Here at Winstead, we are fortunate enough to have two lawyers that were selected for inclusion in The Best Lawyers in America® 2018 in Trademark Law, Stan Moore and Cathryn Berryman.  Before answering the question What are Trademarks?, I thought it would be a good idea to get their insights on trademark best practices.

Stan Moore:  Most businesses have trademark issues, whether they know it or not.  With trademarks, ignorance is not bliss.  Businesses can lose their hard-earned goodwill based solely on inaction–either failing to protect their own trademarks or inadvertently using someone else’s trademarks.  A little effort upfront can save you years of heartache.

Cathryn Berryman:  When starting a new company or releasing a new product, why pick a name that is going to cause you problems down the road?  The time to pick a good name is at the outset, before any marketing dollars have been spent.  You would be surprised how many times clients fall in love with a name and fail to heed our advice when we recommend against using that name–even though they had not yet spent any money on advertising.  More often than not, it ends up costing the client a lot more money to protect the name, money that could have been saved if they would have picked a better trademark at the outset.

So, if this is something every business needs to address, what exactly are trademarks and what makes for good ones?  Put simply, trademarks are source identifiers.  They can be any combination of words, phrases, symbols, or designs, that identify the source of goods or services and distinguish those goods or services from others.  When choosing a name for a new business or a new product, the goal should be to select a strong trademark, i.e., one that is highly distinctive.  Not only are strong trademarks easier to register, they are also easier to enforce. Continue Reading What are Trademarks?

The term moral rights in the United States typically refers to the right or ability of creators of certain works of visual art (e.g., paintings, drawings, prints, sculptures, and photographs) to control the eventual fate of such works.  In Europe and elsewhere, an artist’s moral rights are much broader and not limited to visual art.  Moral rights protect the personal and reputational, rather than purely monetary, value of a work to its creator.  The right of attribution and the right of integrity (i.e., right to prevent revision, defacement, alteration, or distortion of the work, regardless of who owns it) are two primary rights of authors of works of visual art that are protected in the U.S. under various federal and state laws including protection through an amendment in the U.S. Copyright Act by the Visual Artists Rights Act (“VARA”) of 1990 (17 USC § 106A).  These rights are not transferable by license or assignment, but can be waived in writing by the author.

The moral of the story–when acquiring a copyrighted work, don’t forget to have the artist waive any moral rights in the work.

The Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) proceedings involving the University of Florida based on sovereign immunity.

As background, the University of Florida Research Foundation filed a suit in state court alleging breach of a licensing agreement.  Medtronic subsequently brought a counterclaim seeking a declaratory judgment of non-infringement on the patent of the licensing agreement and attempted to remove the case to a federal court or the U.S. District Court for the Northern District of Florida.  However, the suit was remanded to state court due to Eleventh Amendment immunity from suit in a federal forum (Univ. of Fla. Research Found., Inc. v. Medtronic PLC , N.D. Fla., No. 1:16CV183-MW/GRJ, July 15, 2016).

Covidien-Medtronic also pursued three IPRs involving the University of Florida patent (Covidien LP v. University of Florida Research Foundation Inc., Case Nos. IPR 2016-01274; -01275, and -01276 (PTAB January 25, 2017)).  However, the PTAB dismissed holding the Eleventh Amendment extends to IPRs.

YouTube is a well-known video sharing website that allows users to view, upload, share, rate, and comment on videos.  Generally, the user streaming the video from YouTube cannot download, copy, or save the video.

Stream ripping allows users to save streamed media from websites, such as YouTube. provides an online stream ripping service that allows users to convert YouTube videos to MP3s.  In particular, “the only thing you need is a YouTube URL. We will start to convert the audiotrack of your videofile to mp3 as soon as you have submitted it and you will be able to download it.” (

In the complaint filed Sept. 26, 2016, various record labels allege that has reproduced and distributed their copyrighted sound recordings without authorization (UMG Recordings, Inc. et al. v. PMD Technologie UG et al., Case No. 2:16-CV-07210, in the U.S. District Court for the Central District of California).

Outer space exploration has been expanding.  For instance, since 1998, the International Space Station has served as a platform for scientific research and discoveries in space within modules that are operated by the space agencies of the United States, Russia, Europe, Japan, and Canada[1].  Moreover, efforts are underway to build spacecraft that can transport astronauts on deep space missions to Mars and beyond[2].

The aforementioned efforts require the use of many innovative technologies and products in outer space.  Therefore, an issue that arises is how to protect inventions that may be exploited in outer space (i.e., space-related inventions).  Based on numerous national laws and international agreements, a recommended route is to seek patent protection for space-related inventions in countries and regions that have registered space objects (e.g., space station modules, space shuttles, or spacecraft).  Such countries and regions primarily include: (1) Canada; (2) China; (3) Europe; (4) Japan; (5) Russia; and (6) the United States[3].

According to international agreements and national laws, the country in which a space object is registered retains control and jurisdiction over that space object, including patent jurisdiction[4].  For instance, an international agreement pertaining to the use of the International Space Station indicated that patent jurisdiction over an activity that occurs in or on an International Space Station module is deemed to have occurred in the territory of the country in which the space station module is registered[5].  Likewise, according to U.S. patent laws, “[a]ny invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States.”[6]

Accordingly, the United States, Russia, Canada, and Japan would each have exclusive patent jurisdiction over activities conducted in their respective space station modules on the International Space Station.  Likewise, a European country or court may have patent jurisdiction over activities conducted in an International Space Station module that is registered to the European Space Agency.  Similarly, China may have patent jurisdiction over activities conducted in a Chinese spacecraft.

In summary, strategies for the protection of inventions that could be exploited in outer space are dictated by a set of complex national laws and international agreements.  A broad interpretation of the aforementioned laws and agreements indicates that the attainment of patents in countries that have registered space objects could help maximize the protection of such space-related inventions.

[1] See NASA’s website entitled “Research & Technology on the Space Station.”  Also see NASA’s website entitled International Cooperation.”
[2] See NASA’s website entitled “NASA’s Journey to Mars.”
[3] See United Nations’ Register of Objects Launched into Outer Space.
[4] See Article VIII of United Nations’ Outer Space Treaty (signed on December 19, 1966).  Also see World Intellectual Property Organization’s website entitled “Patent Expert Issues: Inventions in Space.”  Also see United Nations’  Convention on Registration of Objects Launched into Outer Space  (entered into force on 15 September 1976).  Also see 35 U.S.C. 105 (a).
[5] See Article 21 (Paragraph 2) of the Agreement Among the Government of Canada, Governments of the Member States of the European Space Agency, the Government of Japan, the Government of the Russian Federation, and the Government of the United States of America Concerning Cooperation on the Civil International Space Station (Signed on January 28, 1998).
[6] See 35 U.S.C. 105 (a).

In July 2016, the USPTO launched the Cancer Immunotherapy Pilot Program to provide a fast-track review for cancer immunotherapy-related patent applications without the need for applicants to pay a petition fee.  Under this program, patent applications pertaining to cancer immunotherapy are advanced out of turn for examination, resulting in accelerated review.

The program aims to cut the time it takes to review patent applications pertaining to cancer immunotherapy in half by issuing final decisions in one year or less after they are received.  In order to request consideration for the program:

  • Applications must contain one or more claims to a method of treating a cancer using immunotherapy.
  • Applicants must file a grantable petition under this initiative using our patent electronic filing system (EFS-Web).
  • Open to:
  1. any application that has not received a first Office action,
  2. any application where the petition is filed with a Request for Continued Examination (RCE), or
  3. any application not under final rejection where the claimed cancer immunotherapy is the subject of an active Investigational New Drug (IND) application that has entered Phase II or Phase III (FDA) clinical trials.
  • No additional fee is required to participate in the program.

How to file

  • Fill out Petition Form: PTO/SB/443
  • Save form and upload via the USPTO patent electronic filing system, EFS-Web
  • Select document description, “Petition for Cancer Immunotherapy Pilot” (found under the “Petition Category”) on the EFS-Web screen to ensure processing)
  • If the application is a new application, do not choose “Accelerated Exam” or “Track One”

The prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO) can be a prolonged and costly process. The patent prosecution process can include the issuance of an Office Action by the USPTO and the subsequent filing of an Office Action response by the applicant. While such communications can occur multiple times, the USPTO can close the prosecution of the patent application by the issuance of a Final Office Action[1].

A Final Office Action is usually issued when previous arguments are unpersuasive or a new ground of rejection is required by an applicant’s claim amendments.  The most conventional routes for continuing the prosecution of a patent application after the issuance of a Final Office Action have included: (1) the filing of a request for continued examination (RCE) along with new arguments and/or amendments that address the Final Office Action[2]; or (2) the filing of a Notice of Appeal followed by an Appeal Brief, which initiates appeal proceedings before the Patent Trial and Appeal Board (PTAB)[3].

However, the filing of an RCE may further prolong the prosecution of a patent application without providing substantial guidance to the applicant. Likewise, appeal proceedings can be very prolonged and costly.

Various pilot programs enacted by the USPTO can avoid the time and costs associated with RCE and appeal proceedings. Such pilot programs include: (1) the Post-Prosecution Pilot Program (P3 Program)[4]; (2) the After Final Consideration Pilot 2.0 program (AFCP 2.0)[5]; and (3) the Pre-Appeal Brief Conference Program[6].

As outlined in more detail below, each of the aforementioned programs can be used to provide more direction and guidance to the applicant prior to the filing of an RCE or a Notice of Appeal. Participation in each of these programs could also result in the allowance of the application without the need for any further proceedings.

 The P3 Program: Reconsideration by a Panel of Examiners

The P3 Program, which began in July 2016, allows for an applicant to request the reconsideration of a Final Office Action by a panel of examiners. No claim amendments or fees are required to participate in the P3 Program.

To participate in the P3 Program, the applicant must file a request within two months of the mailing date of the Final Office Action along with an Office Action response that is no more than five pages[7]. Upon the receipt of the request, the Patent Office will contact the applicant to schedule a conference (e.g., a teleconference call)[8]. During the conference, the applicant will make an oral presentation to a panel of examiners[9]. Thereafter, the applicant will be informed of one of three outcomes in writing: (1) the upholding of the Final Office Action; (2) finding of allowable subject matter, which will be followed by a Notice of Allowance; or (3) the withdrawal of rejections and the reopening of patent prosecution, which will be followed by a new Office Action[10].

AFCP 2.0: Reconsideration of Additional Claim Amendments

AFCP 2.0, which precedes the P3 Program, allows for the Examiner to search and/or consider an applicant’s additional claim amendments after a Final Office Action and communicate those findings to the applicant. No fees are required to participate in AFCP 2.0.

To participate in AFCP 2.0, the applicant must file a request along with a response to the Final Office Action that includes a non-broadening amendment to at least one independent claim[11]. Thereafter, the Examiner will consider the applicant’s arguments and claim amendments[12]. The Examiner may also conduct additional searches[13]. The Examiner will then communicate his or her findings to the applicant. For instance, the Examiner may hold a brief interview (e.g., a teleconference call) with the applicant to outline the detailed reasons why the Final Office Action is being upheld[14]. Alternatively, the Examiner may find allowable subject matter and issue a Notice of Allowance[15].

Pre-Appeal Brief Conference Program: A Route to Avoiding Appeal

The Pre-Appeal Brief Conference Program provides an applicant with an opportunity to request a panel of examiners to formally review the legal and factual bases of the rejections in the Final Office Action before the initiation of appeal proceedings[16]. To participate in the Pre-Appeal Brief Conference Program, the applicant must file an Office Action response of no more than five pages along with a Notice of Appeal and the requisite fees[17]. A panel of examiners will then consider the applicant’s response and issue a written decision that will state one of the following: (1) the patent application remains under appeal because there is at least one actual issue for appeal; (2) prosecution on the merits is reopened, which will be followed by an Office Action; or (3) the patent application is allowed, which will be followed by a Notice of Allowance[18].

Choosing the Right Pilot Program

Choosing between the different patent prosecution pilot programs after the issuance of a Final Office Action can depend on numerous factors.  For instance, pursuing a request under AFCP 2.0 may be suitable if the applicant desires the Examiner to consider additional claim amendments and arguments.  Likewise, pursuing a request under the P3 Program may be suitable if the applicant desires a panel of examiners to re-consider the previously presented claim amendments and/or arguments.  Similarly, participation in a Pre-Appeal  Brief Conference Program can provide an applicant with an opportunity to determine whether or not the patent application is in a condition for appeal before pursuing a prolonged and costly appeal proceedings.

[1] See Manual of Patent Examining Procedures (M.P.E.P.) § 2271.

[2] M.P.E.P. § 706.07(H).

[3] M.P.E.P. §§ 1201-1216.

[4] Federal Register Notice, Vol. 81, No. 132, July 11, 2016, pages 44845-44849.

[5] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, pages 29117-29119.

[6] Official Gazette Notice entitled  “New Pre-Appeal Brief Conference Pilot Program”, July 12, 2005.

[7] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44846.

[8] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44848.

[9] Id.

[10] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44849.

[11] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, page 29118.

[12] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, pages 29118-29119.

[13] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, page 29119.

[14] Id.

[15] Id.

[16] Official Gazette Notice entitled  “New Pre-Appeal Brief Conference Pilot Program”, July 12, 2005.

[17] Id.

[18] Id.

“Rather than rest our decision on formalities, our focus is on what makes our on-sale bar jurisprudence coherent: preventing inventors from filing for patents a year or more after the invention has been commercially marketed, whether marketed by the inventor himself or a third party.”  The Medicines Company v. Hospira, Inc., No. 2014-1469, slip op. at 25 (Fed. Cir. July 11, 2016).

An invention cannot be patented in the United States if the invention “was on sale in this country, more than one year prior to the date of application for patent in the United States”.  35 U.S.C. § 102(b) (pre-AIA).  Any patent claims to a product that was on-sale prior to this one-year date are invalid and the right to exclude others from making, using and selling the product is lost.

The Court concluded that to be “on-sale” “a product must be the subject of a commercial sale or offer for sale, and that a commercial sale is one that bears the general hallmarks of a sale pursuant to Section 2-106 of the of the Uniform Commercial Code.”  The Medicines, at 3.  When “no actual sale is present ‘[o]nly an offer which the other party could make into a binding contract by simple acceptance (assuming consideration)’ triggers the on-sale bar.”  Id. at 27 (quoting Group One, Ltd. v. Hallmark Cards, Inc. 254 F.2d 1041, 1048 (Fed. Cir. 2001)).

This case involved product-by-process claims and a supply contract for a third-party to produce three batches of the drug using the claimed processes.  The Federal Circuit held that the supply contract was for performing services and not a commercial sale.  “[A] contract manufacturer’s sale to the inventor of manufacturing services where neither the title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale under § 102(b).” 33.

What the Court makes coherent is that the “on-sale” bar is based on activities that constitute a commercial sale or offer for sale and not merely pre-commercial activities in preparation for future sales.  “The on-sale bar is triggered by actual commercial marketing of the invention, not preparation for potential or eventual marketing.”  Id. at 26.

What the Court also makes coherent is that the best course of action is to file an application for patent as soon as the invention is ready for patenting.

Next up is Helsinn v. Teva and whether on-sale activity under the AIA includes secret sales or is limited to public sales only.

Regardless of the June 23, 2016 vote on Brexit, all owners of European patents, and all applicants seeking patents in Europe, will have both new options, and a new set of important decisions to make.  Most commentators anticipate that the Unitary Patents (UPs) and the Unified Patent Court (UPC) will come into effect and patentees will still need to make decisions about their granted EPs and applications.   Owners of European patents (EPs) likely will need to make decisions about their portfolios by the end of 2016.  The following is based on materials provided by our colleagues at HGF, and with thanks especially to Andy Camenisch,

The UPC opt-out option

Current predictions are that by Q2 2017 patentees will be able to opt for a UP, a single patent covering up to 26 participating member states of the EU. The UPC, a central court that will for patent litigation in the EU should also open at or about the same time. It is time now to review and prepare existing patent portfolios anticipating these changes, as there may be as little as 6 months’ notice of the UPC going live.

At this early stage, the initial review and decisions will be focused on whether to opt patents out of the jurisdiction of the UPC.

The opt-out

When the UPC opens for business, unless they are opted-out, granted EPs will be subject to the jurisdiction of the UPC as well as the relevant national courts. This will mean that a patent holder will be able to enforce EPs in a single action across all Member States that have ratified the UPC and for which the patent is validated.

It will also mean that an EP can be revoked in a single action brought before the UPC’s Central Division. In contrast to the current position where an EP is a bundle of national rights, each of which must be revoked in separate actions in the national courts. The Rules of Procedure allow for a sunrise period in order for patentees to opt-out their existing EPs from the UPCs jurisdiction before the court opens its doors.  For a transitional period of 7 years there will be an opt-out to take existing, pending and future EPs out of the jurisdiction of UPC for the lifetime of those patents. The opt-out allows patentees to keep any litigation before the relevant national court.

Factors for consideration

The opt-out decision will depend on many factors, and will not be appropriate across all patents in a portfolio of any size.  In a given case there may be advantages to keeping some patents within the jurisdiction of the UPC, or to strategize for each patent.  The Rules and Procedures for the UPC system are still evolving, resulting in patentees considering a nuanced approach to the opt-out (or remaining subject to the UPC’s jurisdiction) for their patent portfolio.

Pros regarding UPC’s jurisdiction (i.e. not opting out)

  • potential for a pan-EU injunction throughout the participating Member States in a single infringement action before the UPC.
  • 12 month target timeline for resolution of first instance proceedings within the UPC is significantly better than proceedings before many other national Courts (and equivalent to English, Dutch and German Courts).
  • after the transitional period of 7 years the opt-out closes, there could be advantages in waiting for the new system to fully develop
  • there may be no choice, licensees may not have control over whether to opt-out

Also, in the beginning, it is anticipated that not all of the 26 Member States who have signed the UPC Agreement will have ratified the Agreement so validations of EPs in those countries will be treated in the same way as they are under the current system, leading to multiple jurisdictional enforcement combinations.

Cons for exercising the opt-out

  • a single action before the UPC’s Central Division could lead to the revocation of the patent, in all Member States. If a patentee might opted-out the “crown jewels” of their patent portfolio, patents would have to be revoked in the national courts separately.
  • if EPs are opted-out, only the national courts have jurisdiction; you maintain the status quo.
  • the UPC will be an unknown and untested forum, with about the quality and consistency of the judgments across all Local, Regional and Central Divisions.
  • there is no fee for opting-out your patents but there are likely to be administration costs in terms of considering strategy and ensuring that the opt-out is validly implemented across a portfolio.
  • assuming no ongoing national litigation, an opt-out can be withdrawn at a future date (although a subsequent second opt-out will not be possible).

Actions to take now

Portfolios of EP patents should be reviewed, considering the following issues:

  • the strength of the relevant patents;
  • the value of the technology covered by each patent or patent family to the business in the relevant jurisdiction;
  • how your various patents interact to protect your commercial products;
  • the likelihood in your industry that a third party will attack the validity of your patents;
  • for patents that are jointly owned or licensed into or out of the business – who has the right to exercise the opt-out of the EPs (and any associated SPC)?

Ideally these reviews and decisions should be done before the launch of the UPC to allow time to execute any opt-out during the sunrise period.

Not also that if the decision is made to opt-out, the correct party or parties must exercise that opt-out to ensure that it is validly executed. Failure to validly opt-out creates risk that competitors might seek to revoke the patent centrally at the UPC.

The treatment of functional features in design patents was discussed in the recent Federal Circuit case for Sport Dimension, Inc. v. The Coleman Company, Inc., Case No. 15-1553 (Fed. Cir. 2016).  The Court rejected the district court’s claim construction, which completely removed functional features.

As noted by the Court, “[a] design patent cannot claim a purely functional design—a design patent is invalid if its overall appearance is ‘dictated by’ its function. But as long as the design is not primarily functional, ‘the design claim is not invalid, even if certain elements have functional purposes.'”  Id, at 5. “Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”  Id, at 6.

The district court adopted claim construction that eliminated the left and right armbands and the side torso tapering, and also found the armbands, armband attachments, shape of the armbands, tapering of armbands, and tapering of the side torso to be elements that were functional rather than ornamental.  Id, at 4. The Patent Owner’s design and the competitor’s design are shown below:

Figs. 1 & 2

United States Design Patent No. D623,714 (Id, at 2).


Life vest front   Life vest back





Competitor’s Design (Id, at 3).

In three prior cases, courts used claim construction to “assist a finder of fact in distinguishing between functional and ornamental features,” but none of these cases entirely eliminate a structural element (that also had a functional purpose) from the claimed ornamental design.  Id, at 7.  The Court noted that while the following factors are for determining whether a claimed design is dictated by function and invalid, they may provide useful guidance to claim construction functionality:

  • whether the protected design represents the best design
  • whether alternative designs would adversely affect the utility of the specified article
  • whether there are any concomitant utility patents
  • whether the advertising touts particular features of the design as having specific utility
  • whether there are any elements in the design or an overall appearance clearly not dictated by function

Id, at 8.