- Iancu Says Congress May Be Up For Patent Eligibility Reform – In an effort to enhance clarity and guidance for innovators, U.S. Patent and Trademark Office Director Andrei Iancu suggests that Congressional reform of Section 101 of the Patent Act may be the key to providing a more predictable and consistent analytical framework for determining what is patentable and what is not.
- Chanel Adds Camellia Drawing to its Arsenal of Trademarks – This past July, the U.S. Patent and Trademark Office granted trademark registration for Chanel’s five-petaled camellia drawing used in connection with the luxury brand’s products and packaging.
- Apple, Cisco, Google, Intel Sue PTO Over Its America Invents Act Policies – On Monday, Apple Inc., Cisco Systems Inc., and Intel Corp. sued PTO Director Andrei Iancu in the Northern District of California. Using a two-pronged litigation strategy, technology industry giants assert that the current USPTO policies deprive the tech industry of its access to the America Invents Act.
Here’s the latest.
Iancu Says Congress May Be Up For Patent Eligibility Reform
During IP Watchdog CON2020 on Tuesday, Iancu expressed the USPTO’s determination to provide clarity on Section 101 of the Patent Act. In the article, Patrick Stawicki provides quotes from IP Watchdog CON2020 that suggest Iancu’s willingness to work with both the courts and the legislature to formulate a more predictable eligibility analysis. In addressing agency guidance and clarification, Iancu further emphasizes the importance of consistency in Section 101 rejections.
Iancu also urged caution in how inventions are considered laws of nature, in the wake of the Federal Circuit’s 2019 decision in American Axle & Manufacturing Inc. v. Neapco Holdings LLC, which invalidated a patent related to automobile driveshaft technology after finding it claimed only a natural law.”
Overall, as Stawicki points out in his article, improving consistency within the IP framework requires collaboration and cohesion amongst many groups.
Iancu also called on the legal community to fight a disturbing trend of declining respect for intellectual property rights. The industry must come together with the legal community to close the gap between espousing intellectual property rights and actually respecting those rights at the same level of personal property, he said.”
Chanel Adds Camellia Drawing to its Arsenal of Trademarks
Finding that the five-petaled camellia used in connection with Chanel products served as a source identifier for consumers, the USPTO granted registration to Chanel for its flower drawing. The Fashion Law Blog recounts that initially the USPTO was skeptical of the brand’s trademark application and argued that the mark may be functional. One USPTO examining attorney cited to case law from the U.S. Court of Appeals for the Federal Circuit stating that a three-dimensional configuration of a product or packaging is unregistrable because the design provides “utilitarian advantages to the user.” Chanel, however, challenged this remark by emphasizing that the camellia drawing is a recognizable emblem of the brand and serves no function other than to act as a source identifier for consumers.
In fact, counsel for Chanel argued that when it is used on the cosmetic product, the camellia drawing ‘is used in the same position and manner as Chanel’s other marks, including its [double C] trademark, which is subject to multiple U.S. trademark registrations.’”
Notably, the USPTO granted registration for the flower drawing. The Fashion Law Blog questions whether this registration is just the first step for Chanel in claiming protection of the three-dimensional flower configuration in the future.
Apple, Cisco, Google, Intel Sue PTO Over Its America Invents Act Policies
Cisco Systems Inc. has joined Apple and Intel in two-pronged litigation strategy aimed at enjoining PTO Director Andrei Iancu from applying the NHK-Fintiv rule to deny institution of inter parte reviews (IPRs). Scott Graham notes that the PTO director has final authority to reject IPR petitions and is more likely to exercise this authority when district court proceedings are scheduled for trial.
The result is that judges and juries in the Eastern and Western District of Texas are more likely to decide patent validity, at a higher standard of proof, than the administrative judges of the Patent Trial and Appeal Board (PTAB), who are perceived as more likely to invalidate patents.”
According to Graham, the two lawsuits highlight that the tech industry is pushing back against the NHK-Fintive rule before all three branches of government.
Legal experts say both suits probably face an uphill battle, because of the discretion the AIA vests in the PTO director. But that discretion is not absolute. The director cannot act arbitrarily or capriciously, so the question may be whether applying the NHK-Fintive rule meets that high standard.”