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This is a guest post by my colleague, Elizabeth Barnhard:

Congress passed the Leahy-Smith America Invents Act (H.R. 1249), which makes major changes to the U.S. patent system. President Obama is expected to sign the Act into law on September 16, 2011. What does this mean for you if you have a patent already or want to get a patent for your invention?

It Is Going To Cost You More To Get And Keep A Patent.

All patent fees are going up 15% in ten days after the President signs the Act. We made sure to tell our clients what they can do now and avoid paying these fee increases.

In 60 days, it will cost you $400 to file your patent application the old-fashioned non-electronic way. Our clients won’t pay that fee because we file all our applications electronically. This new $400 fee does not apply to the filing of design, plant or provisional applications.

In a hurry to get that patent granted? If you are willing to pay $4,800 in addition to all the regular application filing fees, you can request prioritized examination from the U.S. Patent and Trademark Office (USPTO). Only 10,000 requests per year will be accepted until the USPTO issues regulations on this new fast track for examination. Another caveat: your application is limited to 4 independent claims and 30 claims total. We can help you decide if it is in your best business interests to take this fast track route or stay in the regular examination queue.

There is some good news here. If you qualify as a “small entity” (small business, independent inventor or nonprofit organization), your fees continue to be reduced 50%. Additionally, Congress created a new “micro entity” status that gives you a 75% reduction in fees if you qualify, as soon as the President signs the Act. To qualify as a “micro entity”, you have to: (1) be a “small entity”; not be a named inventor on more than 4 previously filed US utility applications; your gross income is 3 times or less than the Census Bureau reported median household income for the preceding calendar year (currently $50,022); and you have not assigned or licensed your invention to a non-micro entity; or (2) earn the majority of your income from an institution of higher learning or assigned or license your invention to an institution of higher learning.

The Rules Of The Game Are Being Changed.

The Biggie: starting in 18 months (April 2013), the U.S. will be awarding patents to the first inventor to file the application at the USPTO. It will no longer matter if you were the first to think of and make the invention before a second inventor who invents the same or substantially similar invention. You will not get the patent if your patent application is filed second. There is one exception. If you can show the USPTO that the inventor of the first filed application derived that invention from you or one of your co-inventors in a newly created derivation proceeding, then the patent should be awarded to you. The USPTO will be issuing rules about derivation proceedings in the coming months.

You Need To Be Prompt: right now, you have a grace period of one year to file your patent application in the U.S. from the date you or any other party disclosed the invention to the public, provided you will be able to show the USPTO that you conceived of the invention before that publication. In 18 months (April 2013), that one year grace period only applies if you are the one who disclosed the information. If a third party discloses the invention at any time before you file your application, then you will not get a patent.

There’s more: You filed your patent application at the USPTO and it has been published. For the first time ever in the U.S., Congress is permitting any third party to submit prior art to your application file for consideration by the patent examiner before issuance of a first rejection of one or more of your claims. This new practice starts in one year from the date of enactment (September 2012).

You finally get your patent granted. But you cannot breathe a sigh of relief. Any third party can challenge your patent in a new post-grant review proceeding at the USPTO, BUT they must file the petition within 9 months from the date your patent is granted. If the USPTO accepts the petition to institute the post-grant review, then the USPTO must make a decision on the challenge within one year of the request. This new post-grant review starts one year from the date of enactment (September 2012), but can only be filed against patents with an effective filing date on or after a date that is 18 months after enactment, i.e., on or after April 2013.

Nine months have passed. Are you home free yet? Not necessarily. A third party could challenge the validity of your patent through an inter partes review regardless of when it was issued. The inter partes review is replacing inter partes reexamination one year after enactment (September 2012). No longer will the alleged basis of unpatentability have to be “new,” i.e., not previously considered by the USPTO. The earliest that a petition for inter partes review can be filed is 9 months after the date of grant of your patent, or if a post-grant review is filed, then after the post-grant review is completed. If the USPTO accepts the petition to institute the inter partes review, then the USPTO must make a decision on the challenge within one year of the request.

Congress Curbs False Marking Lawsuits.

In recent years, many lawsuits have been filed exploiting provisions in the patent marking law that permit private plaintiffs to sue a patent owner whose patent markings on his product are claimed to be and be given one half of the civil penalties awarded by the court. For example, if a particular patent had expired but was still mentioned in patent markings on a product, the patent owner could be sued for false marking. Effective immediately upon the date of enactment, marking a product with a patent number that covered the product but that has since expired will not give rise to liability for false marking. Importantly, only the US government will be able to sue for civil penalties. The only private parties who can sue for damages for false marking are those who can show they suffered competitive injury as a result of the false marking. The false marking provisions of the America Invents Act will apply to all cases pending on the date of enactment, as well as to cases begun on or after the date of enactment, which will likely result in the dismissal of many private plaintiff lawsuits.

Now Is The Time For Strategic Planning To Build And Protect Your Patent Portfolio.

The America Invents Act will be changing your obtaining a patent, keeping a patent, challenging your competitors’ patents, and enforcing your patents against infringers. This article highlights some of these changes. Now is the time to sit down with your patent attorneys and make a business plan to manage and protect your patents and to monitor and challenge your competitors’ patents in light of all these changes. At Leason Ellis, we are available to answer any questions you have about how the America Invents Act might affect your patent strategy and your patent portfolio. Give us  a call at (914) 288-0022 or email us at Barnhard@leasonellis.com.

I’m Ollie, senior dog correspondent. Bayer owns an incontestable registration for ADVANTAGE for flea and tick products for dogs and cats. It also sells K9 ADVANTIX, exclusively for dogs. My brother and I use Frontline, but that is not intended to disparage the good people at Bayer. Plaintiff alleges that Indian generic pharma CIPLA (covertly) manufactures DA DOUBLE ADVANTAGE and conspires to sell it into the US through several offshore websites. One of the defendants in fact is incorporated in Vanuatu, a small chain of volcanic islands in the Pacific 1000 miles from Australia. A marvelous diving destination I’m told, but an odd choice for a logistics operation.

Paragraphs 34 on contain the meat of the allegations regarding the alleged conspiracy (and allegation of evidence of actual confusion).

There is also a public safety issue, or should I say feline safety issue, as DA DOUBLE ADVANTAGE cannot be given to cats.

A legal writing aside: read paragraph one of this complaint, then scroll through the Trademark Blog archives to read, say, five other complaints. No beating around the bush – straight to the heart of the wrong.

Complaint Bayer Cipla(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

I presented on Brand Protection Considerations for the new Top Level Domains, for the Westchester-Southern Connecticut chapter of the ACCA today. Here my are my slides. Think of them as a TLD FAQ. I wonder if anyone will apply for .FAQ.

Permission to distribute (with attribution) within your organization granted. Performance rights reserved.

All reasonable invitations to present, considered.

Wesfacca MBS Power Point in New TLDs Revised Sept 13 11(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

If you’ve read my article in The Trademark Reporter, you’re aware of my obsession with intermediate liability cases.  We discuss at length the Akanoc decision in which three defendants, including a California web hosting company, was hit with $32 million plus in damages, for not taking down websites devoted to selling counterfeit goods.

The Ninth Cricuit has now reviewed Akanoc and affirmed its holding on intermediate liability.  I emailed West Coast cyber-star lawyer Ian Ballon, and asked him what he thought of the decision, especially its emphasis that defendant exercised control over the infringement because it exercised control of a ‘master switch’ over the servers (See discussion beginning at p. 17248 below).  Ian responded:

The Ninth Circuit has been fixated on servers since its adoption of the server test in Perfect 10 v Amazon.com. While servers may be relevant under copyright law (ie, was there a distribution, reproduction, etc?) I am not sure the same concept applies under the Lanham Act, which is focused on use in commerce (not use on servers). I am not sure this is the best test either for trademark owners or service providers. On the one hand, it would not be difficult for an infringer to use offshore servers to limit its risk of liability. On the other hand, a legitimate service provider cannot reasonably be expected to know what its customers are doing simply because a piece of hardware is under its control. The real issue should be whether the service provider is responsive when it has knowledge of infringement, which here seems not to have been the case.

Thank you to Ian.  Here’s a prediction: fewer off-shore counterfeiters using California web-hosting companies.

Prof Goldman blogs the case here.

 Akanoc 9th Circuit(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

From the Irish Times  article:

RUGBY WORLD Cup 2011 opens today with hosts New Zealand taking on the Pacific Islands side Tonga in Auckland. The event is the showpiece of rugby union and will be one of the top sporting events in the world this year. With more than one million spectators due to attend and billions globally expected to tune in, the stage is set for a memorable tournament.

At an estimated cost of NZ$310 million (€185 million), hosting an event of this magnitude does not come cheaply.

In addition, 95 per cent of the money distributed by the International Rugby Board (IRB), the game’s governing body, to promote the rugby union globally comes from rugby world cup (RWC) revenue. As a result, the success of the commercial programme is vital.

Worldwide partners including Heineken and Emirates and official sponsors including Microsoft and Range Rover, along with official suppliers, licensees, broadcasters and travel agents, have invested significantly in order to gain the exposure and goodwill that come with being associated with such a prestigious event. However, the value of this goodwill could be diluted by effective ambush marketing.

Twitter attempted to register the mark TWEETS and it was blocked by defendant’s registration for: LET YOUR AD MEET TWEETS.  Twitter moves in district court to cancel the registration.  There is no infringement cause.

 Complaint Twitter Meet Tweets(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

I took my family to the Arsenal-Manchester United game in Manchester:

Before the game, we went to the Man Utd megastore in the stadium:

I bought my wife a Man Utd red devil hat because it was so cold:

Outside Old Trafford (Man Utd’s stadium) there were vendors selling ‘game day’ scarves:

The vendors stood just outside this sign:

We got this one for my son the Arsenal fan, so that he could covertly root for them (our tickets forbade us from overtly rooting for Arsenal, because we were in a Man Utd section. Serious.):

Let’s take a look at the scarf more closely.  Here is the Man Utd side:

First, it uses the word UNITED alone.  UNITED is a common term for soccer teams.  Also, take a look at that crest:

This is Man Utd’s ‘real’ crest:

The logo has no use of the word MANCHESTER or the Red Devil mascot, and the ship is somewhat different.  There is a reference instead to the ‘Red Army’, the fans of Man Utd.  Now let’s turn to the Arsenal side of the scarf:

I suppose one would argue that it doesn’t literally depict the word ARSENAL, substituting a cannon for the letter R.  Of course a similar looking cannon is part of the present ARSENAL logo, seen here on the right, depicted next to its pre-2002 logo:

Now take a look at the crest from the scarf:

First, you’ll note that the scarf uses a ‘throwback’ capital A, as used in the former ARSENAL logo shown to the left above.  Also, the term GOONERS is used.  Arsenal team members are the GUNNERS and their fans are the GOONERS.  HOWEVER, Arsenal owns a UK registration for GOONER.  I wrote a column about trademarks that refer to fans of a sports team, rather than to the sports teams themselves, a while back.

As  a parting shot, I note that the scarf depicts the term PREMIERSHIP.  The EPL is known now as the BARCLAY’s PREMIER LEAGUE.  However it was previously named the Premiership (and is still referred to as such – and Barclay’s (and the FA) own registrations that include the term.

Final tally: at least two reproductions of registered marks or words, and a lot of references to registered marks.

Does the scarf suggest on its face that it is ‘from’ or ‘authorized’ by Man Utd and Arsenal or that it is ‘about’ the game between Man Utd and Arsenal (or both or neither)?

I will leave the UK lawyers to come to conclusions about whether this is infringement under UK law.

I will add the following.  Do potential customers think these scarves are ‘authorized’?  What did my son think? Well, he was the only thirteen year old who bought the scarf on advice of counsel, so he doesn’t count, but he ordinarily wouldn’t care; he wanted a souvenir that he was there, and the scarf was that.  What did the fans think? Well, the sign put paid on that question.

If you’re interested in these issues, a good place to start is Arsenal v Reed.

Let’s not discuss the actual outcome of the game.  Let’s just say that Arsenal was Tottenham in disguise.