use of the correlations between metabolite levels and therapeutic efficacy or toxicity.

After Bilski v. Kappos, the Supreme Court vacated this case and remanded it to the Federal Circuit for reconsideration, giving that court one of its first opportunities to attempt to apply and interpret Bilski. On remand, the Federal Circuit characterized the central question as whether Prometheus's claims are drawn to a natural phenomenon, the patenting of which would entirely preempt its use, or whether the claims are only drawn to a particular application of the phenomenon. Mayo, argued, before the Federal Circuit and again this past week before the Supreme Court, that this was the sole controlling standard, and that Bilski stood for the proposition that, while the machine-or-transformation test is a helpful clue, it cannot be outcome-determinative in this analysis. According to Mayo, even if the claims passed the machine-or-transformation test, more analysis, such as a robust preemption analysis, would be necessary to make a subject-matter eligibility determination. Prometheus, on the other hand, argued that the Bilski ruling only meant that patents which did not satisfy the machine-or-transformation test were not necessarily unpatentable, but did not go so far as to say that some patents that do satisfy the test are unpatentable.

The Federal Circuit ultimately agreed with Prometheus. Does this conception of patent-eligible subject matter comport with the result in Bilski? In Bilski, the Court never mentioned the machine-or-transformation test as anything other than a useful tool, and a helpful clue in patent-eligibility analysis. And, as noted by the Federal Circuit, in Benson the Supreme Court stated that "[t]ransformation and reduction of an article to a 'different state or thing' is the clue to the patentability of a process claim that does not include particular machines." So, while the Supreme Court does support the machine-or-transformation test as useful, it has never explicitly ruled that a claim that passes the test is also per se not preemptive. However, by the same token, it has never explicitly found a claim that does pass the test to be unpatentable. So, while this line of reasoning in Prometheus does extend somewhat beyond current Supreme Court precedent, it is at least not inconsistent with that precedent. It will be interesting to see, when the decision in this case finally comes down, whether the Supreme Court is willing to stretch as far as the Federal Circuit.

Petition Thresholds for Post Issuance Matters under the America Invents Act

By Timothy J. Maier on November 30, 2011 1:08 PM | No Comments | No TrackBacks

The new "Inter partes review" proceedings adjudicated before the newly created Patent Trial and Appeal Board, and the new "post-grant review" process will be implemented with the Group 2 Rules of the America Invents Act. While the USPTO is still accepting comments on the Group 2 Rules, one of the major changes in these post issuance matters is the threshold for review of a petition filed under either process.

The "substantial new question of patentability" threshold previously required for inter partes reexaminations will be replaced with a "showing that there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged." Meanwhile to initiate the post grant review process, a petition must show that "it is more likely than not that at least one claim challenged is patentable."

While the USPTO has indicated that the two standards are in fact different, the ultimate interpretation of each remains to be seen. However, interested parties should take note that the new thresholds will represent a higher showing than pre-AIA standards.

USPTO publishes new set of BPAI Final Rules

By Timothy J. Maier on November 25, 2011 3:46 PM | No Comments | No TrackBacks

Due to a mounting backlog of cases to be decided before the Board of Patent Appeals and Interferences, the Patent and Trademark Office has published a new set of rules that are expected to streamline ex parte appeals before the BPAI. The modified rules include several measures intended to simplify and expedite appeals practice, including:

Changes to several aspects of the content of the appeal brief, such as the removal of the requirements to state the status of claims and amendments, the grounds of rejection to be reviewed, and the evidence and related appeals appendices.
The presumption that the appellant is appealing all rejected claims in the application, obviating the necessity for an explicit statement of the claims being appealed.
Removal of the requirement for the Examiner to acknowledge the appeal brief, allowing the Board to have jurisdiction over the appeal upon filing of the brief.
Changes to the factual situations that constitute a new ground of rejection by the Examiner.

The full content of the changes to the BPAI Final Rules may be found in the Federal Register. The rules are to go into effect on January 23, 2012.

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The Microsoft - Barnes & Noble Saga

By Timothy J. Maier on November 15, 2011 11:24 AM | No Comments | No TrackBacks

In March, after failed licensing negotiations with Barnes & Noble, Microsoft filed against the bookseller and manufacturers Foxconn and Inventec in the U.S. District Court for the Western District of Washington and with the International Trade Commission, claiming the Nook e-reader infringed on five Microsoft patents. Specifically, Microsoft alleged infringement in the way the Nook displays retrieved images, shows the status of downloaded material on a small screen, edits electronic documents and renders annotations. The trial is scheduled for February, 2011 in Washington.

This is part of Microsoft's attempt to obtain license agreements from phone and tablet manufacturers that infringe on Microsoft's expansive 60,000+ patent portfolio (See Microsoft Sues Motorola for Patent Infringement, and our Smartphone Patent War series Part 1, Part 2 and Part 3 for more on Microsoft's role in the ongoing Patent War). Microsoft's aggressive stance is making the tech industry nervous, especially in light of Microsoft's recent partnership with Nokia, another patent superpower.

Earlier this month, as a response to Microsoft's allegations, Barnes & Noble asked the Justice Department to conduct an antitrust investigation into Microsoft's business practices. In a letter to the DOJ, Barnes & Noble alleged that Microsoft has been "attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices" and that "Microsoft's conduct poses serious antitrust concerns."

In retort, Microsoft filed a motion with the International Trade Commission on November 9, to compel Google to produce documents or witnesses relating to Google's possible evaluation of Barnes & Noble's allegations, namely whether Microsoft's alleged conduct has had any business effect on Android OS distribution. Microsoft hopes to show that Google remains unharmed by Microsoft's recent litigation.

As the value of exclusive patent rights afforded to inventors and assignees clashes with the need to protect market competition and consumer welfare, Microsoft may find itself once again on the defensive in an antitrust dispute.

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Where Will the Next Satellite Patent Office be Located?

By Timothy J. Maier on November 9, 2011 9:36 AM | No Comments | No TrackBacks

Of course, this whole discussion is moot unless congress actually decides to open satellite offices, and this may take longer than it seems. A satellite office is scheduled in Detroit next summer, but under the America Invents Act (AIA), Congress has the authority to open two additional offices by 2014. Whether it elects to do so is another question. If Congress does decide to open additional satellite offices, Congress is directed by the AIA to open offices in geographically diverse locations while giving consideration to "the availability of scientific and technically knowledgeable personnel in the region." However, it appears that lobbyists, and not the criteria, are guiding the decision.

The main issue here, as it always is, is money. Congressman and various interest groups are all acutely aware of the economic advantages of a local patent office, and thus, the matter has come to the forefront for lobbyists in the nation's capital. A satellite office, directly and indirectly, creates hundreds of jobs and provide the locality with an economic boost. Considering the current economic climate, these advantages would be extremely valuable, not only to the community that receives them, but to the Congressman who is able to obtain them.

Detroit was an easy first choice. In light of the reapidly declining automotive industry and the general economic state of the city, it seemed like Detroit needed a satellite office. However, as soon as the America Invents Act was officially signed into law on September 16, 2011, the lobbying has heated up for the other two possible locations. California, New Mexico, Texas and Colorado are among the states making strong pushes for satellite office. While each state is publicly toting how their state best fits the AIA criteria, it would be naive to think there is not behind the scenes jockeying going on for these extremely valuable offices.

In our humble opinion, California seems to be the odds-on favorite at this point, as it would provide geographic balance , has large groups scientific and technically knowledgeable personnel congregated in hot spots throughout the state, such as Silicon Valley and Palo Alto, and maybe most importantly, has been experiencing some well publicized economic problems. Stay tuned for developments.

USPTO Announces First Allowed Application Under New Prioritized Examination (Track 1) Program

By Timothy J. Maier on November 4, 2011 10:21 AM | No Comments | No TrackBacks

Before a joint meeting of the Pauline Newman IP American Inn of Court and the Giles S. Rich American Inn of Court, Director Dave Kappos announced that the USPTO has allowed an application under the new Track 1 accelerated examination program. The program was implemented September 26, 2011, which means the application was allowed approximately one month from the initial filing.

Track 1 is part of the three track program established under the America Invents Act and provides for accelerated examination if certain requirements are met and payment of a $4,000 fee is received. The objective of the program is to provide a final disposition on qualifying applications within 12 months of being granted prioritized status.

Director Kappos also indicated that the number of applications accepted under Track 1 may be capped at around 10,000 in order to ensure that a final disposition is provided on each within twelve months. Director Kappos estimated that approximately 1,200 applications have been filed under the program thus far.

The Smartphone Patent War, pt. 3: An Uneasy Detente

By Timothy J. Maier on November 2, 2011 9:39 AM | No Comments | No TrackBacks

In light of the ever increasing, expanding and confusing smartphone patent litigation and licensing landscape, we have put together a three part series to apprise you of the current developments. Hopefully part one begins to untangle the mess for you. If you missed Parts 1 and 2, please find links here: Part 1 and Part 2.

- - -

In the last installment, we discussed the basics of patent pooling, a cooperative approach to patent licensing, as well as some of the reasons why such an approach was not able to develop here. What actually has developed is exactly the type of scenario that patent pools are often used to avoid. The smartphone industry is now locked in an uneasy détente, a patent Cold War that could conceivably go hot with massive, industry-crippling lawsuits at any instant. For a time, Google appeared to be falling behind in the arms race, as the apparent "patent gap" loomed between the Android operating system and its competitors at Microsoft, Apple, and Research in Motion. This worry came to a head after a recent auction for a suite of patents owned by now-defunct Nortel, when a consortium including these three companies appeared to have succeeded in blocking Google from what some considered its last real chance of catching up. In one fell swoop, Google's acquisition of Motorola Mobility and its portfolio of more than 17,000 issued patents has gone quite a long way toward closing the gap and bringing the industry to an equilibrium that is relatively stable, if somewhat tense. Essentially, Google has secured the intellectual property equivalent of Mutually Assured Destruction.

Just as in the real Cold War, it is likely that what we see on the surface represents only a fraction of the maneuvering that continues just outside the public eye. One interesting line of conjecture holds that the purchase of Motorola Mobility was Google's long-term objective all along. According to this line of reasoning, Google has been interested in buying Motorola Mobility ever since it was spun off from its parent corporation of Motorola in January of this year. The somewhat unusual collection of technologies comprising Motorola Mobility - including smartphones and internet television, two areas into which Google has recently expanded - lends credence to the idea that Motorola packaged the company intentionally and specifically to appeal to Google. According to this theory, Google shied away from the purchase after government regulators, including the Federal Trade Commission, began to make noise this summer about antitrust investigations into the software giant. Google then proceeded to pursue other portfolios, including the Nortel patent suite, in part to goad its competitors into taking action. When they banded together to defeat Google in that auction, Google took the opportunity to cry foul, and to spin its long-planned acquisition of Motorola Mobility as a purely defensive move designed to protect itself from what it called anticompetitive practices. Whether or not this version of events is accurate, it exemplifies the type of wheels-within-wheels strategic maneuvering that occurs under the type of patent détente in which these companies are engaged.

A number of lessons can be learned by companies who want to avoid Google's apparent missteps. First and foremost, the most obvious lesson is that you should join or start a patent pool or other cooperative arrangement if you can. If the situation permits, patent pools are really excellent tools for creating and increasing efficiency in a technological area. They allow potential competitors to collaborate, and therefore mitigate the waste of resources that is often the result when large technology companies engage in extensive patent litigation. In essence, patent pools allow companies to avoid the courtroom and focus their energy on simply doing business.

Second, if you decide to go it alone, understand the dangers you face. There are many reasons why cooperative strategies such as patent pools don't work out. If that happens, it is important to anticipate the type of standoff that will result if you are successful within a technological space. Google was almost left out in the cold. For a long time, their business strategy lacked an emphasis on intellectual property, and this very likely could have resulted in the death of the Android operating system. Although it appears that the Motorola Mobility purchase has salvaged the situation in relatively dramatic fashion, Google could have saved itself a major headache and a significant amount of money if it had incorporated a robust program of patent acquisition into its overall strategy from the outset.

This blog and the information contained in this blog are provided for general informational purposes only, are not intended to be legal advice, should not be construed as legal advice, and do not provide specific legal advice on any subject matter. No recipients of content from this blog, clients or otherwise, should act or refrain from acting on the basis of any content included in the blog without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from an attorney licensed in the recipient’s state. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state or jurisdiction who is familiar with the specific facts of your situation. If you require legal advice, please consult with a competent attorney licensed to practice in your jurisdiction.

Trademarking the senses: smell marks and other non-traditional marks

Kodak mulls Bankruptcy, looks to sell Patents

Patent Bar Scheduled to Start Testing AIA

Supreme Court Hears Oral Argument on Mayo v. Prometheus: §101 Issues

Petition Thresholds for Post Issuance Matters under the America Invents Act

USPTO publishes new set of BPAI Final Rules

The Microsoft - Barnes & Noble Saga

Where Will the Next Satellite Patent Office be Located?

USPTO Announces First Allowed Application Under New Prioritized Examination (Track 1) Program

The Smartphone Patent War, pt. 3: An Uneasy Detente

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