IP Law Bulletin

Building upon our recent note concerning general international intellectual property protection considerations, this article describes how foreign IP expansion efforts might play out in a case study format. The company, a hair restoration lotion manufacturer named WonderFlo Tonight, is fictional, but the fact pattern is derived from real world situations encountered by businesses as they seek to establish and protect their intellectual property in foreign markets.

In recognition of the high interest level in the program, the PTO recently announced it is increasing the annual limit on Track One Prioritized Examinations from 10,000 to 12,000, effective September 3, 2019, to prevent exceeding the limit this fiscal year, which concludes on September 30. 12,000 will be the new limit going forward as well.

Businesses must balance the desire for intellectual property protection throughout the world with budget management goals. There is no “one size fits all” approach for achieving that balance, but there are certain considerations that all business that hope to operate on the global stage should be aware of and think through.

Global IP portfolio management strategy should be driven by the need to be positioned to take aggressive action in commercially important markets, while at the same time staking out a more defensive position in markets of less immediate commercial importance but that might become more important. IP filings in places known as havens for opportunists who might interfere with your business plans in those places through bad faith filings also might be warranted.

In the case of patents and trademarks, pre-filing diligence in the form of patent “freedom to operate” searches and trademark availability searches should be considered. While blindly filing abroad and simply waiting to see whether issues are encountered at the various registries is an option, the pre-filing searching might uncover details about potentially conflicting third-party rights and allow for strategic adjustments. Turning to considerations specific to categories of IP:

Patents

Patent applications often are filed directly at the national level, but there are numerous regional patent offices that provide regional patent registrations. These include the European Patent Office (EPO), the African Regional Intellectual Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), and the Eurasian Patent Organization (EAPO). Through these organizations inventors can file a single application that will receive protection in the regional “member countries”.

Moreover, under the Paris Convention, an inventor’s patent application filing date can be retained in other countries party to the treaty (most commercially significant countries are included) provided that the foreign patent applications are filed within one year of the U.S. filing date (or six months in the case of design patents).

Whether applying for a patent in a given country or jurisdiction makes sense should be determined by evaluating whether the subject matter is likely to be considered patentable in that country, whether the short-term and long-term legal costs are justified relative to the business value of protection, whether preserving the technology or methodology as a trade secret instead of patenting it makes more sense, and how difficult and costly it is to enforce a patent there.

Trademarks

Trademark protection also requires taking specific action for each country or jurisdiction (e.g., the European Union is one jurisdiction for purposes of registering a trademark). The two types of action are: (1) filing a trademark application directly with that country’s trademark registry through local counsel; or (2) using a home registration as the basis for securing an International Registration through which one designates rights to the various countries of interest. 

The International Registration approach avoids the local counsel service fees associated with direct filings, but usually means doing without pre-filing advice that could improve the chances of a successful outcome. The International Registration approach also entails limitations that are beyond the scope of this article but that will be addressed in a future blog post, including the requirement for U.S. companies that the International Registration mirror the scope of the underlying U.S. registration (which often results in more narrow registration protection than otherwise would be available).

Trademark protection standards vary from country to country. What is required or makes sense in one country might not be the best approach in another. For example, in the U.S. a trademark application must be supported by a declaration under oath that the applicant intends to use the mark in relation to all listed products and services, which usually requires a narrow approach. In certain other countries, however, broader filings are possible and generally recommended because there is no such limitation (although in the future a resulting registration in that other country could be cancelled by a third party on the basis of the mark’s non-use).

Copyrights

Let’s not forget copyrights. Legal protection for copyrights, like patents and trademarks, is territorial, but protecting copyrights generally entails less in the way of formalities. In fact, the U.S. is one of only a few countries that have copyright registration systems. There are international treaties that the U.S. and virtually all other commercially relevant countries have joined, most notably the Berne Convention, that reduced formality requirements and provides that works shall be protected in countries other than the author’s country of origin in the same way that the foreign country protects works of its own authors. 

So, for example, if a German business without authorization were to publish in Germany and profit from a U.S. business’ content authored in the U.S. and protected by U.S. law, a German court would recognize and enforce those U.S. rights as if German rights (not applying U.S. law, but treating the rights as valid rights under German law). The same would apply for works authored in Germany, e.g., which would be recognized as protected under U.S. law if infringed in the U.S.  Certain benefits associated with U.S. copyright registration, however, such as statutory damages, are not automatically afforded to foreign works under that scenario absent registration. 

Copyrighted expressive content often is misused by other organizations with which your business has a relationship and should be managed contractually. While having rights recognized by a foreign country’s courts is desirable, there are inherent challenges and increased costs associated with taking legal action in a foreign country. U.S. companies should make a point of imposing contract provisions upon foreign distributors/partners through which they carefully define limited purposes for which copyrighted content can be used and through which the other organization consents to jurisdiction in the U.S. for lawsuits.

[The considerations highlighted above will be addressed in greater detail in future blog posts.]

The importance of patent term, or the period of time during which the exclusive nature of a patent is in effect, cannot be overstated. The patent term for an issued patent, which is currently set at 20 years from the filing date of the earliest U.S. non-provisional application, can drive business and investment strategies, dictate allocation of technological resources, and impact financial valuations. 

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and ready for oral argument when the Court reconvenes for a new term in October. To mark the end of this term, here’s a list of 5 Patent Law Petitions to Watch at the Supreme Court as we look ahead to 2019-2020.

What began as a run-of-the-mill patent lawsuit for a popular sportswear company spiraled into a six year litigation war; one that, when the dust of the suit at law settled, resulted in accusations of “racketeering.”

Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent can be granted for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Though this text has changed very little since it was first written in 1793, the courts have established a number of judicially created exceptions, and exceptions to those exceptions. This has created a growing difficulty and uncertainty in applying §101 to modern technologies, especially those implemented by computer systems. 

Bob Dylan famously sang that “[y]ou don’t need a weatherman to know which way the wind blows,” and we don’t need a weatherman to tell us that the wind now blows differently at the United States Patent and Trademark Office (USPTO). On January 7, 2019, the USPTO released revised subject matter eligibility examination guidance (“Guidance”), foreshadowed by USPTO Director Iancu last fall. The Guidance is noteworthy both for raising the bar in examination procedure and, we think, for signaling the Office’s intent to rein-in the application of subject matter ineligibility analysis (“lest it swallow all of patent law” – Alice). We anticipate a reduction in subject matter eligibility rejections because the Guidance makes it more difficult for examiners to reject claims as being directed to unpatentable subject matter under 35 U.S.C. §101.   

The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.

Since the Supreme Court’s decision in Alice Corp. v. CLS Bank in 2014, there has been an increasing trend in district courts granting pretrial dispositive motions to effect early dismissal of patent infringement cases under 35 U.S.C. § 101. Last month, however, the Federal Circuit issued two patent-friendly decisions that preclude such early dismissal when there are factual disputes that underlie the ultimate legal conclusion of patent eligibility under 35 U.S.C. § 101.