IP Update, Vol. 6, No. 10, October 2003
October 2003
IN THIS ISSUE
- Patents / Enablement - Anticipatory Reference Must Enable the Subject Matter of Claims at the Time They Were Filed
- Patents / Interferences - Reduction to Practice Does Not Require Testing Under Conditions of Actual Use
Patents / Doctrine of Equivalents
Festo Alters Scope of Patent Equivalents—Again
By Marc E. Brown and Paul Devinsky
In the ninth judicial decision in a lawsuit that was originally filed about 15 years ago, the U.S. Court of Appeals for the Federal Circuit, sitting en banc and after sifting through no less than 15 amicus briefs, laid down a new set of rules for determining the scope of a prosecution history estoppel. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., Case No. 95-1066 (Fed. Cir. Sept. 26, 2003).
As recently affirmed by the U.S. Supreme Court (in Festo VIII), whenever an applicant for a patent narrows the scope of his or her claims by amendment and the patent owner later tries to rely on the doctrine of equivalents to establish infringement, in order to avoid prosecution history estoppel, the patent owner must demonstrate that the amendment was not made for a reason "relating to patentability."
If he or she cannot, the application of prosecution history estoppel will prevent the scope of a patent claim from being expanded under the doctrine of equivalents to embrace a product or process that is only insubstantially different from the element that was amended. Once it is determined that an estoppel does apply, the insubstantially different element in the accused product or process will only be embraced as an equivalent if the patent owner can prove that "one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."
This test could be met, the U.S. Supreme Court said in Festo VIII, if:
"[T]he equivalent [was] unforeseeable at the time of the [amendment]";
"[T]he rationale underlying the amendment [bore] no more than a tangential relationship to the equivalent in question"; or
"[T]here [was] some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question."
The Federal Circuit in Festo IX reaffirmed these principals as stated by the U.S. Supreme Court and went on to set forth guidelines as to when each of these tests could be met. Before addressing the guidelines, the Federal Circuit addressed an overarching issue, holding that it is up to the court, not the jury, to decide whether the evidence is sufficient to overcome an estoppel: "Questions relating to the application and scope of prosecution history estoppel … fall within the exclusive province of the court."
Then, directing its attention to the first test—when the equivalent would have been unforeseeable at the time of the amendment—the Federal Circuit said the demarcation of such evidence "is best left to development on a case-by-case basis." Nevertheless, the Court set forth "general guidance," noting that unforseability must be determined from the perspective of a hypothetical person of ordinary skill in the art. An allegedly equivalent element that was not known at the time of the amendment, the Court said, "would not have been foreseeable." An allegedly equivalent element that was known at the time of the amendment "would more likely have been foreseeable." If the element was also known in the field of the invention at the time of the amendment, the court said that the equivalent "certainly should have been foreseeable."
The Federal Circuit pointed out that the second test—the "tangential relation" test—examines "whether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent." While the Court did not define the scope of this test any more precisely, it did state that an amendment made to avoid prior art that contains the equivalent is not tangential. The Court said that the tangential relation test must be determined solely based on the prosecution history record. Still, the Court left the door open to testimony from those skilled in the art "when necessary" to explain the meaning of the record.
The Federal Circuit observed that the third test—the "some other reason" inquiry—"while vague, must be a narrow one." The Court said the test may be satisfied by proof there was "some reason, such as the shortcomings of language, why the patentee was prevented from describing the alleged equivalent when it narrowed the claim." Proof that the equivalent was an "inferior and unacceptable design," however, is insufficient to meet this requirement. The Court also said that the proof should be limited to the prosecution history record "[w]hen at all possible," but did not explain when extrinsic proof would be permitted.
Supreme Court Decision Does Not Alter $50 Million Punitive Damages Award
Contact Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit has affirmed its 2001 decision that approved a $50 million punitive damages award against DeKalb Genetics Corporation. The Federal Circuit previously affirmed a verdict that DeKalb fraudulently induced Rhône-Poulenc Agro, S.A. (RPA) to enter into a 1994 license agreement relating to an optimized transit peptide (OTP) genetic material useful in growing herbicide-resistant corn plants. Now, on remand from the Supreme Court to reconsider the reward in light of the Court’s latest pronouncements regarding due process constraints on punitive damages awards, the Federal Circuit found DeKalb’s conduct was sufficiently reprehensible to support the punitive damages award. Rhône-Poulenc Agro, S.A. v. DeKalb Genetics Corp., Case No. 00-1218-1350 (Fed. Cir. Sept. 29, 2003).
The case arose from RPA’s claims that DeKalb fraudulently induced RPA to enter into the license agreement by failing to share certain successful field test results with RPA, which were the result of collaborative efforts between the two companies. Instead of sharing those results, DeKalb allegedly used them to backcross the successful OTP-containing corn plants with commercial corn varieties, thus gaining an advantage on any potential competition. RPT alleged that by withholding its knowledge of the successful field test results, DeKalb was able to negotiate a more advantageous license agreement with RPA.
At trial, the jury awarded RPA $1 in nominal damages, $15 million in unjust enrichment recovery and $50 million in punitive damages. In its 2001 opinion, the Federal Circuit affirmed, finding that the jury’s award of punitive damages was not unconstitutionally excessive. The Court based its decision on the factors set forth by the Supreme Court in its 1996 BMW vs. Gore decision, and found "DeKalb’s conduct was sufficiently reprehensible to support the award of punitive damages."
The Supreme Court vacated the Federal Circuit decision and remanded the case for reconsideration in light of its recent punitive damages opinion in State Farm v. Campbell. In its decision on remand, the Federal Circuit found that DeKalb’s conduct fell within the specific State Farm factors that weighed in favor of sustaining a punitive damages award. The Federal Circuit noted that the State Farm court explicitly listed "intentional malice, trickery, or deceit" as a factor
to consider in determining whether a party’s conduct was "reprehensible" for purposes of imposing punitive damages: "The Supreme Court’s addition of intentional malice, trickery, or deceit as a specifically identified criterion for determining reprehensibility directly supports [our prior] holding."
The Federal Circuit also rejected DeKalb’s claim that, under State Farm, the $50 million in punitive damages unconstitutionally exceeded the $15 million in compensatory damages awarded by the jury. As noted by the Federal Circuit, under State Farm "an award of more than four times the amount of compensatory damages might be close to the line of constitutional impropriety," but found that here "the proportion of punitive damages to compensatory damages does not even approach the possible threshold of constitutional impropriety."
After-Final Amendment Unaccompanied by Explanation Will Not Broaden Claim Scope
By Astrid R. Spain
In one of several recent decisions turning on claim construction, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment that Transkaryotic Therapies, Inc., (TKT) did not infringe a patent licensed exclusively to Genzyme Corporation (Genzyme) on methods of producing a therapeutic human enzyme. Genzyme Corporation and Mount Sinai School of Medicine New York University v. Transkaryotic Therapies, Inc., Case No. 02-1312 (Fed. Cir. Oct. 9, 2003).
Genzyme is the exclusive licensee of the patent-in-suit that claims a method of producing human α-galactosidase A (α-Gal A) and cells engineered to express and secrete active human α-Gal A, which is useful for treating patients suffering from Fabry disease. The claimed method encompasses “culturing of a mammalian cell containing a chromosomally integrated nucleotide sequence encoding human α-Gal A.” TKT’s allegedly infringing product utilizes a technique known as gene activation and involves insertion of a regulatory DNA sequence into a human host cell to activate expression of the endogenous human α-Gal A protein from the endogenous human cellular gene. None of the parties disputed that TKT’s technique does not introduce an exogenous α-Gal A gene into human host cells.
TKT argued that the term “chromosomally integrated” requires the action of inserting a human α-Gal A gene into the host chromosome. Genzyme countered that the claims encompass TKT’s gene activation techniques involving activation of an endogenous α-Gal A gene because the origin of nucleotide sequences inserted into a target cell’s chromosome is not specified. According to Genzyme, the claims require only that a chromosome in the cell must contain a nucleotide sequence that encodes human α-Gal A enzyme. After the district court adopted Genzyme’s position on the meaning of the term “chromosomally integrated,” TKT conceded it could not prevail on infringement. The appeal followed.
The Federal Circuit, noting that the specification does not expressly define “chromosomally integrated,” initially looked to the ordinary and accustomed meaning of the term and found that the claim language suggests the incorporation of exogenous genetic code into the chromosomal material of the host cell.
The remaining issue was whether the exogenous sequences had to come from outside the host cell or could derive from within the host cell but outside the critical chromosome. The Court rejected Genzyme’s argument that a supplemental, after-final amendment broadened the claims to eliminate the requirement for inserting an exogenous gene into a host cell. Noting that in contravention of applicable U.S. Patent and Trademark Office rules requiring that after-final claim amendments altering the substantive scope of claims be accompanied by an explanation about the necessity of the amendment, the prosecution history here was silent about the broadening amendment. The Court refused to accept Genzyme’s position that the examiner vastly broadened the claims upon entering the supplemental after final amendment to embrace the over expression of human α–Gal A sequences endogenous to a host cell. The Court found that the combined weight of an applicant’s submission of exogenous vector sequences in compliance with the deposit requirement, the specification, the arguments made to distinguish prior art, the examiner’s responses and a third-party declaration touting the inventiveness of the recombinant expression scheme could not be outweighed by an eleventh-hour amendment unaccompanied by an explanation.
Anticipatory Reference Must Enable the Subject Matter of Claims at the Time They Were Filed
By Thomas A. Haag, Ph.D.
In a case involving a patent for transgenic rodents, the U.S. Court of Appeals for the Federal Circuit reversed and remanded the grant of summary judgment of anticipation by inherency where the patent was found to be anticipated by a reference that prophetically contemplated the claimed rodents. The Federal Circuit held that invalidity based on anticipation requires that the reference must enable the subject matter of the claims at issue without undue experimentation. Elan Pharmaceuticals, Inc. v. Mayo Foundation, Case No. 00-1467 (Fed. Cir. Oct. 2, 2003).
The district court granted the Mayo Foundation’s motion for summary judgment of patent invalidity on the grounds that Elan’s two patents in suit, both entitled "Transgenic Animals Harboring APP Allele Having Swedish Mutation" (collectively the Elan patents), were invalid as anticipated by a prior art patent to Mullan entitled "Nucleic Acids for Diagnosing and Modeling Alzheimer’s Disease" (the Mullan reference) under the principles of inherency.
Alzheimer’s disease is associated with abnormally high amounts of beta-amyloid peptide in the brain. This peptide is formed by cleavage of amyloid precursor protein (APP) by two enzymes resulting in ATF-beta-APP and beta-amyloid peptide. It is unknown why certain individuals are prone to increased beta-amyloid peptide deposition. However, Mullan showed that individuals expressing a mutant form of APP, i.e., the "Swedish mutation," have substantially increased the likelihood of developing the disease.
The Mullan reference not only discloses the Swedish mutation, but it also contemplates creating a transgenic mouse for expressing an APP containing it. To this end, Mullan provided a survey of a range of protocols for the genetic manipulation of rodents. However, no guidance was given as to which method would best succeed. The inventors of the Elan patents ultimately used one of
the cited protocols to create a rodent as contemplated by the Mullan reference.
The claims at issue related to transgenic rodents comprising a transgene encoding an APP having the Swedish mutation. In order to distinguish the claimed subject matter from the Mullan prior art, the inventors amended the claims during prosecution to include the recitation that the mutant APP is processed to ATF-beta-APP in a sufficient amount to be detectable in the rodent’s brain.
In support of its summary judgment motion, Mayo argued, and the district court agreed, that the claims were invalid because the Mullan reference inherently taught the claimed subject matter. On appeal, the Federal Circuit noted that in the course of the summary judgment proceeding the factual basis of Elan’s argument related to whether Mullan’s disclosure was enabling. Thus, the Federal Circuit held that enablement, not inherency, was at issue. Citing In re Donohue, the Federal Circuit held that to be anticipating, the disclosure of a reference must be adequate to enable the possession of the claimed subject matter, and it is insufficient for the reference to simply name or describe the claimed subject matter, if, based on the reference disclosure, it cannot be produced without undue experimentation.
The Court remanded the case to the district court for a factual determination of anticipation based on enablement, taking into account whether the uncertainty and difficulty of producing a transgenic animal constitutes undue experimentation when presented in the context of a compilation of known methods of gene transfer. For guidance in making such a determination, the Court cited Enzo Biochem, Inc. v. Calgene, Inc. for the proposition that enablement is determined by whether undue experimentation would have been required to make and use the claimed invention at the time of filing of the claimed subject matter. Accordingly, the issue on remand is whether Mullan would have enabled a person of ordinary skill, at the time of filing of the applications for the Elan patents, to practice the Elan patent claims without undue experimentation.
Practice Note: This case is indicative of the tug-of-war in biotechnology between providing protection for disclosed prophetic ideas versus rewarding those who later actually reduce those ideas to practice. Because of the incremental and sometimes unpredictable nature of the technology, subject matter that might appear to be obvious on its face may have proven difficult to implement based on prior art disclosures alone and is, therefore, rendered patentable as the prior art did not enable what is later claimed. Thus, it seems inevitable that the protracted "battle of the experts" to determine what constitutes undue experimentation at a given point in time will continue.
To Qualify as "Corresponding Structure" Under Sec. 112, ¶6 the Specification Must Associate That Structure With the Claimed Function
By Shamita D. Etienne
In a split panel opinion, the U.S. Court of Appeals for the Federal Circuit recently held that the district court erred in including software as an additional corresponding structure to a means-plus-function claim term where the specification failed to clearly link software as a structure for performing the identified function. Medical Instrumentation and Diagnostics Corp. v. Elekta AB et. al., Case No. 03-1032 (Fed. Cir. Sept. 22, 2003).
The asserted patent claim describes a system for planning surgical treatment using a presentation of images from multiple scanning sources and recites a "means for converting said plurality of images into a selected format" limitation. In construing that limitation, the district court applied the traditional two-step analysis. First, the court identified the particular function performed by the claimed means (in this case "converting the acquired image into a particular selected format"). Then the court examined the specification to identify the corresponding disclosed structures for performing that function. The accused structure used a software based digital-to-digital conversion technique. Recognizing the only corresponding structures explicitly described in the specification were analog-to-digital conversion circuits, i.e., a "frame grabber video display board" and a "computer video processor," the district court nevertheless concluded that "because techniques for performing [digital-to-digital] conversions were well known to those of skill in the art at the time the application was filed, a person of skill in the art would understand software to be a corresponding structure for the converting function."
The Federal Circuit reversed, noting that rather than inquiring whether a person of ordinary skill in the art would have been able to write a software program to perform the identified function, the proper inquiry should have been whether a person of ordinary skill in the art would have understood the specification to encompass software for digital-to-digital conversion as structure corresponding to the claimed function. The Federal Circuit reasoned that "[i]f the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid that price but is rather attempting to claim in functional terms unbounded by any reference to structure in the specification." Because neither the specification nor the prosecution history clearly linked software to the converting means, the Federal Circuit held that the district court erred in identifying software as a corresponding structure for the "means for converting" and granted a judgment of non-infringement as a matter of law.
Claim Term with Accepted Scientific Meaning Not Limited to Specific Examples from the Specification
By Astrid R. Spain
In a decision turning on claim construction, the U.S. Court of Appeals for the Federal Circuit recently vacated a district court’s summary judgment that Andrx Pharmaceuticals, Inc.’s (Andrx) proposed generic drug did not infringe a patent held by Glaxo Wellcome, Inc. (Glaxo) covering its antidepressant Wellbutrin SR and remanded to the lower court for further proceedings on the issue of infringement. Glaxo Wellcome Inc. v. Andrx Pharmaceuticals, Inc., Case No. 02-1348 (Fed. Cir. Sept. 22, 2003).
Glaxo’s patent covers sustained release formulations containing the active ingredient bupropion hyrdrochloride. The claims at issue recite the active ingredient, the controlled release agent hydroxypropyl methylcellulose (HPMC), the particular release rates and plasma levels. Glaxo sells the corresponding tablets as the antidepressant Wellbutrin SR and the anti-smoking medicine Zyban. Together, the two drugs generated sales of $375 million in the second quarter
of 2003 .
Andrx filed two abbreviated new drug applications (ANDA) seeking approval of generic counterparts of the Glaxo sustained release products, asserting identity of active ingredient and properties with those of Wellbutrin SR and Zyban.
During prosecution of the patent-in-suit, Glaxo had limited the claims to the release agent HPMC and introduced an amendment reciting the release rate of the active ingredient. In granting summary judgment of non-infringement to Andrx, the district court found that, based on the recitation of a particular release rate, the claims could no longer encompass all grades of HPMC and construed the amended claims as limited to the particular grade of HPMC recited in the example. Andrx argued that its HPMC is of lower molecular weight and viscosity than the grade recited in the example of Glaxo’s patent-in-suit, and Andrx’s HPMC does not affect the release rate. Glaxo countered that this argument was inconsistent with the representation made by Andrx to the FDA that Andrx’s tablets are bioequivalent to the Glaxo tablets.
Relying on the claims, specification, prosecution history and expert testimony, the Federal Circuit decided that the lower court erred in construing the claims as limited to a particular grade or molecular weight of HPMC. According to the Federal Circuit, the correctly construed claims only require that HPMC be present in the recited amount and that the product have the release rate and other properties recited in the claims. Pointing to the fact that the properties and use
of HPMC to control release rates are well known, the Federal Circuit noted that "[w]hen a claim term has an accepted scientific meaning, that meaning is generally not subject to restriction to the specific examples in the specification."
Sollac "Steels" a Victory — No Infringement of Narrow Claims and No Enablement of Broad Claims
By David A. Spenard
The U.S. Court of Appeals for the Federal Circuit upheld a summary judgment motion that found in favor of the defendant because the narrower claims of one of the plaintiff’s patents was found to be not infringed, and the broader claims of a related patent were found to be invalid for lack of enablement. AK Steel Corp. v. Sollac, Case Nos. 03-1074, -1075, -1085, -1086 (Fed. Cir. Sept. 23, 2003).
This appeal involved two separate AK Steel patents (the `135 and the `549 patents), both of which relate to a process of producing hot-dip, aluminum-coated steel by passing heated steel strips through molten aluminum. In the process, care must be taken to ensure the aluminum adheres well to the steel and does not result in the flaking of the aluminum when the steel is subsequently bent. The `549 patent is a continuation of the `135 patent and, although they share an identical specification, the claims of the `549 patent are broader in scope than those of the `135 patent.
The Federal Circuit agreed with the district court’s findings regarding claim construction and infringement with respect to the `135 patent. The term "consisting essentially of aluminum" (when referring to the coating metal) was interpreted to mean that "the silicon content should not exceed about 0.5%." As was made clear in the specification, any amount of silicon greater than about 0.5% would "materially affect the basic and novel properties of the invention," therefore, the coating metal could not be properly construed to include a greater amount. Because Sollac’s coating metal, aluminum, contained 8.0 to 8.5% silicon, the district court found no infringement. The Federal Circuit agreed.
The Federal Circuit also agreed with the district court’s construction of the claims in the `549 patent and the ultimate finding of invalidity due to lack of enablement. The claim limitation of "up to about 10% silicon" for the composition of the coating metal was interpreted to include the 10% endpoint, as indicated in the prosecution history. However, the Court found that such a construction could not be reconciled with the patent specification, which stated that the invention could not be practiced using a coating metal having a content of silicon greater than about 0.5%. Thus, the Court held that one of ordinary skill in the art could not practice the claimed invention without undue experimentation, therefore, the claims were not enabled by the specification.
The Federal Circuit noted that the district court found different constructions for similar claims from different patents that were supported by the same specification; a situation it regarded as "unusual." However, according to the Court, those constructions were a necessary consequence of clear statements in the specification, the prosecution history and the canon of claim differentiation. Accordingly, even if two sets of similar claims from two separate-but-related patents share the same specification, the claims may be properly construed differently, and one patent may be found invalid for lack of enablement while the other is not.
Federal Circuit Questions Equity of Opportunistic Offensive Collateral Estoppel
By James J. Wolfson and Justin B. Uhlemann
The U.S. Court of Appeals for the Federal Circuit, in vacating a final judgment of patent infringement supported by offensive collateral estoppel, remanded for a finding of whether a plaintiff "could easily have joined" in an earlier action and "therefore should be denied the benefits of a favorable outcome in that case because he chose not to expose himself to the risk of an unfavorable one." Dana v. E.S. Originals, Inc., 342 F.3d 1320 (Fed. Cir. Sept. 8, 2003).
Dana, the prior owner of a patent for flashing disco shoes, sought damages for alleged pre-assignment infringement in the District Court in Florida. The Florida court granted partial summary judgment in his favor, finding that the defendants were collaterally estopped from contesting the issues of infringement and validity due to earlier orders issued by a sister court in California. The California court had granted partial summary judgment in favor of Dana’s assignee, holding the patent was enforceable, its claims were not invalid and the defendants infringed under the doctrine of equivalents. Shortly thereafter, the California parties entered into a settlement agreement memorialized by a consent decree.
Applying the law of the Eleventh Circuit to this "procedural issue," the Federal Circuit held that the legal prerequisites for the applicability of collateral estoppel were satisfied. Specifically, the Court held that the issues of infringement and patent validity were identical to issues critical and necessary to the California orders, and the defendants had a full and fair opportunity to litigate these issues in the prior proceeding. Specifically, applying the Eleventh Circuit’s flexible approach that accords collateral estoppel effect to "orders that do not constitute final, appealable judgments if they are sufficiently firm to be accorded conclusive effect," the Federal Circuit noted that the California parties were aware of the potential preclusive effect of rulings there, and the California court conducted hearings on both infringement and validity, set forth its findings of fact and conclusions of law in fully reasoned opinions and made clear that the orders fully and finally resolved the matters addressed.
Nonetheless, the Federal Circuit invoked "equitable factors weighing against the offensive use of collateral estoppel" in determining that the Florida judgment of infringement was an abuse of discretion. Although the Federal Circuit agreed that there was no showing that defendants’ exposure to damages would redundantly include its exposure in the California action, the California orders were not inconsistent with any previous judgments and the second action would not afford defendants previously unavailable procedural advantages, the Court emphasized the free rider problem implicated by the opportunistic nature of offensive collateral estoppel. "Because potential plaintiffs are not bound by any decision favorable to the defendant in earlier lawsuits, but can seek to take advantage of any decision favorable to another plaintiff, the availability of offensive collateral estoppel creates a no lose incentive for plaintiffs to hold back and await developments in other plaintiffs’ cases." As it was uncontroverted that Dana was aware of the California litigation, the Federal Circuit remanded for a finding of whether he "could easily have joined" that action, thereby precluding reliance on offensive collateral estoppel.
Reduction to Practice Does Not Require Testing Under Conditions of Actual Use
By Lawrence T. Cullen
In affirming the priority award of the U.S. Board of Patent Appeals and Interferences (Board), the U.S. Court of Appeals for the Federal Circuit held that an inventor is not required to test an invention under conditions of actual use to establish that an invention will work for its intended purpose. Tasket v. Dentlinger, Case No. 03-1151 (Fed. Cir., Sept. 26, 2003).
In the interference proceeding before the Board, Tasket was named senior party based on an application filing date six days prior to the filing date of the application of Dentlinger, the junior party. The count in the interference covered a process for the automated purchasing of prepaid telephone services. While Tasket relied on its filing date, Dentlinger presented evidence of an earlier conception and actual reduction to practice, the latter in the form of a test using a dummy checking account and an internal switch. In the test, an ATM device received a request to purchase a specified amount of telephone service, "withdrew" money from the dummy account through the internal switch and printed a receipt. Based on that evidence, the Board found that Dentlinger established conception and actual reduction to practice prior to Tasker’s filing date and awarded Dentlinger priority of invention.
Tasket appealed, arguing that Dentlinger did not prove a successful actual reduction to practice prior to Tasket’s priority date. Tasket argued that since only a dummy account and an internal switch were used in the test, no financial transaction occurred and, therefore, the test did not establish that the invention would work for its intended purpose.
The Federal Circuit rejected Tasket’s argument, holding that Dentlinger was not required to test the invention under conditions of actual use to determine that the invention would work for its intended purpose: "To hold otherwise would be to require an inventor to have created a viable commercial embodiment before the Board or a court could find reduction to practice. This the law does not require."
Trademarks / Disparaging Marks
Hail to the "Redskins"—Not an Unregisterable Disparaging Term
By Ann M. Brose
The U.S. District Court for the District of Columbia overturned a decision of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (Board) canceling six federal trademark registrations belonging to the Washington Redskins football club, concluding that the petitioners did not present sufficient evidence to prove the mark was disparaging to Native Americans at the time it was registered, and the petitioners also waited too long to bring their original claim. Pro-Football, Inc. v. Harjo, No. 99-1385, 2003 U.S. Dist. LEXIS 17180 (D.D.C. Sept. 30, 2003).
Harjo and six other Native Americans petitioned the Board in 1992 to cancel Pro-Football’s six trademarks arguing that the use of the word "Redskin(s)" was scandalous and disparaging to Native Americans, in addition to casting this same group into contempt and disrepute in violation of the Lanham Act. The Board agreed with Harjo based on the evidence provided by expert linguists’ testimony as to the meaning and use of the word "Redskin" and a survey of the United States generally and Native American populations regarding the personal offensiveness of the word.
Pro-Football contended that the evidence presented by Harjo was irrelevant as to whether the mark disparaged and brought into contempt or disrepute Native Americans. The district court agreed. "Even a cursory review of the [Board’s] findings of fact reveal that there is no direct evidence in the findings that answers the legal question posed. … None of the findings of fact made by the [Board] tend to prove or disprove that the marks at issue ‘may disparage’ Native Americans, during the relevant time frame, especially when used in the context of Pro-Football’s entertainment services."
Specifically, the court criticized the survey because it "did not test the participants’ view of the term ‘Redskin(s)’ in the context of Pro-Football’s services and it did not measure the attitudes of the survey participants as they were held during the relevant time periods." Additionally, the court found the Board’s overall approach flawed. The Board admitted that it did not base its decision on any one piece of evidence but by viewing the cumulative effect of the whole record. The court found that by piecing bits of evidence together in this way, the Board made its "inferences … predicated on assumptions that are not contained anywhere in the record."
The court also found that the defense of laches, or delay in filing the complaint, would preclude the cancellation of the trademarks. The best time to resolve that case would have been in 1967 (when the mark was first registered) or shortly thereafter. Rather the petitioners waited 25 years to formally object to the use of the term "Redskins," resulting in no direct or circumstantial evidence as to whether the mark was disparaging at the time of registration.
The Madrid Protocol and Expansion of the European Community
By Richard Y. Kim
Madrid Protocol
On November 2, 2003, United States nationals will be able to obtain trademark rights in a number of member countries through the International Registration system. The Madrid Protocol provides a streamlined and centralized filing procedure for obtaining and maintaining trademark protection in the member countries and allows the electronic filing of a single application with a single filing fee in one language (English, French or Spanish) to obtain national trademark rights in the applicant’s choice of approximately 60 countries at a lower cost than filing in each country individually.
The International Registration, which is issued after compliance with simple informalities, must be based on a basic application or registration for the identical mark in the applicant’s home country. The applicant can then request extensions of the International Registration to any or all of the member countries. These "extensions" will then be reviewed by the national trademark offices for compliance with both substantive and procedural local laws and requirements. An applicant will not have to retain local trademark counsel until and unless the national trademark office refuses the application and/or issues an Office Action.
The main advantages of the Madrid Protocol system are its potentially significant cost savings and ease of administration. The system has other advantages, including a more rapid trademark application examination process (for most countries), centralized renewal process (i.e., one renewal application and one renewal fee), and centralized recordation of changes of name and assignments.
There are, however, potential drawbacks to the Madrid Protocol. The International Registration (and its extensions) cannot be broader than the basic application or registration upon which it is based. This may present a particular disadvantage to U.S. applicants basing their International Registrations on U.S. applications or registrations because of the more stringent requirements of the U.S. Patent and Trademark Office with regard to descriptions of goods and services. Furthermore, if the basic registration is cancelled within the first five years of the International Registration term, trademark protection in the other designated member countries would also terminate, forcing the trademark owner to convert the extensions into national applications to continue to protect trademark rights.
Expansion of the European Community
The European Community Trademark (CTM) registration system affords trademark owners with the opportunity for protection of their trademarks in the 15 current member countries of the European Union. This first to file system does not replace the existing national trademark registrations systems, but coexists with them. A single written CTM application may result in a registration that provides protection in Austria, Belgium, the Netherlands, Luxembourg, Denmark, France, Finland, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden and the United Kingdom.
On May 1, 2004, ten additional countries will join the European Union, thus expanding coverage of a CTM registration. These new countries are Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, Malta, Slovakia, and Slovenia. Existing CTM applications and registrations, filed or obtained prior to the inclusion of the ten additional countries, will automatically extend to the new member countries. However, an owner of prior trademark rights in a new member country can prevent use of a later filed CTM mark in the national country in which it has prior rights.
There are advantages to filing new CTM applications as soon as possible. For example, CTM applications filed before November 1, 2003 will obtain additional benefits, such a avoiding some refusals based on national laws of the new member countries, e.g., lack of distinctiveness (a CTM mark must be considered distinctive in all of the member countries to be registered). Furthermore, by filing before November 1, 2003, an applicant can avoid potential oppositions based on the prior rights of trademark owners in the ten new member countries.
U.S. PTO Announces Plan for Improving Quality of Biotech Restriction Practice
By: David Gay
The U.S. Patent and Trademark Office (USPTO) has instituted a five-point action plan aimed at improving the quality of restriction practice for biotechnology, pharmaceutical and organic chemistry patent applications. This restriction practice action plan implements the following administrative procedures.
1. Publication of exemplary claim sets that could properly be restricted into separate inventions, but will instead be examined together because to do so does not impose a serious burden on the examiner.
2. Emphasize rejoinder practice by inclusion of a form paragraph with all restrictions reminding applicants of their option to request rejoinder under appropriate circumstances.
3. Implement restriction practice training to all examiners within applicable art units and make the training materials publicly available on the USPTO website.
4. Implement reviews of examiner restriction decisions throughout applicable art units to promote consistency.
5. Periodic reassessment of the plan implementation by monitoring the quality of restrictions, determining the average number of divided applications, instituting special review of applications where restriction decision has been petitioned and surveying USPTO customer perception of restriction practice.
Initiation of the restriction practice action plan is based on internal work product reviews and input from applicants and attorneys. Full implementation is expected to be completed within six to nine months.
