At this year’s Annual Meeting, AIPLA willbestow the Board of Director’s ExcellenceAward on US Senators Orrin Hatch [R-UT]

and Patrick Leahy [D-VT]. This is AIPLA’s highestaward, and is presented to individuals who have madeoutstanding contributions fostering intellectual prop-erty law.“For the past decade both of the Senators have

worked on IP and have been leaders in almost everysignificant piece of legislation that has come out,”says AIPLA Executive Director Lisa Jorgenson.“They both had a very profound impact on the devel-opment of IP law. We are honored to have them atour Annual Meeting.”Earlier this month for instance, Senator Hatch

convened a meeting of the Senate Republican High-Tech Task Force. This included looking at how TC

Heartland had impacted the litigation landscape,whether Congress needs to provide further guidanceon where patent plaintiffs can bring suit, howunsound patents can be better screened out earlier inthe litigation process while ensuring that valid patentssurvive review, and what sorts of limits Congressshould place on what can and cannot be patented.This year’s Annual Meeting boasts a strong line-

up, including the USPTO’s Joseph Matal speaking attoday’s Opening Plenary Session. Acting Register ofCopyrights Karyn Temple Claggett wil be speakingtomorrow. Jorgenson also highlights that the speakerlist includes a number of Federal Circuit, districtcourt and USPTO judges and retired judges, includ-ing former Federal Circuit Chief Judge Paul Michel,and current Federal Circuit Judges Pauline Newmanand Kara Stoll.

Senators Hatch and Leahy to be honored

The Eastern District ofTexas’s diminished statusLITIGATION Page 4

THURSDAY EDITION

managingip.com AIPLA ANNUAL MEETING | WASHINGTON, DC | THURSDAY - OCTOBER 19, 2017

How to avoid functionalclaiming problemsPROSECUTION Page 3

PUBLISHED BY

DAILYREPORTAIPLA

Daily schedule on back

Senator Orrin Hatch Senator Patrick Leahy

Any IP lawyers who are also dedicatedfollowers of fashion should take noteof a session taking place this morning

on copyright in fashion designs. The session will feature a review of the

Supreme Court’s Star Athletica v VarsityBrands decision and its impact, a look at copy-rightable subject matter in apparel and estab-lishing infringement claims, and an analysis offashion design protection around the world.The Supreme Court’s Star Athletica ruling

in May involved designs for cheerleading uni-forms. The court held that a feature incorpo-rated into the design of a useful article is eligi-ble for copyright protection only if the feature(1) can be perceived as a two- or three-dimen-sional work of art separate from the useful arti-cle, and (2) would qualify as a protectable pic-torial, graphic, or sculptural work – either onits own or fixed in some other tangible medi-um of expression – if it were imagined sepa-rately from the useful article into which it isincorporated.

Star Athletica clarified that the “statutorytext indicates that separability is a conceptualundertaking.” The Supreme Court said it“does not require the underlying useful articleto remain” as a “fully functioning useful articleat all, much less an equally useful one.”The impact of the ruling is already being

felt, and could be more profound than somewere expecting.“It is a very recent decision, and the issue

is about what the proper test for separability

is,” says Staci Riordan, partner at NixonPeabody in Los Angeles, who is moderatingthe session. “Even with the Supreme Courtissuing a narrow decision, we are starting tosee the effects of that case in all different

aspects of the fashion industry.”Despite the case focusing on cheerlead-

ing uniforms, the ruling gives fashion intel-lectual property owners another means ofprotecting their ornamental designs onuseful articles such as clothing.For example, soon after the Star Athletica

decision came out Puma sued Forever 21,alleging a line of shoes infringed its design

patent and trade dress. Puma cited StarAthletica, contending that each of the copy-rights in its Fenty line of shoes can be per-ceived as a two- or three-dimensional workof art separate from the Fenty shoes and also

would qualify as a protectable pictorial,graphic, or sculptural work.Riordan reports that a client also recent-

ly asked her about how the decision affectsdesigns in furniture, showing that StarAthletica may have a broader impact thansome initially thought. “If you’d asked me in June I would have

told you it wasn’t a particularly big deal

because all the court decided was a legaldoctrine,” says Riordan. “It didn’t say all ofa sudden a bunch of things had protectionthat didn’t have it before. It defined the testfor trying to figure that out. But people areusing it to try to extend rights and to claimmore rights than were previously thoughtto exist. Whether those rights actually existor not is too soon to tell. But I would nothave thought we would have seen such awide expansive reading of the case.”She says that the copyright in fashion

session has similarities to theTrademark/Copyright session directlypreceding it on “Lessons Learned in‘Disparaging’ Marks After In re Tam”. TheSupreme Court in its Tam ruling in Juneheld the disparagement clause of theLanham Act is unconstitutional under theFirst Amendment’s Free Speech Clause.“I know it is a trademark case but the

implications that has on speech and dilu-tion and other brand considerations isgoing to be much more widely felt than youwould have thought. It is similar to the StarAthletica case where it looks like a very nar-row ruling, but we are now feeling theeffects of it quite broadly.”

The “Copyright In Fashion Designs: StarAthletica And Going Forward” session takesplace today 10.45am-12pm as part of theTrademark/Copyright track in theMaryland Ballroom Salon 1, Lobby Level

Star Athletica impact already being felt

The Federal Circuit’s en banc AquaProducts v Matal ruling has beendescribed as “a complete non-event”

and “a real mess” that “did little to resolvethe big questions” surrounding the PTAB’streatment of motions to amend. However, itdid shift the burden of persuasion in motionsto amend to the petitioner. The 148-page opinion was a long time

coming. Oral arguments took place inDecember 2016. The unusually long waitsuggested that the eventual ruling would becomplicated. This proved to be true. Theopinion, written by Judge O’Malley,described its ruling as “narrow” as a result ofthe different views on the judgment thecourt should reach and the rationale itshould employ in support of that judgment.“The final written decision of the Board

in this case is vacated insofar as it denied thepatent owner’s motion to amend thepatent,” the opinion says. “The matter isremanded for the Board to issue a final deci-sion under § 318(a) assessing the patentabil-ity of the proposed substitute claims withoutplacing the burden of persuasion on thepatent owner.”The original panel decision in the case

was issued in May 2016, and upheld thePTAB’s denial of a motion to amend claimsof a patent for automated swimming poolcleaners.Sitting en banc, the court decided not to

take the plunge of offering clear guidance foramending claims at the PTAB. The Federal Circuit

concluded: “The onlylegal conclusions thatsupport and define thejudgment of the courtare: (1) the PTO has notadopted a rule placingthe burden of persuasionwith respect to thepatentability of amendedclaims on the patentowner that is entitled todeference; and (2) in theabsence of anything thatmight be entitled defer-ence, the PTO may notplace that burden on thepatentee.”A Fish & Richardson analysis said the

opinion “did little to resolve the big ques-tions surrounding the Board’s treatment ofmotions to amend.” Five different judgesaddressed the question, but no opinion drewa majority. “So as things stand right now, thePTO may not place the burden on the paten-tee to prove the patentability of amendedclaims, but the PTO may engage in noticeand comment rulemaking to do so, at whichtime the court will be tasked with determin-ing whether any practice so adopted is valid,”Fish & Richardson explained.

But Aqua Products will still have animpact, despite the judgment noting that

“very little said over thecourse of the many pagesthat form the five opin-ions in the case has prece-dential weight.”Michael Weiner, part-

ner at Marshall Gerstein& Borun, commentedthat the decision creates“a real mess for thePTAB” because it affectsall pending IPRs, whichmust be decided withinone year after institutionunless the time period isextended by up to sixmonths for good cause.“The PTAB will need

to establish procedures and likely issue newrules to address the court’s decision, and willprobably need to use its authority to extendits deadlines for pending IPRs,” commentedWeiner in a statement.Some believe Aqua Products makes

amending claims more likely. “At a mini-mum, with the change in the burden, I sus-pect there will be an increase in the numberof motions to amend,” said Cyrus Morton,partner and chair of the Patent Office TrialsGroup at Robins Kaplan, in a statement.“That will continue at least until we see

whether the change in the burden actuallyresults in the Board entering a higher per-centage of substitute claims into challengedpatents.”But patent owners should not get overly

excited. Justin Oliver, partner at FitzpatrickCella Harper & Scinto, described the shift ofthe burden of proof to petitioners as a “sig-nificant shift”. But he added: “However, themanner in which the Federal Circuit reachedthat decision leaves the door open for thePTO to issue new regulations that shift theburden back to the patent owner. Whetherthe PTO will do so, and whether such newregulations would withstand scrutiny in afuture appeal, remain open questions.”In a blog post titled “Much ado about

nothing”, Scott McKeown, chair of Ropes &Gray’s PTAB group, described AquaProducts as “a complete non-event.”He com-mented: “While the decision has beenembraced as a net positive for patentees,practically speaking, it will not move the nee-dle on amending at the PTAB.”McKeown acknowledged the shift of the

burden of persuasion to petitioners, but saidthat the difficulties of amending claims at thePTAB are not because of an improper shift-ing of the burden of patentability. McKeownsaid the more interesting part of the decisionwas the posturing on the Chevron defenceahead of the Supreme Court’s hearing ofSAS Institute v Lee.

2 NEWS ANALYSIS THURSDAY - OCTOBER 19, 2017 AIPLA DAILY REPORT

Tam tells his trademark taleThe AIPLA Annual Meeting is not

the only IP conference taking placethis week – the AIPPI Congress was

held earlier this week in Sydney, Australia.Simon Tam, founder of The Slants, gave agripping account of his battle to register a

US trade mark in a panel at the AIPPICongress on “Funny, bad taste or out oforder? Morality and public order in trade-marks.” Recounting how he started TheSlants rock band to fight prejudice andinjustice, Tam said he never dreamed that

he would also end up changing US trade-mark law. The Slants’ fight took them from perfor-

mances in US prisons to the USPTO, theFederal Circuit and ultimately the SupremeCourt – where the whole band attended thehearing. In a unanimous opinion earlier thisyear, the eight justices upheld Tam’s caseand ruled that the “disparaging” exceptionin the Lanham Act contravened the FirstAmendment. For Tam, the case was always about

reclaiming the language of racial stereotyp-ing, something to which the band has beencommitted since its foundation. “Thinkhow you can shape the world by changingthe process, changing your perspective. Inever imagined that starting a rock bandcalled The Slants would change IP law, but Iknew we would need to change the processto change our world,” he said to an attentiveaudience, adding that the key to succeedingat the Supreme Court was that: “I neverapproached this as an attorney. Iapproached it as an activist.” The Matal v Tam decision will lead to

changes to USPTO practice, though the fullramifications are not yet clear. Other pan-elists in the session discussed how Australia,China and Europe approach moral restric-tions on trademark registrations. Mark Metzeling of IP Gateway said that

“offensive” marks will be refused inAustralia, including terms that suggest racial

vilification, religious intolerance and per-sonal abuse. Discussing Tam’s case, he saidhe hoped the word “slants” would not beseen as offensive in Australia today: “I actu-ally don’t think there would be any objec-tion to an application for The Slants.” Qiang Ma of JunHe described the cate-

gories of marks that are not eligible for reg-istration in China, including marks incorpo-rating country names. Speaking to Tam, Luis Berenguer of

EUIPO said: “I’m the bad guy. We are theones who refuse trademark applications!”But he said the Office faces difficult deci-sions, especially given that it works in sever-al languages, and has to take into accountcultures and legal traditions in 28 countries.Cases that have come before the Officeinclude applications for the marks ScrewYou, Paki, Bin Ladin, Baghdad CountryClub, Not Made in China, Labellamafia andHijo de Puta. “If you’re easily offended, leave now.”

That was the warning Shane Smyth of FRKelly gave to the audience at the start of thesession. But once Tam started speaking, noone moved.

The Tam case will be discussed at the AIPLAAnnual Meeting today in a session titled“Who Says It’s Disparaging? LessonsLearned in ‘Disparaging’ Marks After In reTam” 10.45am-12pm in the MarylandBallroom Salon 1, Lobby Level

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

Was Aqua Products a wash out?

The Federal Circuit building

Functional claiming is claim languagefocused on the function performed,without the recital of structure, mate-

rial, or acts in support of the function. Thisdefinition comes from both the statutorylanguage of Section 112(f) – referred to asmeans-plus-function claiming – and fromcase law such as the Federal Circuit’sWilliamson v Citrix Online ruling.“Functional claiming under 35 USC

112(f) affects most of us patent folks,” saysCaulder. “The US courts use that to inter-pret patent claims when they are written in acertain way. It surprises people when it hap-pens in their day-to-day practice.”Means-plus-function claiming has dra-

matically declined since the 1990s. An anal-ysis by Professor Dennis Crouch on thePatently-O blog in 2013 showed that thepercentage of applications that included atleast one means-plus-function term fell tounder 10% by 2012 from almost 25% at theturn of the century. Between 1950 and 1990the average was about 45%. The Federal Circuit in its en banc

Williamson decision in 2015 overruled itsown precedent from 2004 that there was a“strong” presumption that claim limitationsthat do not use the term “means” are not

means-plus-function limitations. The claimat issue in Williamson referred to a “dis-tributed learning controlmodule,” which the courtfound was subject to 112(f)and invalid as indefiniteunder § 112(b). Judge Newman wrote an

interesting dissent in the case,criticizing the court for elimi-nating the statutory signal ofthe word “means”. “The pur-pose of this change, the bene-fit, is obscure,” Newmanwrote. “The result, however,is clear: additional uncertain-ty of the patent grant, confu-sion in its interpretation, invi-tation to litigation, and disin-centive to patent-based inno-vation.”The Federal Circuit outlined a new stan-

dard of “whether the words of the claim areunderstood by a person of ordinary skill inthe art to have a sufficiently definite mean-ing as the name for a structure”. Post-Williamson, examiners have more scope tointerpret claim language that does not usethe word “means” under 112(f) even if prac-

titioners do not intend it. “The reaction from both applicants and

examiners is to avoid thesetypes of claims because theyare read down so narrowly,”says Caulder. “Increasinglywhat is happening is thatnonce words will raise theflag of 112(f). You don’tnecessarily have to have‘means’ in your claim –there are other types ofwords like ‘module’ that willevoke the ire. So practition-ers are generally avoidingthese types of claims. But itis not that simple. In someareas, such as my area on thecomputer side, it is impossi-ble to avoid functionalclaiming because the nature

of the technology really calls out for thatkind of description in the claims.”Today’s speakers will try to make sense

of this situation. There will be three presen-tations: “From the White House to theUSPTO to You: What’s Happening withFunctional Claiming,” by Michele VanPatten Frank of Venable; “Malfunctioning

Functional Claims: Tips for Drafting PatentApplications in View of Williamson,” byCharles Bieneman of Bejin Bieneman; and“The Collision of Section 101 Patent-Eligibility and Section 112 FunctionalClaiming,” by Ronald Embry of Patterson &Sheridan.Bieneman will advise practitioners to

“strive for the impossible” by avoiding func-tional claiming. His tips for this includereciting the structure in the claim, avoidingnonce words, using “means” only if you real-ly mean it, avoiding certain danger wordslike “to” or “for” which imply function notstructure, and using generic terms to try toreduce the risk of functional interpretation.Bieneman will also discuss some of the

case law after Williamson. Caulder saysWilliamson is “an important development”.“It is evolving,” she says. “The only thingyou can do is try to avoid functional claim-ing or very deliberately use it as a practition-er,” she says.

The first part of the Patent Prosecution track,“Functional Claiming: An Untimely Death orJudicious Resurrection,” takes place between9am-10.15am today in the ThurgoodMarshall Ballroom, Mezzanine Level

Patent prosecution practitioners willlearn all about obviousness in a ses-sion this morning. Jacques Etkowicz

of RatnerPrestia in King of Prussia, PA sayspractitioners of all experience levels willbenefit from attending. “There will be absolutely worthwhile prac-

tical tips on how to deal with obviousness inyour prosecution practice,” he says. “For thosethat may not prosecute cases that much, get-ting this advice from those that have beendealing with it for years is invaluable.”The highly-subjective nature of obvi-

ousness creates much uncertainty. “You’ll find different examiners clearly

taking different approaches to how theywill apply art, with some being more rea-sonable than others when you’re arguingthe application or the combination of priorart references in a rejection and the reason-ableness of the combination,” saysEtkowicz. “Some of the more senior exam-iners know what they can or cannot do incombining prior art references and makingthose rejections stick, while sometimesyour examiners will take a little more lee-way and try and make an argument thatmany times will not survive a well-rea-soned response from the patent attorney.”He adds: “Unfortunately there is no way

to put two pieces of prior art into a process,turn the crank, and get an answer,” saysEtkowicz. “It is very subjective and some-times arguments set forth in an Officeaction may look good but when you actual-ly dig into what the prior art reference says,the result is completely different.” Skilled prosecution practitioners are

successful in overcoming these rejectionsand making the examiner go back and lookfor better prior art.“We will take the time and dig into the

reference, find out what it does and doesn’tstand for and then respond,” saysEtkowicz. “Sometimes an amendment isnecessary in order to clarify, bring out amore salient point in an invention and getpast that combination of references andhopefully move towards an allowance.”The session will feature three presen-

ters: Brantley Shumaker of MiddletonReutlinger will look at “A Walk DownMemory Lane: Is the Law on ObviousnessMore Obvious Now?” Warren Woessner ofSchwegman Lundberg Woessner will dis-cuss “Adjusting the Rearview Mirror –Overcoming Rejections Based onHindsight”. Suzannah Sundby of Canady +Lortz will talk about “ExaminingExaminers: I Say Potato and You Say

Vegetable – BRI and the UnexpectedResults of Interviews”.The presentation on rejections based on

hindsight will discuss situations when theexaminer uses the patent applicant’s own spec-ification as a guide. “But for the examiner having that infor-

mation, he would not have been able tomake the combination of rejection that hemakes and that’s not permitted,” explainsEtkowicz. “An examiner is not permitted touse the applicant’s teachings against them.The law on obviousness is clear that thereferences themselves must teach what theclaim that’s being examined says.”He adds: “It is a complicated argument,

but the courts have come down severaltimes and said you cannot apply one refer-ence as a modifier to the first reference ifthe combination would result in the firstreference not being useful for its intendedpurpose. That happens a lot when theexaminer uses the applicant’s specifica-tions as a teaching tool.”

The second part of the Patent Prosecutiontrack, “Obvious or Not Obvious: It DependsWhich Side You’re On,” takes place between10.45am-12pm today in the ThurgoodMarshall Ballroom, Mezzanine Level

AIPLA DAILY REPORT THURSDAY - OCTOBER 19, 2017 PATENT PROSECUTION 3

Overcoming obviousnessobjections

“This is a troublesome but fascinating topic,” says Isi Caulder, partner at Bereskin & Parr in Toronto, who ismoderating today’s patent prosecution session looking at “Functional Claiming: An Untimely Death orJudicious Resurrection”

Functional claiming post-Williamson

Isi Caulder

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EDITORIAL TEAM Editor Michael LoneyReporter Eileen McDermottAdditional reporting James NurtonPRODUCTIONProduction editor David RichterWeb production editor Josh PasanisiADVERTISINGAmericas manager Kevin Danskykevin.dansky@euromoneyny.comAsia manager Matthew Siumatthew.siu@euromoneyasia.com EMEA manager Nick Heathnheath@euromoneyplc.comManaging director, Legal Media GroupTim WakefieldSUBSCRIPTION HOTLINE UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570Photography Jules Clifford, CPPThe AIPLA Daily Report is produced by ManagingIntellectual Property in association with AIPLA.Printed by MPM Communications LLC. The AIPLADaily Report is also available online atwww.managingip.com.

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No part of this publication may be reproducedwithout prior written permission. Opinionsexpressed in the AIPLA Daily Report do notnecessarily represent those of AIPLA or any of itsmembers.

4 PREVIEWS THURSDAY - OCTOBER 19, 2017 AIPLA DAILY REPORT

US district court patent case filing inthe third quarter fell to its lowestlevel in the past three years, accord-

ing to a report from Unified Patents.Some 864 cases were filed in the third

quarter, down from 996 in the second quar-ter and 923 in the first quarter. Last year’sthird quarter had 1,086 cases filed.Unified Patents projects total new cases

for 2017 hitting 3,805 in district courts. “Thiswould be a 13% decrease in total new districtcourt cases compared to 2016,” it said. The Patent Trial and Appeal Board

(PTAB) is the largest forum for patent dis-putes, with Unified Patents reporting 1,417petitions filed in the first nine months. TheEastern District of Texas was the most popu-lar district court venue for patent litigation inthe first nine months, with 735 cases filed,followed by Delaware (469), the CentralDistrict of California (224), the NorthernDistrict of California (131) and the NorthernDistrict of Illinois (126).The Eastern District of Texas is likely to

lose its status as the top district court forpatent cases in 2018 because of theSupreme Court’s TC Heartland rulingissued on May 22, which tightened the def-inition for patent venue.

The Eastern District of Texas accountedfor 34% of all new patent cases pre-TCHeartland in 2017 compared to 16% post-TC Heartland, as of the end of September.“Eastern District of Texas (ED Tex) expe-

rienced a major decrease, while Delaware(DED) , Central (CD Cal) and NorthernDistricts of California (ND Cal), andNorthern District of Illinois (ND Ill) haveseen proportional increases,” noted UnifiedPatents, which is a deterrence entity that pro-

tects its members against non-practising enti-ties in defined zones, including by filing interpartes review petitions.Unified Patents attributed 60% of all new

patent disputes in the third quarter to non-practicing entities, which it defines as compa-nies that derives the majority of total revenuefrom patent licensing activities. In contrast to the district court patent dis-

pute filing, Unified Patents reports thatPTAB filing in the first nine months of the

year increased 10% compared with the sameperiod in 2016. However, PTAB filing was also down in

the third quarter. According to figuresManaging IP took from the DocketNavigator database, the third quarter had atotal of 393 petitions filed, down from 467 inthe second quarter and 566 in the first quar-ter (which is the record quarter since PTABpetitions became available in September2012). The third quarter figure was the low-est since the 367 in the first quarter of 2016. The PTAB is still on course for a record

year, despite the slower quarter. The averagenumber of petitions per month so far in 2017is 158.4. This is higher than the 146.5 averagemonthly petitions of the whole of 2016,149.8 in 2015, 139.8 in 2014 and 65.8 in2013.The fourth quarter would need more than

371 petitions to beat 2015’s record year of fil-ing of 1,797 petitions.

You can hear more about the impact of TCHeartland in a session tomorrow 2pm-3.30pmcalled “A Shifting Impression on Infringementin the Heartland: Foundational Changes toExhaustion and Venue Shopping” in theMarriott Ballroom Salon 1, Lobby Level

The question of whether you shouldtake your trademark battle to theTrademark Trial and Appeal Board

(TTAB) or make a federal case out of it willbe discussed in a session this afternoon. Shannon Jost of Stokes Lawrence,

Jonathan Hudis of Quarles & Brady andTTAB Administrative Judge SusanHightower will discuss the different strate-gies for winning in district court and theTTAB, as well as share tips on making yourcase before the TTAB. Moderator Dean Eyler of Gray Plant

Mooty is planning an interactive session,leading a structured discussion rather thanhaving the panelists presenting one afteranother. They will discuss strategic con-cerns about whether to file in the TTAB ordistrict court trademark litigation. “The biggest difference still is that in fed-

eral court you are often preparing your casefor the possibility of trying it to a jury,” saysEyler. “You are not going to have a jury inthe TTAB. In federal court, the analysis alsotends to be more far reaching regardingmarket place factors. They tend to havemore importance in federal court decisionsthan in the TTAB.”The session will touch on the Supreme

Court’s B&B Hardware v Hargis Industriesruling in March 2015. The court held thatTTAB decisions about likelihood of confu-

sion can have a preclusive effect in subse-quent district court litigation. “B&B Hardware was very important in

the trademark world,” says Eyler. “TheSupreme Court ruled that TTAB decisionscan have a preclusive effect, so that justheightens the importance of picking theright forum.”Fears were raised that the ruling would

be interpreted broadly, giving the TTABmore power than intended. One concernwas that the TTAB might change its prac-tice regarding suspending actions in favor ofdistrict court actions.“I think it is fair to say that the impact has

been a little less than many people predictedat first,” says Eyler. “It definitely doesheighten the importance of TTAB cases.But I think the TTAB has been pretty clearthat generally speaking their practices havenot generally changed.”Separately, the TTAB did recently

update some of its rules, however. Theseincluded encouraging electronic filing, sim-plifying procedures and reducing discoveryburdens. The TTAB changes will also becovered in the session.

The “Take Your Trademark Battle to theTTAB or Make a Federal Case Out of It?” ses-sion takes place today 2pm-3.30pm in theMaryland Ballroom Salon 1, Lobby Level

Eastern District of Texas losing its statusfor patent suits

Source: Unified Patents

Where should yourtrademark battle be?

Eurasian Economic Union (here-inafter, EAEU or Union) is theinternational economic integration

organization founded under the Treaty onthe Eurasian Economic Union entered intoforce on January 1 2015. As of end ofAugust 2015 Belarus, Kazakhstan, Russia,Kyrgyzstan and Armenia are members ofthe Union.There are no customs borders between

the countries of EAEU and the goods canfreely move within this single marketspace. In this regard the matter of protec-tion of IP has become very important tak-ing into account that every country-mem-ber has its own IP legal regulations whichmay have certain peculiarities from coun-try to country.Every EAEU country-member partici-

pates in all major international treatiesregarding trademark and patent protec-tion. Aside from that, Russia, Kyrgyzstan,Armenia and Kazakhstan are members ofWTO and bound with obligations underTRIPS agreement. In view of these factslegislation of EAEU members is mostlyuniform which makes cooperation in thefield of intellectual property much easier.

TrademarksThere are various ways to obtain a trade-mark protection in countries of the Union,including through the national filing sys-tem and filing under Madrid trademarkregistration system.In Russia, legislation on trademark pro-

tection is provided in Part IV of the CivilCode since 2008. In other EAEU coun-tries, civil codes include only general provi-sions regulating legal protection of allintellectual property and some basic provi-sion concerning certain types of subjectmatters. In these countries, issues relatingto legal protection of trademarks areaddressed in detail in special laws. InArmenia it is the law “On trademark”(2010); in Belarus, “On trademarks andservice marks” (1993); in Kazakhstan, law“On trademarks, service marks and appel-lations of origin of goods” (1999); inKyrgyzstan, law “On trademarks, servicemarks and appellations of origin of goods”(1998).National trademark-related legislations

of EAEU member-countries have a lot incommon. For instance:• Legal protection is granted to a trade-

mark on the basis of its state registration;the exception is protection of well-knowntrademarks that is granted due to the provi-sions of Paris Convention;• Examination of applications is per-

formed in two stages: formal (preliminary)examination and substantial examination;

• There are similar conditions and pro-cedures for establishing trademark priority,including convention and exhibition priority;• Substantial examination includes

reviewing of both absolute and relativegrounds;• Division of an application is possible

before a decision on the parent applicationis adopted;• PTO’s decisions and trademark regis-

trations may be opposed in administrativeand/or judicial bodies;• There is the possibility for termination

of the trademark protection due to its non-use.In the meantime, there may be some dif-

ferences in the local laws as regards toprosecution procedures as well asapproaches of examiners.Aside from national registration, trade-

mark protection can be obtained on theterritory of EAEU member-countries onthe basis of the Madrid InternationalTrademark Registration System.

Regional system of trademarkprotection in EAEUThe countries-members of EAEU haveagreed on the draft of the Treaty onTrademarks, Service Marks andAppellations of Origin of Goods of theEurasian Economic Union introducing aregional trademark and service mark pro-tection system, providing establishment ofa Union Trademark, as well as regional sys-tem for protection of appellations of originof goods (geographical indications).The said Draft Treaty does not envisage

creation of a regional trademark office,rather it provides for collaboration of allEAEU countries’ PTOs in examining of anapplication for registration of a UnionTrademark, which would be valid in allEAEU countries. The Draft Treaty alsoprovides that the Eurasian EconomicCommittee (EEC) will manage theUnified Register of Union Trademarks. AllUnion Trademark infringement cases onthe territory of any Union’s country will behandled in accordance with national legis-lation of this country, and the liability forthe infringement of Union Trademark willbe the same as for infringement of a trade-mark registered under the national proce-dure or an international registration validin a given jurisdiction.In order to register a Union Trademark,

it will be necessary to file a single applica-tion in PTO of any EAEU country at theapplicant’s discretion. The application is tobe filed in Russian regardless of what PTOis chosen by an applicant as a filing office.Applicants from countries outside EAEUshall act through patent attorneys regis-

tered in the corresponding filing office.Preliminary (formal) examination will

be carried out only by the filing office and

the filing fee will be equal to the fixed fee inthat filing office. In case of positive resultof preliminary examination, the applica-tion will be published on the EEC’s officialsite. After that, interested persons will beable to provide the filing office with theirobservations regarding registration of theclaimed trademark.Examination of a sign claimed as a

trademark will be carried out by eachnational office of EAEU countries. Thethird parties’ observations, if submitted,would to be considered by all nationalPTOs during the examination of the

claimed mark. In the course of examinationboth absolute and relative grounds forrefusal will be checked.On the basis of national PTOs’ opin-

ions, the filing office will either adopt adecision to register a Union Trademark, ornotify the applicant of the grounds forrefusal communicated to the filing officeby national PTOs. Any national PTO’srefusal to register the claimed mark may beappealed in accordance with the respectivecountry’s procedure for such an appeal.In case of positive opinions from all

national PTOs, the filing office will make aDecision of Registration of a UnionTrademark and enter the mark into theUnified Register of EAEU Trademarks.The Draft Treaty provides that it will be

possible to oppose a registered UnionTrademark in a competent body of anyEAEU country in accordance with proce-dure set forth by respective country’s legisla-tion, but only on the grounds provided bythe treaty. Meanwhile, if a Union Trademarkis ruled invalid by a decision of any compe-tent body, the trademark owner will be enti-tled to file a national trademark application(or applications) preserving the priority dateof the invalidated registration.The exclusive right to a Union

Trademark will be valid for 10 years fromthe filing date with an option of multiplerenewals each time for 10 more years. Inorder to renew a Union Trademark regis-tration, it will be necessary to file a requestto the filing office and pay renewal fees setforth in each of EAEU countries.The Draft Treaty provides that a Union

Trademark registration may be terminatedearly due to non-use. At the same time, useof the Trademark at least on the territoryof one of the EAEU countries would berecognized as sufficient use for the purpos-es of maintaining the registration.It is expected that the said treaty on the

Protection of patents and trademarksin the Eurasian economic union

Evgeny Alexandrov is a partner, chief of legal department,and Russian Trademark attorney at Gorodissky & Partners.Evgeny joined Gorodissky & Partners in 2005 and in 2015was promoted to partner at the firm. He advises clients onthe legal (non-contentious) and illegal (contentious) use ofIP/IT, unfair competition and false advertising, parallelimports and anti-counterfeiting, licensing and franchising,media and technology. He represents clients before com-

mercial courts and courts of general jurisdiction, administrative and law enforce-ment bodies. Projects handled by Evgeny include successful representation ofmajor companies in patent and trademark infringement cases, legal support ofthe Russian companies in different IP issues including multi-jurisdiction disputes.

Evgeny Alexandrov, PhD

6 SPONSORED ROUNDTABLE THURSDAY - OCTOBER 19, 2017 AIPLA DAILY REPORT

Evgeny Alexandrov of Gorodissky & Partners discusses the legal environment for IP protection within theEurasian Economic Union, including a draft treaty introducing a regional trademark and service mark protectionsystem

The exclusive right to aUnion Trademark will bevalid for 10 years fromthe filing date with anoption of multiplerenewals each time for10 more years. In orderto renew a UnionTrademark registration,it will be necessary tofile a request to thefiling office and payrenewal fees set forth ineach of EAEU countries.

regional trademark will become effective atthe beginning of the next year.

Appellations of origin of goods(geographical indications) inEAEU countriesEAEU countries have national registers ofprotected appellations of origin, includingboth appellations related to geographicalobjects inside that country and appella-tions related to the objects on other coun-tries’ territory. New entries are registeredin those Registers by national PTOs underthe procedures set forth by national laws.The procedures provide filing an applica-tion for registration of an appellation oforigin and granting the right to use the saidappellation or filing an application forgranting the right to use the registeredappellation of origin.EAEU’s Draft Treaty provides recogni-

tion of appellations of origin registered inEAEU countries as appellations of originprotected on the territory of all EAEUcountries. It will be carried out by registra-tion of the nationally-registered appella-tions of origin into the Unified Register ofUnion Appellations of Origin and issuanceof a unified certificate of protection.Under the Draft Treaty, the Union

countries shall not be obliged to protectanother country’s appellations of originsthat are not protected or ceased to be pro-tected in that country.In order to obtain protection to appella-

tions of origin on the Union territory appli-cants from EAEU countries will file corre-sponding applications to their nationalPTOs. Applicants from other countriesmay choose any EAEU country’s PTO astheir filing office. Procedure of registrationof appellation of goods in EAEU countries’national PTOs and fees for filing an appli-cation are set forth by the each EAEU

country’s legislation, while a fee for regis-tration of appellation of origin in theUnified Register will be determined as asum of registration fees of all Union coun-tries. For each appellation of origin regis-tered in Unified Register the right holderwill be granted with a single document cer-tifying both protection of appellation oforigin and his right to use it on the Unionterritory.The Draft Treaty therefore did not pro-

vide for examining appellations of originapplications by each national PTO ofEAEU countries; in fact, Union countriesrecognize as valid on the Union territoryappellations of origin protection grantedby a filing office upon payment of therespective fees by the applicant. This pro-cedure will simplify obtaining of protec-tion for appellations of origin on the terri-tory of EAEU.

PatentsTechnical solutions may be protected inRussia and other countries of the Union bya patent for invention or a patent for utilitymodel. Also, there is the Eurasian PatentConvention (EAPC) which provides thepossibility to obtain a regional patent foran invention valid in all Member-States.The EAPC covers more countries than theEurasian Economic Union, viz: Armenia,Azerbaijan, Belarus, Kyrgyzstan,Kazakhstan, Russia, Turkmenistan andTajikistan. Hence, when making a decisionto protect an invention the applicantshould consider whether to file a Eurasianpatent application covering eight countriesor national applications in selected coun-tries. The Eurasian patent system is usedby applicants from over 80 countries of theworld. To perform administrative tasks relat-

ing to the functioning of the Eurasianpatent system and grant of Eurasianpatents, the Eurasian Patent Conventionestablished the Eurasian PatentOrganization with the Eurasian PatentOffice (EAPO) acting as its executivebody. The patent issued by the EurasianPatent Office is in the Russian languageand shall have the same effect in Member-States as national patents for inventions.The EAPC does not recognize as inven-

tions the following subject matters in thosecases where a Eurasian application or aEurasian patent are directly pertinent to anyof the above-listed subject matter as such:• discoveries;• scientific theories and mathematical

methods;• presentation of information;• methods of economic organization

and management;

• symbols, schedules and rules, includ-ing rules of games;• methods for performing mental acts;• algorithms and computer programs;• topographies of integrated circuits;• projects and plans for structures and

buildings and for land development;• solutions concerning solely the outward

appearance of manufactured goods andaimed at satisfying aesthetic requirements.At that, as in many other jurisdictions

Eurasian patents shall not be granted for:• plant varieties and animal breeds;• topology of integrated circuits;• inventions, the commercial use of which

it is essential to prevent, for the purposes ofprotecting public order or morality, includ-ing the protection of the life and health ofpeople and animals or the protection ofplants, or in order to prevent serious damagebeing caused to the environment. In thatregard, such use may not be considered

such, solely on the grounds that it is forbid-den by the legislation of one or moreMember-States.Any dispute relating validity of the

Eurasian patent in a given Member-State, orthe infringement, in a given Member-State,of a Eurasian patent shall be resolved by thenational courts or other competent authori-ties of that State on the basis of EAPC andthe Patent Regulations. The decision shallhave effect only in the territory of theMember-State.

ConclusionThe above demonstrates that the legal envi-ronment on IP protection within theEurasian Economic Union is quite unifiedand harmonized with the majorInternational Treaties that ensures appropri-ate legal protection of IP assets and encour-ages foreign companies doing business in thegiven jurisdictions.

AIPLA DAILY REPORT THURSDAY - OCTOBER 19, 2017 SPONSORED ROUNDTABLE 7

The countries-membersof EAEU have agreed onthe draft of the Treatyon Trademarks, ServiceMarks and Appellationsof Origin of Goods ofthe Eurasian EconomicUnion introducing aregional trademark andservice mark protectionsystem

TODAY’S SCHEDULE: THURSDAY - OCTOBER 19, 20178:00-9:00am Opening Plenary Session – Welcome Remarks; Speaker: Joseph Matal; Committee of the Year Announcement Marriott Ballroom, Salons 2 + 3, Lobby Level

9:30am-2:30pm Spouse/Guest Tour: The National Museum of African American History & Culture

Committee meetings

6:30-8:00am Corporate Practice (Breakfast Meeting) (Corporate In-House Counsel Only) Washington 1, Exhibition Level

7:00-8:00am Global Sector IP Leadership Group (Leadership Group Members Only) Washington Rooms 5-6, Exhibition Level

Concurrent Morning Tracks

9:00am-12:00pm Track #1 Patent Prosecution Thurgood Marshall Ballroom, Mezzanine Level

9:00am-12:00pm Track #2 Patent Litigation/Alternative Dispute Resolution Marriott Ballroom Salon 1, Lobby Level

9:00am-12:00pm Track #3 Trademark/Copyright Maryland Ballroom Salon 1, Lobby Level

Lunchtime Events

12:00-12:30pm Lunch Reception Exhibit Hall A, Exhibition Level

12:30-2:00pm Luncheon – Speaker: The Honorable Paul R Michel, former Chief Judge of the Federal Circuit Marriott Ballroom 2+3, Lobby Level

Concurrent Afternoon Tracks

2:00-3:30pm Track #1 Patent Licensing Thurgood Marshall Ballroom, Mezzanine Level

2:00-3:30pm Track #2 Corporate Marriott Ballroom Salon 1, Lobby Level

2:00-3:30pm Track #3 Trademark Maryland Ballroom Salon 1, Lobby Level

Committee Educational Sessions

3:30-5:30pm Biotechnology/Electronic and Computer Law/Emerging Technologies/Food and Drug (Joint Session) Thurgood Marshall Ballroom, Mezzanine Level

3:30-5:30pm Diversity in IP Law/Patent Litigation (Joint Session) Marriott Ballroom, Salon 1, Lobby Level

3.30-5:30pm IP Practice in Israel/Professionalism and Ethics (Joint Session) Maryland Ballroom, Lobby Level

Committee Meetings

3:30-4:30pm AIPLA Fellows (Committee Members Only) Hoover, Mezzanine Level

3:30-4:30pm Antitrust Law Madison AB, Mezzanine Level

3:30-4:30pm Harmonization Task Force (Committee Members Only) Harding, Mezzanine Level

3:30-4:30pm IP Practice in China Virginia C, Lobby Level

3:30-4:30pm IP Practice in the Far East Jackson, Mezzanine Level

3:30-4:30pm Legislation (Committee Members Only) Capitol Boardroom, Lobby Level

3:30-4:30pm PTAB Trial Washington Room 4, Exhibition Level

3:30-4:30pm Quarterly Journal Editorial Board Meeting (Editorial Board Members Only) McKinley, Mezzanine Level

3:30-5:30pm Special Committee on Publications (Committee Members Only) Wilson A, Mezzanine Level

3:30-5:30pm American Intellectual Property Law Education Foundation (AIPLEF) (Foundation Trustees Only) Virginia B, Lobby Level

3:30-5:30pm Patent Cooperation Treaty Issues/Patent-Relations with the USPTO Virginia A, Lobby Level

3:30-5:30pm Trademark: Anti-Counterfeiting and Anti-Piracy/Trademark Internet/Trademark Law/Trademark Litigation/ Wilson BC, Mezzanine Level(Meeting: 3:30 -

Trademark-Relations with the USPTO/Trademark Treaties and International Law (Joint Meeting and Reception) 5 pm), McKinley Foyer (Reception: 5 - 5:30 pm)

4:30-5:30pm International Trade Commission Hoover, Mezzanine Level

4.30-5:30pm IP Law Associations (Committee Members Only) Wilson A, Mezzanine Level

4:30-5:30pm IP Transactions Harding, Mezzanine Level

4:30-5:30pm Patent Agents Coolidge, Mezzanine Level

4:30-5:30pm Standards and Open Source Madison AB, Mezzanine Level

4:30-5:30pm Task Force on Patentable Subject Matter (Committee Members Only) Jackson, Mezzanine Levell

4:30-5:30pm US Bar/EPO Liaison Council (Council Members Only) Jefferson, Mezzanine Level

Thursday Evening Events

7:30-9:00pm Opening Night Reception: “Farm to Table” Marriott Ballroom Salon 2-3, Lobby Level