In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from the Second Circuit's decision affirming the Southern District of New York's holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties.
FTC Proposes Rules to Codify Reporting of Exclusive Patent Right Transfers in the Pharmaceutical IndustryBy Anthony A. Dean, Gibbons
Is the sale or assignment of a patent reportable? The Hart-Scott Rodino Antitrust Improvements Act of 1976 ("HSR") and related rules require that all acquisitions of voting securities or assets exceeding a threshold amount be reported to the Federal Trade Commission ("FTC"), as well as the Antitrust Division of the Department of Justice. The current threshold is $68.2 million.
Starting on September 16th, seven important provisions of the America Invents Act ("AIA") will take effect: inter partes review, post grant review, supplemental examination, third-party "preissuance submission," substitute statement in lieu of the inventor's oath/declaration, transitional program for covered business method patents, and citation of patent owner statements in a patent file. Not all of the provisions are applicable to every patent and/or patent application. So, it is important that one consults with patent counsel before taking action. Below are helpful takeaways and summaries of these key changes. More information can be found on the USPTO's website.
We previously reported on the new 35 U.S.C. § 299 of the America Invents Act. This statute aims, inter alia, to reduce the ability of a patent owner to join multiple, unrelated defendants in a single action, which is a tactic often employed by non-practicing entities ("NPEs"), sometimes referred to as "patent trolls," who press defendants for nuisance value settlements.
In WM. Wrigley Jr. v. Cadbury Adams USA, a recent Court of Appeals for the Federal Circuit decision related to chewing gum patents, Wrigley brought suit against Cadbury for infringement of its U.S. Patent Number 6,627,233 ("the '233 patent") claiming a chewing gum including a combination of menthol and a physiological cooling agent, WS-23. Cadbury counterclaimed against Wrigley for infringement of Cadbury's U.S. Patent Number 5,009,893 ("the '893 patent") claiming a chewing gum including menthol and a similar cooling agent entitled WS-3.
By Ralph A. Dengler and Thomas J. Bean, Gibbons
(Still) Waiting for Akamai and McKesson ....
As the summer rolls along, IP practitioners still await the Federal Circuit's decisions in the en banc rehearings of Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Techs. Inc. v. Epic Sys. Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011), which will address liability among multiple step performers accused of patent infringement.
35 U.S.C. § 122(e), adopted last fall as part of the Leahy-Smith America Invents Act ("AIA"), conditions third party submissions to the USPTO for consideration and inclusion in an application file. Recently, the USPTO published the final rules regulating these submissions by third parties: Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg 42150 (2012). That is to say, the USPTO provided the requirements and guidance to anyone wishing to have the Office consider patents, published patent applications, or other printed publications of potential relevance during the examination of a pending application. The new rules pave the way for a third party to limit the scope of a pending patent application, particularly a competitor's application, in a meaningful way.
By Ileana Céspedes, Quijano & Associates
Law 35 of 1996 whereby provisions concerning industrial property were enacted established in its Article 126 that there exists a franchise when, by means of the user license of a trademark, a technical know-how is transmitted or technical assistance is provided so that the person to whom the franchise is granted may produce or sell goods or provide services in the same manner and with the operational, commercial and administrative methods established by the owner of the trademark in order to maintain the quality, the prestige and the image, which the trademark represents. Panamanian legislation does not deal with the basic requirements of a user license contract by which a franchise is established. It only indicates that it is to be considered a franchise when technical know-how is transmitted or when technical assistance is provided in order to develop the business in the Republic of Panama while complying with certain quality standards.
Just as trade secrets cases continue to proliferate in the news, the U.S. Senate introduced legislation last week aimed at streamlining the ability of American companies to combat trade secret theft.
Update - Hatch-Waxman Settlements: The FTC Regains Traction After Third Circuit Rules That Reverse Payments Violate Antitrust LawBy Sheila F. McShane & Jillian A. Centanni
As a follow-up to a previous article, the FTC has finally gotten an Appeals Court to take its view of reverse payments - Wile E. Coyote won this one. The FTC previously unsuccessfully attempted multiple avenues to invalidate reverse payments as part of Hatch-Waxman settlements - via the District Courts, proposed legislation, state court systems, and even the Supreme Court - but the Third Circuit has finally bitten, setting a clear circuit split.
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