2012 Annual Convention - Ohio State Bar...

2012 Annual Convention

Your Guide to the America Invents Act: Trademark Enforcement for Small Businesses and Dynamics

for Personal Motivation and Chemical Addiction

Intellectual Property Section

1.5 General, 1.0 Professionalism, and .5 Substance Abuse CLE Hours

May 2-4, 2012 ♦ Cincinnati

CONTRIBUTORS

Dr. Helen M. Farrell Harvard Medical School Staff Psychiatrist at Beth Israel Deaconness Medical Center Boston, Massachusetts

Timothy W. Hagan Dinsmore & Shohl LLP Dayton, Ohio Mr. Hagan received his BS from Cornell University and his JD from Georgetown University Law Center. He is a partner with his firm, where he represents clients in intellectual property matters (including patent application drafting and prosecution), provides opinions concerning patent infringement and validity matters, and provides counsel on licensing and patent enforcement. Mr. Hagan is a frequent lecturer on intellectual property law topics to local, regional, and national bar associations. For additional information, please visit www .dinsmore.com.

Professor Sam S. Han University of Dayton School of Law Dayton, Ohio Dr. Han received his PhD from Worcester Polytechnic Institute and his JD from Georgia State University. He has been a professor at the University of Dayton School of Law since 2008, where he teaches in the areas of patent law and intellectual property law. Dr. Han is of-counsel at Thomas, Kayden, Horstemeyer & Risley LLP, where he works on a variety of patent-related matters. For additional information, please visit www.udayton.edu.

Lynda E. Roesch Dinsmore & Shohl LLP Cincinnati, Ohio Ms. Roesch received her BS from the University of Notre Dame, her MS from the University of Michigan, and her JD from The University of Toledo College of Law. Her professional memberships include the Cincinnati Bar Association, Ohio State Bar Association, American Bar Association, Federal Bar Association, and the International Trademark Association. Ms. Roesch counsels clients on trademark clearance and registrations and prosecutes trademark applications. Her practice focuses on litigation involving intellectual property at the trial court and appellate levels. Ms. Roesch represents clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board and tries trademark and copyright infringement and unfair competition actions all over the country. For additional information, please visit www.dinsmore.com.

Barbara J. Varone Attorney at Law Munroe Falls, Ohio Ms. Varone received her BS from John Carroll University and her JD from Cleveland State University Cleveland-Marshall College of Law. Her areas of practice include patent preparation and prosecution, trademark law, copyright law, chemical arts, and organic chemistry.

Your Guide to the America Invents Act; Trademark Enforcement for Small Businesses;

and Dynamics for Personal Motivation and Chemical Addiction

Session # 607

Chapter 1

Trademark Enforcement for Small Business Lynda E. Roesch Trademarks—Background................................................................................................................. 1.1 Types of Trademarks ......................................................................................................................... 1.1 Trademark Protection ........................................................................................................................ 1.2 Responsibility of Trademark Owner ................................................................................................. 1.2 When Infringement Occurs, What Action Can Trademark Owners Take to Protect

Their Rights and the Value in the Mark ............................................................................. 1.2 How Do You, as an Owner, Decide What Action to Take? .............................................................. 1.2 Cease and Desist Letters Can Be an Important Tool for Trademark Owners if Used Properly .. 1.3 What to Consider When Deciding to Send Cease and Desist Letter .............................................. 1.3 Declaratory Judgment Actions—The Bad News .............................................................................. 1.3 Consider the Type of Use/Context of the Use of the Mark Before Sending the Letter .................. 1.3 Informational Requests Can Be a Good Alternative to Cease and Desist Letters ......................... 1.4 What Outcome Are You Looking for When You Send the Cease and Desist Letter? .................... 1.4 Additional Issues to Consider for the Target of the Letter ............................................................. 1.4 Contents of a Cease and Desist Letter .............................................................................................. 1.5 Responses ............................................................................................................................................ 1.5 Advantages of Cease and Desist Letters .......................................................................................... 1.5 The Impact of the Internet on Cease and Desist Letters ................................................................ 1.5 The Impact of the Internet on Cease and Desist Letters ................................................................ 1.5 www.chillingeffects.org Is a Website Dedicated to Hosting Cease and Desist Letters ................. 1.6 Consider Defenses May Be Raised by the Infringer ........................................................................ 1.6 Attachment ......................................................................................................................................... 1.9

Report to Congress: Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting ............................. 1.11 S. 2968, Trademark Technical and Conforming Amendment Act of

2010—Public Law 111-146 ....................................................................... 1.12 § 4. Study and Report ............................................................................... 1.12

Table of Contents ................................................................................................... 1.13 Letter to Congress .................................................................................................. 1.15 Introduction ............................................................................................................ 1.17 Trademark Enforcement and Marketplace Impact ............................................. 1.18 Federal Government Resources to Protect Intellectual Property and

Prevent Counterfeiting ............................................................................. 1.36 Recommendations .................................................................................................. 1.40 Appendix A: USG Resource Contact Information Sheet ..................................... 1.43 Appendix B: Acronyms........................................................................................... 1.44

Chapter 2

Your Guide to the America Invents Act (AIA) Timothy W. Hagan Introduction ........................................................................................................................................ 2.1 The Biggest Changes Brought About by the AIA and What They Mean to You and

Your Clients ........................................................................................................................... 2.2 Implementation by the USPTO ......................................................................................................... 2.7

Chapter 3

Dynamics for Personal Motivation and Chemical Addiction Dr. Helen M. Farrell and Professor Sam S. Han Dynamics for Personal Motivation and Chemical Addiction ........................................................... 3.1

1 Trademark Enforcement for Small Business Lynda E. Roesch Dinsmore & Shohl LLP Cincinnati, Ohio

Trademark Enforcement for Small Business • 1.1

1.2 • Your Guide to the America Invents Act


Attachment

Your Guide to the America Invents Act (AIA) • 2.1

2 Your Guide to the America Invents Act (AIA) Timothy W. Hagan Dinsmore & Shohl LLP Dayton, Ohio

INTRODUCTION

A. Most comprehensive change to U.S. patent law in 60 years; signed into law on September 16, 2011.

B. Reasons for the new act:

1. To improve the U.S. patent system and bring it into the 21st century.

2. Provides new procedures within the USPTO to strengthen “good” patents so that patent owners can enforce their rights.

3. Provides new procedures within the USPTO to make it easier for competitors to challenge “weak” patents.

4. Will simplify enforcement proceedings in U.S. courts.

5. Brings the U.S. patent system into greater harmony with the rest of the world.

C. Transition to the new act.

1. Some changes were effective immediately last September.

a. Expansion of prior commercial user defense to charges of patent infringement.

b. Prioritized “fast track” patent examination.

c. Penalties for false patent marking essentially eliminated.

d. Best mode defense to patent invalidity eliminated.


2. Some changes effective September 16, 2012.

a. Inter partes review of patent validity.

b. Post grant review of patent validity.

c. Supplemental examination.

d. Third-party citation of prior art in pending applications.

e. Assignee filing of patent applications.

3. Final round of changes effective March 16, 2013.

a. First inventor to file (replaces first to invent).

b. Prior art redefined.

c. Derivation proceedings replace interferences.

THE BIGGEST CHANGES BROUGHT ABOUT BY THE AIA AND WHAT THEY MEAN TO YOU AND YOUR CLIENTS

A. Ending the plague of false marking suits brought by “marking trolls” (eff. 9-16-11).

For many years, there was a false marking provision (35 U.S.C. § 292) in the statute that provided for a fine of $500 for marking an unpatented product with a patent number or marking a product with an expired patent number for “every such offense.” Suit for recovery of the fine could be by any person via a qui tam action or suit brought by the government. After the Court of Appeals for the Federal Circuit interpreted the provision to permit up to a $500 recovery for each falsely marked product rather than for each occurrence (Forest Group v. Bon Ton Tool, 590 F.3d 1295 (Fed. Cir. 2009), hundreds of law such qui tam suits were filed asking for many millions of dollars in fines. The AIA amends § 292 such that: (1) only the United States may bring suit to recover the fine; and (2) only competitors who have “suffered competitive injury” as a result of the false marking may bring suit to recover “damages adequate to compensate for the injury.” The amendment to § 292 took effect immediately, and resulted in the dismissal of essentially all of the pending suits brought by marking trolls.

The AIA (35 U.S.C. § 287(a)) adds a new provision permitting patent owners to virtually mark their products by simply marking the product with the word “patent” (or “pat.”) together with an Internet address that associates specific products with a specific patent number(s).


B. Expansion of the prior commercial use defense (eff. 9-16-11).

The previous statute (35 U.S.C. § 273) provided for this defense only in the case of business method patents. For patents issuing after September 16, 2011, new § 273 provides that the defense is available against all types of patents and classes of patent claims. The prior commercial use must take place between the earlier of one year before the effective filing date of the patent application or public disclosure by the patentee. Assuming that it can meet that temporal standard, the defendant must also show that the invention or process was, in good faith, commercially used in the U.S. in an internal commercial use, in an actual arm's length sale, or other transfer that resulted in a commercial use. The defense must be established by a clear and convincing evidence standard.

Of course, it is important to remember this is simply a defense, not a right. In other words, it is a safe harbor that protects the inventor or company that wishes to use the invention or process in private. It is not, however, a means for invalidating or affirmatively challenging a patent. And, there are several exceptions to the defense including restriction to the site or sites where the use occurred, the subject matter of the use must not have been derived from the patentee, and the use may not have been abandoned.

C. First inventor to file, rather than first to invent; prior art re-defined (eff. 3-16-13).

The United States has had a first-to-invent system in place for over 200 years. And, the United States has basically stood alone in the world over the past several decades as essentially every other major country has adopted a first-to-file system.

The AIA will change all of that effective for patent applications filed on or after March 16, 2013. At that time, new § 102 will re-define what constitutes prior art, simplifying and broadening the types of publically available information that will defeat patentability. Current (“old”) § 102 contains seven separate conditions for patentability. Several involved information that is not publicly available to inventors at the time of patent application filing (prior filing of U.S. patent applications and prior secret invention by another). Indeed, several years and large amounts of money may be expended through commercialization efforts before such information surfaces.

These conditions have largely been eliminated under the AIA in favor of a simplified structure. Under the new Act, two types of information constitute prior art capable of defeating patentability: (1) the claimed invention was patented, described in a printed publication, or was in public use, on sale, or was otherwise available to the public before the effective filing date of the patent application; and (2) the claimed


invention was described in a patent or a published patent application naming a different inventor, such patent or published application having an effective filing date before the filing date of the patent application.

The AIA does provide exceptions. One provides a grace period for an inventor’s own public disclosures. That is, if an inventor makes a public disclosure of his or her invention less than one year prior to the date of patent application, such disclosure is not patent defeating. Additionally, if either of the two types of prior art discussed above by others were made public less than a year before an inventor’s patent application filing, they can be removed as prior art if such information was obtained from the inventor or someone who obtained it from the inventor. Thus, the AIA is not a strict first-to-file system, but rather is a first inventor to file system.

No longer will inventors be able to move back their date of invention to the time an invention was conceived. Now, all prior art events are measured from the filing date of the patent application. The new system incentivizes the early filing of patent applications. From March 16, 2013, the first inventor to file gets the patent.

D. New and enhanced pre- and post-grant review.

1. For pending patent applications.

a. Derivation proceedings (eff. 3-16-13).

Under the old statute and the first to invent system, the PTO conducted interference proceedings whenever two different inventors were claiming the same invention. Such proceedings are complex, involving questions of conception, diligence, and reduction to practice, and can drag on for many years (some for more than a decade).

The new derivation proceeding will simply ask the question, did the first person to file obtain information from the (second to file) inventor and file his/her own patent application without authorization from that inventor?

b. Third-party citation of prior art in pending patent applications (eff. 9-16-12).

U.S. patent applications are published 18 months from first date of filing. Under the AIA, anyone can read and review published patent applications and bring relevant prior art to the attention of the PTO within (1) six months of publication, or (2) before a first action rejection,


whichever comes first. In the past, third party submitters were limited in the window of opportunity to cite prior art (2 months form publication), the number of documents permitted to be submitted (10), and were also prohibited from commenting on the relevance of what was being cited. The new statute places no limits on the number of documents that can be cited and requires a description of the relevance of each cited document. Requesters can remain anonymous, there is no threshold of relevance to be met, and there is no estoppel to the submitter to prevent reliance on the same prior art during a later patent challenge.

2. For issued patents.

a. Supplemental examination (eff. 9-16-12).

A common, and until the Federal Circuit’s recent en banc

opinion in Therasense Inc. v. Becton, Dickinson & Co., 649

F.3d 1276 (Fed. Cir. 2011) (en banc), some would say

pervasive defense raised by accused patent infringers has

been that the patentee engaged in inequitable conduct

during prosecution such that the issued patent is

unenforceable. The new supplemental examination

procedure offers patentees the opportunity to return to

the PTO and have the agency consider the relevance

and/or materiality of allegedly withheld or

misrepresented information.

The AIA explicitly states that a patent shall not be held to

be unenforceable based on information not considered or

inadequately considered during examination if that

information is considered, reconsidered, or corrected

during a supplemental examination.

b. Post grant review (PGR) (eff. 9-16-12).

Similar to opposition proceedings in Europe, the AIA will

now permit administrative challenges in the PTO to a

patent if made within nine months of patent issuance.

Previously, once a U.S. patent issued, the only way an

accused infringer could invalidate it was by a suit in

federal district court. The new proceedings will be

handled by the newly-named Patent Trial and Appeal

Board (formerly Board of Patent Appeals and

Interferences).


Post grant review challenges can be based on almost any

ground for the invalidity of a patent permitted by statute

including, prior art (claims anticipated or obvious), lack of

utility, non-statutory subject matter, lack of written

descriptive support, lack of enablement, and

indefiniteness of claim language. Only failure to describe

a best mode and incorrect inventorship are not permitted.

Because the proceeding takes place at the PTO, patent

claims are given their broadest reasonable interpretation

and the challenger need only establish invalidity by a

preponderance of the evidence. This is in contrast to

district court proceedings in which claim scope is more

limited and the evidence to invalidate must be clear and

convincing. However, the challenger must meet the

threshold requirement of showing that at least one

challenged claim of the patent is more likely than not

invalid, or that a substantial novel question of law is

involved.

There will be a substantial transition period to implement

the new proceedings. Under the AIA, only patent

applications filed after March 16, 2013 (and containing

claims that have effective filing dates on or after that

date) are eligible. Thus, given the 2-3 year time frame for

prosecution, we may not see any patents issuing which

are subject to the new act until 2014-2015.

There is a special provision in the AIA for business

method patents. For an eight year period beginning on

September 16, 2012, anyone accused of infringing a

business method patent (i.e., claim directed to process or

apparatus for performing data processing or relating to

financial product or service) can institute a post grant

review proceeding in the PTO. The nine month window

does not apply.

The PTO must decide within three months whether or not

to proceed with post grant review, and must render a

decision with one year of deciding to proceed. This time

frame, breathtakingly short given the glacial pace of the

application process in the PTO, will place a significant

burden on the PTO to commit sufficient resources to meet

the statutory requirements. It remains to be seen whether

the PTO will be up to the task.


c. Inter partes review (IPR)(eff. 9-16-12).

An inter partes review request can be filed at any time during the life of a patent, after the nine month window for post grant review has closed, or after a post grant review proceeding has been terminated, or within one year after an accused infringer has been sued. IT is expected that inter partes review will eventually replace the current reexamination proceedings at the PTO.

The new inter partes review is applicable to all issued patents, whether before or after the AIA. The procedure is limited to the defense of patent invalidity and to the use of prior patents and publications as prior art. Again, a threshold showing by the requester that evidences that it is more likely than not that at least one claim is invalid is required. Like the new post grant review proceeding, the inter partes review is subject to the same tight time frames—three months to decide whether to proceed, and a decision within a year.

IMPLEMENTATION BY THE USPTO

A. Proposed rule changes have been rapidly issuing from the USPTO; using the new fee setting and cost recovery authority provided to it by the AIA, the USPTO has proposed some eye-popping fees for some of the new proceedings. The PTO has taken the position that the fees still present lower cost alternatives than district court proceedings.

B. Group 1 rules implemented in 2011.

1. Fast track examination of patent applications.

“Prioritized” examination in PTO parlance. For a fee of $4800, a patent applicant can request that his/her application be given priority examination. The PTO’s goal is to provide a final disposition within twelve months, on average, of prioritized status being granted (compared to from 24-36 months for normal processing). A maximum of 10,000 requests will be granted per fiscal year. Prioritized examination is available at the time of filing an original utility or plant application, or in a request for continued examination (RCE) in a plant or utility application.

2. A 15 percent surcharge for most fees.

3. Additional fees for not filing electronically.

4. Change in the threshold for the grant of an ex parte reexamination request from “substantial new question of patentability” to more likely than not at least one claim is invalid.


C. Group 2 rules—to become effective September 16, 2012.

1. Third-party submission of prior art in a patent application.

Third-party submissions may be in the form of patents, published patent applications, or other printed publications. Submissions must be made before the earlier of: (1) mailing of a notice of allowance, or (2) the later of: (a) 6 months from the date of publication of the application, or (b) the mailing of a first rejection of the application. A concise statement of the relevance of each document must be included with the submission, as well as a fee ($180 for each 10 documents or fraction thereof).

The third party is not required to serve the submission on the applicant (thereby not creating a requirement that the applicant duplicate the submission to the PTO), nor will the PTO notify the applicant of the submission. It will be available in the electronic file of the application in PAIR. The listing of submitted documents would also be sent to the applicant with the next office action with an indication of whether they were considered by the examiner.

Third parties are reminded to submit relevant prior art early in the prosecution and not to dump large numbers of documents on the examiner. In such cases, the relevant documents may be obfuscated by the volume submitted. The fee for submitting documents will be $180 for each 10 documents or fraction thereof submitted.

2. New post grant review (PGR) and inter partes review (IPR) proceedings (as well as business method patent review).

PGR and IPR are trials, which are defined as contested cases instituted by the Board. The Proposed Rule provides that in both PGR and IPR, a claim in a patent is given its broadest reasonable construction in light of the specification in which it appears. This standard, which is different that than the standard in a civil action, is consistent with the standard of claim construction presently before the Patent Office.

A petition for PGR and IPR must be filed within nine months from the grant date of the patent or issuance of reissue patent. The proposed rule would provide a one-year time frame for administering the proceeding after institution, with up to a six-month extension for good cause. Both of these provisions are consistent with the AIA statute.


While the AIA permits the PTO to limit the number of PGR and IPR petitions it accepts, the proposed rule commented that it does not expect to limit the number of petitions at this time and further estimated that in fiscal year 2013, it is not expected that any PGR or IPR petitions will be received, other than those filed under the transitional program for covered business method patents.

PGR fees are based on the number of challenged claims. Challenging 1-20 claims is currently set at $35,800 and goes upward to $89,500 for challenging 51 to 60 claims. For IPR, the fees are $27,200 for up to 20 claims and $68,000 for 51-60 claims.

The Petition is limited to 70 pages and must contain: (1) a showing that the petitioner has standing; (2) identification of the precise relief requested; the petition must identify each claim being challenged, the specific grounds on which each claim is challenged, how the claims are to be construed, how the claims as construed are unpatentable, why the claims as construed are unpatentable under the identified grounds, and the exhibit numbers of the evidence relied upon with a citation to the portion of the evidence that is relied upon to support the challenge. The proposed rule further provides that a statement of material facts, setting forth as separately numbered sentences materials facts with specific citations to evidence, must be filed.

The patent owner can file a preliminary response no later than two months from the date of the notice that the request to institute a post-grant review has been granted a filing date and prior to the board making a decision on whether to grant the proceeding. The proposed rule comments that no adverse inference will be drawn where a patent owner elects not to file a response or elects to waive the response. However, the real world effect would be that the petition is unrebutted and the Board may more easily conclude that at least one claim is more likely than not unpatentable and decide to institute the PGR or IPR proceedings.

The Board can authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim; and may deny some or all grounds for unpatentability on some or all of the challenged claims. The Board would identify which of the grounds the review will proceed upon on a claim-by-claim basis. Any claim or issue not included in the authorization for review would not be part of the PGR or IPR.


The patent owner will file a response that addresses any ground for unpatentability due two months from the date the post-grant review is instituted unless another time is provided in the Board Order. A motion to amend the patent may be filed. Any additional motions to amend would require prior Board authorization and require a demonstration of good cause by the patent owner.

The proposed rule provides for limited discovery including routine discovery of exhibits cited in a paper or testimony and provide for cross examination of affidavit testimony within a prescribed time period. Additional discovery may be granted where evidence is directly related to factual assertions advanced by a party to the proceeding and that the standard for additional discovery is good cause.

After an oral hearing, the Board will issue its decision not more than 12 months after the initial PGR or IPR request has been granted.

3. Changes to inventor oath/declaration.

The proposed rule makes some changes to the wording required (no longer need to identify citizenship; no longer need to allege that you are the first inventor). However, disappointingly to corporations who were hoping to be able to have assignee filings without inventor signature, the proposed rule states that the PTO expects that inventor will sign declarations in most instances and that the signed declarations must be in the application file prior to substantive examination of the application.

D. Group 3 rules—to become effective March 13, 2013.

Not yet announced, but will relate to the new prior art definitions in the AIA.

Dynamics for Personal Motivation • 3.1

3 Dynamics for Personal Motivation and Chemical Addiction Dr. Helen M. Farrell Harvard Medical School Staff Psychiatrist at Beth Israel Deaconness Medical Center Boston, Massachusetts Professor Sam S. Han University of Dayton School of Law Dayton, Ohio

Substance abuse can diminish an attorney’s ability to practice effectively, and can cause a variety of professional problems including: missed filing deadlines; failure to properly advise clients; missed court appearances; unauthorized use of client funds; inattention to the work; and poor judgment. In addition to disciplinary action, implications for the offending attorney include: mental sequelae, such as depression, anxiety, failed interpersonal relationships, professional demoralization, and general health problems.

Research has shown that lawyers abuse alcohol and drugs at higher rates than the general population. The psychological, and possibly biological, imprinting of individuals driven to pursue careers in law correspond to the dynamics that predispose individuals to addiction and substance abuse. Compounding to this vulnerability is the actual work environment, where success hinges on risk taking behaviors and high levels of motivation that ultimately produce reward.

Biochemical and psychological mechanisms of reinforcement will be presented to attorneys, with a focus on how the same traits that foster success in their careers correlate to the development of substance abuse problems. The purpose of this presentation is to educate attorneys about the human decision-making process, and how it may contribute to substance abuse.

One unanswered question is whether individuals that are pre-disposed to substance abuse are attracted to the professional legal environment, or whether the professional legal environment increases the susceptibility of individuals to substance abuse. In other words, one question that this presentation explores, but does not answer, is the chicken-and-the-egg question of whether the profession creates addicts, or whether addicts enter the profession.


The presentation will touch on the following topics as they relate to substance abuse and addiction:

The human decision-making process

Traditional theory

The dopamine system

The dopamine system and addiction

Genetic predispositions and environmental factors

The characteristic traits of the legal professional

The environment of the legal profession

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