Publications – Oblon, McClelland, Maier & Neustadt, L.L.P.

USING ESPACENET.COM FOR RETRIEVING REFERENCES

10 Feb 2025 00:00:00 -0800

If you need to find a translation of a foreign reference, you can look in espacenet.com:

https://worldwide.espacenet.com/

Espacenet will bring you to this screen. Type in your foreign reference in the searching box including the country designation. See below example:

If no translation, try clicking on the Print button – and select print to PDF – this should provide you with the English Abstract (see below). For purposes of an IDS, if you have the foreign document, an English Abstract SHOULD be sufficient for inclusion on the IDS 1449.

When filling out the 1449, instead of your foreign reference stating “CN (with machine translation)”, you would simply put “CN (with English Abstract)” and insert the XX in the “No” column under “TRANSLATION”.

USPTO Withdraws Proposed Changes to Terminal Disclaimer Practice

04 Dec 2024 00:00:00 -0800

Further to our article of May 13, 2024 (here), the U.S. Patent and Trademark Office (USPTO) announced on December 4, 2024, that it is withdrawing the Notice of Proposed Rulemaking published in the Federal Register on May 10, 2024. According to the USPTO, "In light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule. Despite the decision not to move forward with the proposed rule at this time, the USPTO appreciates and takes seriously the thoughtful perspectives raised by commenters."

Recall that the proposed rule sought to require that a Terminal Disclaimer include a provision stipulating that the patent will be unenforceable if it is linked directly or indirectly to another patent whose claims have been invalidated due to prior art. This raised valid concerns that filing a Terminal Disclaimer would entail a risk that the enforceability of an entire patent could depend on the validity of a single claim in another patent.

Many patent applicants and owners will welcome the withdrawal of this proposed rule. At least for now, current practice remains, where claims are typically assessed individually even within a single patent.

The USPTO’s announcement is available here: Federal Register

USPTO Announces Fee Increases Effective January 19, 2025

22 Nov 2024 00:00:00 -0800

The United States Patent and Trademark Office (USPTO) has finalized fee increases set to take effect on January 19, 2025. Certain fees will rise significantly. Below is an overview of some of the most notable changes. The “undiscounted” fees discussed below apply to large entities, but discounts are available for small and micro entities. Further details are available on the USPTO’s website.

The upcoming fee adjustments by the USPTO introduce several key changes to patent-related costs based on the following framework: An approximate 7.5% increase will apply “across the board” to all patent fees that are not “targeted." Examples of non-targeted fees include the fees for filing a terminal disclaimer and maintenance fees. Additionally, "front-end" patent fees, which include filing, search, and examination fees, will experience an additional 2.5% increase resulting in a total front-end increase of 10%:

The targeted fees will see more significant increases. Furthermore, a few new fees will be introduced, such as surcharges for filing certain “continuing applications” and new charges for Information Disclosure Statements (IDSs). These changes highlight the importance of planning and efficient patent management to mitigate the financial impact.

With respect to continuing applications, the Office will require a new surcharge of $2,700 for each continuing application filed 6 years after its earliest benefit date (“EBD”), and of $4,000 for each continuing application filed 9 years after its EBD. In this context, “continuing” includes continuation, divisional, and continuation-in-part applications (not Requests for Continued Examinations, which are covered by targeted fees discussed further below). EBD refers to the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d). The EBD is also the date from which the 20-year patent term is calculated, and thus is not the filing date of a foreign application or the filing date of a provisional application. These new surcharges should motivate applicants to file certain continuing applications before the January 19, 2025, effective date.

The targeted “excess claims” fees also merit attention: In its final rule, the USPTO is increasing the fee for each excess independent claim (in excess of three) to $600 for undiscounted entities. This amounts to a 25% increase. The USPTO is also increasing the fee for each excess total claim (in excess of 20) to $200 for undiscounted entities, which amounts to a 100% jump from the existing fee. The multiple dependent claim fee will increase by about 7.5% to $925. As a reminder, the fee for a multiple dependent claim is calculated based on the number of claims to which the multiple dependent claim refers. These changes to the claim fees should encourage the filing of preliminary amendments seeking to mitigate filing costs.

The RCE fees are other targeted fees of interest: In its final rule, the USPTO is increasing the fee for a first RCE to $1,500 (an increase of “only 10%”). USPTO is increasing the undiscounted fee for the second and subsequent RCEs to $2,860 (a 43% increase). Applicants will thus want to streamline examination, in order to avoid prolonged prosecution with multiple RCEs. This task will not be eased by the expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which the USPTO decided to terminate based on the public feedback received earlier this year criticizing a proposed new fee of $500.

The USPTO is introducing a new IDS size fee based on the cumulative number of items of information provided during the pendency of the application or reexamination proceeding. “Provided” in this context refers to items cited on an IDS under § 1.98(a)(1), whether or not an actual copy of the cited item is submitted to the agency. The IDS size fee is as follows: a first amount of $200 for a cumulative number of items of information in excess of 50; a second amount of $500 for a cumulative number of items of information in excess of 100 but not exceeding 200, less any amount previously paid; and a third amount of $800 for a cumulative number of items of information in excess of 200, less any amounts previously paid. Note that the USPTO is not requiring any new fee when the cumulative number of items of information is less than 50. These new fees should not affect most applicants. According to the USPTO, applicants provide over 50 total items of information in only about 13% of applications.

Finaly, the USPTO is raising the fees for AIA trials by 25%. Specifically, for an Inter Partes Review, the request fee will be $23,750 and the post-institution fee will be $28,125.

Latest Case Decisions Affecting Patent Licenses in U.S., Europe and Japan

04 Oct 2024 00:00:00 -0800

Congratulations to Dr. Yorikatsu Hohokabe for having his article selected as Article of the Month in the September edition of Les Nouvelles on the Licensing Executives Society International (LESI) website. This article was co-authored with Hideaki Kobayashi and Dirk Schubler-Langeheine. Read the article here.

USPTO Sunsets the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

02 Oct 2024 00:00:00 -0800

The U.S. Patent and Trademark Office (USPTO) announced that it is temporarily extending the After Final Consideration Pilot Program 2.0 (AFCP 2.0) through December 14, 2024, followed by termination of the program. The USPTO will not accept any AFCP 2.0 Requests after December 14th.

According to the USPTO, “[b]ecause the public is not widely receptive to paying a fee to participate in the AFCP 2.0, the USPTO has decided to terminate the program after a brief extension to December 14, 2024.” There is currently no USPTO fee for filing an AFCP 2.0 Request. However, the USPTO proposed for fiscal year 2025 a $500 fee (undiscounted) for filing an AFCP 2.0 Request, ostensibly to “offset the USPTO’s costs of administering the AFCP 2.0”.

The USPTO indicated that the extension through December 14th is “to provide program users with reasonable time to adjust to the program’s upcoming termination should they be in the process of preparing a request for consideration under AFCP 2.0.”

Regular after-final practice is not affected by the termination of the AFCP 2.0.

The Notice is available here: https://www.govinfo.gov/content/pkg/FR-2024-10-01/pdf/2024-22481.pdf

More information is available here: https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20

CAFC Affirms Post-AIA Invalidity of Process Claims Based on Sale of Product Made by Claimed Process

15 Aug 2024 00:00:00 -0800

The U.S. Court of Appeals for the Federal Circuit (CAFC) recently affirmed the International Trade Commission's (ITC) decision in Celanese International Corp. v. ITC, ruling that Celanese's process claims were invalid due to secret sales of products made by the claimed process prior to the one-year on-sale bar, as codified in 35 U.S.C. § 102(a). This decision followed the Supreme Court's reasoning in Helsinn Healthcare v. Teva Pharmaceuticals (2019), rejecting Celanese's argument that the America Invents Act (AIA) altered the on-sale bar to exclude sales of products made by undisclosed processes.

The case arose from an ITC investigation into sweeteners imported by a Chinese manufacturer, which allegedly infringed Celanese's patents. It was undisputed that Celanese's process was used in Europe, resulting in sales by Celanese of the sweetener more than a year before the patents' effective filing date. The ITC found the process claims invalid, concluding that the AIA did not change the on-sale bar's interpretation.

On appeal, the Federal Circuit emphasized that the on-sale bar has been part of U.S. patent law since the Patent Act of 1836, consistently interpreted to include sales of products made by a secret process. The court cited prior cases where patent claims were invalidated due to the commercial exploitation of a process more than a year before filing for patent rights.

Celanese argued that AIA's change of wording in Section 102(a)(1) from "invention" to "claimed invention" and the addition of "otherwise available to the public" meant the process itself must be sold or publicly disclosed to invalidate the patent. The Federal Circuit rejected these arguments, noting that the changes were clerical and did not alter the established interpretation of the on-sale bar. Additionally, the one-year grace period for public disclosures in Section 102(b)(1) did not apply, as Celanese's sales occurred outside this window.

New Bill Introduced in U.S. Congress to Overturn the 2006 eBay Decision

13 Aug 2024 00:00:00 -0800

Historically, patent infringement judgments in U.S. federal courts led almost automatically to injunctive relief under 35 USC 283. This section of the patent statute provides that a court “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” The situation changed with the Supreme Court's 2006 decision in eBay Inc. v. MercExchange. The eBay decision rejected the notion that injunctions should be generally granted upon a showing of infringement and required instead a detailed analysis based on four principles of equity: irreparable injury to the plaintiff, inadequacy of legal remedies, balance of hardships, and public interest. This decision eliminated the presumption of injunctive relief, particularly affecting non-practicing entities (NPEs). Since the eBay decision, many U.S. patentees have faced challenges in obtaining injunctive relief.

A new bipartisan bill, the RESTORE Patent Rights Act of 2024, was recently introduced in both houses of the U.S. Congress to return to the pre-eBay situation. The bill introduces a rebuttable presumption that an adjudged patent infringer should face injunctive relief, thus simplifying the process. Under the bill, 35 USC 283 would be amended by adding the following subsection:

If … the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct

Supporters argue that the eBay decision undermined the exclusivity of patent rights and encouraged predatory infringement by large companies. Opponents of the bill cite concerns about enabling opportunistic "holdup" situations by NPEs. Despite the bill's bipartisan support, strong opposition and the upcoming election year make its passage uncertain.

Federal Circuit Adopts New Test for Design Patent Obviousness

30 May 2024 00:00:00 -0800

The Federal Circuit’s recent decision in LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, (Fed. Cir. May 21, 2024) (en banc) has overruled the longstanding test for obviousness of design patents. Specifically, the Federal Circuit found that the test for obviousness, known as the Rosen-During test, was inconsistent with Supreme Court precedent that called for “a more flexible approach than the Rosen-During test for determining non-obviousness.”

In place of the Rosen-During test, the Federal Circuit has chosen to align design patents obviousness with that of utility patents. Specifically, invalidity based on obviousness of a patented design will be determined based on the application of the Graham factors laid out by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). These factors include “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” In addition to these factors, secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc., may be relevant as “indicia of obviousness or nonobviousness.”

Regarding the test for obviousness based on the Graham factors, the Federal Circuit noted that “[t]his test has proven workable for utility patents and we see no reason why it would not be similarly workable for design patents. As with any change, there may be some degree of uncertainty for at least a brief period, but our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent.”

Just one day after the Federal Circuit handed down their opinion in LKQ, the USPTO issued updated guidance and examining instructions on evaluating obviousness in design patent applications and design patents. Following an introduction to the implications of the Federal Circuit’s LKQ ruling on obviousness for designs, the USPTO provided examining instructions that addressed each of the Graham factors as Factual Inquiry One, Two, and Three.

Of note, Factual Inquiry One (“the scope and content of the prior art”) still requires that a primary reference be identified. Instead of the primary reference being “basically the same” (as under the Rosen-During test), the primary reference need only be “something in existence — not . . . something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” The primary reference does not even have be in the same field of endeavor as the claimed design so long as it is analogous art. Any secondary reference must also be analogous art. The USPTO guidance notes that “the Federal Circuit did not define how to determine whether a prior art design outside the field of endeavor of the article of manufacture is analogous.” The USPTO guidance does not explain how to determine whether a prior art design is analogous, but does instruct examiners to “consider the degree to which an ordinarily skilled designer would be motivated to consider other fields.” If the examiner still is unsure, then the examiner should contact their SPE, though it is unclear what metric the SPE will use to help the examiner decide. The USPTO will also begin compiling examples of when a reference has been determined to be analogous art.

In evaluating obviousness of design applications, the USPTO guidance cautions that “there must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design. Design examiners should keep in mind that, generally, the more different the overall appearances of the primary reference versus the secondary reference(s), the more difficult it will be to establish a motivation to alter the primary prior art design in light of the secondary one and set forth a prima facie case of obviousness.”

The now-overruled Rosen-Durling test was very workable and helped maintain a high allowance rate for design applications and helped to make it difficult to invalidate existing design patents based on obviousness. Regardless of how workable this new obviousness test proves to be in the design context, it certainly has created a lot of questions for practitioners and examiners, and we will be closely following its implementation.

USPTO Proposes Changes to Terminal Disclaimer Practice

13 May 2024 00:00:00 -0800

On May 10, 2024, the US Patent and Trademark Office (USPTO) introduced a proposed rule that could have significant implications for patent procedures, particularly concerning terminal disclaimers used to address rejections based on non-statutory double patenting. According to the proposal, a terminal disclaimer must now include a provision stipulating that the patent will be unenforceable if it is linked directly or indirectly to another patent whose claims have been invalidated due to prior art. This new condition, if enacted, would supplement existing requirements aligning the expiration dates of disclaimed patents with referenced ones and restricting enforcement to periods of common ownership.

This proposed rule marks a substantial departure from current practice, which typically assesses claims individually, even within a single patent. It shifts the balance of influence towards challengers of patents and undermines the presumption of validity granted by statute.

For patent applicants and owners, these proposed changes present challenging decisions. Adhering to the new requirements in terminal disclaimers means accepting the risk that the enforceability of an entire patent could depend on the validity of a single claim in another patent. Consequently, applicants may be more inclined to contest double patenting rejections or seek other claim amendments instead of merely filing a disclaimer.

The proposed rule could also influence broader patent filing strategies. Applicants might become more cautious about submitting continuation applications with minor variations, opting instead for more distinct inventions. There may also be a tendency to include claims of varying scope in initial applications to avoid the need for follow-on patents or to provoke a restriction requirement that sidesteps the issue of obviousness-type double patenting.

Finally, the new rule would encourage patent applicants to welcome restriction requirements in order to benefit from the safe harbor provision of 35 U.S.C. 121, which protect divisional applications against double patenting rejection and the need for terminal disclaimers.

Second Circuit Affirms Thom Browne, Inc. Jury Verdict, Rejecting adidas Appeal Seeking a New Trial

10 May 2024 00:00:00 -0800

On May 3, 2024, the Second Circuit affirmed the trial court’s judgment favoring Thom Browne, Inc. based on the jury’s verdict of noninfringement of adidas’s ubiquitous Three-Stripe Mark. Adidas Am., Inc. v. Thom Browne, Inc., 2024 U.S. App. LEXIS 10824 (2d Cir. May 3, 2024). The jury had found Thom Browne, Inc.’s four-stripe mark noninfringing.

In seeking a new trial, adidas argued that denial of a jury instruction regarding the third Polaroid factor (similarity of the products or services), exclusion of one aspect of an expert witness’s testimony, and admission of testimony by one of Thom Browne’s experts, constituted prejudicial error.

Adidas had alleged that Thom Browne’s products did not cause point-of-sale confusion, but initial-interest and post-sale confusion. To reflect its initial-interest and post-sale confusion theory, adidas sought to instruct the jury:

[Y]ou should consider the competitive proximity of the parties’ products. In other words, you should compare adidas’s Three-Stripe Mark products with the Accused Products and consider how similar the products are, whether they are sold in the same or similar channels, and whether they are promoted through similar advertising media. Products that are similar, or that are sold or advertised in similar channels, are more likely to be confused than those used in connection with unrelated or non-proximate products.

The district court described adidas’s proposed instruction as “endless and confusing.” The court instructed the jurors to consider “’whether the accused products and adidas products compete for the same consumers.’” Id., Slip op. at *3.

The Second Circuit affirmed holding the district court’s charge proper. Adidas failed to show any error, much less a prejudicial one. The district court instructed the jury multiple times to confine its inquiry to initial-interest and post-sale confusion. The differences between adidas’s proposed instruction and the court’s instruction were immaterial. Adidas could not articulate “a meaningful distinction between ‘competitive proximity’ and ‘competition for the same consumers.’” Id. at *3-4.

Adidas’s argument regarding exclusion of expert testimony also fell flat. The district court had required adidas to proffer an expert witness’s testimony so the court could assess admissibility. When the expert witness, Mr. D’Arienzo, was called to testify, adidas proffered him for one of three topics discussed in his report, specifically, “how different executions can still [be] recognized from a branding device.’” Slip op. at *4. The district court “found that the methodology he used to reach his conclusions – reviewing the opinions of ‘fashionistas on the web,” App’x 236 – was unreliable and thus excluded his testimony on this topic.

On appeal, adidas challenged the district court’s exclusion of D’Arienzo’s testimony on another topic addressed in his report, which was not part of the proffer in the district court – how the lines between luxury and sportswear have blurred. Because adidas declined the district court’s invitation to make a proffer on that subject, the Second Circuit held adidas waived any objection that could arise from D’Arienzo’s silence on that topic. Id., Slip op. at *6.

Adidas also objected to the admission of testimony of JoAnne Arbuckle, one of Thom Browne’s experts. The district court precluded Arbuckle from offering expert testimony but permitted her to testify regarding “’the appearance of [adidas’s] Three-Stripe Mark as an historical matter in numerous situations.’” Id. (quoting App’x 284). The Second Circuit rejected adidas’s objection that Arbuckle’s testimony was within the ken of the average juror, because Arbuckle did not testify as an expert, but rather, as a lay witness. Id.