news

Supreme Court Holds the Lanham Act’s Bar on Registration of Disparaging Marks Unconstitutional

Michael J. Schwab, Esq. On June 19, 2017 the United States Supreme Court held that Section 2(a) of the Lanham Act (“Section 2(a)”), which prohibits registration of a trademark that may disparage people, “institutions, beliefs or national symbols,” violates the First Amendment and is, therefore, unconstitutional.  The decision was unanimous, but the justices divided over…

Supreme Court Provides Some Clarify to BPCIA Patent Dance

Jeffrey A. Schwab, Esq. On June 12, 2017 in Sandoz v. Amgen the Supreme Court decided two issues concerning the Biologics Price Competition And Innovation Act of 2009 (BPCIA).  It is now clear that the 180 day notice required before the date of first commercial marketing of a biologically equivalent drug can be given prior…

Supreme Court Reverses Federal Circuit on the Issue of Patent Exhaustion – Impression Products, Inc. v. Lexmark International, Inc.

Anthony Coppola, Esq. On May 30,, 2017 the Supreme Court made it clear that “a patentee’s decision to sell a product exhausts all patent rights in the product regardless of any restrictions the patentee purports to impose or the location of the sale”, i.e., in the U.S. or elsewhere.  Impression Products, Inc. v. Lexmark International,…

This Week in Intellectual Property History

Anthony A. Coppola, Esq. On June 7, 1988 the U.S. Patent and Trademark Office issued U.S. Patent No. 4,748,745 entitled, “Chain Saw Brush for Cleaning Saw Cuts” to Richard G. Woodbridge of Princeton, New Jersey. You might think that a chain saw brush seems like a pretty insignificant invention and unworthy of a TWIPH –…

Supreme Court Limits Where Patent Lawsuits May Be Filed

Anthony DiFilippi, Esq. On May 22, 2017 the United States Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC held that a domestic corporation resides only in its state of incorporation for purposes of the patent venue statute, i.e., 28 U.S.C. § 1400(b).  This decision may have a significant negative impact on…

SUPREME COURT – EQUITABLE DEFENSE OF LACHES UNAVAILABLE TO DEFEAT CLAIM OF PATENT INFRINGEMENT

Anthony DiFilippi, Esq. In SCA Hygiene Products AB v. First Quality Baby Products LLC, Case No. 15-927 (Mar. 21, 2017), the United States Supreme Court held that “[l]aches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by [35 U.S.C.] § 286.” The Supreme Court relied on its…

USPTO Enacts Post-Registration Audit Program

Frank Terranella, Esq. The USPTO has instituted a permanent audit program under which it will conduct random audits of at least 10% of all maintenance and renewal filings to assure that the goods and services claimed are actually in use As part of the review of the selected filings, in addition to the one specimen…

February 2nd, 2017 news No Comments Continue Reading »

ABELMAN, FRAYNE AND SCHWAB PRODUCES A MAJOR TRADEMARK WIN — TTAB DISMISSES OPPOSITION TO TEQUILA CERTIFICATION MARK.

Marie Anne Mastrovito, Esq. Following a lengthy Opposition proceeding, the Trademark Trial and Appeal Board (“Board”) found in favor of our client and held that TEQUILA may be registered as a geographic certification mark in the United States. The 75 page decision (including a 12 page appendix) which issued on January 23, 2017, was the…

February 1st, 2017 news No Comments Continue Reading »

DMCA – Reduced Fee for Share Harbor Paperless Agent Designators

Jeffery A. Schwab, Esq. Effective December 1, 2018 a less expensive and more reliable process is available to passive internet service providers that avail themselves of the benefits of safe harbor provisions of DMCA arising out of having an agent designated for take down notices. In an effort to provide more easily accessible current information…

November 28th, 2016 news No Comments Continue Reading »

GUIDANCE FROM THE FEDERAL CIRCUIT ON RAND LICENSE ROYALTIES

Charles Stein, Esq. Devices manufactured by different companies can often work together because they adhere to standards established by industry groups. Where the standards are based upon patented subject matter (“standard essential patents” or “SEPs”), the standard-setting groups typically require that the patentee establish reasonable and non-discriminatory (RAND) terms for licensing its technology. In patent…