According to this article from the Richmond Times-Dispatch, the USPTO has recently completed a survey of the trademark register, and found that approximately half of all marks "contained false claims as to what goods or services were being sold using those trademarks."
When a mark's owner certifies that the mark is being used on a range of products, they don't have to show actual use on all of the products listed, but only on one item. The USPTO takes your word for it with respect to the rest of the list.
The new survey shows that, for about half of the marks checked, the owners were not using the mark on all of the listed products or services.
Worse, about a third of trademark owners did not respond to the survey at all, resulting in cancellation of their marks.
Just picked this up last weekend - so far, it's the best novel I've ever read whose main character is an IP attorney that has extraterrestrials as clients. Pick it up in the Kindle version on Amazon for cheap. You'll be glad you did.
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| Well? What's the answer? |
What's the going rate for a highly qualified technical expert - a testifying expert - in a patent litigation? What's the upper limit? Is there a rate that you wouldn't pay?
Answer in comments below.
Rightscorp Inc. (website) is a company that describes itself as
dedicated to the vision that digital creative works should be protected economically so that the next generation of great music, movies, video games and software can be made and their creators can prosper.
Which is nice, I guess. Rightscorp says that it "monitors the global Peer‐to‐ Peer (P2P) file sharing networks to seek out and find illegally downloaded digital media." When it identifies someone making an unlicensed download, it arranges with the relevant ISP to send the customer a notice demanding royalty payments.
So far, so good.
It's what comes next that's interesting. According to TorrentFreak (I know, right?), Rightscorp is negotiating with major US ISPs, including Verizon and Comcast, to redirect all of the accused pirate's internet traffic to a page demanding royalty payments.
Due process? Not so much.
Researchers at Harvard and the University of Texas have published the first analysis of the litigation behavior of NPEs (full text of study here). They also draw some correlations between NPE suits and the subsequent behavior of the defendants.
It's a detailed analysis, that's going to take some time to go through, but from my quick skim through the article I can provide you with a short summary: trolls bad.
More later.
We can rest easy. Last Thursday the Seventh Circuit issued an opinion (here) upholding the decision of the US District Court for the Northern District of Indiana.
Appellee Fortres Grand Corp. sells computer security software under the mark "Clean Slate." They describe the software at their website:
Discards unwanted user changes at log off or reboot, No Partitioning Ever, Effortless Windows Updates Support, Seamless AV Updates, Easy Application Blocking, Enable-Disable-Configure with No Rebooting Ever, Super Flexible, Easy, Secure!
Sounds pretty good.
Anyway, Fortres Grand sued Warner Brothers for trademark infringement.
Now, you may have heard of Warner Brothers. Their main thing is movies, music, cartoons, stuff like that. Warner Brothers doesn't market computer security software. And that's the main problem that the district court, and the appellate court, identified with the suit. In The Dark Knight Rises, there's a MacGuffin in the form of a piece of software that will completely erase a person's past. The software is referred to in the movie as "clean slate" software.
Get it? Unfortunately (?) for Fortres Grand, the use of the term "clean slate" in the movie doesn't constitute infringement of their mark, because there's no likelihood of confusion - potential customers of Fortres Grand are not likely to buy copies of Dark Knight Rises, thinking that they're getting computer security software.
They might have grounds for complaining of disparagement, except that in the movie, the software actually works. In fact, it occurs to me that Warner Bros. may have a basis for charging Fortres Grand for product placement.
Or maybe not.
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| Danger Will Robinson! |
Last week the Federal Circuit affirmed a decision of the US District Court for the Southern District of Florida, holding that US Patent 6,767,556, assigned to Apotex, is unenforceable due to inequitable conduct on the part of the inventor.
In its decision the Federal Circuit enumerated the inventor's sins, to determine materiality and intent to deceive. In evaluating the "materiality" prong of the test, the court noted that "The ’556 patent’s specification, written by Dr. Sherman, omits important details regarding the prior art that were determined to have been known to him." (slip op at 13)
OK, at this point I was thinking: wait a second - you're not required to discuss the prior art in your US patent application (unlike, say, in Europe, but that's for a different post). How is omitting known details about the prior art in your patent specification inequitable conduct?
The answer is, it isn't - if you can resist the temptation to discuss the prior art in the first place. HOWEVER, once you start discussing the prior art, you'd better be extra-careful.
To be clear, we agree with Apotex that Dr. Sherman had no duty to disclose his own suspicions or beliefs regarding the prior art. There is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art. The misconduct at issue, however, goes beyond failing to disclose a personal belief or alternative interpretations of the prior art; here, Dr. Sherman affirmatively and knowingly misrepresented material facts regarding the prior art.
(slip op at 14; cites omitted). The clear take-home lesson from this is that if you don't discuss the prior art in your specification, you don't have to worry about being accused later of selectively omitting details that are helpful to your case. And since citing prior art in the specification (perversely) doesn't "count" as disclosure (in the same way that citing the art in an IDS does count), why do it at all?
