Toikka Law Group

USPTO DIRECTOR IANCU TAKES ON THE SUPREME COURT ON THE ISSUE OF PATENTABLE SUBJECT MATTER

On September 24, 2018, at the 46th Annual Meeting of the Intellectual Property Owners Association, Andrei Iancu, Director of the United States Patent and Trademark Office (“USPTO”), announced that the USPTO is considering “revised guidance” on what is patentable subject matter under Section 101 of the Patent Act.[1]  In an earlier blog post, I discussed new USPTO guidance involving the possible presence of contested issues of fact in determining whether an invention was “routine, conventional and well-understood.”  However, in his September remarks, Director Iancu reveals that the USPTO is considering going much further to take on directly the issue of what it means for a claim to be “directed to” unpatentable subject matter, such as an abstract idea, and how such a claim may be nonetheless patentable.  The new guidance would place the USPTO in front of, and possibly in conflict with, the U.S. Federal Circuit Court of Appeals and the U.S. Supreme Court on how to deal with patentability issues involving abstract ideas or other judicially-created exceptions to patentability.

ALICE MAY VISIT THE JURY

The twin Supreme Court holdings in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) establish a two-step test for patent subject matter eligibility under 35 U.S.C. § 101.  These steps are also incorporated in the U.S. Patent and Trademark Office (“USPTO”) Manual of Patent Examination Procedure (“MPEP), § 2106.  Recent Federal Circuit cases have made clear that there may be underlying issues of fact (precluding summary judgment and requiring a trial) in implementing the second step of the Alice/Mayo test, causing the USPTO to change its guidance to patent examiners.



JUST THE FACTS, MA'AM

Lately every week seems to raise at least one hot-button issue involving immigration law and policy in the US.  These last weeks were no exception as the country and social media have been in an uproar regarding family separations at the country’s southern border.  At Toikka Law Group, we want to provide you with a short review of the law and history with regard to detention and family separation and explain what effect the President’s Executive Order signed on June 21, 2018 has on the current situation.

Can Gray Market Goods Lawfully Be Sold in the United States?

Gray market goods include products with legitimate trademarks that are intended for sale and use outside the United States, but which are imported and sold in the United States without the consent of the trademark holder or U.S. distributor of like domestic goods. Can gray market goods lawfully be sold in the United States?

 

PATENT INFRINGEMENT VENUE AFTER TC HEARTLAND

In this past year the U.S. Supreme Court decided TC Heartland LLC v. Kraft Foods Grp. Brands LLC[1] and made a major change in the prevailing practice in federal courts regarding proper venue in patent infringement cases. By way of background, venue in federal civil cases generally is controlled by the federal venue statute, 28 U.S.C. § 1391, while venue in patent infringement cases is governed by the patent venue statute, 28 U.S.C. § 1400(b). 

OFF THE CHAIN…OF IMMIGRATION

Many across the country have been giving a lot of attention in recent weeks to “chain migration”, meaning family-based immigration, or “family reunification”, a staple of United States immigration policy since the 1965 Immigration and Nationality Act (“INA”).  But, is the term “chain migration”[1] merely a pejorative used by critics, or does the term have factual basis?

Is TPS Really Temporary?

Among many other hot-button issues in immigration right now, the termination of Temporary Protected Status (TPS) for nationals of certain countries has many people concerned.  Between 2018 and 2019, nationals present in the US from El Salvador, Haiti, Nicaragua, and Sudan (not South Sudan) with TPS will no longer be able to renew their status.

THE PATENT BARGAIN AND THE CURSE OF RETROACTIVITY

Patents for inventions are issued by the federal government upon review and approval of an application to the U.S. Patent and Trademark Office (USPTO).  One of the requirements for the USPTO to issue a patent is that the applicant’s claimed invention be fully disclosed in the application and published in the patent. This is sometimes referred to as the “patent bargain.” This is at the opposite end of the spectrum from trade secrets law, under which a company can sue for misappropriation of a trade secret but only if it takes reasonable measures to maintain confidentiality of the trade secret.  See my prior blog post, “Remember to Keep Your Trade Secrets “Secret.”  Ominously, retroactive application of new patent rules may severely prejudice patent holders in abrogation of the patent bargain.

THE DIFFERENCE BETWEEN TRADEMARKS AND SERVICE MARKS

Both trademarks and service marks are used in commerce. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark (or servicemark) is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term "trademark" is often used generally to refer collectively to both trademarks and service marks.  

COMMON LAW RIGHTS IN A TRADEMARK USED IN COMMERCE

In a prior blog post, I explained that the United States Patent and Trademark Office (USPTO) registers proper trademarks and service marks, but it does not issue them as it issues patents.  However, even if a company does not apply to register a mark, it will generally have common law rights in a proper mark used in commerce.  The common law rights are less extensive and less clearly articulated in case law than those for registered marks.

PROVIDING SANCTUARY OR OBSTRUCTING JUSTICE?

Many people are in an uproar regarding the jury verdict in the case trying Jose Garcia Zarate, a 5-times deported illegal entrant and convicted felon, who fatally shot Kate Steinle in 2015.  The entire matter raises too many issues to analyze in one article, so we will focus on legal implications of certain “sanctuary” policies of the hundreds of US city, county, and state jurisdictions and the authority of federal “ICE detainers”.

WHAT HAVE AIA GOTTEN INTO?

Part 2: What Was Here Before AIA Got Here?

This is the second in a series of blog posts examining the current state of the United States patent system, which is statutorily framed by the America Invents Act ("AIA")[1].  The AIA was signed into law on September 16, 2011.  Since that time, the AIA and its phased-in-over-time provisions have had a dramatic impact – in my view, much of it negative – on the United States patent system.

Will 2019 Spell the End of Diversity Visas?

The US Diversity Visa Lottery (“DV Lottery”) program[1] is getting a lot of airtime in the last couple weeks after Uzbek national Sayfullo Saipov drove on a bike path in lower Manhattan on October 31, killing eight people and injuring several more.  Many may never have heard of the program before now, but as evidence about Saipov was revealed, we all learned that he was resident in the US since 2010, having received an immigrant visa through the DV Lottery program.  In this article, we will give a brief outline of the history of the program, how it works, and then address factors that may determine whether it is an immigration program whose clock has run out.