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01.15.2013 | Legal Update

As Nutter celebrates its 20th issue of the IP Bulletin, the firm would like to wish its loyal clients and readers a wonderful start to 2013!

"First Inventor to File" Provisions of the America Invents Act (AIA) Take Effect March 16, 2013 – What Should You Be Doing to Prepare?
The provisions of the America Invents Act (AIA) that switch the United States patent system from a "first to invent" system to a "first inventor to file" system take effect on March 16, 2013. These provisions will have a number of significant effects on patent applications filed on or after March 16, 2013. For example, the new provisions will eliminate the ability to claim priority based on the date of invention, enlarge the scope of available prior art, and subject any subsequently issued patent to new post-grant review procedures. Accordingly, it may be advantageous for practitioners and applicants to consider fast-tracking the preparation and filing of important patent applications, as well as the conversion of pending provisional applications to full utility applications, to beat the March 16, 2013 date.

For a further discussion of the effects of the “first inventor to file” provisions, and practical tips in view of the same, click here.

AIA Corrections Bill Signed by President Yesterday
Yesterday, January 14, 2013, President Obama signed into law a technical amendment bill aimed at making mostly technical corrections to the AIA. The bill was passed by both houses of the 112th Congress just before completing their terms. The provisions of the law likely to have the most significant impact on practitioners relate to the timing for filing an inventor's oath or declaration and the elimination of a nine month "dead zone" period for filing inter partes reviews for certain patent applications. The law allows an inventor's oath or declaration to be filed through the date the application's issue fee is paid. The law also allows inter partes reviews to be filed against a patent immediately after the patent issues if the corresponding application only claims subject matter filed with the United States Patent and Trademark Office before March 16, 2013, i.e., the patent is ineligible to be challenged using the newly created post-grant review. A similar "dead zone" was also eliminated for certain reissue patents. Two more controversial issues initially raised in the technical amendment bill pertaining to the treatment of "pre-GATT" patent applications that have been pending since 1995 and estoppel for post-grant review challenges extending to "any ground that the petitioner raised or reasonably could have raised during that post-grant review," (emphasis added) were eliminated from the bill before it was passed and signed into law, but may be addressed by the 113th Congress.

To read the full text of the final technical amendment bill, click here.

To read the full text of the initial technical amendment bill, click here.

Common Copyright Conundrum – "Works Made for Hire"
OK, let's go over it again—just because you hire and pay someone to write something for you, or to design a logo or a website, or to paint a portrait of the family dog, it does NOT mean that you own the copyright in the writing, logo, or canine portrait. You DO OWN the physical object you paid for, but you CANNOT make copies of it.

For a further discussion about ways to perfect copyright ownership, click here.

Assignments in the United States Do Not Always Pass Muster in Europe
Many times inventors execute a single assignment document to transfer ownership of an invention from the inventor to the inventor's employer. The employer then generally prefers to rely upon that assignment document to demonstrate its ownership of the invention for any patent application filed domestically or in foreign countries. However, because different countries have different rules related to assignments, an assignment document that is proper in one country may not be proper in another. For example, while in the United States an assignment document is valid if only the inventor signs it, in many parts of Europe, contract law requires that both assignors and assignees be signatories to an assignment document. Thus, patent owners that want to rely on a single assignment document in all jurisdictions should consider making sure that the assignment is signed by both the assignee and assignor. Additionally, assignments should specify the priority application(s) with particularity where appropriate to comply with European rules related to ownership of a priority right.

For a further discussion of requirements for assignments in Europe that are different than in the United States, and practical tips related to the same, click here.

Trademark Owner's Unilateral "Covenant Not to Sue" Precludes Validity Challenge
The Supreme Court unanimously affirmed the dismissal of a challenge to the validity of a trademark in view of the mark owner's unilaterally issued "Covenant Not to Sue." In Already, L.L.C. v. Nike, Inc., Nike accused Already of infringing a trademark on its Air Force 1 sneakers, to which Already responded by alleging Nike's mark was invalid. Nike decided to drop its claims in conjunction with unilaterally issuing a "Covenant Not to Sue," promising not to raise any trademark or unfair competition claims against Already or any affiliated entity based on any of Already's existing footwear designs, or any future Already designs that constituted a "colorable imitation" of Already's current products. Nike relied on its "Covenant Not to Sue" to request that Already’s validity counterclaim also be dismissed because the covenant extinguished any case or controversy; Already desired to maintain its counterclaim of invalidity. The Supreme Court agreed with Nike, affirming the lower court's decision to dismiss Already's counterclaim. The Court ruled that there was no reasonable chance a dispute could ever arise related to the rights at issue between the parties in view of Nike's issued covenant. As a result, the Court concluded that Already lacked standing to challenge the validity of Nike's mark. Practitioners and clients should look to the text of Nike's covenant not to sue for guidance in crafting similar covenants to prevent later attacks against their intellectual property rights.

To read the full text of the Supreme Court's opinion, which includes the text of Nike's "Covenant Not to Sue," click here.

Unified European Patent and Patent Courts a Likely Reality by 2014
In the wake of the United States falling in line with the rest of the world by changing to a "first inventor to file" system on March 16, Europe has made significant progress in establishing both a unified European patent and a unified patent court. Recently, the European Parliament voted to create a Unified Patent that can be enforced in any of the 25 member states without requiring patent owners to register in each individual country. Thus, the system would save patent applicants from having to validate a patent granted by the European Patent Office (EPO) in each member state, thereby eliminating local fees and translation costs. Additionally, the European Parliament voted to create a Unified Patent Court to help enforce the Unified Patent, and to help provide greater consistency in proceedings and judgments across the member states. While the Unified Patent and Unified Patent Court are not law yet, it is anticipated that the necessary member state approval process can begin as early as February 18, 2013. In particular, 13 European Union (EU) member states must ratify the Unified Patent and Unified Patent Court, and those 13 member states must include France, Germany, and the United Kingdom. Member states may opt out of the system. The EPO anticipates validating the first Unified Patent in 2014.

To read more about the European Unified Patent from the EPO, click here.

To read more about the European Unified Patent Court from the EPO, click here.

Deere Breathes New Life into the Doctrine of Equivalents
In a recent Federal Circuit decision, Deere and Co. v. Bush Hog, LLC, the Court remanded a case based on the lower court’s failure to apply the doctrine of equivalents. In arriving at the decision, the Court arguably breathed new life into this relatively dormant doctrine. When considering the impact of the vitiation doctrine on the doctrine of equivalents (the vitiation doctrine generally runs counter to the doctrine of equivalents), the Court opined that vitiation is not an exception to the doctrine of equivalents, but a legal determination that "the evidence is such that no reasonable jury could determine two elements to be equivalent." While the Court’s willingness to consider the doctrine of equivalents is good news to potential plaintiffs alleging patent infringement, practitioners should remain vigilant in drafting patent applications with examples of equivalent structures and/or drafting dependent claims that have different scopes in an effort to avoid relying solely on the doctrine of equivalents for alleging infringement.

For a further discussion of the decision in Deere and its impact on the potential use of the doctrine of equivalents, click here.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.