Overview
Letter from the Editor
Dear Friends and Colleagues,
Steve Jobs famously said, “This is what customers pay us for—to sweat all these details.” That’s pretty much the day-to-day experience of a Leason Ellis attorney, and that notion is the throughline of the case discussions in this issue. To what extent can New York employers contract to own employee inventions? How will the USPTO’s proposed trademark filing fee structure affect trademark filing strategy? How will developments in Chinese law impact brand owners in that important market? You guessed it. The answer in each of these scenarios is: it depends. The practice group insight discussions in this edition flesh out the details for you. The story featured on the cover is about another hot topic: registering a copyright on a work created using AI.
Patent
Employee Invention Assignment Agreements Face Stricter Scrutiny Under New York Employee Protection Laws
Trademark
USPTO Proposes New Fee Schedule for Trademark Applications
China: Two Things Brand Owners Should Keep in Mind in 2024
Copyright
Claiming Copyright: What to Know Before You Apply to Register Your AI-Generated Work
Litigation
Federal Circuit Applies Extraterritoriality Analysis from WesternGeco to Find Patent Owner Not Entitled to Recover Royalties on Foreign Sales of Infringing Products Exported from U.S.
The issue kicks off with Firm News, where we share summaries of three positive results Leason Ellis has recently helped clients achieve. As usual, we wrap up with In Case You Missed It—an overview of some of the activities our attorneys have undertaken since our last issue.
We hope you find value in The Newtonian. Please feel free to share it with others and to send your thoughts to us at inquiries@leasonellis.com.
Warmly,
Henry A. Gabathuler
Partner
Editor, The Newtonian
China: Two Things Brand Owners Should Keep in Mind in 2024
There have been two notable developments in the Chinese legal landscape, an important market for brand owners. First, there has recently been uncertainty in the Chinese courts about whether original equipment manufacturers (OEM), which only export branded products without offering or advertising the goods in China, are subject to claims of trademark infringement. Historically, Chinese courts have taken the position that simply manufacturing branded goods in China, without engaging in the Chinese market, did not qualify as “trademark use.” In 2019, the Chinese Supreme Court held in the “Honda Decision” that OEM production in China alone qualifies as “trademark use.”…
Claiming Copyright: What to Know Before You Apply to Register Your AI-Generated Work
The Copyright Office has plans to update the Compendium of U.S. Copyright Office Practices to include AI-related registration examples. The Office will also be issuing a report on AI and Copyright, the second section of which will address issues related to copyrightability of works containing AI-generated elements. In the interim, the Office has released guidance on this issue (Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence, 88 Fed. Reg. 16,190, 16,192 (Mar. 16, 2023) (“AI Registration Guidance”)), and it has published a handful of Review Board decisions regarding particular works that give insight into what the Office will…
Federal Circuit Applies Extraterritoriality Analysis from WesternGeco to Find Patent Owner Not Entitled to Recover Royalties on Foreign Sales of Infringing Products Exported from U.S.
United States Patent rights are territorial, and thus ordinarily apply to acts within the U.S. In limited circumstances, patent owners can overcome the presumption against extraterritorial application of patents to seek damages from foreign sales. Notably, in WesternGeco LLC v. ION Geophysical Corp. , 585 U.S. 407 (2018) (“ WesternGeco ”), the Supreme Court established a two-part analysis to determine whether a patent owner was entitled to recover lost profits damages on foreign sales of a product found to be infringing under 35 U.S.C. § 271(f)(2), which makes it an act of infringement to supply a component “especially made” for…
USPTO Proposes New Fee Schedule for Trademark Applications
On March 26, 2024, the U.S. Patent and Trademark Office (“USPTO”) issued a notice of proposed rulemaking to increase fees for many types of trademark filings. The proposal is subject to public comments, and the subsequent Final Rule is set to go into effect on November 15, 2024, the start of the USPTO’s next fiscal year. The proposed fee changes include: Application filing fees Eliminating the TEAS Plus and TEAS Standard distinction. Replacing TEAS with a basic filing fee of $350 per class. Discontinuing the $500 per-class filing fee for extensions of protection from International Applications and replacing it with…
