Letter from AmeriKat I: patents and trade marks

Guess where the Amerikat is right now…. If you guessed she was cruising at 32,000 feet somewhere over the US midwest while surfing the Internet and perusing the latest stories from the past week of American IP developments, then you are correct. Last week, on her transatlantic leg, she was giggling about all the IP she could find from her seat in 23G. This week she has the entire internet of intellectual property connected to her in 11A. IPKat readers will have to excuse her excitement in this respect. She remembers the days when she was given the kids' colouring book to connect the dots and find all 14 airplanes in the photograph. Now she has the internet and intellectual property to keep her calm and amused!

Kappos starts to tackle the 700,000 patent backlog

As she clicked on the home page of the American Airlines start-up page, kismet was working in her favour as the first story on their page this Wall Street Journal article regarding the Kappos winds of change (as reported by the AmeriKat here).

Right: Not a USPTO invention, logjams have been part of the prior art for a long, long time

Last Thursday, Kappos abolished rules instituted by the Bush administration that would limit the number of patent claims and the amount of evidence in support of applications companies could file with the USTPO. These rules were proposed during the previous administration in an attempt to increase the efficiency and speed of the patent-granting process. "We're not here to penalize the US innovation community," Mr. Kappos said. Kappos’s action corresponded to the Obama administration’s pledge last week to accelerate the passage of legislation to overhaul the patent process in order to foster the administration’s relationship with business communities. Kappos stated that the administration “is very committed to getting it done as quickly as possible.”

IPKat readers will recall that GlaxoSmithKline (and later joined by other biotech companies and universities) challenged the previous rules in 2007 in federal court. Due to GSK’s lawsuit, the rules were legally stayed by the court and never formally adopted by the USPTO. GSK has now agreed to drop its law suit. GSK’s chief intellectual property counsel, Sherry Knowles, stated:

“We applaud the Patent and Trademark Office for its leadership in deciding to withdraw these rules, which we believe would have harmed innovation across all industries, and specifically would have deprived GSK and other manufacturers of the patent protection necessary to promote medical research and innovation.”

However, with over 700,000 backlogged patent applications and a multi-million dollar budget shortfall, some critics are arguing that any rules that speed up the process should be embraced.

Senate Bill S.515, otherwise known as the Patent Reform Act, introduced by Senator Patrick Leahy (D-Vermont) could make all the difference to the speed of the examination process. The Bill would implement a “first-to-file” system whereby a patent would be granted based on the date of the application (like the UK’s priority date), not on the date the invention was made. However, those party to the Bill and privy to the fragile compromise that the Senate brokered between the pharmaceutical and technology industries suggest that the bill may only be transient in nature. For more on the inception and possible passage of this bill please see here. Additionally, the AmeriKat suggests readers peruse the article in the Seattle Post-Intelligencer here, regarding Commerce Secretary Gary Locke’s open letter of support for the bill to the Senate Judiciary Committee.

Kappos’s action follows his previous proposals earlier this month that included the well-received proposal of adjusting patent examiners compensation in an effort to give staff an incentive to process the applications more efficiently. The removal of overtime for patent examiners is, by some commentators, seen as being attributable to the ever-increasing backlog of applications.

Toyota’s alleged infringing patents may block imports to the US

The US International Trade Commission will commence an investigation into Toyota Motor Corporation following a claim made by Paice LLC that the world’s largest maker of hybrid vehicles infringes their patents, which include patents for supplying torque (force) to the car’s wheels via both electric motors and internal combustion engines.

Right: an earlier attempt at a hybrid vehicle, made by crossing an automobile with a dog

The ITC has the power to block imports of products that infringe US patents, which in this case could be potentially devastating to Toyota’s sales in the United States.

Back in 2005 Paice won a patent infringement action against Toyota in relation to patents used in their Prius and Lexus vehicles. However the federal judge only ordered damages by way of a reasonable royalty (the jury awarded $3.4 million), but not an injunction to prohibit sales. So the next best thing, besides a court ordered injunction, is Paice complaining to the ITC. The AmeriKat suggests reading this article from Bloomberg for further information.

$19 million trade mark awakens the City of New York

Tavern on the Green, although sounding like any English high street pub, is actually the name of a restaurant located in New York’s Central Park. The New York restaurant was christened as such in 1934. The ownership of the restaurant passed to Warner LeRoy in 1973. He subsequently trade marked the name and his family owns the licence to continue running the restaurant until then end of this year. With the end of the licence nearing, the Parks Department in February begun soliciting potential new operators to take over the LeRoy’s licence, but the Department specifically told bidders that they did not have any right or title to a transfer of the rights in the name to a new operator.

Fast-forward to 9 September when the LeRoys filed for bankruptcy. In ascertaining their assets, they stated that the name “Tavern on the Green” had accumulated a value of $19 million. Guess who is now saying that they do have the rights to the name? If you guessed New York City, you are correct! As reported by the New York Times, Connie Pankratz, a spokeswoman for New York’s Law Department, stated that “the city will be taking legal action to assert our right to the Tavern on the Green trade mark”. Unsurprisingly, the next licensee, Dean J. Poll, is supporting the city’s effort in this respect.

The AmeriKat is no expert in what sort of extra discretionary powers the City of New York has, but unilaterally acquiring all intellectual property associated with a licensed business is, she feels, probably not one of them. If you have any further information on this, the AmeriKat would like to hear from you.