Free Speech and Functionality

The Founding Fathers ensconced intellectual property rights into the fabric of the original Constitution. Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” and it is that provision that gives Congress the power to authorize and regulate patents and copyrights. (Congress’ power to authorize and regulate trademarks is separately derived from the Constitution’s Commerce Clause.)

Three years after ratification of the Constitution, we adopted the First Amendment. As with any amendment, it is a limitation on the original grant. And in case anyone forgot that the First Amendment might limit IP rights, Judge Mayer of the Federal Circuit just reminded us in his blistering concurrence in Intellectual Ventures v. Symantec. The case involved patents regarding software virus protection, and Judge Mayer went much further than his colleagues in questioning not only whether software is eligible patent matter, but fundamentally whether allowing patents in the area raises fundamental free speech concerns. You be the judge: Continue Reading

Can Publishing Research in a Peer-Reviewed Journal Constitute False Advertising?

Scientists like to publish their research so as to advance scientific knowledge. Scientific journals often vet proposed articles and suggest changes or further research in order to exercise some quality control over the research published. However, according to a California district court opinion issued this week, when the journal publisher also has a commercial interest that may be affected (positively or negatively) by the research, and suggests changes or clarifications to the proposed article, that publisher may be held liable for false advertising. Continue Reading

Deadwood on the U.S. Trademark Register: Random Audit Pilot Program Proposed to be Made Permanent

deadwoodThe U.S. Patent and Trademark Office (USPTO) has long been concerned about so called “deadwood” on its register — registrations granted where the registration is not being used or not used on all goods/services identified in the registration, but the registration’s existence keeps others from obtaining registration protection for similar goods/services. This is particularly an issue where the periods between required showings of continued use is long.  For example, the period between renewals is ten years*.

To maintain a U.S. trademark/service mark registration, a declaration of continued use** must be filed at certain periodic intervals affirming U.S. commerce use*** of the registered mark in connection with all of the goods/services listed in the registration. However, current regulations require only the submission of one specimen of use per class**** in the registration when filing the declaration of continued use. It has long been suspected that not all declarations of continued use are accurate with regard to all goods/services in a registration. This is particularly so for registrations based on foreign treaty rights (Madrid Protocol, Paris Convention) where the applications can–and often do–identify literally pages of goods/services but where U.S. commerce use of the mark is not a prerequisite to U.S. registration. Continue Reading

Brexit & IP: Five Things You Should Know


Last night, in an election that had one of the largest voter turnouts in British history, a majority of UK citizens voted for the UK to exit the European Union. The ramifications of this vote are still being determined, but at least with respect to intellectual property protection, there are five things you should know: Continue Reading