Classified Patents, Nintendo, Amazon: Intellectual Property

A Maryland inventor has asked a court to clarify whether his patent applications are classified.

Frank Joseph Trunk III of Gaithersburg, Maryland, sued in federal court in Washington, saying he filed patent applications in the area of physics and material physics beginning in 1994. The applications were related to engineering design, “both civil and military,” he said in court papers.

Beginning in January 2000, he said, his applications were made subject to a secrecy order on aircraft and ship stealth technology, submarine stealth technology and nuclear-weapon design. Trunk said he had never been issued a security clearance nor had he ever been granted contractor status that would enable him to get a security clearance.

As a result, he claimed, he was placed under the threat of possible criminal violations for possession of classified information without a security clearance. In his complaint, Trunk said his various attempts over the years to get clarification of his patent applications’ status have brought him contradictory responses. As a result, Trunk said, he has had to forgo possible consulting arrangements with NASA and its contractors because he believes he cannot discuss or disclose the information in his applications.

He asked the court to rule on whether his applications are still classified or if they have been declassified, whether property declassification procedures have been followed and if he is authorized to have access to that information.

Trunk also is seeking a list of agencies that consider the information still classified and a statement of the conditions under which the information may be disclosed.

When he filed his complaint Dec. 8, he asked that the entire case be sealed. The court rejected that request, saying Trunk failed to provide support for his motion to seal “as it is unclear whether the government ever classified the patent applications to begin with.” The court ordered the Trunk’s complaint and the entire case be unsealed.

According to the database of the U.S. Patent and Trademark Office, there is one published patent application -- 20050032029 -- with a Frank J. Trunk listed as the inventor. The application covers a method of solving engineering design problems related to stress, strain and deformation of viscolastic materials, those having viscous and elastic properties. It was submitted in July 2001 and not published until February 2005. It lists an address in Houston for the inventor.

Gary Hnath of Chicago’s Mayer Brown LLP, counsel for Trunk, said in an e-mail this application was originally classified and his client is seeking clarification on whether it has been properly unclassified.

The case is Trunk v. Mabus, 1:14-cv-02139, U.S. District Court, District of Columbia(Washington).

http://www.bloomberg.com/news/2014-12-26/classified-patents-nintendo-new-balance-intellectual-property.html

trademark infringement cases can be decided by USPTO

The way that trademark disputes are fought may be in the balance on Dec. 2, 2014, when the U.S. Supreme Court hears oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc. Briefing is now complete on whether an administrative decision by the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office refusing (or canceling) registration of a trademark on the basis of likelihood of confusion (under Section 2(d) of the Lanham Act) should be binding in subsequent trademark infringement litigation directed to use of the same mark.

To find trademark infringement, a district court must find a likelihood of confusion about the source of goods or services. Each court uses a rubric to analyze this, and the TTAB uses a different rubric to assess likelihood of confusion in the Section 2(d) context. But courts in different circuits already use different rubrics to assess likelihood of confusion (some treating it as a question of law, others treating it as a question of fact, and most using their own iteration of factors to be considered), and a final decision from one circuit will nonetheless bar re-litigation of likelihood of confusion in other circuits. B&B says that a TTAB Section 2(d) finding should be treated the same way, and the government supports that position.

Decisions of federal agencies are sometimes given preclusive effect in the district courts. Hargis says that wasn’t Congress’ intent here. Because likelihood of confusion is often the key to a trademark infringement claim, preclusion would render trademark infringement actions pro forma, Hargis argues. Often, but not always. Proving infringement also requires proof that the plaintiff has rights that can be enforced against the defendant, and that isn't always a trivial issue. In B&B itself, Hargis began using its mark before B&B registered its own mark, and if B&B’s mark wasn’t recognized as a mark before Hargis began its use, then Hargis might be permitted to continue its use despite a likelihood of confusion.

TTAB decisions on registrability are reviewable de novo in the district courts, and Hargis says that shows that Congress didn’t intend for TTAB decisions to have preclusive effect. Issues of registrability are the TTAB’s bailiwick, and it would seem incongruous that a TTAB finding on registrability would be reviewed de novo by a district court, while a TTAB finding on likelihood of confusion — the lynchpin of most infringement claims, which are outside the TTAB’s jurisdiction — would be binding on the same court. That compares apples to oranges, however. A TTAB finding on registrability is only subject to de novo review as part of the appeal process. B&B isn’t arguing that a TTAB decision that is still subject to appeal should be binding on the district courts.

Preclusion would deprive accused infringers of their right to a jury trial. But bench trial decisions do sometimes preclude re-litigation even when there was a right to a jury trial. That doesn’t happen when the issue is a question of law, Hargis argues, and, as noted above, some circuits characterize likelihood of confusion as a question of law. Again, however, other circuits treat it as a question of fact, and decisions of administrative agencies on fact issues are sometimes given preclusive effect, or at least deferential, effect.

Preclusion doesn't apply if the issues are different, and Hargis suggests that comparing a finding of likelihood of confusion in the TTAB’s 2(d) context to a finding of likelihood of confusion in an infringement case is like comparing “guilty of robbery” to “guilty of murder.” Comparing “guilty of robbery” to “guilty of murder” is probably more like comparing likelihood of confusion to a different Lanham Act concept: likelihood of dilution.

But focusing on the phrase “likelihood of confusion” alone is too narrow, Hargis says. Infringement requires a likelihood of confusion resulting from a use in commerce, while a Section 2(d) refusal does not require that either mark be actually used. However, the difference in language might be a simple reflection of Congress’ limited power to regulate the use of marks under the commerce clause.

The facts look bad for B&B: Two different juries found in Hargis’ favor, and B&B was admonished below about its litigation tactics. So a quick affirmance shouldn’t be surprising. On the other hand, the Court might decide whether likelihood of confusion is a question of fact or a question of law on its way to resolving the Seventh Amendment issue, and the possibility of a reversal on the merits — with its attendant consequences on how trademark battles are fought — can’t be dismissed.

http://www.insidecounsel.com/2014/12/01/scotus-to-decide-if-lynchpin-of-trademark-infringe

Indian perspective on Geographical Indication Intellectual Property

The Indian law of Geographical Indications is enshrined in the Geographical Indications of Goods (Registration and Protection) Act, 1999. This Act seeks to provide for the registration and protection of Geographical Indications relating to goods in India. The Act is administered by the Controller General of Patents, Designs and Trade Marks, who is the Registrar of Geographical Indications Registry. The rights granted under the Act, are operative in the whole of India.

What is a Geographical Indication?

A Geographical Indication is a sign used on goods that have a specific geographical origin and possess essential qualities that are due to that place of origin. It is an Indication used to identify agricultural, natural or manufactured goods from a definite territory which have a special quality or characteristics or reputation based upon the climatic or production characteristics unique to the location. A geographical indication conveys consumer that a product is produced in a certain place and has certain characteristics that are due to that place of production. For example, no produces of whisky can call it Scotch, unless it has been produced in Scotland.

Examples of geographical indications from India include DARJEELING tea, BASMATI rice, KANCHIPURAM Silk Saree, ALPHONSO Mango and KOHHLAPARI slippers. Other examples of geographical indications include TUSCANY olive oil in Italy, ROQUEFORT cheese in France, and IDAHO potatoes in the United States.

How Geographical Indication differs from Trade Mark ?

A Geographical Indication is different from Trademark. A Geographical Indication is used to identify goods having special characteristics originating from a definite territory whereas trademark identifies the source of the goods or services of one enterprise from those of others. Unlike Trade Marks which is proprietary in nature, with exclusive right on the owner to use the mark, a Geographical Indication is usually collectively owned by a Community, a group of producers or even by a Nation State.

Why does Geographical Indication need protection?

Geographical Indications denotes the origin and the quality of products which have acquired reputation and goodwill over time. False use of geographical indications by dishonest traders, for example "KANCHIPURAM" for sarees, which was not made in the Kanchipuram area of Tamil Nadu in India, is detrimental to purchasers and legitimate producers. Hence geographical indication needs protection.

Classification of Goods

Almost all jurisdictions including India follow International Classification system in which goods have been grouped into classes 1 to 34 for registration.

How rights conferred by registration

The registration of a geographical indication confers on the authorized users the exclusive right to use the geographical indication in relation to the goods in respect of which it is registered. The Registration offers better legal protection for an action for infringement.

Who Can Apply For Geographical Indication

Any association of persons, producers, organization or authority established by or under the law can apply. The applicant must represent the interests of the producers of the concerned goods.

Authorized User in relation to a Geographical Indication ?

A producer of goods can apply for registration as an Authorized User, with respect to a registered Geographical Indication. He should apply in writing in the prescribed form along with prescribed fee.

Procedure for Geographical Indications Applications

An application for registration of geographical indication shall be in prescribed Form (Form GI-1 for the registration of a Geographical Indication in Part A of the Register by an Indian applicant; Form GI-2 for a convention application; an application for goods falling in different classes by an Indian applicant in Form GI-3 and an application for registration of goods falling in different classes from a convention country in Form GI-4).

The application should include the various requirements and criteria for processing a geographical application as follows:

1.                  How the indication serves to designate the goods as a GI?

2.                  The Class of goods;

3.                  The territory;

4.                  The particulars of appearance;

5.                  Particulars of producers;

6.                  An affidavit of how the applicant claim to represent the interest;

7.                  The standard bench mark or other characteristics of the GI;

8.                  The particulars of special characteristics;

9.                  Textual description of the proposed boundary;

10.              The growth attributes in relation to the G.I. pertinent to the application;

11.              Certified copies of the map of the territory

12.              Special human skill involved, if any;

13.              Number of producers; and

14.              Particulars of inspection structures, if any, to regulate the use of GI.

Upon filing of the application accompanied by prescribed fees, a number will be alloted. The application would be examined on turn to check whether it meets the requirements of the GI Act and Rules. After issuance of the Examination Report submission would be considered. If no objections is raised it would be accepted and would be advertised in the Geographical Indications Journal. An opposition can be lodged within a maximum of four month period. If the opposition is dismissed, the application will proceed to registration in Part A of the Register.

After a geographical indication is registered any person claiming to be the producer of the registered geographical indication can file an application for registration as an authorized user in Part B of the Register.

Term of a geographical indications

The term of a geographical indications registration is for a period of ten years. The renewal is possible for further period of 10 years each. If a registered geographical indication is not renewed, it is liable to be removed from the register.

Remedies For Infringement

The Act also provides criminal remedies. First, the intentional falsification of a geographical indications will bear a prison sentence of at least six months. This may be extended to three years and be accompanied by a fine. Second, the police may conduct search and seizure operations without any warrant. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product

Agarwal and Company Law Offices LLP. 

Artful claims can’t decide patent law: court

The law of patent in India could not be developed on the artful drafting of claims by companies rather than on the intrinsic worth of invention, the Supreme Court has ruled, rejecting Novartis’ claim for patent for its cancer drug.
A Bench of Justices Aftab Alam and Ranjana Desai said, “We certainly do not wish the law of patent… to develop on the lines where there may be a vast gap between the coverage and the disclosure under the patent; where the scope of the patent is determined not on the intrinsic worth of the invention but by the artful drafting of its claims by skilful lawyers; and where patents are traded as a commodity not for production and marketing of the patented products but to search for someone who may be sued for infringement of the patent.”
The Bench noted that in the United States, ‘Gleevec’ came to the market in 2001, and what was marketed then, beyond doubt, was Imatinib Mesylate. “On its package, the drug was described as ‘Imatinib Mesylate Tablets 100 mg’ and it was further stated that “each film coated tablet contains: 100 mg Imatinib (as Mesylate).” If that be so, and the [appellant’s] claim for patent for the beta crystalline form of Imatinib Mesylate would only appear as an attempt to obtain patent for Imatinib Mesylate, which would otherwise not be permissible in this country.”
The Bench said, “Since the grant of the Zimmermann patent, the appellant has maintained that Gleevec [Imatinib Mesylate] is part of the Zimmermann patent. It obtained drug approval for Gleevec on that basis.
It claimed extension of the term of the Zimmermann patent for the period of regulatory review for Gleevec, and it successfully stopped NATCO Pharma Ltd. from marketing its drug in the U.K. on the basis of the Zimmermann patent.”
“Not only the appellant but the U.S. Board of Patent Appeals, in its judgment granting patent for the beta crystalline form of Imatinib Mesylate, proceeded on the basis that though the beta crystal form might not have been covered by the Zimmermann patent, the Zimmermann patent had the teaching for the making of Imatinib Mesylate from Imatinib and for its use in a pharmacological compositions for treating tumours or in a method of treating warm-blooded animals suffering from a tumoral disease. We thus find no force in the submission that the development of Imatinib Mesylate from Imatinib is outside the Zimmermann patent and constitutes an invention as understood in the law of patent in India.”
The Bench dismissed the appeal filed by Novartis and allowed the appeals filed by NATCO Pharma and Cancer Patients Aid Association.

Increase in Trademarks Infringement Cases

Under the Trademarks Act, 1999, the Registered Proprietor or the authorized user of a trademark can take recourse to civil or criminal action against the infringer in the appropriate fora. The statistics of trademark infringements is not maintained by the Central Government.

 

The accession (proposed notification of Trademark rules under the Trademark (Amendment) Act, 2010 would enable the Indian companies to register their trademarks in the member-countries of the Protocol through a single applications as well as allow foreign companies to register their trade marks in India, within a specific timeframe i.e. 18 months. At present, there are 86 contracting parties to the Protocol. Under the Trademarks (Amendments) Act, 2010, the Head Office of the Trade Marks Registry (which is at Mumbai) or such branch of the Trade Marks Registry as the Central Government may by notification in the Official Gazette specify, will deal with the international applications.

Barack Obama signs patent reform law

Calling it a jump-start for the economy and a boon for jobs, President Barack Obama signed into law on Friday a bill that overhauls the nation’s patent system for the first time in nearly six decades.

“Right now, there are about 700,000 applications that haven’t even been opened yet. These are jobs and businesses of the future just waiting to be created,” Obama said at Thomas Jefferson High School for Science and Technology in Alexandria, Va., where the signing took place. "Somewhere in that stack of applications could be the next technological breakthrough."

Obama received a rousing applause from the students in the crowd when walking out onto the stage in the school’s gym.

The congressional authors of the bill, Sen. Patrick Leahy (D-Vt.) and Rep. Lamar Smith (R-Texas), along with Reps. Mel Watt (D-N.C.), Jim Moran (D-Va.) and Bob Goodlatte (R-Va.), walked out on stage before the president. Commerce Department Acting Secretary Rebecca Blank, USPTO Director David Kappos, DuPont Chief Executive Ellen Kullman and Eli Lilly CEO John Lechleiter were also on stage.

Signing the patent bill isn’t enough to spur job creation, the president said. He also called on lawmakers to pass the jobs bill he recently presented to Congress.

“I want Congress to pass this jobs bill right away,” he said.

Embattled by high unemployment numbers, the White House is touting the patent reform law as an example of the president’s commitment to job creation. The America Invents Act is designed to help the U.S. Patent and Trademark Office cut through its massive backlog of patent applications, which administration officials argue will enable businesses to get innovations out to the marketplace faster and increase hiring.

When enacted, the bill will shift the U.S. patent system from a first-to-invent to a first-to-file nation. It also sets up a new regime to review patents and gives the USPTO more flexibility to set and spend fees paid for by inventors and businesses to get patents and register trademarks.

On a conference call with reporters Thursday, Kappos said the agency has already begun implementing the provisions outlined in the bill.

The legislation boasted broad support from tech heavyweights — including Microsoft, Apple, Google and Facebook — and medical and manufacturing industries, which cheered the signing of the bill.

“This bill is an important step forward for the nation’s patent system and represents consensus among many key stakeholders and broad support across various industries,” the Coalition for Patent Fairness — which represents Apple, Cisco, Dell and Google — said in a statement. The America Invents Act “will harmonize America’s patent system and allow us to continue to compete in the international marketplace.”

politico.com/news/stories/0911/63697.html#ixzz1Y8T4GsX

Agarwal and Company Law Offices LLP., India

Solicitors & Advocates

www.agarwalandco.com

agarwalandco@gmail.com