Perspective: Kirton McConkie Law Blog

THE IP LEGAL MINUTE - QUARTER #1 2017: EXAMINER LEGAL TRAINING

Intellectual Property
The USPTO recently released materials for training patent Examiners on how to rebut legal arguments during prosecution. Titled “Responding to Legal Arguments (RLA),” these materials train patent Examiners about (i) the basics of the U.S. legal system and (ii) how to respond to legal arguments made during prosecution. While a start, these training materials are likely to be inadequate to truly help patent Examiners understand the complexities of legal arguments made against their rejections. But the RLA helps clarify the following practice tips. Read More

Copyright holders cautioned to be careful about sending takedown notices

Intellectual Property

In an Opinion issued Monday, September 14, 2015, in Lenz v. Universal, the Ninth Circuit Court of Appeals held that the Digital Millennium Copyright Act (DMCA) “requires copyright holders to consider fair use before sending a takedown notification,” and the failure of the holder to do so “raises a triable issue as to whether the copyright holder formed a subjective good faith belief that the use was not authorized by law.”

The important bottom line is for copyright holders to use caution before sending takedown notices to schools and other entities protected by the fair use doctrine.

Trademark ruling impacts nutritional supplement naming

Intellectual Property

The Court of Appeals for the Federal Circuit (CAFC) recently issued a trademark ruling relevant to many Utah companies that sell nutritional supplements. In re TriVita, Inc., 2014-1383 (Fed. Cir. 2015). In this decision, the CAFC agreed with the U.S. Patent & Trademark Office (USPTO) that the term NOPALEA was descriptive for dietary and nutritional supplements containing “nopal” juice. TriVita, Inc. had filed a trademark application for the trademark NOPALEA. Read More

Comparison of post-grant proceedings

Intellectual Property

The America Invents Act (AIA) passed by the U.S. Congress was implemented in 2012 and 2013. The AIA introduced several new post grant proceedings of the U.S. Patent & Trademark Office, as well as changes to some existing post grant proceedings, allowing both patent owners and challengers to attack (and defend) the validity of an issued patent. Read More