NEWS
USPTO FEES GOING UP OCTOBER 2ND
Fees are going up by an average of about 5%. Basic out-of-pocket costs for filing a utility application will go up to $910 for a small entity, and half that for a micro-entity. Of course, additional charges will still apply for excessive number of claims and excessive number of pages. The patent office is also continuing to disfavor multiple dependent claims, raising the base charge for such claims from $820 to $860. Continuing prosecution costs will also increase, for Continued Examinations (RCEs), extensions, and issue fees. Interestingly, the patent office will begin applying a surcharge for applications filed in formats other than DOCX, but that surcharge will not take effect until Jan 1, 2022. Current fees can be found on the USPTO website.
Standards Essential Patents
What are Standards Essential Patents?
Standards Essential Patents (SEPs) cover technological inventions necessary to satisfy a technical standard. Think, for example, of MP3 music compression technology.
Why Anyone Must Be Able to License SEPs
Essentially, everyone needs to license patents covering aspects of the standard.
Essentially, everyone needs to license patents covering aspects of the standard. So it is critical that everyone has a reasonable opportunity to license the patent at a reasonable, non-discriminatory fee. This is the FRAND license.
Global Licensing Rates
Naturally, some bad actors try to circumvent that arrangement, by seeking excessive rates from potential licensees. And that problem has historically been compounded by different rules in different jurisdictions.
In August 2020 the U.K. Supreme Court took a giant step towards international conformity. It held that English courts have the power to set global licensing rates for multinational patent portfolios under European telecom standards!
FRAND (Fair Reasonable And Non-Discriminatory licensing)
In May, the German Federal Court of Justice recently issued a landmark, 41-page decision that could well make Germany the “go-to” venue for patent owners in future FRAND licensing disputes. In Sisvel v. Haier, the Court held that patent owners could satisfy FRAND requirements even if they provide different rates to competing licensees, at least when dealing with larger, multinational patent portfolios. More information here.
Indian IP Office Extends Deadlines
The Controller General of Patents, Designs and TradeMarks (The Indian IP Office) has extended all trademark deadlines until further notice.
Canadian IP deadlines extended again to August 10, 2020
The Canadian Intellectual Property Office (CIPO) has again extended deadlines on IP matters until August 10, 2020. Deadlines had previously been extended until July 17, but given the continuing impact of COVID-19, further measures have been taken to mitigate the disruption.
Herbs ‘R’ Us Branding Gets Wrecked
Blazing the Trademark Trail: Herbs ‘R’ Us Gets Smoked
Canadian cannabis dispensary Herbs ‘R’ Us, rolled out a logo a little too reminiscent of the well-known Toys ‘R’ Us logo.
Toys ‘R’ Us, feeling a little burned by the effort, sought to bring them down, and sued in Canadian Federal Court.
They claimed Herbs ‘R’ Us infringed its trademark and left consumers in a haze about where the brand came from. Oh, yeah, and diluted* the buzz attached to the Toys ‘R’ Us trademark.
Puff, Pass… and Pay: The Court Weighs In
The Court accepted the case, but blunted the infringement and confusion complaints, having found it would be highly unlikely that consumers would be either dazed or confused into thinking Toys ‘R’ Us had started selling pot.
Buzzkill: $30K Damage for ‘Herbs’ Hijinks
The Court did, however, find that Herbs ‘R’ Us logo would, in fact, depreciate the Toys ‘R’ Us brand and ordered Herbs R Us to cease using the name, deliver up any packaging in possession for destruction, and pay $30,000 CAD in damages.
* dilution is a technical term in trademark infringement. You can find a good definition of it on our Trademark Infringement and Litigation FAQ page, along with other terms relevant to this case.
USPTO Launches Fast-Track Appeals Pilot Program
On July 2, 2020, the USPTO launched the “Fast-Track Appeals Pilot Program” which allows applicants to speed up the examination process on their most important inventions and get a decision in half the time of a normal application. The fee to Fast-Track an appeal is $400, and the USPTO estimates that an appeal will be read in six months under the program.