Ladas & Parry News

USPTO Appeals against Ruling that Its Proposed Rules Exceeded its Rule-Making Power

Janet Cord — Thu, 08 May 2008 16:41:39 -0700

In our Bulletin of April 3, 2008, we reported on the decision of the district court prohibiting the implementation of rules proposed by the United States Patent and Trademark Office (USPTO) relating to the number of continuation patent applications that could be filed and the number of claims that could be included in an application without taking special steps. The USPTO has now filed an appeal of this decision with the Court of Appeals for the Federal Circuit (CAFC).

Patent and Copyright Infringement by Sale of Offending Products into the United States

John Richards — Sat, 03 May 2008 17:01:47 -0700

As international sales and sales over the Internet become more common, the question of where a sale takes place for the purposes of infringement of U.S. patents and copyrights becomes more important. An April 28, 2008 decision of the Court of Appeals for the Federal Circuit makes it clear that one cannot avoid the risk of being found liable for patent or copyright infringement simply by relying on the nature of the sales transaction or the location where legal ownership of the goods in question is transferred from the seller to the buyer. Therefore sellers who are for any reason subject to personal jurisdiction of the United States courts, for example as a result of other activities in the United States, may find themselves subject for claims to patent or copyright infringement based on shipments made from abroad on the basis that performance of the sales contract occurred in the United States upon delivery of the goods.

In Light Cubes LLC v. Northern Light Products, the Court of Appeals for the Federal Circuit was confronted with a case in which novelty items (illuminable artificial “ice cubes” than can be placed in drinks) were made in China and sold into the United States by a Canadian Corporation (Northern Lights). It was claimed that these items fell within the scope of United States patents and were also the subject of copyright protection. The sales into the United States were made “free on board” Northern Lights Canadian offices so that legal ownership of the novelties was transferred from the Canadian corporation before the goods actually entered the United States.

This bulletin deals with the decision handed down by the Court of Appeals for the Federal Circuit which determined that jurisdiction does attach in this fact situation.

Bangladesh - Service Mark Applications Now Being Accepted

Ladas & Parry LLP — Fri, 18 Apr 2008 17:22:24 -0700

Even though the new Bangladesh Trade Marks Act that allows for the registration of service marks has not yet come into effect, the Bangladeshi Trademark Office has began accepting applications to register service marks.

District Court grants Summary Judgment Holding USPTO Rules on Continuations and the Number of Claims Void

Ladas & Parry LLP — Thu, 03 Apr 2008 09:00:02 -0600

The United States Patent and Trademark Office (USPTO) has been enjoined from implementing its controversial rules relating to the number of continuation applications that could be filed based on a single initial application and requiring that applicants carry out their own searches and analysis of the art if they desired more than twenty five claims or five independent claims.

Trademark Procedural Changes in Europe

Dennis Prahl — Mon, 10 Mar 2008 23:15:44 -0700

Since its inception in 1996, the Community Trademark Office has provided search reports to trademark applicants advising them of potentially conflicting marks on its own Register, as well as reports of such marks on the national Registers of participating European Union member states. As of March 10, 2008, this system has now changed.

Patent Changes in Europe

John Richards — Mon, 10 Mar 2008 22:50:44 -0700

A number of important changes are being made to the European Patent system: The European Patent Convention (EPC) is being modified, two additional countries are joining the EPC and progress is being made on reducing the amount of translation work which must be undertaken when a European Patent goes to grant.