U.S. Supreme Court: states are immune from copyright infringement liability

A new Supreme Court decision holds that states are immune from infringement suits under the United States Copyright Act, despite a 1990 law that attempted to remove states’ sovereign immunity in copyright infringement cases.

In Allen v. Cooper (decided March 23, 2020), the Court considered a case involving videos and photos of a shipwreck that the state of North Carolina published online. The owner of the copyrights sued the state for copyright infringement. The state moved to dismiss the suit on the ground of state sovereign immunity. The copyright holder countered that the Copyright Remedy Clarification Act of 1990 (CRCA) removed states’ sovereign immunity in copyright infringement suits.

In its decision, the Court noted that “a federal court generally may not hear a suit brought by any person against a nonconsenting State.” However, exceptions can be made if (1) Congress enacts “unequivocal statutory language” that takes away states’ immunity in defined situations, and (2) some constitutional provision permits the encroachment on states’ immunity. The Court found that the CRCA met the first test, but not the second test, and thus did not qualify for an exception.

In particular, the Court noted that Article I (the Intellectual Property Clause) of the U.S. Constitution gives Congress the power to secure copyright holders the exclusive right to their discoveries, but the Clause says nothing about abrogating states’ sovereign immunity.

The Court’s decision harmonizes copyright law with patent law. In a 1999 decision (Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank), the Court reached the same conclusion regarding states’ sovereign immunity and the Patent Act.

CARES Act authorizes USPTO to extend certain patent and trademark deadlines

NOTE:  A more recent post with specific details about extended deadlines is available at this link.

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

In the United States, many filing deadlines are set by statute. Because of that, as of the date of this writing, the United States Patent and Trademark Office (USPTO) has not yet extended patent or trademark deadlines, as it did not have authority to do so. Section 12004 of the CARES Act gives the USPTO Director to toll, waive or modify statutory deadlines under the Patent Act, the Trademark Act, and the Leahy-Smith America Invents Act.

The USPTO is now permitted to extend deadlines that fall between March 13, 2020 and May 12, 2020.

The Act also gives similar authority to the Register of Copyrights to extend copyright filing deadlines.

Note that no deadlines are actually extended yet. We expect the USPTO and Copyright Office to act on this quickly. IP Spotlight will post details of any specific deadline extensions when available.

 

How will the shutdown of “non-essential” businesses affect trademark rights?

As “non-essential” businesses are required to close in more and more United States jurisdictions, many businesses have paused operations. This pause may interrupt continuous use of trademarks in connection with the products and services that the affected businesses offer.

When renewing trademark registrations, trademark holders must declare that the trademark has been in continuous use in commerce.

How might a lapse in use of a trademark during a coronavirus-related shutdown affect the trademark holder’s ability to maintain or renew a trademark registration?

My partner Bridget Short answers this question in a post that is available on the Fox Rothschild Coronavirus Resource Center, available at this link.

Will the Defense Production Act shield COVID-19 protective equipment makers from patent infringement risk?

On March 18, 2020, President Trump issued an Executive Order under authority of the Defense Production Act of 1950. The Executive Order stated: “I find that health and medical resources needed to respond to the spread of COVID-19, including personal protective equipment and ventilators, meet the criteria specified in section 101(b) of the Act (50 U.S.C. § 4511(b)). Under the delegation of authority provided in this order, the Secretary of Health and Human Services may identify additional specific health and medical resources that meet the criteria of section 101(b).”

This development has some manufacturers asking: Can we supply hospitals with personal protective equipment and ventilators in this time of COVID-19 response without risk of patent infringement?

In a post on the Fox Rothschild Coronavirus Response Resource Center, my partner Jeff Schwartz and I address this question. The short answer is, in most cases, no. However, there are actions that manufacturers can take to mitigate their risk, including:

  • Seek a license from the patent holder. This could be done anonomously with help from counsel, from public officials or from others who have influence in the community who can help negotiate reasonable terms, and to avoid identifying the manufactuer to the patent holder in the initial call.
  • Consider ways to design around the patent.
  • Avoid creating emails and other communications that discuss the potential patent risk. Those documents could later be used against the company as evidence in patent infringement litigation.

For more details and the full article, click here.

IAM Global Leaders 2020

I am honored to be named to the inaugural IAM Global Leaders list, a new publication featuring interviews with patent pratitioners ranked in the gold tier of the IAM Patent 1000.

In my interview with IAM, I discuss how our team at Fox Rothschild is working to anticipate client expectations and lead the way in managing patent projects to meet or beat those expectations. I also discuss key questions that clients should consider when building an intellectual property strategy.

The full interview is available via this link or this link.

How long does it take to receive a patent or trademark registration in the U.S.? (2019 update)

The USPTO recently released its FY2019 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question:

Patents: In 2019 the USPTO continued a eight-year trend of reducing patent application pendency. The average time between filing and first office action was 14.7 months, more than month quicker than last year’s average of 15.8 months. However, average total pendency (from filing to either grant or abandonment) also remained level at 23.8 months.

As is usual, the wait times varied by technology. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while patent applications for communications and biotech inventions moved much more quickly. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 11.8 months to first action, and an average total pendency of 22.8 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 16.4 months to first action, and an average total pendency of 27.7 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) had an average wait time of 17.5 months to first action, and an average total pendency of 28.3 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 13.3 months to first action, and have an average total pendency of 25.2 months;
  • communications technologies (USPTO Technology Center 2600) had the shortest average wait times — 10.4 months to first action, and an average total pendency of 20.0 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 12.5 months to first action, and an average total pendency of 22.1 months;
  • transportation, construction, agriculture and e-commerce technologies (USPTO Technology Center 3600) had an average wait time of 16.5 months to first action, and an average total pendency of 26.8 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) had an average wait time of 19.1 months to first action, and an average total pendency of 28.8 months.

338,584 patents issued in FY 2019, a slight decrease from last year’s total.  However, the number of new patent applications filed increased to an all-time  high of 665,231.  The allowance rate increased to 59.6% — 3.3% higher than last year’s rate.

The report noted that “serialized” patent filings — continuations and requests for continued examination — increased by 4.9 percent in 2019. The USPTO noted that this increase caused in corresponding increase in its year-end inventory of unexamined patent applications.

Trademarks: In FY 2019 the average time from filing to first Office Action in a trademark application decreased to 2.6 months, down from 3.4 months in 2018. Average total pendency also dipped a bit to 9.3 months.

The total number of trademark applications filed also hit an all-time high mark of 673,233. For the first time, the number of active certificates of trademark registration exceeded 2.5 million at the end of FY 2019.

USPTO publishes October 2019 update to Patent Eligibility Guidance

On October 17, 2019, the USPTO published an update to its 2019 Patent Subject Matter Eligibility Guidance (2019 PEG). The October 2019 update does not significantly change the patent eligibiity analysis, but it clarify several of the examination procedures that the USPTO first set out in January 2019.

Notably, the October 2019 update indicates that “the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract ideas.” Thus, Examiners should no longer focus on individual court decisions in their rejections but instead will determine whether the claims recite any of the groupings of abstract ideas listed in the 2019 PEG.

The October 2019 update also included several new subject matter eligibility examples, including examples for both life science and data processing inventions.

USPTO requires non-U.S. trademark applicants to use U.S. counsel

Effective August 3, 2019, a new United States Patent & Trademark Office (USPTO) rule requires all foreign trademark applicants to be represented by a United States licensed attorney when applying for a U.S. trademark registration.

My partner Elizabeth Patton recently published a summary of the new rule and its impact. For more details, see her post on Fox Rothschild’s Above the Fold blog.

Using invention to provide service prior to patent filing can trigger on-sale bar

Using an invention to provide a service before filing the patent application can trigger the on-sale bar to patentability, according to a recent decision from the U.S. Court of Appeals for the Federal Circuit.

The court’s decision in Quest Integrity USA, LLC v. Cokebusters, LLC involved U.S. Patent 7,542,874, which relates to a system for displaying inspection data collected from a furnace. The patent’s priority date was June 1, 2004. However, the court found that the patent owner used the invention to commercially perform furnace inspection services at a Louisiana refinery in March 2003, which is more than one year before the priority date.

The patent owner did not sell hardware or software to the customer. However, the patent’s method claims included the step of “generating a display of at least a portion of said partitioned inspection data arranged to represent said physical geometry of a plurality of said tube segments and enable visual detection of a problem area comprising one or more of said tube segments.” The court found that this claimed method included the production of “strip charts,” which are shown by way of example in Figures 3 and 4 of the ‘874 patent.

The court held: “Sale of a product (here, sale of the [strip charts]) produced by performing a claimed process implicates the on-sale bar.” The court also noted: “Performance of a claimed method for compensation, or a commercial offer to perform the method, can also trigger the on-sale bar, even where no product is sold or offered for sale.”

The case indicates that inventors should not delay before filing a patent application for a new process, especially if commercialization activities that relate to the process are expected.

 

What U.S. tech employers need to know about upcoming H-1B filing changes

H-1B workers continue to be an important resource for U.S. tech and other companies, particularly in the STEM fields.  Many such employers are subject to the annual H-1B cap. The U.S. Customs and Immigration Service (USCIS) recently decided to reverse cap lottery selection beginning this year, with electronic registration of petitions being required at some point in the future.

Full details are available on the Fox Rothschild Immigration View blog, available at this link.