IPPro Issue 26 by IPProMagazine

Issue 26 23 July 2019

Taking the heart out of the Heartland Two years on, how is TC Heartland affecting the patent world?

In the issue

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Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)208 075 0928

Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)208 075 0926

Designer: James Hickman jameshickman@blackknightmedialtd.com +44 (0)208 075 0930

Contributors: Becky Butcher, and Rebecca Delaney

TC Heartland

USPTO TM Changes

With the help of RPX’s Brian Howard, Ben Wodecki outlines how TC Heartland v Kraft Foods is still affecting US patent cases just over two years since it was decided

The USPTO’s foreign trademark filing change threatens to shake up the world of US trademarks

News Focus

Latest Events

The latest news from around the intellectual property sphere

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Account Manager: Bea Ipaye beaipaye@blackknightmedialtd.com +44 (0)208 075 0933

Associate Publisher: John Savage johnsavage@blackknightmedialtd.com +44 (0)208 075 0931

Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)208 075 0929

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News Focus

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Bipartisan STRONGER Patents Act brought to US house floor Bipartisan patent legislation aimed at promoting innovation and enforcement has been introduced by several US senators and congressmen. The Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act aims to “protect and support inventors and innovators” by making it easier for holders to enforce their patents. Democratic senator and ranking member of the US Senate’s Judiciary Subcommittee on Intellectual Property Chris Coons was one of the politicians behind the bill. He attempted to rally his colleagues, calling for action “to recalibrate the US patent system, so that our inventors’ and entrepreneurs’ ideas and businesses can continue to fuel the American innovation economy”. Coons was joined by Republican senator Tom Cotton, Republican congressman Steve Stivers and Democrat Bill Foster in introducing the bill. This bill is seen as an improvement on legislation Coons and Stivers previously introduced. It aims to provide, among other things, injunctive relief against patent infringers; fairer post-issuance proceedings before the Patent Trial and Appeal Board (PTAB); and addresses the problem of “repetitive, harassing petitions” at the PTAB. The ultimate aim of the bill is to restore investor confidence in US patents. 3 IPPro

Coons commented: “While our global competitors strengthen their IP laws, we are at risk of losing our reputation as the gold standard for patent protection because US patents have become too difficult to enforce and too unreliable to justify critical investments in emerging technologies.” “It is time to restore balance to our patent system and ensure our continued leadership on the global stage.” Stivers added: “Main Street can and should be just as much of an engine for innovation as Silicon Valley, but we must ensure that the innovators are able to protect their next big idea.” “I’m proud to work with this bipartisan coalition to reintroduce the STRONGER Patents Act and provide entrepreneurs the protection they need to develop IP and bring new ideas to market for everyone to benefit.” Tom DiLenge, president of advocacy of BIO, the biotechnology trade association’s law and public policy division, said previous changes to US patent law “severely weakened our patent system”, but came out in support of this bill. He commented: “America’s laws were once considered the gold standard for the rest of the world, now we are tied for second with 10 other economies. The bipartisan STRONGER Patents Act will address many deficiencies in the patent reexamination process, while protecting patent holders and small businesses from predatory demand letters.” www.ippromagazine.com

News Focus

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Spartan Wear caught with pants down as Faraday’s sues for TM infringement Silicon Valley startup Faraday’s has filed a lawsuit against Spartan Wear alleging it infringed its intellectual property. Faraday’s sells men’s underwear that block electromagnetic frequencies emitted from mobile phone radiation. The scientific community has become increasingly concerned in recent years that radiation from mobile phones can decrease a man’s sperm count and cause male infertility.

Trump: ‘Send USMCA to my desk immediately for signature’ US president Donald Trump has demanded the US-MexicoCanada Agreement (USMCA) be passed by Congress and “sent to my desk immediately for signature”. Speaking at Derco Aerospace in Milwaukee, Wisconsin, Trump called on House speaker Nancy Pelosi to bring USMCA to the floor. He called the newly reorganised North American Free Trade Agreement (NAFTA) “good for everybody”. “On behalf of our nation’s hard-working citizens, I’m calling on Congress to pass USMCA and send it to my desk immediately for signature. We shouldn’t be playing around.” The USMCA is intended to hold stronger protections for intellectual property rights. Mexico and Canada will have to alter their patent and copyright rules to match the USMCA’s requirements. Covered by the agreement is the extension of patent protection for pharmaceutical companies in Mexico and Canada to 10 years for biologics, bringing the term closer to the US’s 12-year protection.

Faraday’s complaint, filed in the US District Court for the Northern District of California, alleges that men’s clothing retailer Spartan Wear has infringed its trademarks. It claims Spartan Wear’s infringement has caused “confusion in the men’s underwear market as well as irreparable harm to [Faraday’s] goods and services”. The lawsuit claims Spartan Wear sold similar underwear products using the title ‘WearFaraday’, a trademark term owned by Faraday. Antonio Matos, Faraday’s CEO, commented: “We created Faraday’s so that we could continue using cell phones without fear that we were causing harm to our most vulnerable assets.” Matos started Faraday’s when he noticed he could feel his cell phone just before it would ring while studying social entrepreneurship at Columbia University’s School of International and Public Affairs. Faraday’s has demanded a jury trial and is seeking a permanent injunction restraining Spartan Wear from future infringements, the transfer of all infringing domains, and the transfer of all revenues and profits gaining from the infringing activity.

The agreement also expands the scope of products eligible for protection. 4 IPPro

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News Focus US IP Subcommittee senators dismayed by section 101 Federal Circuit ruling Senior members of the US Senate’s Subcommittee on Intellectual Property have expressed their dismay towards a US Court of Appeals for the Federal Circuit ruling related to patenting of medical diagnostics. Subcommittee chair and Republican Thom Tillis and ranking member and Democrat Chris Coons said the Federal Circuit’s ruling in Athena Diagnostics v Mayo Collaborative Services was “a clear example of why reforming our patent laws—and section 101 in particular— is both urgent and critical”. The senators are both proponents of reforms to section 101 of the US Patent Act. A joint statement by the senators reads: “Life-saving technologies like medical diagnostics are now being excluded from the patent system despite the judges themselves agreeing that these innovations should be eligible for patents.” “The courts are sending a message to Congress that’s been clear to entrepreneurs, businesses, and innovators for years now: America’s patent laws are stifling innovation and effectively incentivising researchers, inventors, and investors to head elsewhere. We’re committed to reforming our patent laws to ensure that the US remains the world leader in innovation, and we’re eager to continue working with all the relevant stakeholders to do that as effectively as possible.” The case both Coons and Tillis reacted to saw the Court of Appeals for the Federal Circuit deny an en banc rehearing of Athena Diagnostics v Mayo Collaborative Services. Athena is the exclusive licensee of a patent relating to the detection of neurological disorders by detecting antibodies to muscle-specific tyrosine kinase (MuSK). It appealed to the Court of Appeals after the District Court for the District of Massachusetts ruled that claims six to nine of the patent were invalid under section 101, following a complaint from Mayo. The Federal Circuit took the case in February and affirmed the district court’s ruling, on the basis that “the district court correctly concluded that the claims at issue are directed to a natural law and lack an inventive concept”. The court denied a rehearing, with eight separate opinions splitting the court. Four concurred on an en banc denial, whilst the other four dissented. 5 IPPro

Notorious Manga-Mua copyright thief arrested in the Philippines A notorious Manga copyright infringer who allegedly ran Manga-Mura has been arrested by authorities in the Philippines. The JapaneseGerman-Israeli man, Romi Hoshino aka Zakay Romi, 28, was arrested at Ninoy Aquino International Airport on 7 July. He is accused of running Manga-Mura, a site that illegally distributes Japanese comics and graphic novels. According to the Bureau of Immigration (BI) intelligence officer and head of its fugitive search unit, Bobby Raquepo, Hoshino was arrested following a mission order issued by BI commissioner Jaime Morente at the request of the Embassy of Japan in Manila. The arrest operation was conducted with Tokyo Interpol. Manga-Mura is estimated to have caused JPY 320 billion ($2.9 billion) in damages, according to figures from the Association of Copyrights of Japan. It’s thought to be the worst violation in the history of the Copyright Law of Japan. Hoshino’s presence in Singapore is “a risk to public safety and security”, according to Morente. “We are in close coordination with our foreign counterparts who send us information about criminals who might be hiding in the Philippines. Upon knowledge, we immediately seek, arrest, and deport these fugitives.” Hoshino will be held at the BI detention facility in Camp Bagong Diwa, Taguig City pending deportation proceedings. Given Hoshino holds citizenship of both Germany and Israel, the Japanese embassy said it will begin discussions with the two nations over his deportation.

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News Focus EFF warn CASE Act will ‘supercharge a copyright troll industry’ The Copyright Alternative in Small-Claims Enforcement (CASE) Act would supercharge a “copyright troll” industry, according to the Electronic Frontier Foundation (EFF). The CASE Act aims to make it easier for independent creators to better defend their IP from theft and was proposed in May by Democrat congressman Hakeem Jeffries. The EFF argues that the bill would increase trolls filing “many ‘small claims’ on as many internet users as possible in order to make money through the bill’s statutory damages provisions”.

The EFF argues that this could lead to internet users being “stuck with a $5,000 judgment debt following the most trivial nod towards due process”. The limits imposed by the CASE Act ($15,000 per work) are, according to the EFF, “far higher than the damages caps in most state small claims courts— and they don’t require any proof of harm or illicit profit”. They also argue that the register of copyrights, currently Karyn Temple, would be able to raise the fee cap at any time.

Under the bill, the US Copyright Office would gain a Copyright Claims Board, which would reduce costs and easing the burden for creators defending their intellectual property.

Jeffries said the CASE Act “will enable creators to enforce copyright-protected content in a fair, timely and affordable manner. This legislation is a strong step in the right direction”.

The legislation would allow the Copyright Office to create a determination process for claims seeking up to $5,000 in damages.

However, the EFF warns that every US internet user who regularly interacts with copyrighted works “should contact their senators to oppose this bill”.

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News Focus EPO reports better user satisfaction despite overshadowing concerns

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The European Patent Office (EPO)’s 2018 quality report claims greater user satisfaction was achieved in 2018, despite previous concerns. Around 84 percent of EPO respondents said they were satisfied or very satisfied with EPO search services. Some 77 percent said they were happy with its examination and 74 percent with oppositions. A decrease was noted in the area of formalities examination, dropping from 89 percent to 87 percent. Previous EPO president Benoît Battistelli’s tenure at the EPO was dogged with claims of overworked employees facing increasing work targets, resulting in lower quality patents. In a letter to the EPO, German law firms Grünecker, Hoffmann Eitle, Maiwald, and Vossius & Partner expressed that EPO incentive systems which were implemented under Battistelli led to a range of problems, including issues of quality, scope of protection and inadequately assessed patents. The EPO has always refuted this. Much has also been made recently of EPO patents that covered conventional bred plants being granted, when under European law, it is illegal to do so. Aside from the aforementioned findings, the EPO’s product audits show that there is, according to the office, “room for improvement”. A decrease in compliance rate was measured in the auditing of grants by the office, which states “a number of improvement actions are being taken”. EPO president António Campinos commented: “This report provides our users with a full picture of the way quality is evolving at the EPO and a common basis on which we can continue to move forward. Quality is at the heart of our new Strategic Plan and by working with our users and cooperating with all our stakeholders, we now have an opportunity to raise our quality to another level altogether.” According to sources close to the Staff Union of the EPO, despite the report recognising that there is scope for improvement in certain areas, “no concrete measures have been implemented to really re-establish a sound level of quality, for example by substantially lowering the production pressure on examiners”. 7 IPPro

CIPO unveils updated patent rules The Canadian Intellectual Property Office (CIPO) has published new patent rules as an amendment to the country’s Patent Act. These modifications are designed to simplify patent administration between national IP offices by increasing filing efficiency, integrating administrative procedures and regulations, and modernising the legislative framework. The updates are preparation for Canada’s implementation of the Patent Law Treaty, which is set to become CIPO’s fifth administration of a World Intellectual Property Organization (WIPO) IP treaty. Johanne Bélisle, commissioner of patents, registrar of trademarks and CEO at CIPO, commented: “I am very pleased that the new Patent Rules and the amendments to the Patent Act to implement the Patent Law Treaty are set to come into force on 30 October 2019.” He added: “This modernisation of our regime reinforces patents as vital tools to protect and incentivise innovation at home and abroad. These are the final pieces of Canada’s accession to five international IP treaties over the course of the past year, in support of Canada’s IP strategy.” Canada also recently joined WIPO’s Madrid international trademark system.

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News Focus Amazon slams Red Points ‘shameful stunt’ survey Amazon has slammed a survey from brand protection company Red Points, calling it “a shameful stunt”. The survey claimed that consumers are three times more likely to accidentally purchase a counterfeit product via Amazon during a sale.

refund. In 2018 alone, we invested more than $400 million to protect customers and brands and more than 99.9 percent of pages viewed by customers never had a notice of infringement. Rather than using these clickbait tactics to garner clients, we encourage Red Points to work with us to protect brands and customers.”

Red Points conducted the survey to identify how the sales environment of Amazon Prime Day affected buying behaviour.

The company said brands are “free tools to protect their intellectual property in our store”, and invited them to work together to stop bad actors through “joint litigation and law enforcement referrals”.

Amazon said the survey was “designed specifically to market to clients”. An Amazon spokesperson commented: “The survey has incorrect conclusions based on flawed methodology. Lacking any real data on customer purchases, Red Points makes unfounded claims based on survey respondents trying to recall what they bought a year ago.” “We stand behind the products in our store and ferociously protect the customer experience every single day. If a customer has a concern, they can contact us for a full

Responding to Amazon’s claims, a Red Points statement reads: “With a common enemy of counterfeiters, we commend Amazon’s efforts to root out fakes.” “Red Points remains committed to partnering with Amazon and working hand in hand to protect brands worldwide. Amazon continues to lead the industry with ideas, solutions, and outcomes.”

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News Focus IP Europe policy recommendations call on EU to promote IP

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IP Europe has launched a series of policy recommendations that call for European policymakers to prioritise intellectual property protection at the highest political level within the EU. The group is also asking the EU to help create a global level playing field for European IP-intensive industries, including for small- and medium-sized enterprises (SMEs). IP Europe’s recommendations to the EU include: EU trading partners to maintain a high level of IP protection consistent with their international commitments; making access to publicly funded research and development to third country companies conditional to European companies having equivalent access to that company’s domestic research and development funding programme; and ensuring that IP rights enforcement in all jurisdictions remains affordable to SMEs so they can challenge patent infringers who profit from their inventions without a licence. IP Europe was one of two groups who recently released a set of guidelines for the licensing of standard essential patents (SEPs) in the 5G and Internet of Things space. Francisco Mingorance, executive secretary of IP Europe, commented: “Only a strong commitment to IP protection will create sustainable growth opportunities for the innovative companies and SMEs. Without new industrial policies that prioritise IP protection in the global marketplace, IP-intensive industries and European innovation are under threat.” “This is key if we want Europe to become the world’s leading digital innovation ecosystem.” Ruben Bonet, CEO of Fractus and IP Europe’s SME chair, said: “A European industrial policy that promotes and protects IP will create the virtuous circle of innovation and investment needed for Europe’s research and development-intensive SMEs to become the industrial champions of tomorrow.” “Europe’s SME community needs support to develop the IP-led growth strategies that will give them the security and access to finance to scale-up. Policies that support fair access to justice for SMEs will also help to overcome the threat posed by patent infringers who use patented innovations without paying for them, taking advantage of SMEs’ inability to pay sky high legal fees.” 9 IPPro

CNIPA extends intellectual property pledge financing The Chinese National Intellectual Property Administration (CNIPA) has announced a forthcoming expansion of its intellectual property pledge financing structure. The current IP pledge financing network requires companies to “pledge” their intangible assets in order to generate funds. Chinese state media cited that innovation firms based in China will benefit from financing support through the pledge, including a reduced capital shortage and advanced IP rights market transformation. Furthermore, at a recent press conference, a spokesperson from CNIPA noted that newly pledged patent and trademark financing value totalled $8.48 billion in the first half of 2019, a year-on-year increase of 2.5 percent. In the extension, CNIPA will collaborate with financial departments, including the China Banking and Insurance Regulatory Commission, to improve pledge loans, develop a credit approval system and an interest price pricing mechanism, and release relevant policies.

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News Focus YouTube launches copyright timestamp changes on infringement claims

JPO gets new commissioner as Munakata steps aside

YouTube has made significant amendments to its copyright system, now forcing copyright owners to submit timestamps when claiming a video is infringing. YouTube’s copyright system has consistently come under fire from content creators who say the system is too prone to abuse and unfairly favours rights holders. Copyright owners who “repeatedly fail” to provide timestamps and accurate data with manual claims on infringing videos will now “have their access to manual claiming revoked”.

The commissioner of the Japan Patent Office, Naoko Munakata, has stepped down from her role. She has been replaced by Akira Matsunaga and will now take up a special adviser role. Between July of 2015 and 2017, she spent time as executive assistant to Japanese prime minister Shinzo Abe.

YouTube is also implementing editing tools with the ability to remove claimed content in videos, which will automatically release the claims. These tools can mute a claimed song, replace it with one of the site’s free-to-use songs from its audio library, or just trim out the infringing content altogether. YouTube introduced a new copyright match tool last July, which can detect a user’s re-uploaded content on other channels. Julian Bill, YouTube’s product manager, announced the changes on the site’s Creator Blog, saying: “Our work won’t stop here. We’re always looking to find ways to improve the creator copyright experience while also balancing the rights of copyright owners. Stay tuned for more to come.”

She is also a former director general of the Trade and Economic Cooperation Bureau in the Japanese Ministry of Economy, Trade and Industry.

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Taking the heart out of TC Heartland With the help of RPX’s Brian Howard, Ben Wodecki outlines how TC Heartland v Kraft Foods is still affecting US patent cases just over two years since it was decided Ben Wodecki reports The Eastern District of Texas was, until the ruling in TC Heartland v Kraft Foods Group Brands, the El Dorado of the patent world—famed for its favourably golden rulings and patent-knowledgeable judges. Now, TC Heartland has thrown a spanner in the works of what was once the leading district for patent cases, with historically less popular jurisdictions gaining and attempting to take up its mantle. TC Heartland has created many ripples in the proverbial patent pond, causing a massive splash of change. Case filings, litigation numbers, and non-practising entities (NPEs) are still fielding mixed concerns to the ruling just over two years on from its initial release.

Jurisdictional Drops A recent RPX report underlined that overall patent litigation in the US saw a seven percent drop in 2018, while the 11 IPPro

number of defendants in patent litigation also decreased by five percent in the same time frame. The US Court of Appeals for the Federal Circuit has seen dramatic drops in patent case numbers, as has the number of filings at the Patent Trial and Appeal Board (PTAB). Despite the alarming drops, RPX’s report does state that the overall rate of decline has slowed, with the implementation of the American Invents Act (AIA) and the decision in Alice v CLS Bank attempting to smooth over the issues. But problems still remain. Uncertainty is rife in certain patent markets due to the problems caused by section 101 of the US Patent Act. However, the troublesome trick of forum shopping is now a somewhat distant memory following TC Heartland. Brian Howard, vice president of analytics at RPX, showed that even though it lost its crown, the Eastern District of Texas still sits in second place in terms of cases filed with a considerable number of cases. www.ippromagazine.com

TC Heartland · Feature He says that despite its high placing, “many of the cases that would have been filed in the Eastern District of Texas are instead being filed elsewhere”. Despite this, he adds that it is “always difficult to match correlation with causation”. Although section 101 seems to be grabbing all the ‘uncertainty’ related headlines, Howard explains that two years on, there is still some uncertainty present. He said: “Although TC Heartland clarified the first prong of section 1400(b), under which venue is proper where a defendant ‘resides’, it did not address the second prong of the statute, under which venue is proper where the defendant ‘has committed acts of infringement and has a regular and established place of business.’” “Since then, both the district courts and the Federal Circuit have been exploring how this interacts with the holding of TC Heartland.” Across the other end of the Lone Star State, the Western District of Texas is one of the districts aside from Delaware that is seeing increases in patent filings. Howard notes the Western District of Texas judge Alan Albright’s comments that the jurisdiction would welcome more patent cases. Howard says that the specific jurisdiction “offers some similar advantages” compared to its Eastern relative.” “He highlights it has a similar jury pool composition and judge Albright’s standing orders, which, while not directly derived from the Eastern District of Texas local rules, are still comparatively aggressive compared to other top districts”. “I think that many plaintiffs are currently trying to identify what district or districts offer them the greatest advantage. This results in plaintiffs filing their cases in a wider variety of districts, as no clear consensus has yet emerged.”

NPEs in the firing line? One major area that is still up in the air following the TC Heartland ruling is the fate of NPEs. Some in the patent industry may be pleased about this, given the negative stereotype that NPEs are bad actors still lingering over like a bad smell that simply won’t go away. Take NPEs filing in the Eastern District of Texas. There, it has seen the most activity compared to any other district court in terms of NPE filings. 12 IPPro

However, the fallout from TC Heartland has affected the number of those filings, which continually fluctuate. Howard called the plight of NPE patent litigation a “very much a going concern”. “In 2018, 47 percent of defendants sued were sued by NPEs. In 2019, through April 30, 55 percent of defendants sued were sued by NPEs.” “For comparison, in 2017, the same percentage of defendants sued were by NPEs, and in 2016 the percentage was only marginally higher at 57 percent.” E-commerce and software, consumer electronics and PCs, and networking are the largest market sectors litigated by NPEs, according to RPX figures. In terms of NPE figures before the Federal Circuit, cases involving NPEs make up about half of all Federal Circuit appeals. If TC Heartland is causing problems, a layman may ask ‘why not just overturn the ruling?’ From a technical and practical perspective, Howard calls this idea “unlikely”. No court is superior to the Supreme Court, meaning no court can simply abolish it, and Howard adds: “There’s little reason to think that SCOTUS would overturn itself, and especially here as the decision was grounded in statutory interpretation rather than public policy”. Congress could overturn TC Heartland, to an extent at least, through legislation, but this seems unlikely. Howard comments on this prospective work around: “While various patent reform initiatives are being discussed on the hill, they generally tend to be more focused on questions of patentable subject matter as ruled on by SCOTUS in the Alice v CLS Bank opinion.” “Although I’m always hesitant to speculate beyond the data, I do not think it would be controversial to say that most plaintiffs would choose section 101 reform over a return to the pre-TC Heartland jurisdiction rules.” He concluded: “Making fewer patents susceptible to a section 101 attack would significantly increase the leverage of plaintiffs in ways that greater jurisdictional choice would not.” www.ippromagazine.com

USPTO TM Changes · Feature

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The head of nationalism: USPTO foreign trademark filing changes The USPTO’s foreign trademark filing change threatens to shake up the world of US trademarks Ben Wodecki reports

On 3 August 2019, the US Patent and Trademark Office (USPTO) will be focusing on the implementation of its new foreign trademark filing rules.

Some critics might say this is just another piece of nationalistic policy aimed at satisying America’s nationalist voices, however, the issue of fraudulent trademark filings originating from China is a well-known and welldocumented problem that this could attempt to quash.

What will actually change? Approved on 2 July, the rule forces would-be trademark applicants from outside the US to use a registered US attorney who is both an active trademark attorney and “in good standing of their bar”. A piece of legislation in this vein is not unexpected, considering the nationalist sentiments of US president Donald Trump’s administration, and his promises to ‘put America first’ have been showcased in almost every aspect of his policy. Now, US-licensed attorneys will have to confirm they are an active trademark attorney in order to take work from abroad. 14 IPPro

The intention of the rules are, according to an official USPTO document, to “increase USPTO customer compliance with US trademark law and USPTO regulations; improve the accuracy of trademark submissions to the USPTO; safeguard the integrity of the US trademark register.” US-licensed trademark attorneys representing foreign filers must now provide all of the following: their name, postal address, and email address; a statement attesting to their active membership in good standing of a bar of the highest court of a US state, commonwealth, or territory; and information concerning their bar membership (state, number if applicable, and year of admission). www.ippromagazine.com

USPTO TM Changes · Feature These incoming changes are likely to cause a lot of headaches for non-US filers. For example, Canadian patent agents will no longer be authorised to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. However, Canadian trademark attorneys and agents will continue, if eligible, to be recognised as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed US-licensed attorney. This may also force foreign filers to turn to bigger firms with offices—and attorneys—in the US as well as their home country, potentially drawing business away from smaller firms without those resources. Andrei Iancu, undersecretary of commerce for intellectual property and director of the USPTO, said the rule is “a significant step in combating fraudulent submissions”. “Businesses rely on the US trademark register to make important legal decisions about their brands.” Turning to the integrity of the USPTO, he said: “In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants.” While the rules came as a shock to some, Mary Denison, the office’s commissioner for trademarks, argued that “many other countries worldwide have had this requirement for decades”. She said the office believes that the changes brought in under the new rules “will help improve the quality of submissions to the USPTO”.

Why change? Under this new rule, the USPTO definition of what is considered foreign-domiciled covers: “a ‘foreigndomiciled’ trademark applicant, registrant, or party is either or both: an individual with a permanent legal residence outside the US or its territories; or an entity with its principal place of business outside the US or its territories.” To say that president Trump hasn’t put America first would be wrong. While his efforts might not be necessarily working in some instances, his efforts have reinvigorated a nation whose frustration had led to stagnation. His travel ban, his wall, his trade war—while he may not personally believe in what he’s doing, all the nationalist actions being undertaken by the US link back to his doing, his words, and his orders. This new foreign filing rule is likely another dart at the dartboard, while may be missing the bullseye of intent, it is certainly hitting some of its targets. This rule is likely targeting the aforementioned Chinese bad actors attempting to wreak havoc in the US trademark system. Take 4 July 2019: figures from IP law firm Timberlake Law show that of the 585 applications for registration of trademarks filed on the day, approximately half came from China. China has made it no secret that it is proud of its absurdly strong filing numbers across the world, and this new rule could be another attempt by the US to hold onto its leading IP position. In the June newsletter from Duminiak Law, Robert Duminiak, member at Duminiak Law, wrote that the new law “may help to ensure foreign applications have accurate advice and information”.

There are significant exceptions to this new rule. If you are a foreign counsel advising your clients, or a business headquartered in another country and are considering applying for trademark registration in the US, then you are exempt. And it’s not just filings, the new rule covers all interactions with the USPTO, meaning renewals, Trademark Trial and Appeal Board (TTAB) issues, and making a section seven request. 15 IPPro

He does, however, warn “the unscrupulous trademark applicant—whether in the US or elsewhere—will continue”. Whatever the intentions, 3 August 2019 will see the US trademark landscape to a similar as to how the US patent landscape altered follow Alice v CLS Bank, with many entities certainly feeling hard done by. Only time will tell if this was a good attempt to quell a growing problem, or another failed nationalistic policy by a nation focussing inward, rather than outward. www.ippromagazine.com

Two years on, TC Heartland may not be making the same problematic ripples as Alice, but its presence is still felt. Whilst it has benefitted some, others have fallen foul.

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• Long Arm of the Law A low down on legal issues for the licensing professional • A Deeper Dive – Advanced Topics in High Tech and Life Sciences Sector-specific panels and workshops on advanced issues for the moderately-experienced to advanced IP/licensing professional

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What are you waiting for? Register today and receive Early Bird Savings of up to $400! REGISTER NOW at lesmeetings.org/am19/registration

The LES Annual Meeting is the perfect opportunity to: • Join a community of 500+ decision-makers and thoughtleaders • Grow your client list by expanding your knowledge base • Stay abreast of the hottest issues in IP (Blockchain, anyone?) • Grow your connections, hone your skills and knowledge, and advance your career

This top-notch program will be held at the luxurious JW Marriott Phoenix Desert Ridge Resort and Spa, a premier resort featuring five relaxing pools, the Wildfire Golf Club with its Palmer Signature Course and Faldo Championship Course, kid-friendly attractions and much more.

Sponsorship & Exhibit Opportunities: sponsors@les.org

Industry Events

Industry Events 2019 AIPPI World Congress

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London, UK

aippi.org

15-18 September 2019 Marques

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Dublin, Ireland

marques.org

17-20 September 2019

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AIPF 2019 Annual Meeting Alexandria, VA, USA

aipf.com

22-24 September 23-25 June 2019 17 IPPro