NEWS

2020 UPDATE ON PATENT OFFICE APPEALS

Patexia is a terrific resource for statistics regarding intellectual property.  Earlier this week Patexia reported that there has been a 20% drop in IPR (Inter-Partes Review) petitions since 2019.  Their 4th Annual IPR Intelligence Report, which can be purchased for $1495, breaks out IPRs handled by each law firm during the last five years, including a gauge of success rate. 

Fish IP has represented both petitioners and patent owners in over 10 post-grant proceedings before the Patent Trials and Appeals Board (“PTAB”), including both Inter Partes Reviews (“IPR”) and Covered Business Method (“CBM” reviews).  Fish IP has achieved over a 90% success rate before the PTAB, and 100% success rate on appeals to the Federal Circuit.   Fish IP’s work included winning one of the first ever CBM trials, and – at the time – one of only six (6) successful patent owner motions to amend (as cited by the U.S. Supreme Court). The technologies in Fish IP’s proceedings ranged from financial software to a variety of mechanical and electrical engineering inventions.  Fish IP’s work also resulted in several precedential opinions from the PTAB.

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

Standards Essential Patents (SEPs) claim inventions that must be complied with to satisfy a technical standard.  Think for example, MP3 music compression technology.  Given that essentially everyone needs to license patents covering aspects of the standard, it is critical that everyone has a reasonable opportunity to license the patent rights at a reasonable, non-discriminatory fee (so-call FRAND licenses).  See e.g., Wikipedia article.  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 by holding that English courts have the power to set global licensing rates for multinational patent portfolios under European telecom standards!

Standards Essential Patent Graphic

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

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 on the grounds that Herbs ‘R’ Us infringed its trademark rights, left consumers in a haze about where the brand came from, and diluted the buzz attached to the Toys ‘R’ Us trademark.

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. 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.