Thought Leadership

Intellectual Property Report: July 2019

Client Updates

Legislative Change on the Horizon: Proposed Changes to Patent Eligible Subject Matter and Functional Claiming
Joe Craig, Jeff Becker, Christa Brown-Sanford, Grant Gibson
U.S. Senators Thom Tillis and Chris Coons recently introduced a legislative proposal that, if enacted, would significantly change the law of patentable subject matter under Section 101 and how that subject matter can be claimed in functional terms under Section 112(f). The proposed changes, released on May 22, 2019, can be accessed here. On June 4, 5, and 11, 2019, the Senate Judiciary Subcommittee on Intellectual Property held hearings to obtain testimony regarding the proposed changes to the patent statute. The sponsoring senators plan to move this proposal forward quickly by revising it based on those hearings, and introducing a final bill based on the proposal sometime after the July 4th recess. Part I of this article discusses the proposed changes to Section 101 and the potential impacts of those changes, while Part II of this article considers the history of functional claiming under Section 112(f) and potential impacts of the legislative changes.

To read the full article, click here.
*Grant Gibson, a Baker Botts Summer Associate, assisted in the preparation of this article.

A Tale of Two Seusses and Argued Fair Uses: The Fact-Specific Nature of Copyright Fair Use
Paul J. Reilly, Julie Beth Albert, Meghna Prasad*
Fair use in the copyright context is fact specific and can be frustratingly inconsistent to litigants. Perhaps the best illustration of the challenge of predicting the outcome of a fair use analysis is the opposite holdings of two courts considering whether commercial use of content from Dr. Seuss’ well-known children’s books was fair. See Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc. and the 2019 case Dr. Seuss Enterprises, L.P. v. ComicMix LLC.

To read the full article, click here.
*Meghna Prasad, a Baker Botts Law Clerk, assisted in the preparation of this article.

Baker Botts Webinar: The U.S. Supreme Court's Impact on Intellectual Property 2019
On Wednesday July 10th Baker Botts partners Michael Hawes, Aaron Streett and Jennifer Nall will be holding a webinar covering Supreme Court IP decisions, examining other IP cases to watch in 2019, and the current composition of the Court. To receive an invitation for this webinar, please contact Kaitlin Leddy.

Supreme Court Overturns Statutory Ban on Immoral or Scandalous Trademarks
Paul J. Reilly, Tyler Beas
Similar to its 2017 ruling striking down a statutory ban on “disparaging” trademarks, on June 24, 2019 the Supreme Court overturned the “neighboring” statutory ban on “immoral or scandalous” trademarks in Iancu v. Brunetti, No. 18-302, 588 U.S. ___ (2019). In 2011, Erik Brunetti sought to register his mark FUCT with the United States Patent & Trademark Office (“USPTO”). His application, however, was denied on the grounds that the term was “immoral or scandalous” in violation of Lanham Act Section 2(a), 15 U.S.C. § 1052(a), which bars registration of trademarks that “[c]onsist of or comprise immoral, deceptive, or scandalous matter”.

To read the full article, click here.

Opposing a granted patent in the USA: post grant and inter partes review
Paul Ragusa
Although contentious, inter partes administrative proceedings to oppose a granted patent have been available for a long time in Europe and other jurisdictions, similar proceedings are relatively new in the USA. Historically, a party seeking to invalidate an issued USA patent at the United States Patent and Trademark Office (PTO) was limited to filing a request for ex parte reexamination (EPR). However, other than preparing an initial request for an EPR and a reply to the patent owner (if the patent owner responds to the request), such proceedings were and continue to be ex parte, and thus do not permit further participation by the party seeking to invalidate the patent.

To read the full article, click here.
*This article was previously published in Future Science OA, Pharmaceutical Patent Analyst, Vol. 8, No. 3 on June 10, 2019.

Baker Botts Wins Landmark U.S. Supreme Court Decision Interpreting the Freedom of Information Act
Gavin R. Villareal, Evan Young, Stephanie Cagniart, Ellen Springer
The U.S. Supreme Court on Monday rewrote the standard for when the federal government can withhold private parties’ “confidential” commercial information in response to a request under the Freedom of Information Act, or FOIA. The opinion came in Food Marketing Institute v. Argus Leader Media, a case which Baker Botts brought to and argued at the Supreme Court. The Court’s decision has far-reaching implications for any company that submits information to the government—especially but not exclusively those in federally-regulated industries. All businesses should be aware of the new requirements and their corresponding opportunities for protecting confidential business information.

To read the full article, click here.

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