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5-a-day: USPTO lessons, six strikes and new gTLD progress

James Nurton

In today’s summary of IP developments: why litigators are struggling with new USPTO procedures; a new system to combat file sharing in the US; the fight over a beach club name in south-east Asia; the birth of a blog; and Icann confirms trade mark measures for new gTLDs

Trial lawyers trip up at USPTO

Post-grant chart In a piece on emerging trends in the USPTO’s post grant system this week, sources tell Managing IP that litigators who are being granted admission to try inter partes review (IPR) and covered business method (CBM) patent proceedings are getting “tripped up” by the speedy timelines. “Trial lawyers are in denial,” says Robert Greene Sterne of Sterne Kessler Goldstein & Fox, who is a USPTO-qualified attorney. “They don’t think these are going to be a big deal.” One common pitfall is the deposition process. “Deposition is the testimony in these proceedings,” says Sterne. “You don’t get to do it again. That trips up the litigators. There’s a lot of room for mistakes there.” Scott McKeown of Oblon Spivak McClelland Maier & Neustadt adds that timings have been even speedier than expected. While the statutory time for trial institutions is 90 days after the patent owner files its response, so far most have been within a month. This is tough for litigators too - but it’s also tripping up trolls. “Trolls relied on the old reexam system to take forever,” says McKeown. “They’re learning quickly.”

Six strikes and out

The Daily Dot reports that a new system that aims to reduce illegal file sharing will go into effect next week in the US. The Copyright Alert System (CAS) is an agreement between five major ISPs - AT&T, Cablevision, Comcast, Time Warner and Verizon. The programme, dubbed the “Six Strikes” system, has been criticised by some for its lack of due process. It sends automated responses, increasing in severity, when it thinks a user has pirated files. The first two times, the user receives an email and voicemail, the third and fourth times, they are directed to information about infringement, and the fifth and sixth times, their internet connection is slowed dramatically.

Ku De Ta Beach club battle

The Jakarta Globe has a piece from lawyers Prudence Jahja and Andrew Diamond about a trade mark dispute that spans the ASEAN region. A partnership opened the Ku De Ta beach club in Bali, complete with the properly registered trade marks in Indonesia. A few years later, a former member of that partnership registered the trade marks in Singapore and opened a similarly high-end establishment at the Marina Bay Sands. A Singapore court will soon have to decide whether to cancel the Singapore trade marks based on the partnership’s claims that they are the rightful owners of the mark, despite the lack of registrations outside Indonesia.

3D blogging

3D printer Following our coverage last week of IP issues raised by 3D printing, it’s a pleasure to welcome a new blog dedicated to the issue. Law In The Making is led by Haran Aruliah, a programmer and criminal defence lawyer and Paul Banwatt, an associate in the IP group at Gilbert’s LLP and sometime musician, both of them based in Toronto. It covers “legal issues that are both threatening and created by the emerging 3D printing revolution”. The authors have already posted on topics including Game of Thrones, drug manufacture and the 3D Systems v Formlabs case.

The countdown to new gTLDs

Brand owners still hoping the launch of new gTLDs will be postponed further should look away now. As the Washington Post reports, the first new web address suffixes (likely to be in non-Roman scripts) are due to launch in the middle of the year, with hundreds available by 2014. The good news for brand owners is that Icann has confirmed the Trademark Clearinghouse, to be run by Deloitte and IBM, will open on March 26, and that the National Arbitration Forum has been appointed as the first Uniform Rapid Suspension System provider. The new gTLDs clearly pose many challenges for trade mark owners, and we plan a series of articles in the next few months on how you should be preparing. Let us know if there are particular issues you would like to see addressed.


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