Prosecution Group Luncheon

January 2013

Nice Agreement 10th ed. Version 2013

• developed to classify, most entries are not sufficiently definite to use in an identification of goods and/or services.– A finished product is in principle classified

according to its function or purpose.– Services are in principle classified according to

the branches of activities specified in the headings of the service classes.

Review of Comments Regarding Amending the First Filing Deadline for Declarations of Use

• 8/16/12: the USPTO invited public comment on a potential change to amend the first deadline for Sect. 8 Declarations of Use, to between the third and fourth years after registration

• The comments reveal concerns regarding registrations that are no longer in use for some or all of the goods/ services listed, but the predominant sentiment was that the deadline should not be shortened. 

• the USPTO is currently conducting a post-registration pilot program to gather information regarding the accuracy of identifications of goods/services for registered marks

Medical Purchasers are Sophisticated?

• TTAB Board reversed a refusal to register OVATION for vascular stents over OVATION for hip joint prosthesis.

• The identify of the marks and the inherent strength of the cited mark weighed heavily against Applicant

• involved goods are "relatively unrelated." They are technologically distinct, cannot be substituted for each other, and are not used together in a single medical procedure. Although a medical products company might produce both products, nothing in the record indicated that these goods are more closely related than they would be to other medical products.

• TTAB: “any reasonable decision to purchase goods of applicant or registrant would in all likelihood involve a person having specialized expertise in orthopedic or vascular medicine, as appropriate.”

• In re TriVascular, Inc., Serial No. 77941535 (November 27, 2012) [not precedential].

YouTube isn’t in Commerce?

• App sought to register ACTIVE REASONER for "audio recordings featuring music" in class 9. His specimen consisted of a screen shot of his YouTube webpage

• EA refused the specimen as failing to show the mark for goods in commerce.

• TTAB aff’d: "in the absence of a 'download' link or the equivalent thereof, applicant’s specimen on its face fails to show use of his mark in commerce for the identified goods."

• In re Rogowski, Serial No. 77083475 (December 11, 2012) [precedential].

Tinseltown is not Geographically Descriptive• EA refused TINSELTOWN (for clothing) as geographically

descriptive, (a nickname for Hollywood) • TTAB: "Tinseltown" refers both to the Hollywood section

of Los Angeles and to the motion picture industry for which it is famous. – In fact, the examining attorney's evidence "suggests

that it is the latter meaning, namely, that of the movie industry, that may be the primary denotation of the term Tinseltown."

• EA failed to establish that the primary significance of TINSELTOWN is a geographic location.

• (Precedent: HOLLYWOOD previously found not merely a geographic location)

In re Topson Downs of California, Inc., Serial No. 85067696 (December 4, 2012) [not precedential].

PTO Requesting Comments on “Quality”

• “[F]urthering the Office’s dialog with the public about ways to enhance patent quality”

• Identification of “potential practice changes that applicants can employ to augment the quality of issued patents,” inviting comment

• Two particular headings– Clarifying the Scope of Claims– Clarifying Meaning of Claim Terms in

Specification

PTO Requesting Comments on “Quality”

• Clarifying Scope of Claims– Standardized claim template– Identify support for limitations (chart, template)– Note if examples are limiting or illustrative– Expressly identify MPF elements, structures/acts– Particular notation systems for computer-

implemented subject matter• Clarifying Meaning of Claim Terms

– Give scope/technical meaning of terms of degree– Include a glossary of terms– Designating default dictionary(s) for ascertaining

meaning

Technical Amendments to AIA (Jan. 14, 2013)• Technical changes re: program for covered business

method patents and joinder of parties • Accelerates bar on using failure to obtain the advice

of counsel to prove willfulness/inducement • Inter partes review available for first-to-invent patents

ineligible for post-grant review • Revises filing deadline for inter partes review • Extends time for filing inventor’s declaration/recorded

assignment to issue fee payment date • Modifies requirements and time periods for activities

relating to patent term adjustments • Modifies requirements for petitions for derivation

proceedings, delineates criteria applied to deem application as “earlier” with respect to an invention

Written Description—Design Patent EditionIn re Owens (Fed. Cir. 2013) (decision pending)

• D531,515 issued for mouthwash bottle in 2006

• CON filed, drawings amended with ghost-lines for most of design (solid lines remained for portion of surface)

• PTO rejected CON per written description requirement – Not apparent from original specification that inventor in

possession of invention as now claimed– Applicant: area claimed was in the original application– PTO: nothing in original application indicates that portion

now claimed could itself be a design

• Rule: one can amend by "ghosting" solid lines and vice-versa, but cannot partition areas or define new portions

Written Description—Design Patent Edition

D531,515

Continuation

Fighting Obviousness Decisions• In re Chevalier (Fed. Cir. 2013) (nonprecedential) • FC affirms obviousness, rejects position that combination inoperable

• Familiar refrain: issue not whether “references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole"

• If each element known, obviousness requires finding that the combination of known elements was obvious to POSA

• Each element in Ref. A, relationship among parts taught by Ref. B

• POSA motivated to modify because "would facilitate a more rapid and more complete conversion from axial flow to radial flow"

• Applicant did not challenge that finding, admitted that relevant parts of references are "recognized equivalents performing the same function of converting axial flow to radial flow"