The American Institute of Physics and John Wiley & Sons Inc. recently filed a copyright infringement complaint against two U.S. law firms for making copies of copyrighted works and submitting them, without permission, to clients and the U.S. Patent and Trademark Office during prosecution of client patent applications.  On January 19, 2012, the USPTO issued a memorandum stating its position on the subject.  The USPTO stated, “we believe that it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS.  The USPTO takes no position on whether additional copies of NPL made during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventor, or for the law firm’s future reference) qualify as fair use.”  A copy of the Memorandum from the USPTO can be found here.

Formerly known as the Patent Reform Act of 2011, the Leahy-Smith America Invents Act is close to being passed into law. Versions of the Act were approved in March in the Senate (S. 23, 95-5) and in June in the House (H.R. 1249, 304-117), and the House bill has been referred to the Senate.

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It has been a busy year for ICANN, the organization responsible for the creation and implementation of domain names.  In April, ICANN approved the long disputed and controversial .XXX extension.  A few weeks ago, ICANN also finally approved the new generic top level domain (gTLD) program.  These developments present a number of issues for trademark owners and entities that conduct a significant amount of business online. 

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There has been a significant amount of discussion among the members of the patent bar concerning the proper standard to apply under a theory of joint liability for patent infringement. The Federal Circuit has weighed in several times, adopting a “direction and control” standard in the BMC and Muniauction cases. More recently, the Federal Circuit went further to require an agency relationship for there to be joint infringement. In Akamai, the Federal Circuit stated, “Implicit in this court’s holdings in BMC Resources and Muniauction is that the performance of a method step may be attributed to an accused infringer when the relationship between the accused infringer and another party performing a method step is that of principal and agent, applying generally accepted principles of the law of agency as explicated by the Supreme Court and the Restatement of Agency” (emphasis added). The court concluded: “This court therefore holds as a matter of Federal Circuit law that there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.”

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The recent SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 USPQ2d 1300 (TTAB 2010), case reminds us that applicants who file trademark applications based on a bona fide intent to use a mark in commerce need to have supporting documentation and/or objective evidence in the form of real life facts and actions to demonstrate that they possessed the requisite bona fide intention to use the mark at the time the application was filed.  Without such evidence, a third party may ultimately be able to prevent the US Patent and Trademark Office (“USPTO”) from registering the applied for mark.

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