Re-importing Copyrighted Goods

By seeking input from the Solicitor General, the Supreme Court appears to be seriously considering granting review of a case raising the issue of whether the doctrine of copyright exhaustion applies to goods sold overseas by a United States. copyright holder and then imported to and sold in the U.S., Costco Wholesale Corp. v. Omega, S.A. Under the doctrine of first sale or exhaustion, once the copyright holder has sold an authorized copy of the protected work, the purchaser takes the copy free of the copyright holders rights and can transfer it without obligation to or subject to restrictions of the copyright holder. Omega sells its watches for a higher price in the U.S. than it does in other countries. Costco purchased Omega watches overseas and began selling them in its U.S. stores. The issue on appeal is whether the overseas sales exhausted the copyright. The Ninth Circuit Court of Appeals held that the doctrine did not apply.

USPTO Withdraws Controversial Rules

The U.S. Patent and Trademark Office has announced that it will withdraw controversial new rules regarding claiming and continuation applications that have been the subject of a court challenge. Two court challenges were brought by independent inventor Dr. Tafas and by pharmaceutical giant GlaxoSmithKline, which were consolidated as Tafas v. Kappos. The case is currently pending appeal before the Court of Appeals for the Federal Circuit.

Federal Circuit Bar Association Model Patent Jury Instructions

The Federal Circuit Bar Association (“FCBA”) has recently released their latest draft of model patent jury instructions and is asking for comments. Comments may be sent by email to juryinstructions@fedcirbar.org. The FCBA announcement can be found here.

Director Kappos to patent examiners: Higher rejection rates does not equal higher quality

Professor Dennis Crouch of Patently O has reported that new USPTO Director Kappos sent an email to patent examiners rejecting the past leadership's attitude that higher rejections rates in recent years was a sign of increased patent quality. As discussed in a previous post, the USPTO needs a dramatic change in institutional culture and attitude if it is to restore its damaged relationship with the patent community and meaningfully address problems such as application backlog and declining revenues. The trend for several years has been for rejections to be more arbitrary and subjective, in part due to recent court decisions, but Director Kappos' message may be a sign that improvement is coming. They say "the proof of the pudding is in the eating." In the this case, the proof that the Examiners are listening will be if and when the examiner's corp improves the quality of its examination.

CAFC Reins in TTAB Fraud Decisions

The Court of Appeals for the Federal Circuit ruled yesterday that fraud on the U.S. Patent and Trademark Office (“PTO”) requires proof of actual intent to deceive, which may not be inferred merely because a trademark applicant made a misstatement that it should have known was false. The court held that “a trademark is obtained fraudently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” In re Bose Corp., 2008-1448, slip op. p. 7 (Fed. Cir., Aug. 31, 2009).

New PTO Director Must Change the Agency’s Culture

David Kappos’ biggest challenge as the new Director of the United States Patent and Trademark Office may be to change what has been called a “culture of fear” among patent examiners into a “culture of cooperation” with the patent community.

Supreme Court to Review Scope of Patentable Subject Matter

The U.S. Supreme Court agreed to review the en banc decision of the Court of Appeals for the Federal Circuit in In re Bilski (545 F.3d 943). In that decision, the Federal Circuit rejected its previous “useful, concrete and tangible result” test for patentable subject matter articulated in State Street (149 F.3d 1368). Finding that test inadequate or inappropriate, the court articulated two tests for patentability that are commonly referred to as the “machine-or-transformation” test. Under the new test, a claimed process is patentable if “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”