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IP Newsletter - August / September 2019

September 1, 2019

Testing truths
Experimental use preempts public use, on-sale bars to patentability
Common sense might seem to dictate that a new invention would require testing before an inventor moves ahead with it. But could such testing trigger the public use or on-sale bar to patentability? Not necessarily. This article reviews a U.S. Court of Appeals for the Federal Circuit case in which the court explained that the experimental use exception may negate both bars.
Barry v. Medtronic, Inc., No. 17-2463, Jan. 24, 2019, Fed. Cir.

Extra! Extra!
SCOTUS clarifies copyright infringement lawsuit prerequisite
Authors of work obtain exclusive rights — copyrights — in their works immediately on creation of the work. But they generally can’t file a civil lawsuit for infringement of those rights until they register the work with the Copyright Office. The federal courts of appeal have split, however, as to when a copyright infringement suit could be filed — on filing the application for copyright registration with the U.S. Copyright Office or on grant of the copyright registration by the U.S. Copyright Office. This article reviews a unanimous decision by the U.S. Supreme Court resolving the issue once and for all.
Fourth Estate Public Benefit Corp. v., LLC, No. 17-571, Jan. 8, 2019, U.S.S.C.

Obviousness doesn’t require motivation to combine prior art
When a party challenging a patent’s validity alleges that multiple prior references made the invention obvious, it may need to show that someone would have been motivated to combine those references into the invention. This article highlights a recent case from the U.S. Court of Appeals for the Federal Circuit finding that no motivation to combine is required where a secondary reference is used only to explain the primary reference.
Realtime Data, LLC v. Iancu, No. 18-1154, Jan. 10, 2019, Fed. Cir.

Court of Appeals revives denied trademark application
Two companies with similar marks operated in the same region for more than 40 years without any actual confusion arising for consumers. Nonetheless, the Trademark Trial and Appeal Board (TTAB) found a disqualifying likelihood of confusion when one company tried to register its mark. This article looks at why it can prove worthwhile to not just accept the board’s rulings.
In re: Guild Mortgage Co., No. 17-2620, Jan. 14, 2019, Fed. Cir.

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