internet websiteAre your online trademark enforcements efforts being thwarted by inaccurate or inaccessible Whois data? If so, make your voices heard!

Problems with the accuracy and completeness of the Whois global database of domain name registrants are probably not a new thing for your company. We have all been there. You obtain the Whois record for an infringing domain name just to find out it is either registered under a privacy/proxy service or contains blatantly false contact information. If it makes you feel any better, know that you are not alone. The Internet Corporation of Assigned Names and Numbers (ICANN) reported that inaccurate Whois complaints accounted for over 60% of informal complaints filed with Registrars between June 2017 and June 2018. If you have experienced the frustration of encountering inaccurate Whois data, be sure to report it to ICANN via its Whois Inaccuracy Complaint Form, which can be found here. All complaints are forwarded to the sponsoring registrar, who must take reasonable steps to investigate and correct the inaccurate data.

Continue Reading Watch Out for Inaccurate Whois Data When Protecting Your Trademarks

soccer ballWhile all soccer eyes are on Russia, a company in Reno, Nevada has filed two new applications for the trademarks WORLD CUP 2026 – FAN INFO and WORLD CUP 2026 – U.S. TICKETS, just one day after North America was announced as the host of the World Cup in 2026. Also interesting to note is FIFA’s pending application for the mark USA 2026 was filed almost one year before North America was publicly announced as the 2026 host. What does this teach us? A company can gather a lot of competitive intelligence about a competitor or an industry simply by monitoring the trademark records at the U.S. Patent and Trademark Office (USPTO). And the beauty of it all is that searching the records of the USPTO is absolutely free here. One simple search would have told the Nevada company that FIFA already has a registration for the mark WORLD CUP, likely a significant impediment to the registration of these marks. Continue Reading How USPTO Trademark Records Can Help (or Hurt) Your Competitive Edge

courtThis week, the Federal Circuit resolved three issues left in TC Heartland’s wake. TC Heartland held that 28 U.S.C. § 1400(b) uniquely governs venue in patent cases and is not coterminous with the scope of § 1391. The first prong of § 1400(b) creates venue in the judicial district where the defendant resides, which the Supreme Court held to be the state of incorporation for a domestic corporation. But, this begs the question: what about when the state has multiple judicial districts? Also, whose law governs burden under § 1400(b), and where does that burden lie? In the year after TC Heartland, district courts across the country split on these issues. Continue Reading Updates in the Federal Circuit Following TC Heartland

Congress’ passage of the America Invents Act (AIA) in 2011 created a new process for challenging the validity of issued patents. This new process is filed with the very governmental agency that originally issued the patent. Called Inter Partes Review (IPR), hundreds of issued patents have been invalidated, in whole or in part, using the new proceeding. On April 24, 2018, the Supreme Court handed down two decisions directly relating to IPRs. In the first, it upheld the IPR process as constitutional. In the second, it provided additional direction to the Patent Trial and Appeals Board (“PTAB”), which oversees and decides IPRs. Continue Reading Supreme Court Rules on Two Cases involving Inter Partes Review

globe AsiaOn March 22, 2018, the President issued a Presidential Memorandum in which he announced the actions the United States will take in response to China’s allegedly unfair trade practices found by the Office of the United States Trade Representative (USTR) in its Section 301 investigation of China’s Acts, Policies, and Practices Related to Technology Transfer, Intellectual Property, and Innovation. The actions are as follows:

Continue Reading President Announces Actions against China for Intellectual Property Practices

trademarkChoosing a common or trendy name for your startup opens your company to risk. You might like the name “Company XYZ,” and you might think you’re the “Company XYZ” of your field, but “Company XYZ” might disagree with you. If you are looking to choose a brand or product name, you need to think about trademarks earlier than you think.

Continue Reading What’s In a Name?: Issues with Naming Your Product and Company

patent law gavelOn February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered patent agent. In re Silver, Case No. 16-0682, 2018 WL 1022470 (Tex. February 23, 2018). The court held that a client’s communications with a patent agent, made to facilitate the agent’s provision of authorized legal services to the client, are privileged under Texas Rule of Evidence 503 (attorney-client privilege). The ruling marked the first time a state high court weighed in on the issue.

Continue Reading Texas High Court Rules That Patent Agent-Inventor Communications Are Covered By the Attorney-Client Privilege

healthcare technology iotThe influence of the Internet of Things (IoT) will undoubtedly be transformational with a total potential economic impact estimated to be $3.9 trillion to $11.1 trillion a year by 2025. In the race into the IoT marketplace, there are both known and unknown legal hurdles that will affect those who offer of goods and services during the proliferation of the Internet of Things.

Some of the current and potential legal hurdles related to the IoT are well known, some are not, and some are the result of the intersection between the physical and virtual worlds, and the collision between two intersecting major drivers of innovation in IoT. On one hand, there are the established manufacturers of products and consumer goods whose expertise in developing, testing and manufacturing products puts them in an advantageous position. On the other hand, there are the technology companies who are used to developing software and whose expertise lies in software development, data collection, and data processing. Continue Reading Hurdles the Internet of Things Must Clear for Manufacturers and Providers

patent law gavelOn January 10, 2018, the Federal Circuit added Finjan, Inc. v. Blue Coat Sys., Inc., No. 2016-2520 (Fed. Cir.), to its Enfish jurisprudence and upheld the subject matter eligibility of a software patent directed to virus-scanning downloadable app code for known and suspected malware. As construed, the invention claims novel behavioral-based analysis of source code to identify; detection of potentially dangerous files results in creation of a new file attached to the app code which is then evaluated by the destination computer to determine whether to allow the app to be downloaded. Continue Reading Federal Circuit “Blue Coat” Decision: Virus-Scanning Software Survives Alice Attack Applying “Enfish”

Inter Partes Review (IPR), created by the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), has become a prominent part of patent litigation. Accused infringers can challenge asserted patents based on printed prior art by petitioning the Patent Trial and Appeal Board (PTAB) to “institute” an IPR “trial.” An IPR before the PTAB is an administrative proceeding with no right to a jury trial on patent validity. If instituted, non-Article III judges receive evidence and arguments and determine whether the patent is valid. Many IPRs arise out of pending District court patent infringement litigation and parties to an IPR proceeding can be estopped from re-litigating issues that were raised or could have been raised in the PTAB. At the discretion of the federal judge, district court litigation may be stayed pending the outcome of the IPR. Ultimately, IPRs can be less expensive than district court validity determinations and often contribute to efficient resolution of patent disputes. Continue Reading Will “Oil States” Upend IPRs?