• IP BLAWG

    USPTO Has to Go Dutch

    Beverly A. Berneman
    2/25/20

    In the U.S., each side usually pays their own attorney’s fees. This is called the American Rule. Until about six years ago, that rule applied to appeals from USPTO decisions. So, if an applicant appealed the USPTO’s decision not to issue a patent or register a trademark, the applicant paid the applicant’s attorney’s fees and the USPTO paid its staff attorneys their salaries. Then about 6 years ago, the USPTO decided anyone who appealed an adverse ruling should have to pay the USPTO’s attorneys’ fees as well as their own.

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  • IP BLAWG

    Patent Turf Wars

    Beverly A. Berneman
    7/3/18

    The Patent Office can invalidate a patent even if a court did not. %CUT% Oils States Energy LLC won a patent infringement judgment against Green Energy Group LLC. But then, the Patent Trial and Appeal Board (“PTAB”) invalidated the patent leaving Oil States emptyhanded. Oil States appealed arguing that the PTAB, an Article III (of the US Constitution) administrative tribunal, couldn’t come out differently from an Article I court. The US Supreme Court decided against Oil States. SCOTUS held that patents are a “public right”. They are a public franchise granted by the government to the owner of the patent for a period of 20 years. So, the administrative body can determine patent validity without paying homage to a different decision by a federal court.

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  • IP BLAWG

    Audit: The 4-Letter Word with 5-Letters

    Beverly A. Berneman
    6/6/17

    The USPTO’s audit procedure sets up a ‘use it or lose it’ proposition. %CUT% The owner of a registered trademark has to file a declaration of use between the 5th and 6th year after registration and then on every 10th anniversary of registration. The USPTO will conduct random audits of about 10% of the filed declarations of use. The USPTO’s audit system will maintain the integrity of the trademark registration system by insuring that a trademark is actually being used for the registered goods and services. If the trademark owner cannot provide sufficient specimens of use, the goods or services will be deleted from the trademark registration.

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  • IP BLAWG

    2016 IP Criminals Hall of Fame

    Beverly A. Berneman
    1/10/17

    The year 2016 had its share of notable people who got the attention of federal criminal authorities. Here are the winners. %CUT% As we enter awards season, we recognize those who put considerable time and effort into criminal activity involving Intellectual Property. The awards go to:

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