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February / March 2024 IP Newsletter

Families of patents could face more double-patenting challenges
Can a patentee extend a patent term for the same invention by claiming a second patent for claims that aren’t “patentably distinct”? This is known as obviousness-type double patenting (ODP). This article reviews a decision that recently resolved a long-standing question about the interplay between ODP challenges and patent term adjustments (PTAs) granted by the U.S. Patent and Trademark Office (USPTO) because of delays in patent processing. A brief sidebar highlights the court’s dismissal of the patentee’s equitable arguments against an ODP rejection.
In re Cellect, LLC, No. 22-1293 (Fed. Cir. Aug. 28, 2023).

Does derivative work copyright registration cover unregistered original works?
Copyright registration is a prerequisite for bringing an infringement action. But do litigants have recourse for an unregistered work if they registered a derivative work? This article discusses this issue in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit.
Enterprise Management Limited, Inc. v. Construx Software Builders Inc., No. 22-35345 (9th Cir. July 17, 2023).

Ups and downs: Words matter in trademark licensing agreement
A garage door company probably thought its settlement with a competitor over alleged trademark violations left it free from additional lawsuits regarding its use of the competitor’s marks. This article summarizes why a court ruled otherwise, instead holding that a trademark licensee could sue the company even though its licensing agreement didn’t expressly authorize it to do so.
D.H. Pace Company, Inc. v. OGD Equipment Co., LLC, No. 22-10985 (11th Cir. Aug. 22, 2023).

Mandatory deposit of copyright works is unconstitutional
To the frustration and annoyance of many, the Copyright Act requires the owner of a copyright in a work to deposit two copies of the work with the U.S. Library of Congress within three months of its publication. Those parties should be encouraged by how the U.S. Court of Appeals for the District of Columbia ruled when it was recently asked for the first time to address the requirement’s constitutionality. This article summarizes the court’s finding that requiring physical copies of works is “classic taking,” while copyright owners receive no additional benefit (compensation) from forfeiting works.
Valancourt Books, LLC v. Merrick B. Garland and Shira Perlmutter, No. 21-5203 (D.C. Cir. Aug. 29, 2023).

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