April 2014
1. Patents
PCT
Late Filed PCT Applications Now Recognised by USPTO
The USPTO, in its capacity as a PCT designated office, has now withdrawn its notification of incompatibility for the PCT Rule 49ter provisions relating to restoration of the right of priority. Consequently, provided the ‘unintentional’ criterion for the late filing is satisfied and the applicable restoration fee is paid, international phase PCT applications that were late filed within the 2-month window allowed by PCT Rule 26bis.3 can enter PCT national phase before the USPTO.
United States of America
USPTO Announces Patent Glossary Pilot Program
The USPTO has announced a Glossary Pilot Program under which expedited examination will occur for new patent applications (in particular technology areas) that include a glossary of terms. The pilot will commence on 2nd June 2014 and continue for 6-months or until 200 applications have been accepted into the program.
The pilot program will allow the USPTO to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application improves the clarity of the patent claims and facilitates examination of patent applications by the USPTO.
To be eligible for the Glossary Pilot Program, a patent application must be classified in technological fields that fall under the examination jurisdiction of USPTO Technology Centers 2100 (Computer Architecture and Software), 2400 (Networking, Mulitplexing, Cable, and Security), and 2600 (Communications) or the Business Methods area of Technology Center 3600 (Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review). The pilot is available for original or continuation-in-part applications, but is not available for reissue, continuation, divisional or PCT national phase applications. Further, eligible applications must be filed electronically and include at least one claim, but no more than four independent claims, and have a maximum of thirty claims in total, and have no multiply dependent claims.
Regarding the glossary the following six general requirements apply:
1. The glossary must be placed at the beginning of the detailed description portion of the original specification, identified with a heading, and presented on filing the application.
2. The glossary definitions cannot rely upon other parts of the specification for completeness, or upon any incorporation by reference to other sources such as patents, published patent applications, or non-patent literature references.
3. A glossary definition establishes limits for a term by presenting a positive statement of what the term means. A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.
4. Definitions provided in the glossary cannot be disavowed elsewhere in the application. For example, a definition cannot be presented in the glossary along with a sentence that states that the definition is not to be considered limiting.
5. A glossary definition may include the usage of examples, synonyms, and exclusions. However, the glossary definition cannot consist solely of a list of examples, synonyms, and/or exclusions.
6. The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record. Suggestions for definitions include key claim terminology (such as a term with a special definition), substantive terms within the context of the invention, abbreviations, acronyms, evolving technological nomenclature, relative terms, terms of degree, and functional terminology including 35 U.S.C. 112(f) functional limitations (previously 35 U.S.C. 112, sixth paragraph). If a definition is provided in the glossary for any 35 U.S.C. 112(f) functional limitations, then an additional suggestion would be to include the identification of the corresponding structure for performing the claimed function, in addition to any disclosure of the structure elsewhere in the specification.
It is important to note that an applicant cannot subsequently disavow the meaning of any term that has already been defined in the glossary section. Apart from the correction of typographical errors, the glossary definitions cannot be amended or deleted during examination, meaning the examiner will consider the glossary section as controlling for the meaning of the terms defined in the glossary section.
Explicit Definition Not Final Determination
The following recent decision of the Court of Appeals for the Federal Circuit (CAFC) provides a useful insight into current practice in the United States of America around the use of patent glossaries.
In Butamax Advanced Biofuels LLC v Gevo Inc the CAFC held that the explicit definition of a claim term within a patent does not necessarily limit the term’s meaning. The case had been appealed from a district court, which had construed the claim term in line with the explicit definition. However, Butamax appealed on the basis that the district court’s claim construction excluded a preferred embodiment, which was the subject of a dependent claim.
The CAFC relied on the principle that claims are not normally construed to exclude embodiments disclosed in the specification. The CAFC concluded that the patentee had not shown a clear intent to narrowly define the disputed term, which was held to have retained its plain and ordinary meaning.
2. Trade Marks
New Zealand
Google Adwords Not Trade Mark Infringement In NZ
In InterCity Group (NZ) Limited v Nakedbus NZ Limited the High Court issued its first substantive decision regarding the use of another parties trade mark as a Google Adword.
Google Adwords allow advertisers to have their adverts displayed in response to keywords used by users of Google’s various search engines. The keywords do not need to feature in the resulting advert in order to be used. In the current case Nakedbus was found to have used ‘inter city’ as a Google Adword. However, the Court held that such use would not be likely to be taken as use as a trade mark. In particular, the Judge considered that the use of ‘inter city’ as Google Adwords was ‘invisible’ to the user. Insofar as the use of the keyword was an act that was not seen or known or understood by the consumer, there was no use of the sign “likely to be taken as being used as a trade mark”. Consequently, Nakedbus’s use as a Google Adword of an identical or essentially identical mark to InterCity’s trade mark registration was held to not amount to trade mark infringement. However, it is noteable that the Judge diverges from European decisions which attribute normally informed and reasonably attentive internet users with an understanding of how Google uses keywords to trigger advertisements.
However, Nakedbus also made use of inter city in the resulting adverts, with statements such as “inter city buses from $1 – We'll beat any inter city fare”. The Court considered such statements to be ambiguous as consumers were likely to believe they were InterCity advertisements or were otherwise connected to InterCity. Consequently, despite the descriptive nature of the mark in relation to transportation services, the Judge held that NakedBus had infringed InterCity’s trade mark registration. The Judge also considered that the Nakedbus Google adverts were misleading and deceptive under the Fair Trading Act 1986 and also amounted to passing off.
United States of America
Case Clarifies Product Catalog Status as Specimen of Use
The USPTO Trade Mark Trial and Appeal Board (TTAB) recently issued a precedential decision outlining the requirements for a product catalogue to qualify as an acceptable specimen for trade mark use purposes. The definition of ‘use in commerce’ is given in section 45 of the US Trademarks Act. While use of a mark on advertising qualifies as use in commerce for a service mark, ‘mere advertising’ is insufficient for marks used on goods. In fact, for goods, such promotional material is only considered for use purposes if it is impractical to place the mark on the goods, or their container or display, or on tags or labels affixed thereto.
Where this proviso applies, the Trademark Manual of Examining Procedure (TMEP) specifies that catalogues can be acceptable as specimens of trade mark use for goods if they contain the following information:
(1) a picture or sufficient textual description of the relevant goods;
(2) the mark in association with the goods; and
(3) information necessary to order the goods.
In previous decisions the TTAB has held that the mere inclusion of a phone number, Internet address and/or mailing address in an advertisement describing a product will be insufficient for the advertisement to qualify as an acceptable specimen.
In this decision the TTAB noted that the catalogues did not include a sales form or ordering information, minimum quantity requirements, pricing details, or shipping information.
The TTAB clarified that while advertisements seek to induce people to buy or use a product or service, condition (3) sets the bar higher by requiring that the advertising material is ‘calculated to consummate a sale’. In this case the TTAB denied registration since it considered potential purchasers would have to contact the applicant to obtain significant additional information not provided by the specimen catalogues.