As most of you are aware, Congress passed the Leahy-Smith America Invents Act.  Today, President Obama signs this legislation into law during a visit to the Thomas Jefferson High School for Science and Technology in Virginia. The enrolled version can be found at 2011 CONG US HR 1249. This Act significantly reforms US Patent Law.  Plenty has been written but PLI has a great overview of these changes.  See 1058 PLI/Pat 503.  We will, from time to time cover the research angle.  Or, feel free to submit patent reform research questions to west.referenceattorneys@thomson.com.

One of the primary changes relates to the priority system, changing the US Patent system from “First-to-Invent” priority system to a “First-to-File” system.  Of course, this isn’t the first time Congress considered aligning our priority rules with the rest of the world.  Simple queries got in the FED-LH database got us as far back as 1971.  Here are the comments of H. Dale Grubb, NASA’s Assitant Administrator for Legislative Affairs:

…In commenting on this original bill, we indicated that we believe the major features to be abolishment of the one-year grace period ; issuance of a patent to the first to file an application, together with the complete elimination of interference practice ; institution of a preliminary application procedure; mandatory publication of applications during pendency ; provision for art more broadly so as to encompass use and sale outside the United States and all disclosure of knowledge in tangible form ; streamlining the judicial process for patent infringement litigation; the making of computer programs unpatentable; and the provision for optional deferred examination of applications in the Patent Office. Now, some four years later, it appears that each of these major features has been completely discarded or significantly modified.

Hearings before the Subcommittee on Patents, Trademarks, and Copyrights, May 13, 1971.  (Our search was “first to file” /10 patent in the FED-LH database).

Also, to review the progress of first-to-file over the past 5 years, try thse searches in the Congressional Bills and Legislative History databases.

patent /5 reform! & first /3 file invent (LH) 13 documents

patent /5 reform! & first /3 file invent (CONG-BILLTXT-ALL) 23 documents

In a recent June 6, 2011 decision, the United States Supreme Court construed the Bayh-Dole Act in resolving issues related to ownership of intellectual property rights and held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions. Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 2011 WL 2175210.  In describing the Bayh-Dole Act, the Court stated, “In 1980, Congress passed the Bayh–Dole Act to ‘promote the utilization of inventions arising from federally supported research,’ ‘promote collaboration between commercial concerns and nonprofit organizations,’ and ‘ensure that the Government obtains sufficient rights in federally supported inventions.” 35 U.S.C. § 200. To achieve these aims, the Act allocates rights in federally funded “subject invention[s]” between the Federal Government and federal contractors (“any person, small business firm, or nonprofit organization that is a party to a funding agreement”). §§ 201(e), (c), 202(a). The Act defines “subject invention” as “any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.” § 201(e).”  You can see the text of the Bayh-Dole Act at PL 96-517.

The Bayh-Dole Act holds a particular significance for universities and is also known as the Bayh-Dole University and Small Business Patent Procedures Act. Technology commercialization has become a very important issue for universities, not only from the perspective of  bringing inventions to benefit the public but also as an additional stream of revenue. The database ECKLICN, Eckstrom’s Licensing in Foreign and Domestic Operations, provides great guidance for university licensing issues. Try the following search in this database: PR,TI(LICENSING /5 UNIVERSITY).

For general information on the Bayh-Dole Act a search in the texts and periodicals database TP-ALL is a good place to start. PR,CA,TI(BAYH-DOLE)

Anyone who has seen the latest in legal television drama – Fairly Legal –  knows what I am talking about when I say “red soled shoes.” In one of the most popular and well recognized clips of the show, Sarah Shahi, the star of the show, is shown walking provocatively away from the audience wearing a pair of high heeled red-soled shoes.

You might be wondering what a conversation of women’s red-soled shoes is doing in the Reference Attorney Blog? Trademark issues. Christian Louboutin S.A. (“CLSA”), the plaintiff and a French Company, has sued Yves Saint Laurent, another French Company in the Southern District of New York over red-soled shoes for, among other things, Trademark infringement. As per the complaint, this is an action for injunctive relief and damages for trademark infringement, unfair competition and false designation of origin, and trademark dilution. The plaintiff alleges that Mr. Louboutin is the first designer to develop the idea of having red soles on women’s shoes. Further the complaint states that the “Red Sole Mark” is the signature of CHRISTIAN LOUBOUTIN brand footwear and is instantly recognizable as a result of plaintiffs’ trademark red outsole. “The location of the bright color on the outsole of a women’s pump is said to provide an alluring ‘flash of red’ when a woman walks down the street, or on the red carpet of a special event.” Westlaw has the complaint and can be found at: 2011 WL 1327659. The complaint also lists numerous other famous celebrities and shows that have worn the Red Sole Mark shoes. You can track the progress of this case by tracking this docket on Westlaw.

Westlaw has a wealth of Trademark information online. You can also add a Trademark tab to access all Trademark related content in one place. Check out some of the following databases:

ALL-TM TRADEMARKSCAN-All has trademarks, service marks and pending applications registered in the U.S., Canada and some European states.

CCGTMLAW  Corporate Counsels Guide to Trademark Law and covers the basics of trademark law to help manage day-to-day legal issues

MCCARTHY McCarthy on Trademarks and Unfair Competition

FIPTM-CS Federal Intellectual Property Trademark Cases

TM-DOCK-SUM  Trademark Docket Summaries contains abstracts of docket and trademark information from trademark-related lawsuits filed in federal district courts.

Controversial “appropriation” artist Richard Prince suffered a loss in federal court (S.D.N.Y.) in March. The court rejected his “fair use” argument for reproducing, in virtually whole part, 28 images from photographer Patrick Cariou’s Rastafarian series “Yes, Rasta” for his own “Canal Zone” paintings. Finding no “transformative comment” on the original works, the court found the paintings infringed Cariou’s copyrights, and granted him summary judgment . (Cariou v. Prince, 2011 WL 1044915). Prince has appealed to the Second Circuit Court of Appeals. The appellate docket is available on Westlaw and WestlawNext. Just enter docket number “11-1197” in the search template for the Westlaw database DOCK-CTA2 or the Second Circuit Court of Appeals Dockets content page on WestlawNext.

Other “Appropriation” Research References

Fair Use KeyNumber: To produce a list of other “fair use” cases on Westlaw and WestlawNext, search West Key Number 99k53.2.

Patry on Copyright: See PATRYCOPY § 10:100, Specific Types of Uses-Appropriation Art

As Judge Posner and Professor Landes observed: “From the perspective of copyright law the very term “Appropriation Art” is a provocation; “appropriation” of a copyrighted works connotes stealing.”

On Monday, the Supreme Court granted certiorari in Golan v. Holder (2011 WL 767562 (Mem)). In this copyright case, the Court will examine the constitutionality of the Uruguay Round Agreements Act (URAA). Under the URAA, Congress implemented the Berne Convention which prohibits participating countries from requiring creators to jump through any sort of hoops to acquire copyrights:

…The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work… Art 5(2)

The URAA also  ‘restored’ certain works that fell into the public domain because their creators failed to comply with  statutory formalities.  See section 514 of the act, codified at 17 USCA § 104A.  Unfortunately, business like the ones run by Mr. Golan relied on the ability to market these works without licensing them.

The Constitution grants Congress authority to draft legislation which “promotes the progress” of the arts and sciences.  So, the question is whether restoring works already in the public domain might properly be viewed as incentivizing the production of new works.   Detailed background on this case can be found at the SCOTUSblog case page and TechDirt.

RESEARCH REFERENCES

Supreme Court Docket Number: 10-545

Stanford CIS Site: Golan v. Gonzales

10th Circuit Case: For related cases and court documents, find the History Tab (on WLNext) or the link for Graphical View (on Westlaw) at the 10th Circuit case: 609 F.3d 1076

Berne Convention: S. Treaty Doc. No. 99-27

Federal Register: 104A requires authors wishing to enforce their restored rights to notify ‘reliance parties.’   These notices may delivered to the Copyright Office which are subsequently published in the Federal Register (FR):

action +20 “notice of intent” /s uruguay (12 Results)

and

“notice of intent” & 104a (20 Results)

Popular Name Index Data for the Uruguay Round Agreements Act:

Enacting law: Pub.L. 103–465, Dec. 8, 1994, 108 Stat. 4809

Amending laws:

Pub.L. 104–127, Title II, Subtitle A, § 201(b), Apr. 4, 1996, 110 Stat. 951 (19 § 3611)

Pub.L. 104–188, Title I, ch. 4, § 1449(a), Subtitle J, § 1954(a)(6), Aug. 20, 1996, 110 Stat. 1813, 1928 (19 § 3551; 26 § 411 note)

Pub.L. 104–295, §§ 11, 20(a)(2), (b)(2), (5), (6), (9) to (11), (13), (16), (c)(1), (2), (7), (9), (d)(2), (f)(2), Oct. 11, 1996, 110 Stat. 3520, 3527 to 3529 (19 §§ 1337, 1671b, 1673a, 1673d, 1677–1, 2192, 2416, 2465 note, 3552, 3571, 3572, 3591, 3592, 3602)

Pub.L. 105–34, Title XVI, § 1604(b)(3), Aug. 5, 1997, 111 Stat. 1097 (26 § 411 note)

Pub.L. 105–206, Title V, § 5003(b)(5), July 22, 1998, 112 Stat. 790 (19 § 3555)

Pub.L. 105–362, Title XIV, § 1401(c), Nov. 10, 1998, 112 Stat. 3294 (19 § 3622)

Pub.L. 106–200, Title IV, § 405(a), May 18, 2000, 114 Stat. 292 (19 § 3592)

In 2000, the Board of Patent Appeals and Interferences  dismissed a preliminary motion because of procedural defects.  According to the BPAI, “sloppy motions are being filed in far too many interferences,” and can cause unnecessary expense, waste of the board’s resources, and prejudice.  See  LeVeen v. Edwards, 2000 WL 1862543 (and its citing references).  Requests for sample IP administrative filings have been very common over the last several years -second overall in my estimation to requests for the OG. 

Last week, Westlaw introduced four new filings databases:

U.S. International Trade Commission: USITC-FILINGS

Trademark Trial and Appeal Board:  TTAB-FILINGS

Board of Patent Appeals and Interferences:  BPAI-FILINGS

Combined ITC, TTAB, BPAI filings: IPADMIN-FILINGS

Search: The motion at issue in LeVeen was a preliminary motion for entry of judgment based on either the claims are unpatentable or anticipated. The following search in BPAI-FILINGS yields 21 similar motions:

(ti,pr(preliminar! /3 motion /5 judgment & anticipat! un-patentab!) ) (21 Docs)

Access from Administrative Decisions: Many TTAB, BPAI, or ITC decisions link to the administrative filings filed in the matter. Look for the link to “Petitions, Motions, and Filings” on the Links For tab on the left; or in the main document look for a link to “Briefs and Other Related Documents” in the upper left hand corner:

Access from the ‘KeyRules’:  In my experience, one of the most valuable but least used resources are the Wetlaw outlines of applicable rules of practice (BPAI-RULES, ITC-RULES, TTAB-RULES, and related KeyRules databases).  Suppose I am looking for the who, what, where, etc. for a Motion to Amend or Add a Claim in a proceeding before the B.P.A.I.  Access the BPAI Rules database (BPAI-RULES).  Here I  locate a document that provides me breakdown of everything I need to know about filing a Motion to Amend or Add a Claim.  See BPAI IPF 205.  In addition to the relevant outline, I also have a link to “Related Filings” providing me with a link to “Motions to Amend or Add a Claim filed with Bd.Pat.App. & Interf”:

As you can see from this screen shot, Westlaw displays the “10 most recent Motions to Amend or Add a Claim filed with Bd.Pat.App. & Interf.”  In addition, I have a hyperlink that takes me to more documents of this type.

[Editor's Note: A host of new IP-related tools are being released to Westlaw this month. This article is one in a series dedicated to the new tools]

Soon Westlaw will release a new search field that upgrades searching power for patent claim language within our Markman Order databases. The new Construed Term field (CTM) functions similar to the Words and Phrases (WP) field available for cases and statutes. It identifies documents where a court interpreted specific terms. Almost all of our Markman Orders have been editorially enhanced to include the new field.

Try the following search in our MARKMAN-ALL database to get a sense of the information the CTM Field will retrieve:

CTM(Semi-conductor)

The CTM field functions by searching  new editorial content that has been added to the Markman documents. The new content can be found at the top of the document or immediately following the headnotes, when headnotes are available within the order. The field displays the hyperlinked terms or phraseology construed in the order. Clicking the link takes the user to the portion of the order where the claim’s construct is discussed.

In some instances, this means directing users to the term itself.  In other instances, users will be directed to the actual construction, not the term. The reason for this is sometimes the term and the court’s interpretation are separated by multiple paragraphs. Still, the primary goal of the link is to guide the user to the relevant language, i.e. the  construction, or meaning given to individual claims.

A Construed Terms index is also available. This index is accessible from a link on the left side of the Markman documents, below the KeyCite links. The Construed Terms index is not an independently searchable database. Instead, users are directed to browse the alphabetical listings and then click on their desired link to run a search in Markman-ALL for that concept in the CTM field.

One final note: Stop words are still stop words.  Stop words are terms typically too common to be searched, like “before” or “into.” This is so even though courts are often construing these basic terms. Use the pound-sign before the term to generate the desired results: ctm(#into).

[Editor's Note: A host of new IP-related tools are being released to Westlaw this month.  This article is one in a series dedicated to the new tools]

A collective cheer went up (seriously) around the Reference Attorney department when we learned the USPTO Official Gazette was coming to Westlaw ( FIP-OG-PAT).  Much of the data from the Official Gazette has always been available on Westlaw through KeyCite and Derwent’s PatStat database.  Even so, requests for the OG were very, very common. This is probably so for two reasons.  First, the OG is the primary source.  Derwent has been around a long time and is a trusted resource but sometimes there’s no substitute for searching the primary material on one’s own.  Second, the Derwent data provided only the critical post-issuance data, not the full text of the notices.

We gave the new database a spin. We tested this query on 1/19/2011 in both databases: re-exam! and da(2011). Here are some key differences between the OG and PatStat.

Results and Currency:

PATSTAT: 81 results.  Documents are delivered by patent number.  In other words, each document represents a result for a specific publication number.  The OG is published on Tuesdays.  The most recent OG reference in PATSTAT was from January 11th.  January 18th results appeared on 1/20.

OG: 61 Results.  Documents are delivered by OG page/volume number.  So, you’ll see several references for each document just as they appear in the Gazette. Most recent documents were from the previous day’s publication, January 18th.

Alert Strategies:

For PatStat results you might try a KeyCite alert on the patent you are watching.  Alternatively, set up a WestClip for the desired patent number (e.g. re-exam! & pn(1234567)).  The OG is not yet in KeyCite, however.  So, no KeyCite alerts for now.  But, because the OG database contains text of the USPTO notices, you may set up alerts/searches for more than just the critical post-issuance data.  For example:

USPTO Notices: action +3 notice

CFR Notices: c.f.r. +2 11.24 1.47

37 CFR 1.47 — Filing when an inventor refuses to sign or cannot be reached

37 CFR 11.24 –  Reciprocal discipline:

(a) Notification of OED Director. Within thirty days of being publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended by another jurisdiction, or being disciplinarily disqualified from participating in or appearing before any Federal program or agency, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same.

Exparte Reexaminations: ci(epr) This search can also be run in PatStat.  Results in FIP-OG-PAT, however, will include the same text found in the OG.

Microsoft’s brief to the Trademark Trial and Appeals Board opposing Apple’s trademark application for “App Store” notes:

A search of Westlaw’s US ALL NEWS database found over 1,000 current articles using “app store” as the generic name for stores featuring apps.

Do you suppose the folks at SeedIP Law Group read every reference to “app store” in the allnews database?  I can’t say.  But, here’s a strategy I’d try.  It’s simple, really.  The purpose of the research is to demonstrate generic usage of the mark — usage of the mark in a manner that “neither signifies the source of goods nor distinguishes the particular product from other products on the market” George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383. 

Does not signify source: So, first, try a search for “app store” that simply eliminates references to Apple products:

app-store % itunes ipad iphone mac! apple

Of course, generic usage doesn’t necessarily exclude references to Apple’s product. In fact, Microsoft offers these examples:

WASHINGTON POST, July 27, 2010

Most cellphone app stores— iPhone, Android, BlackBerry — are filled with apps that use your location to list free (or paid) Wifi hotspots near you.

STANDARD & POOR’S DAILY NEWS, August 3, 2010

Consumers can download the free application through several app stores including BlackBerry(R) App World(TM) and Android Market(TM).

Does not distinguish: So, alternatively, one might try queries for Apple products AND its competitors:

app-store & ipad iphone mac! apple ipod & android & blackberry; or

app-store & ipad iphone mac! apple ipd & android blackberry

No results from the above queries include over 1,000 results, but if I were looking for examples, I think these queries might increase efficiency for this project.

In sum, unique US news references in the allnews database include:

references in app-store only: over 4351

references to app-store and apple brands: over 4117

references to app-store but not to apple products: just over 200

refrences to app-store and apple products and competitors: at least 500

Fore more on generic use of marks, try searching the federal intellectual property case law database (FIPTM-CS) for 382Tk1034, the KeyNumber for Generic Terms or Marks. Or, see Chapter 12 of the McCarthy treatise.

This very short video demonstrates an answer to our most frequently asked, patent-related question, “How do I determine if this patent has been litigated?”