Hot Topics in IP Rights - Blank Rome- El t i fili i tiElectronic filing incentive - Prohibition on...

Hot Topics in IP RightsPresented by:

Susan B. Flohr, Blank Rome LLPShawn Li, Blank Rome LLPCorinne Pouliquen Blank Rome LLPCorinne Pouliquen, Blank Rome LLPAlfred Zaher, Blank Rome LLP

@BlankRomeLLP #EmergingIssues7

Policing the Internetg

• Beyond traditional infringement or passing offy g p g• Misappropriation of trademarks and commercial image is an

increasing occurrence • LOC isn’t the only problem;

Counterfeits = dilution and tarnishment


Misappropriation of Commercial ImageB tti HP P i t AdBugatti HP Printer Ad


Trademark Infringement and Counterfeitingg g


Might Not be Hot but…g

• Fundamentals key for best and most cost effective resultsy– Nothing too surprising

• Clearing marks –Outside vs. in-house counsel doing searches–Registering your marks

REGISTER EVERY ASPECT THAT YOU CAN•REGISTER EVERY ASPECT THAT YOU CAN•Word•Configuration•Configuration

•Watch services


VEYRON


Cost Effective Approaches to Avoid Litigationpp g

• Take down letters under the DMCA• Termination of infringement letters under web host “Terms of

Use” agreements• UDRPs • Negotiationsg


Various challenges presented in removing i f i i t tinfringing content

Li f 3d t di it l M lti l b it d h tLicensors of 3d party digital works

Multiple website and hosts

Leapfrogging


• Litigation may not always be the best way to solve the problemg y y y p– Patient negotiation– Staying below the fold

• Bugatti Boyz


www.walmart-blows.com


驰名商标驰名商标Trademark Litigation in ChinaTrademark Litigation in China


Well-known Trademark litigation in Chinag

• Chinese registered trademark typically only covers goods and g yp y y gservices in the same and related classes

• Well-known trademark recognition extends trademark protection beyond same or related goods and services


Must be established in an adverse proceedingp g

• Trademark opposition, cancellation, or enforcement action in ppfront of the Chinese Trademark Office (CTMO) or Trademark Review and Arbitration Board (TRAB)

• Trademark infringement litigation in front of a competent Intermediate People’s Court


Legal Considerations - Article 13 PRC Lawg

• the degree of knowledge of the relevant section of the publicg g p• the duration of use• the duration of time, degree and geographical area of any , g g g p y

publicity of the mark• any record of the mark being protected as a well-known marky g p• other factors which makes the mark well-known


Is your company’s trademark well-known? In China?In China?

• Evidences to support well-known trademark in Chinapp– Extend of the knowledge of the trademark in the relevant public in

ChinaC– Long established usage to the mark in China

– List of Chinese registrations, and history and extend of registrations; Advertising activities in the Chinese territory for the last 3 5 years – Advertising activities in the Chinese territory for the last 3-5 years

– History of protection as well-know mark, which may include well-know mark recognition in China or elsewhere in the worldg

– Output, volume of sales, sales income, profits, tax, and regions of sales of the principal goods using said mark over the last 3-5 yearsI t t i Chi d th ld i l di li t f ti d i


– Internet use in China and the world, including list of active domains

Costs and Time

• Costs– CTMO TRAB ~ ¥1,000,000 ($158,730)

• Local government subsidies– Court ~ ¥100,000 -150,000 ($15,873 - $23,810)

Ti• Time– CTMO TRAB 2~3 years

C t 6 12 th ( b l f i t ti l liti t )– Court 6 – 12 months (may be longer for international litigants)


Abuse of Statutes and Legal Processg

• Sham litigationsg– “Friendly” infringer

• Corruption– Judges– Attorneys


IP in India


IP in India

• Patents– Laws “strengthened” in 2005 as condition of joining the WTO (1995)

• Chemical / pharmaceutical / food product patents now permitted• Difficulties in obtaining them

–Gleevec case now before at Supreme CourtN ti ’ fi t §3(d) f P t t A t i t i li –Novartis’ first case: §3(d) of Patent Act is not in compliance with TRIPS (higher standard for patentability)

–Novartis’ second case: Rejected patent application to crystal Novartis second case: Rejected patent application to crystal form of Gleevec


IP in India

• Trademark– Trans-border reputation is recognized, even where

• TM owner has no presence in India• Dissimilar goods (dilution)

–Provided knowledge of the mark has been acquired in IndiaD i / I t t (TM f d)– Domain names / Internet (TM are enforced)Satyam Infoway Ltd. v. Sifynet Solutions Pvt., 6 SCC 145 (2004)Yahoo Inc. v. Akash Arora, 1999 PTC (19) 201


IP in India

• Civil Enforcement– Injunctions (ex parte, interim and permanent)

Gujarat Bottling Co. v. Coca Cola, 21 IPLR 201 (1995)

• Standard for interim injunctionj– Prima facie case of infringement– Balance of hardships

Irreparable harm– Irreparable harm– Anton Pillar Orders

Anton Pillar v. Manufacturing Process, RPC 719 (1976)

• After hearing in camera Court can authorize plaintiff to inspect premises of • After hearing in camera, Court can authorize plaintiff to inspect premises of defendant and take inventory of the offending material

• Requires strong prima facie case, serious potential or actual damages, and clear evidence that defendants have possession of incriminating documents or


clear evidence that defendants have possession of incriminating documents or materials which they may destroy

IP in India

• Enforcement (cont’d)( )– Civil

• Raids / seizures• Damages (losses suffered, or profits made by defendant)

Microsoft Corp. v. Yogesh Papat & anr. 2005 (1) CTMR 424

– Criminal• Includes TM falsification and copyright infringement• Prison (6 months – 3 years)

– Administrative (import and export of goods)


IP in India

• Enforcement issues– Judicial and administrative delays– Lack of ‘damages culture’ – no deterrence for infringing conduct– Lack of border enforcement measures– Police – political interference, corruption, lack of technical expertise,

lack of follow up delays in case preparation and commencement of lack of follow up, delays in case preparation and commencement of prosecution


Highlights of the the

America Invents Act (AIA)


Highlights of the America Invents Act (AIA)Highlights of the America Invents Act (AIA)

• “America Invents Act” (Patent Reform Act of 2011) enacted on September 16, 2011• The most significant change in patent law in nearly 60 years• Many provisions take effect a year or more after enactment, e.g., supplemental examination, inter partes review, proceedings, post-grant review proceedings (Sept. 16, 2012) and a change to a first inventor to file system, derivation g y ,proceedings (March 16, 2013).


• However, a number of changes took effect on Sept. 16, 2011 g por soon thereafter:

- Establishment of micro entity- 15% transition fee increase- Prioritized examination

El t i fili i ti- Electronic filing incentive- Prohibition on patenting human organisms- Elimination of tax strategy/preparation patents- Elimination of tax strategy/preparation patents- Inter partes reexamination standard transition- Review of ex parte reexaminations limited to Federal Circuit


p

- Failure to disclose best mode no longer a defense to infringement- Prior commercial use defense available for newly issued patents- Venue change from DDC to EDVA for suits brought under 35 USC §

§ 32, 145, 146, 154(b)(4)(a) and 293- Joinder of unrelated accused infringers limitedJoinder of unrelated accused infringers limited- Virtual and false marking change


Three Main Goals

• International Harmonization

• Improvement in the quality of patentsp q y p

• Litigation reformLitigation reform


International Harmonization

• First to File replaces First to Invent p– 35 USC §102 (a) a person shall be entitled to a patent unless the

invention was patented or described in a printed publication, or in public use on sale or otherwise available to the public before the public use, on sale, or otherwise available to the public, before the effective filing date of the claimed invention

– 35 USC §102 (b) exceptions: disclosures made 1 year or less before § ( ) p ythe effective filing date are not prior art if: made by the inventor(s) or another who obtained the subject matter directly or indirectly from the inventor (grace period)inventor (grace period).


Improving Patent Qualityp g Q y

• Post-grant reviewg– Proceeding before the PTAB to review validity– Based on any available patentability ground– Claims can be cancelled or added to substitute challenged claims– Cannot broaden claim scope or add new matter

I iti t d ithi 9 th f t t/ i i b t ’t b – Initiated within 9 months of patent/reissue issuance, but can’t be initiated or maintained if civil action alleging invalidity has been broughtg

– Review completed within 1 year



• Post-grant review (cont’d)g ( )– After final written decision, can’t bring/maintain another proceeding in

the PTO based on issue raised or that reasonably could have been raised (estoppel)raised (estoppel)

– A final written decision also prevents raising an issue in later District Court or ITC action on an issue that was raised or reasonably could yhave been raised (estoppel)

– Settlement available upon joint agreement of parties



• Inter partes review p– Proceeding before the PTAB to review patent validity– Basis limited to patents or printed publications– Claims can be cancelled or added to substitute challenged claims– Cannot broaden claim scope or add new matter

D i th lif f th t t ft th l t f 9 th f t t – During the life of the patent after the later of 9 months of patent issuance or termination of post-grant review, but can’t be initiated or maintained if civil action alleging invalidity has been broughtg g y g

– Review completed within 1 year



• Inter partes review (cont’d)p ( )– Estoppel standard is “raised or reasonably could have raised” issue– Applies to proceeding before the PTO, District Court and ITC

proceedings– Settlement available upon joint agreement of parties



• Supplemental examinationpp– Patentee can request PTO to consider/reconsider/correct issued

patentf f O– If substantial new question of patentability is raised, the PTO will order reexamination

– Cannot be used to fix issues previously pled in civil actionCannot be used to fix issues previously pled in civil action– Can be used to shield patent from unenforceability challenge in

litigation– Cannot be used to cure fraud on the PTO


Litigation reformg

• Derivation proceedings replace interference practicep g p p• Prior commercial use is a defense to infringement• Elimination of best mode defense• Reduces false marking actions• Allows virtual markingAllows virtual marking• Reduces impact of not seeking advice of counsel on willful

infringementg• Eliminates joinder of unrelated defendants (anti-troll)


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