Patent reform, USPTO, Adidas, Marc Jacobs, .sucks, Federal Circuit – the week in IP
Patent reform being held back by a fight over human trafficking, a report saying the USPTO cannot distinguish between good and bad examiners, Adidas suing Marc Jacobs for trade mark infringement, criticism of the .sucks gTLD, and the Federal Circuit ordering an en banc rehearing of Lexmark v Impression were in the IP headlines this week
Patent reform to be derailed by human trafficking?
Tensions in the Senate Judiciary Committee over a human trafficking bill are holding back progress on patent reform, reports Politico.
A trafficking measure introduced by Senator John Cornyn has been criticised by Senator Patrick Leahy (right), who said Republicans are playing “political games” by inserting an abortion provision into the bill.
Politico quoted sources reporting delays in progress on patent reform as a result of the skirmish. However, it also quoted Cornyn denying the human trafficking bill is causing a holdup in the patent reform. “We’re big boys and girls and can decide each on its merits,” Cornyn said. He had previously said a patent reform deal could be come up with by “sometime late in April”.
Leahy also denied the abortion dispute had stopped patent negotiations. “We are close and I would rather take a few days longer and get it right and get everybody together on it than try to rush something through simply to have something,” he said.
uspto.jpg Does the USPTO know what it is doing?
A report released on Monday by the inspector general for the Commerce Department concluded that the USPTO has almost no way of knowing if patent examiners are doing their jobs well, reports The Washington Post.
The Commerce Department report identified deficiencies with quality assurance, which “make it difficult to distinguish between patent examiners who are issuing high-quality patents and those who are not”.
Between fiscal years 2011 and 2013, more than 95% of examiners received outstanding or commendable ratings for “quality” in their annual evaluations. And between 2009 and 2013, 99% of examiners received ratings that made them eligible for almost $145 million in bonuses a year, or an average of $6,000 per examiner.
adidas20logo.jpg Three stripes you’re out
Adidas has sued Marc Jacobs in the District Court of Oregon, claiming a jacket with four parallel stripes on its sleeves infringes Adidas’ three-stripes mark.
The court will decide whether no other designer can feature three parallel stripes or four parallel stripes on a garment. Adidas alleges trade mark infringement, trade mark dilution and unfair and deceptive trade practices. It wants the court to stop Marc Jacobs from making the garment, to stop using the mark and order the destruction of goods using the mark, as well as award damages.
“It remains to be seen if the court will be convinced that four stripes on a garment infringes the Three Stripes Mark,” noted the Marie-Andree Weiss blog. “However, if Plaintiffs are unsuccessful in their trademark infringement claim, they may still be successful in their dilution claim.”
Do the prices for .sucks suck?
Icann has asked the US and Canadian trade authorities to investigate Vox Populi, which has the rights to sell the .sucks gTLD. The BBC reports that Icann is concerned about the prices being set for .sucks addresses.
The BBC quotes a source saying that a $2,000 sunrise premium is being charged to those wishing to register .sucks addresses early and that Vox Populi is using a list of words and names that have defensively been registered for similar domain addresses and for which they are charging the top amount.
"They were considering a fee of $25,000 at one point when we spoke to them,” Kevin Murphy from Domain Incite told the BBC. "I think they are charging as much as they can get away with."
The Intellectual Property Constituency, which advises Icann on policy issues, in a letter to Icann demanded a "halt" to Vox Populi's "illicit", "predatory" and "coercive" selling scheme.
John Berard, CEO of Vox Populi Registry, responded to a blog post on DLA Piper’s Re: Marks On Copyright and Trademark blog by saying his company’s mission is not just to sell names but to “create a new destination” where “criticism can be heard and engaged”.
He said in comments published in a blog post by DLA Piper: “Right now, companies don't always get the chance to correct the record. Heck, a lot of what shows up in search results can't even be run to ground.
“From the beginning I have said there is no need (it is certainly not mandatory) for a company to register its dotSucks domain. Just be willing to engage. In 2015 with 20 years’ experience of the Internet as a business platform, I would not have thought this to be so radical an idea.”
federal20circuit20court200.jpg Federal Circuit takes on Lexmark en banc
The Federal Circuit has ordered an en banc briefing on the issue of international patent exhaustion in Lexmark v Impression Prod, as noted on the Patently-O blog.
The order presents two questions:
(a) Should this court overrule Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001)? (b) The case involves (i) sales of patented articles to end users under a restriction that they use the articles once and then return them and (ii) sales of the same patented articles to resellers under a restriction that resales take place under the single-use-and-return restriction. Do any of those sales give rise to patent exhaustion? In light of Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), should this court overrule Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), to the extent it ruled that a sale of a patented article, when the sale is made under a restriction that is otherwise lawful and within the scope of the patent grant, does not give rise to patent exhaustion?
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In our news and analysis this week: