Can Parent Application of Cip Be Used as Prior Art

Beware the Trap of the Continuation-in-Office Patent Awarding
Parody: Are We Having Fun Yet?
IP Client Spotlight

Beware the Trap of the Continuation-in-Function Patent Application

Past David Fitzgibbon

On February. 24, 2017, President Donald Trump issued Executive Guild 13777, requiring the removal of rules or regulations that are "potentially outdated, unnecessary, ineffective, costly, or unduly burdensome to both government and private sector operations." Although the U.S. Patent and Trademark Office (PTO) has removed duplicative and unnecessary rules, to appointment the PTO has not addressed a simple rule that imposes some costly burdens on private sector operations: Manual of Patent Examining Process (MPEP) § 201.08.

That section of the MPEP specifically relates to a subset of patent applications known every bit continuation-in-part (CIP) applications. As the name implies, a CIP application is a 2d application directed to the same field of study matter disclosed in a start (parent) application. Although the CIP awarding repeats at least some substantial portion of the disclosure of the parent awarding, it adds some new matter not contained in the disclosure of the parent application. The CIP awarding must be filed while the parent application is notwithstanding pending. For example, a parent application may disclose a v-stride process to brand saltwater taffy. Two years afterwards, during the exam of the parent application by the PTO, the inventor may discover that while steps 1-5 make adept taffy, calculation steps half-dozen and 7 makes better taffy. The inventor may and then file a CIP application disclosing original steps 1-5 with added steps six and 7.

The issue with MPEP § 201.08 centers on its direction, or lack thereof, to patent examiners regarding the determination of the CIP application's priority date. The priority date is the line in the sand that separates publicly available "prior art" references (e.g., articles, trade presentations, patents) that tin can be used to invalidate the claims of a patent application from later references that cannot. A CIP priority date more than than one year after the parent application filing date typically allows the parent application itself to be used as a reference to invalidate the claims of the CIP application. Furthermore, the parent application is probable the all-time reference to invalidate the claims of the CIP application considering the parent awarding discloses everything only the added subject affair of the CIP application. In such a situation, to invalidate the claims of the CIP application, the examiner need just find the added subject matter in another reference and outline an adequate reason a person skilled in the relevant art would exist motivated to combine the parent with the additional reference. Such a task is considerably easier than finding all the merits limitations without referencing the parent awarding.

The specific problem with MPEP § 201.08 is that information technology incorrectly suggests examiners practice not take any duty to determine the correct priority appointment for CIP applications and may instead simply assume that the CIP awarding has the aforementioned priority engagement as the parent application. Information technology is tempting, but incorrect, to think that because a CIP application is a continuation of a parent application the CIP application inherits the earlier priority engagement of the parent application. Indeed, most applicants believe this incorrect logic. The correct position is more nuanced. The U.Southward. Courtroom of Appeals for the Federal Circuit, which hears appeals from the PTO involving patent applications, explained that in CIP applications individual claims accept their own priority dates, and only claims solely reciting subject matter disclosed in the parent application are entitled to the priority appointment of the parent. Santarus, Inc. five. Par Pharmaceutical, Inc., 694 F.3d 1344 (Fed. Cir. 2012). The priority date of claims that incorporate added subject area affair is the date the CIP was filed.

Going back to our taffy example above, if the CIP application included a claim to steps 1-5, nether the Federal Excursion's assay that claim would exist entitled to the priority engagement of the parent application. As a result, the parent awarding could not exist used as a prior art reference to invalidate this claim of the CIP application. If, however, the CIP included claims to steps 1-6 or 1-7, the priority date of those claims would be the date the CIP was filed. In those situations, the parent application might be used every bit a prior art reference to invalidate those claims of the CIP application.

Because the new subject matter in most CIP applications is both included in the specification and recited in the claims, i tin can see why MPEP § 201.08 is so costly. The provision advises examiners to completely avert what (in many cases) is likely the best prior art reference to evaluate the claims of the CIP application – the parent application. The entire private sector is harmed past such a faulty analysis, from the applicant who believes they take an enforceable patent to the competitor who is threatened with the invalid patent. Everyone suffers for a patent that at the end of the day may be invalid.

If you hold a CIP application or have been threatened with infringement of a patent based on such an application, you need to make up one's mind whether the awarding was properly examined. Such a review is not onerous. If the CIP was filed more than one year later on the parent awarding, just run a compare-certificate programme betwixt the CIP application and the parent application to identify the subject area matter added to the CIP. With the added bailiwick matter of the CIP application identified, yous can easily decide the priority dates of each claim in the CIP application. Once the priority dates are identified, you tin determine whether the CIP application was properly examined. Whether you hold a CIP application or have been threatened with a patent based on such an awarding, if the parent application could have been cited against the CIP application only was non, you should consider initiating reexamination proceedings to address the flawed examination prompted by MPEP § 201.08.

Parody: Are We Having Fun Yet?

By Kevin R. Casey

The bags at upshot in Louis Vuitton Malletier, S.A. 5. My Other Purse, Inc., 156 F. Supp. 3d 425 (Due south.D.N.Y.), aff'd, No. 16-241-cv, 2016 WL 7436489 (2d Cir. 2016) (non selected for publication) are depicted to a higher place. The summit row shows a Louis Vuitton mark and a bag featuring the mark; the bottom row shows the forepart and dorsum of accused's canvas tote bag. Clearly, the defendant's bag is intentionally reminiscent of Louis Vuitton'due south purse on 1 side, simply has the slogan "My Other Bag ..." on the other side.

A parody is defined, under trademark law, as a simple form of entertainment conveyed past juxtaposing the irreverent representation of the trademark with the arcadian image created past the marking'south owner. A parody must convey two simultaneous, and contradictory, messages: that it is the original, just that it is non the original and is instead a parody. Defendants in trademark cases tin can use parody in 2 contexts. First, parody can exist used in response to an allegation that the parody constitutes trademark infringement because the parody is probable to create consumer confusion with a complainant'due south mark, in which example the parody is weighed forth with other factors in the overall "likelihood of confusion" analysis. Second, parody can be used as an affirmative defense to a dilution claim based on the fair use exclusion in the federal dilution statute (codified in the Lanham Human action at xv U.s.C. § 1125(c)(3)(A)). The defendant asserted parody in both contexts in a case filed by the famous handbag designer Louis Vuitton (LV), which the U.S. Court of Appeals for the Second Circuit decided on December. 22, 2016.

Self-characterized "designer handbag junkie" Tara Martin launched the relatively small defendant visitor My Other Pocketbook Inc. (MOB) in 2011. The visitor sells tote bags that it claims "playfully parody the designer bags we dear." As depicted above, the bags country "My Other Handbag ..." on one side and have a drawing drawing of an iconic designer handbag on the other. The statement is a play on the archetype "my other car" bumper stickers. The bags retail for between $35 and $55. LV sued in 2014, claiming both trademark infringement and dilution of its famous marks.

A. Trademark Infringement (Likelihood of Confusion)

LV alleged that MOB's bags were likely to cause confusion with a number of LV'south registered marks. Amused, the district court granted MOB'south motion for summary judgment. Although conceding that LV successfully demonstrated the force of its marks, the district courtroom held: "In the usual trademark instance, a strong marking is a cistron pointing toward a likelihood of confusion. Yet, where the plaintiff'due south marking is being used as office of a jest ... the opposite can exist true. The strength and recognizability of the mark may brand it easier for the audience to realize that the utilise is a parody and a joke on the qualities embodied in a trademarked word or epitome." 156 F. Supp. 3d at 441-42. Having thus addressed the "fame" factor in the likelihood of confusion analysis, the district court found that the parties' uses were distinguishable in context, accustomed MOB'southward argument that the parties' goods were not competitive, disposed of LV'southward evidence of consumers referring to MOB's bags as "LV" bags because information technology did "little more than bespeak that consumers get the joke," id. at 442, and concluded that MOB's intent had been to parody, rather than to borrow. Especially in light of the high purchase price of LV'south bags and the unlikelihood of post-sale confusion, "in that location is no triable result of fact on the likelihood of confusion. Rather, defendant's utilise [is] an obvious parody or pun, readily so perceived, and unlikely to cause defoliation among consumers." Id. at 443. The Second Excursion summarily affirmed.

B. Likelihood of Dilution

LV also alleged that MOB's bags were likely to cause dilution by blurring the distinctiveness of its famous marks. MOB again successfully parried the merits based on parody, every bit U.S. District Approximate Jesse Thou. Furman granted MOB summary judgment. Judge Furman advised LV that it is sometimes "better to accept the unsaid compliment in a parody and to smile or laugh than it is to sue." He further wrote, "Louis Vuitton Malletier SA, the maker of Louis Vuitton bags, is maybe unfamiliar with the 'my other automobile' trope," and referred to LV equally "an active and aggressive" trademark litigant. Finally, he surmised, "Or maybe it but cannot have a joke."

In its legal analysis, the district court cited to the "fair use" exclusion of Section 43(c)(three)(A)(ii) from liability for uses "identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous marker owner." Although the exclusion is itself subject area to the limitation that a claimed parody must be a use "other than as a designation of source for the person'due south own goods or services," the district court plant the limitation inapplicable:

Given the overall design of [the defendant's] tote bags (the identical, stylized text "My Other Handbag ..." on one side and differing caricatures on the other side), and the fact that the numberless evoke a range of luxury brands with dissimilar graphics, there is no footing to conclude that [MOB] uses Louis Vuitton'due south marks as a designation of source for its tote bags. Indeed, as noted, that is the whole bespeak of [MOB'due south] joke: "My other bag" – that is, not this pocketbook – is a Louis Vuitton handbag. That joke – not to mention the cartoon-similar rendering of the bags – builds significant distance between the blueprint incorporated into the bag sketches and the designated source of the totes themselves.

156 F. Supp. 3d at 438.

Moreover, fifty-fifty if MOB were ineligible for the parody exception of Section 43(c)(3), the district courtroom held that LV had failed to demonstrate the existence of a factual dispute as to whether MOB's numberless were likely to dilute the distinctiveness of LV's registered design under either Section 43(c) or the New York dilution statute; in detail, "it is non enough to show – as Louis Vuitton indisputably tin can – that members of the public are likely to 'associate' the defendant's marker with the plaintiff's mark (or that the defendant promotes such association)." Id. at 439.

The appellate court agreed. During oral arguments in October, ane Second Circuit estimate laughed at counsel for LV, stating: "This is a joke. I understand yous don't go the joke. But it's a joke." Some other judge subsequently reminded the aforementioned attorney that "parody doesn't accept to be ridicule" to qualify for protection. Wrote the three-judge console in its Summary Order:

A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody. MOB's numberless exercise precisely that. At the same time that they mimic LV's designs and handbags in a style that is recognizable, they do so equally a drawing on a product that is such a witting departure from LV'due south image of luxury – in combination with the slogan "My other pocketbook" – as to convey that MOB's tote bags are not LV handbags. The fact that the joke on LV's luxury image is gentle, and maybe even complimentary to LV, does not forbid it from being a parody. Indeed, a parody of LV'due south luxury paradigm is the very point of MOB'due south plebian product. ... [T]he nature of MOB's concern – it sells quite ordinary tote bags with drawings of various luxury-brand handbags, not just LV's, printed thereon – and the presence of "My other purse," an undisputed designation of source, on one side of each pocketbook, independently support summary judgment for MOB.

2016 WL 7436489 at *1-ii (emphasis in original; citations omitted).

The Louis Vuitton case continues the trend in judicial rulings toward upholding parody claims and defenses in trademark infringement and dilution suits. In contrast, parody claims and defenses rarely, if ever, win before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Function (PTO). The discrepancy may effect from the difference between the jurisdiction of the TTAB, which extends only to issues related to registration of trademarks, and the jurisdiction of courts, in which infringement suits accost trademark use, judges have the power to enjoin use, and judges are more receptive to free oral communication concerns and fair employ exceptions.

Regardless of the reason, the difference between judicial and PTO treatment of parody counsels parodists to consider advisedly whether to file an application to register a parody trademark. Filing an application may alert the subject area mark holder; it demonstrates an intent to use the parody as a trademark, creating an almost per se bar to any fair use exception to parody a famous mark; and, if a contested proceeding ensues, requires relying on a defence to which the TTAB is not receptive. Perhaps nigh important, an adverse TTAB conclusion may provide grounds to enjoin all use and seek damages in federal court. Sometimes the all-time course of action is only to use a trademark and not try to register it.

IP Client Spotlight

Counseling clients since 1926, with a focus on the financial services industry, Stradley Ronon has helped private and public companies – from pocket-sized businesses to Fortune 500 corporations – achieve their goals by providing pragmatic, value-driven legal counsel. Stradley Ronon handles IP police force (patents, trademarks and related areas) matters for many of the business firm's financial services clients. I of those clients has as a slogan "Beneficial Bank. True to our name. Since 1853." The oldest and largest bank headquartered in Philadelphia, with over 60 offices, almost $6 billion in assets, more than than 65 financial products and services, and nearly ane,000 employees, Beneficial Banking concern serves the fiscal needs of its customers and helps educate them to do the correct thing. For Beneficial Bank, doing the right matter is not merely about banking smarter, although that is certainly a business organisation goal; it means supporting neighbors throughout the Delaware Valley when they need assistance. An example of customs outreach is the Bluish Gooders program, a team of Beneficial Bank employees who volunteer an average of iv,000 hours each year to support the community. With headquarters at 1818 Beneficial Banking concern Place on Marketplace Street in downtown Philadelphia, Benign Bank is a member of the FDIC.

The focus of Stradley Ronon's IP work with Beneficial Bank has been on securing trademark protection for Beneficial Bank's various logos and brands, assisting with copyright and advertizing issues, and negotiating and finalizing technology agreements. Other IP issues we address on behalf of Beneficial Bank take been enforcement of IP rights and IP licensing. Stradley Ronon is proud to aid Beneficial Bank in its efforts to navigate the complex IP problems faced by a modern bank as it grows and expands, forth with a diverseness of non-IP piece of work (including business concern negotiations, contracts, acquisitions and litigation).

Information contained in this publication should not be construed equally legal advice or opinion or every bit a substitute for the advice of counsel. The articles by these authors may accept showtime appeared in other publications. The content provided is for educational and informational purposes for the use of clients and others who may be interested in the subject field affair. Nosotros recommend that readers seek specific communication from counsel near particular matters of interest.

Copyright © 2018 Stradley Ronon Stevens & Immature, LLP. All rights reserved.

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Source: https://www.stradley.com/insights/publications/2018/02/ip-appeal-winter-2018

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