News & Events

President Obama signed The America Invents Act (AIA) into law in 2011, which made substantial changes to the patent system of this country. One of the provisions of the AIA provides the opportunity to challenge the validity of a patent, including by accused infringers, before the United States Patent and Trademark Office Patent Trial and Appeal Board (PTAB) using a tool called an Inter Partes Review (IPR). The United States Supreme Court has agreed to hear Oil States Energy Services, LLC v. Greene’s Energy Group. The Court will decide whether, under the US Constitution, only the federal courts – and not the executive branch (like PTAB) – can decide if a patent is invalid. Specifically, the question before the Court is whether patents are private property (an issue for the courts decide) or public rights (an issue that can be decided by government agencies). If the Supreme Court finds IPRs unconstitutional, the fallout could be huge. Not only could the 1,300 patents invalidated with IPRs be “brought back from the dead” if IPRs are unconstitutional, but the entire AIA could be declared unconstitutional. The AIA does not have a severance clause. A severance clause provides that the remainder of a document stays intact even if one or more parts are found invalid. Absent this provision, if part of the AIA is held unconstitutional, the entire AIA may be unconstitutional. Such a ruling by the Supreme Court may require Congressional intervention and a strategy to handle the resulting flood into the […]

Have you filed a trademark application, statement or declaration of use, or renewal recently? If so, you may have noticed that your verified statements supporting a submission in the trademark registration process look a little different! 1) As of January 1, the United States Patent and Trademark Office (USPTO) has changed its forms to emphasize that trademark registrants submit their affidavits or declarations under penalty of perjury. It has always been the case that any untruths or concealment of relevant facts carry consequences, including the imperilment of your registration or application. Penalties for perjury may also apply, such as a fine, imprisonment for up to five years, or some combination of both.[1] To stress the seriousness of the document and avoid the “too long; didn’t read” signature practice, the USPTO now requires registrants to check the box next to each relevant provision as an extra acknowledgement. KEY TAKEAWAY: We recommend you review these statements carefully for accuracy—especially statements regarding use of marks.   2) In addition to these formatting changes, the USPTO has instituted a more substantive measure to “clean up” the Register and ensure its integrity. Effective this past March 23, approximately 10% of renewal filings will be randomly chosen to undergo a specimen audit. As part of the audit, the USPTO will check whether the specimens submitted demonstrate that the registrant’s mark is being used with all the goods and services enumerated in the registration’s identification of goods and services.[2] If the specimens do not adequately support use of the mark with each […]

The U.S. Supreme Court issued an important decision yesterday in a patent case, Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189, 581 U.S.       (2017), ruling that post-sale restrictions on patent use are prohibited and that patent rights are exhausted once a product is sold anywhere in the world. The underlying dispute concerned Lexmark toner cartridges. Lexmark International, Inc. brought a patent infringement case against Impression Products, Inc., a company that acquired empty Lexmark cartridges from purchasers in the United States and abroad, refilled them with toner, and then resold them. A U.S. patent entitles the patentee to “exclude others from making, using, offering for sale, or selling inventions throughout the United States or importing the invention into the United States.”  35 U.S.C. §154(a). Lexmark argued that since the return program prohibited reuse and resale of empty cartridges, Impression Products infringed the Lexmark patents when it refurbished and resold the cartridges that Lexmark had sold in the United States. Lexmark further argued that since it did not give authority to import the cartridges, Impression Products violated Lexmark’s patent rights by importing the used cartridges that Lexmark had sold abroad.  Impression Products argued that Lexmark’s sales, both in the United States and abroad, exhausted its patent rights in the cartridges. The Court addressed two questions relating to the patent exhaustion doctrine: “First, whether a patentee that sells an item under an express restriction on the purchaser’s right to reuse or resell the product may enforce that restriction through an infringement […]

We are pleased to announce that Tanya Falleiro has joined Hoge Fenton. An experienced corporate and business transactions attorney, Tanya recently worked at Structure Law Group in San Jose. She provides guidance, risk assessment and sound business solutions to startup and established companies, including entity formation and governance, corporate financings, mergers & acquisitions, stock plans, licensing and distribution agreements, and general business. “Tanya brings a combination of sophisticated experience and positive, collaborative energy to the team,” commented Karl Chandler, chair of the firm’s Corporate practice. “Our domestic and global corporate clients will benefit from her contributions – she is a terrific addition to the firm.”