Thought Leadership

Intellectual Property Report: August 2020

Client Updates

Financial Markets and COVID-19: The Potential Role of a Faster FDA and USPTO
Dr. Arash Mohajer
In the face of a raging pandemic, the only constant that appears to exist is change. Businesses, hospitals, academic institutions, and financial markets have had to continually adapt in order to optimize efficiency. The federal government has also taken steps to keep up with this demand at both the Food and Drug Administration (FDA) and the United States Patent and Trademark Office (USPTO) to help address the pandemic. These changes are intended to provide life science innovators access to faster paths for patent protection and clinical trials, ultimately facilitating manufacturing and commercialization efforts for accelerated product development directed to COVID-19.
To read the full article, click here.

US Supreme Court Ruling Opens Door for Registration of '' Marks
Rob Maier, Suzanne Hengl, Meghna Prasad*
In 2011 and 2012,, a digital travel company that allows consumers to make hotel and other reservations online, filed applications to register trademarks with various visual features, all for travel-related services, and all including the term "" See United States Patent & Trademark Office v. B. V., No. 19-46, 2020 WL 3518365 at *3 (U.S. June 30, 2020). The trademark examiner at the USPTO, followed by the Trademark Trial and Appeal Board, rejected the applications on the ground that "" was a generic term for the services, and was therefore ineligible for registration. According to the board, since "Booking" means making travel reservations and ".com" indicates a commercial website, consumers would necessarily understand "" to refer to an online reservation tool for travel, tours, and lodgings. The board further indicated that even if "" were descriptive, the term lacked any secondary meaning that would make it registrable.
To read the full article, click here.
*Meghna Prasad, a Baker Botts law clerk, assisted in the preparation of this article.
*This article was previously published in the New York Law Journal on July 22, 2020.

Differences in Establishing a Printed Publication during Examination and IPR Proceedings
Paul Ragusa, Daniel Rabinowitz
Since the establishment of Inter Partes Proceedings (IPRs), practitioners have considered the interplay between decisions issued by the Patent Trial and Appeal Board (PTAB) in IPRs and prosecution of patent applications before the U.S. Patent and Trademark Office (USPTO). This has been of particular import with regard to standards used to establish a printed publication as prior art under 35 U.S.C. §§ 102, 103. On January 31, 2020, the PTAB addressed an aspect of this issue in Ex Parte Grillo - Lopez, which was designated as precedential on April 7.
To read the full article, click here.
*This article was previously published in the July/August issue of IP Litigator.

How USPTO Examiner Type Affects Patents: Part 3
Dr. Michael Sartori, Matthew Welch
Patent procurement at the U.S. Patent and Trademark Office is affected by the type of examiner. We gathered data from the LexisNexis PatentAdvisor patent prosecution analytics database for each year from 2009 to 2019, for examiners in each of eight nondesign Tech Centers at the USPTO. The data shows that the type of examiner can greatly affect the options available to an applicant once a final office action has been sent by the examiner.
To read the full article, click here.
*This article was previously published in Law360 on July 15, 2020.

Problems With USPTO Withholding Record For Some Appeals
Jennifer Nall
Appeals from the U.S. Patent and Trademark Office follow a statutorily prescribed sequence of events. Or, at least, they are supposed to. One of those steps requires the USPTO to transmit to the U.S. Court of Appeals for the Federal Circuit a certified list of the administrative record when a private party files a notice of appeal from a USPTO decision to the Federal Circuit.
To read the full article, click here.
*This article was previously published in Law360 on July 24, 2020.

Bias in Facial Recognition: Renewed Scrutiny of an Old Problem
Maureen Ohlhausen, Cynthia J. Cole, Ryan Dowell
Following the introduction of the Justice in Policing Act of 2020 on June 8, a number of tech companies have self-imposed restrictions on facial recognition technology due to concerns over bias—particularly in the context of law enforcement. In addition to self-imposed restrictions, these companies have voiced support for legislation addressing and limiting the use of facial recognition by law enforcement.
To read the full article, click here.
*This article was previously published in Legaltech News on July 8, 2020.

July 2020 Intellectual Property Report Recap
In case you missed it, here is a recap video of our July 2020 Intellectual Property Report that looked at:
• Supreme Court Upholds “” as a Viable Trademark in Key Decision
• The Future of AI Protection
• Copyright Office Recommends Clarifications, but no “Wholesale Changes” to DMCA’s Safe Harbor Provisions
• How USPTO Examiner Type Affects Patents: Part 2
• Tech, Media Cos. Must Watch DOJ's China Initiative
• Inter Partes Review Final Decisions – End of the Road or Right to Appeal?

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