Overview
Letter from the Editor
Dear Friends and Colleagues,
Since opening our doors in 2008, Leason Ellis has developed a global practice that is recognized by both our clients and the legal press as one of the nation’s leading law firms dedicated to the practice of intellectual property law.
Over the last few years, especially with the pandemic, the way that business is conducted has changed and so have we. Our firm is entering a new stage in its growth as it remains faithful to the ideals that we hold dear, like innovation, keen insight, and business-driven counsel. We’ve refreshed our brand, we have a new(ish) website, and a new newsletter—one geared to helping you benefit from the insight of our practice.
Without further ado, we’re delighted to share the Spring 2022 edition of our firm newsletter, The Newtonian.
In this issue, in addition to firm news, you’ll read about typosquatting, the value of Schedule A proceedings against counterfeiters, the USPTO’s streamlined trademark expungement and reexamination rules, A.I. as a patent inventor, and other practice group updates with our thoughtful observations.
I’m honored to have been appointed as the Editor of The Newtonian, which has been published 30 times since the founding of the firm. I’d like to acknowledge the extraordinary contribution of Peter Sloane in launching the newsletter and shepherding its publication throughout the years. I’d also like to extend special thanks to the attorneys who helped pull this new version together, including Lauren Emerson, Lauren Sabol, Matthew Frisbee, and Stefanie Garibyan.
We hope you find value in this publication. Please feel free to share it with others and to share your thoughts with us at inquiries@leasonellis.com.
Warmly,
Henry Gabathuler
Senior Associate
Editor, The Newtonian
Does Artificial Intelligence Qualify as An Inventor of a U.S. Patent? No, At Least Not Yet
A group called the Artificial Inventor Project (AIP) launched a global effort to get an AI system listed as an inventor of a patent. See https://artificialinventor.com . To that end, the AIP filed patent applications on two inventions created by an AI system called “DABUS” in seventeen countries listing DABUS as the sole inventor. The USPTO refused the applications and the federal District Court for the District of Virginia agreed, ruling that an AI system cannot be named as an inventor on a patent on grounds that an inventor must be “a natural person” under the letter of U.S. patent…
Resolve Patent Litigation Without Costly Discovery
In some patent infringement cases, the interpretation of one or two key claim terms can drive the resolution of the case. Courts are more inclined in such cases to allow the parties to conduct limited claim construction discovery and Markman briefing early, and to defer regular fact and expert discovery until after the Court determines what the disputed claims mean. Recently, Leason Ellis attorneys successfully employed this strategy when they teamed up with Williams Mullen to defend a patent infringement suit relating to vape sensing technology in the Eastern District of New York. Before engaging in costly fact and expert…
Thoughts On Recent Expungement and Reexamination Cases
In December, the USPTO introduced streamlined rules for seeking cancellation of trademarks that (a) were not in use when the trademark application or Statement of Use were filed (reexamination), or (b) are at least three years old and cover marks that have never been used in U.S. commerce (expungement). The USPTO has since received about 50 petitions for expungement or reexamination, instituting only seven expungement proceedings and two reexamination proceedings. In one noteworthy proceeding concerning the mark GALAVAVA covering over a dozen goods in Class 21, a third-party petitioner was able to establish a prima facie case for expungement for…
Are Scammers Targeting Your Employees or Customers? Counter Typosquatting Through UDRP Proceedings
Scammers are becoming more sophisticated in their methods for defrauding businesses. One common scam utilises typosquatting—registering a domain name that is a misspelling of a company’s domain name—and creating a fraudulent website and/or fake emails appearing legitimate to trick unsuspecting customers into providing payment or sensitive information. Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings enable trademark owners to cost-effectively combat abusive registrations of domain names. UDRP proceedings are quicker and less costly than litigation, usually resulting in a decision within 1–2 months of filing. Relief available under the UDRP can include the transfer of the domain name registered in bad faith…
Inadvertent Mistakes On Copyright Registrations Are Not Fatal, Says The Supreme Court
Inadvertent mistakes on copyright applications—whether mistakes of law or mistakes of fact—will not invalidate a copyright registration, according to the Supreme Court. Specifically, the Court considered the safe harbour provision of the Copyright Act to mean that a certificate of registration is valid: “regardless of whether the certificate contains any inaccurate information, unless—(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. , 525 U.S.…
Copyright Office Considers Program For Deferred Examination
The Copyright Office has kicked off a study on deferred examination. The study is to find a workable system for copyright applicants to submit their applications and delay examination until a later date (possibly when the work is infringed, and the applicant wishes to sue). In theory, such a system could decrease initial filing costs, which would benefit creators of many works. Another benefit is the decreased administrative burden on the Office, which loses money on every application it examines. The solution, however, raises a host of logistical and other concerns, and industry groups have offered mixed responses to the…
Schedule A Proceedings—Swift Attorney Action Can Turn Wheels of Justice Quickly, Even During A Pandemic
In Schedule A proceedings, plaintiffs file suit against counterfeiters and move for ex parte relief while keeping the defendants’ identities under seal. After injunctive relief is obtained, defendants can be served by email. Most defendants never appear, resulting in default judgments with relief ranging from transferring domain names to collecting damages from frozen assets in payment services like Amazon and PayPal. Unbeknownst to a Leason Ellis client who runs a legitimate international business, an improper patent infringement Schedule A complaint was filed against it by a competitor in the Northern District of Illinois, resulting in an ex parte preliminary injunction…
