IP Law Bulletin

Although the provisions of the Leahy-Smith American Invents Act creating the micro entity status went into effect on September 16, 2011, patent applicants poised to benefit from the newly created status could not obtain the 75% discount because fee schedules including the reduced rates had not been issued by the United States Patent and Trademark Office. Starting March 19, 2013, however, applicants qualifying as micro entities can pay reduced fees for many filings, including: prioritized examinations, utility application filing fees, requests for continued examination, notices of appeal, ex parte reexaminations, supplemental examinations, issue fees, maintenance fees, excess claim fees, and extension fees.

In response to growing litigation costs, overseas manufacturing centers, and growing jurisdictional challenges to patent suits, the United States International Trade Commission (ITC) provides an attractive alternative to district court litigation for patent infringement cases. But to bring a complaint in the ITC, a complainant cannot be a true non-practicing entity. Rather, they must meet the Domestic Industry requirement of §337 of the Tariff Act of 1930 (as amended). Generally, in this world of patent enforcement entities, or companies formed solely for the purpose of enforcing patents, the Domestic Industry requirement can be a gating issue to an attractive enforcement strategy.

There are two main types of marital property regimes in the United States: “separate property” (followed by most common law countries and the majority of states in the U.S.) and “community property” (followed by most civil law countries and currently followed by nine states in the U.S.¹). In “separate property” states, property acquired by a spouse during marriage is that person’s own separate property. In “community property” states, on the other hand, each spouse has a present, vested, one-half ownership interest in all property acquired by either spouse during the marriage. Patent ownership is governed by state law, and in community property states, patents acquired during marriage are owned equally by both spouses. Each state’s law, however, is different, with some states recognizing the property at the time of conception, and others recognizing it some time later, perhaps not until filing or not until the patent issues.

Claiming an apparatus in terms of what it does, referred to as “functional claim language,” rather than the structure of the apparatus itself, is a common and useful claim drafting technique. The way the functional language is recited, however, can determine whether the claim covers any device capable of performing the function, or only devices designed or made to perform the function.

The Court of Justice of the European Union (CJEU) recently established that use of a Community trademark within one European Union (“EU”) Member State is not, by itself, sufficient to constitute “genuine use in the Community.” Community trademarks are an economic alternative to national trademarks that provide protection across all twenty-seven EU Member States. One requirement for obtaining protection is that the mark must be put “to genuine use in the Community” within five years of registration.