On June 22, Senator Thom Tillis (R – NC) and Senator Chris Coons (D – DE) introduced the Patent Eligibility Restoration Act of 2023, which seeks to eliminate all judicial exceptions to patent eligibility.[1] The bill proposes that “[a]ny invention or discovery that can be claimed as a useful process, machine, manufacture, or composition
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Watch Out for Common Law Users in Online Enforcement
Many consumer product brands seek to enroll in online enforcement programs, for example, Amazon Brand Registry and eBay VeRO. These consumer product brands often experience online infringement and counterfeiting issues, so recording their registered trademarks with brand registries and participating in an online enforcement program can help with identifying infringements and streamlining the takedown process.…
Rogers Test Not Applicable When Mark Is Used as a Trademark
Supreme Court Rules in Favor of Jack Daniel’s Over ‘Spoofed’ Bad Spaniels Dog Toy
The Second Circuit’s 1989 Rogers test sets an elevated standard for proving trademark infringement, for the purpose of protecting First Amendment interests, when a trademark is used in “works of artistic expression.” Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).…
<em>Rogers</em> Test Not Applicable When Mark Is Used as a Trademark
Supreme Court Rules in Favor of Jack Daniel’s Over ‘Spoofed’ Bad Spaniels Dog Toy
The Second Circuit’s 1989 Rogers test sets an elevated standard for proving trademark infringement, for the purpose of protecting First Amendment interests, when a trademark is used in “works of artistic expression.” Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).…
What Goldsmith Means to AI Trainers
The House IP Subcommittee’s “Artificial Intelligence and Intellectual Property: Part I—Interoperability of AI and Copyright Law” hearing has two former General Counsels of the US Copyright Office squaring off over whether using copyrighted works to train artificial intelligence (AI) models would qualify as a fair use of those works under US copyright law. Sy Damle,…
What <em>Goldsmith</em> Means to AI Trainers
The House IP Subcommittee’s “Artificial Intelligence and Intellectual Property: Part I—Interoperability of AI and Copyright Law” hearing has two former General Counsels of the US Copyright Office squaring off over whether using copyrighted works to train artificial intelligence (AI) models would qualify as a fair use of those works under US copyright law. Sy Damle,…
Licensing vs. Franchising: Are You Accidentally Creating a Franchise?
A trademark license may seem straightforward. It is an arrangement that gives a licensee the right to use the licensor’s mark in some manner for some amount of time, with the licensor exercising quality control over the goods offered and services rendered under the mark. Since a license is like any other contract, the licensor…
Now What? The Supreme Court Addresses Enablement
By Ron Kern
What do telegraphic communications, incandescent lamps, wood veneering glues, and antibodies have in common? Nothing. That is of course, until May 18, 2023, when the Supreme Court ruled that Amgen’s antibody claims, like Morse’s telegraphic communication claims, Sawyer’s and Man’s incandescent lamp claims, and Perkins’ wood veneering glue claims, were invalid for lacking enablement. Although…
Will the Supreme Court Reevaluate the Subject Matter Eligibility of Diagnostic Claims?
By Ron Kern
Since the Supreme Court’s decisions in Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), “diagnostic” patent claims have repeatedly been held to be directed to patent-ineligible subject matter by the U.S. Patent and Trademark Office (PTO) and courts. In…
Federal Circuit Inventorship Decision Literally Saves the Appellant’s Bacon – and Reiterates the Framework for Assigning and Analyzing Inventorship
In HIP, Inc. v. Hormel Foods Corporation (May 5, 2023), Judges Lourie, Clevenger and Taranto of the U.S. Court of Appeals for the Federal Circuit addressed a claim of joint ownership and – in a unanimous precedential decision – reaffirmed the framework for determining the degree of contribution that an individual must make in order…