Intellectual Property Legal Update

IP Breakfast Briefing Series

Please join us for our next
Intellectual Property Breakfast Briefing
and Roundtable Discussion


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New Penalties for False Patent Marking

By:  Paul S. Weidlich

With the recent rash of lawsuits claiming damages for false patent marking, including many that have been filed by so-called patent trolls, it is now more imperative than ever to establish and follow a disciplined procedure for patent marking.  We recommend that any company that owns patents should have an established policy for accurately marking its patented products (example:U.S. Patent No. #,###,###). 

The recent Federal Circuit decision in Forest Group v. Bon Tool Company is one of the reasons for the current onslaught of lawsuits.  In this case, Forest Group sued Bon Tool for patent infringement, and Bon Tool counterclaimed alleging false patent marking.  According to Bon Tool, Forest Group's product displayed a patent number that actually did not cover its product. 

The district court held that Forest Group had knowledge of the improperly marked product, so the "offense" committed by Forest Group was the ordering of additional falsely marked products.  The district court imposed the maximum statutory penalty of $500 for what it determined was a single offense.

However, the Federal Circuit reversed this ruling and held that the statutory penalty should have been imposed on each falsely marked product.

The implications of the Forest decision highlight the importance of accurate patent marking.  Procedures must be developed and followed to ensure that products are marked with only the patent or patents that cover them.  Likewise, when a patent expires, the expired patent number should be removed from all products.   

In March, Rep. Darrell Issa (R-Ca.) proposed legislation to amend the remedies available for false patent marking.  We will continue to keep you advised of any significant developments.

If you have any questions about developing your company's patent marking policies and procedures, please do hesitate to contact a member of our Intellectual Property Practice Group.

Bona Fide Intent to Use a Mark: How Much “Intent” is Required?

By:  Alicia Brown Oliver

One avenue for pursuing federal trademark registration is filing an application based on the owner’s bona fide intent to use the mark in interstate commerce in connection with specified goods or services.  Filing this type of application can be advantageous because of the priority rights conferred before actual use of the mark in commerce.  However, there have recently been some legal challenges in this area before the Trademark Trial and Appeal Board.  Although each case has its own factual twists, if you are considering a bona fide intent to use application, we recommend you document your plans to use the mark.  This can take many different forms – a business plan, designs, mock ups, meeting minutes, or other documents showing that you are taking steps to produce the good or service.  If you have questions about filing a trademark application, please do not hesitate to contact us.

Going Green With Your Trademark

By:  Alicia Brown Oliver

Many businesses are producing environmentally-friendly products and services and applying the term “green” to tags, labels and advertising.  Some are including the term in the marks used in connection with these products or services.  While many trademarks for environmentally-friendly products and services can and do contain the word “green”, the term is not a source identifier and therefore cannot be used to distinguish your goods and services from a competitor.  The Trademark Trial and Appeal Board recently found that “green” is nothing more than an adjective meaning “environmentally sound or beneficial”.  For example, holding the mark GREEN CEMENT was merely descriptive of cement and related products with minimal environmental impact.  So remember, when picking a mark for your new “green” product or service, include the term “green” but also use other arbitrary, fanciful or suggestive terms with it to create a strong, valuable mark.

Proposal to Change Provisional Patent Application Process: Bright Idea?

By:  David J. Hill

Since 1995, those seeking a U.S. patent have been able to file what is known as a provisional patent application – essentially a placeholder that allows the inventor to claim an early filing date and “patent pending” status while testing the invention in the marketplace.  Provisional patent applications have much smaller filing fees than their non-provisional counterparts, and do not require a particular form or format or any claims defining the invention.  Provisional patent applications are not examined by the U.S. Patent and Trademark Office (PTO) and, unless converted to non-provisional status within 12 months, will never result in the issue of a patent.

Although an applicant can convert the provisional application to non-provisional status (or file a non-provisional patent application claiming the benefit of the provisional filing date) within 12 months from the provisional filing date, the provisional application must fully and accurately describe the invention claimed in the non-provisional application in order to accrue the maximum benefit.  Recently, the PTO has requested comments on a proposed rule change that it claims would effectively extend the provisional application period by 12 months.  However, this new rule is less than it appears to be.

The proposed change does not lengthen the 12-month deadline for converting a provisional to a non-provisional application.  Instead it extends the period for complying with a Notice of Missing Parts to twelve months, in order to extend the deadline for paying all fees related to the non-provisional application.  (If those fees are not paid, the application will be abandoned.)  The PTO has proposed the extension to give applicants more time to test their invention in order to decide if the patent is worth pursuing and the fees worth paying.  However, since the non-provisional application must still be completed and filed with the first 12 months, it seems likely that the bulk of effort and money will already have been spent.  The primary beneficiary of this proposed rule change might be the PTO itself, since it does not examine applications until all fees are paid.

If you have any questions about the proposed rule change or patent applications in general, please contact a member of our Intellectual Property Practice Group.

Claiming Copyright Infringement for Unregistered Works?

By:  John G. Jackson

With certain exceptions, a copyright holder must register her work with the U.S. Copyright Office before suing for infringement.  On March 2, 2010, the United States Supreme Court held that, in spite of this rule, it’s possible for a federal district court to hear a copyright infringement claim involving unregistered works.  The court characterized the registration prerequisite as a "claim processing" rule and not a jurisdictional requirement.  The case, Reed Elsevier, Inc. v. Muchnick, involved the settlement of a class action lawsuit by authors of both registered and unregistered works.  A small group of freelance authors objected to the settlement and appealed.  The Court of Appeals questioned whether the federal district court even had jurisdiction to hear the class action case, since some of the works at issue were unregistered.  Analyzing prior precedent, the U.S. Supreme Court concluded that the Copyright Act's registration requirement "is not jurisdictional."  The Court declined, however, to address whether the Copyright Act's registration requirement "is a mandatory precondition to suit” that would allow district courts to dismiss outright claims involving unregistered works.  So, although federal district courts do have jurisdiction to hear copyright infringement claims involving unregistered work, it remains unclear whether the registration requirement is a “mandatory” prerequisite to filing a suit alleging infringement.  Because of this uncertainty, it is still advisable for authors and creators of original work to seek registration sooner rather than later.