Continuing Legal Education (CLE) Seminar

Join our Dr. Laura Labeots and a panel of other speakers on March 14, 2019 for a collaborative discussion regarding intellectual property for agriculture and plants. The CLE seminar is complimentary for members AND non-members of the Intellectual Property Law Association of Chicago.

Speakers will include:

  • Audrey Charles, Patent Agent

In the past, Plant Variety Protection (PVP) Certificates could only be used to protect plant varieties that reproduce sexually (through seeds) or through tuber propagation. However, the Agricultural Improvement Act of 2018 recently amended the Plant Variety Protection Act (PVPA) by extending protection to plant varieties that reproduce asexually from a single parent (through cutting, grafting, tissue culture, and root division).1


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On Monday, June 13, 2016, the Patent Trial and Appeal Board issued its first ever post-grant review decision under the America Invents Act.  The Board invalidated two patents challenged by Husch Blackwell client American Simmental Association, a national cattle breed association representing the interests of Simmental cattle breeders in the United States. The ASA successfully

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Over the past few years, we have been reporting on the full frontal assault against patent assertion entities (PAEs), pejoratively referred to as patent trolls in blog posts in May 2014, July 2014 and December 2014.   Actions to curb these perceived pariahs of the US economy have come from nearly every angle of attack including the White House, Congress, the Federal Trade Commission and all the way down to various state houses.   Although much has happened on many of the fronts we have previously reported, much has stayed the same.  We thought now would be a good time to reflect over the last year’s activities to see if the strategy of patent litigation as a business is truly nearing its demise.

To catch those of you up who are unfamiliar with the term, “patent troll” generally refers to an individual or entity that focuses its efforts solely on enforcing patent rights against purported infringers without itself intending to manufacture the patented product or supply the patented service. Patent trolls are often accused of a sort of “21st century shakedown,” often holding vaguely worded patents and, rather than using the protected technology themselves, demanding “licensing fee” payments from alleged infringers in hopes that their targets will settle rather than defend themselves in court.   Patent trolls are most often thought of as asserting computer implemented inventions claimed in so-called business method patents.  The bread and butter tactics of a troll usually begin with sending demand letters to accused infringers, inviting a quick settlement before prolonged litigation likely to cost the accused infringer several multiples of what the troll will take to resolve the issue.

To be sure, patent trolling is big business in the U.S.  A number of studies conducted on the subject have found that patent trolling cost the U.S. economy close to $30 billion each year, with many small businesses paying significant sums to defend themselves or settle claims raised by patent trolls.

Federal Legislation to Reform the Patent Act

Since our first post on the subject back in May 2014, there have been several attempts at reforming the US Patent Act in order, at least in part, to rope in patent trolls. In July 2015, the Innovations Act (H.R. 9) was reintroduced in Congress and was designed principally to put a legislative lid on patent trolls.  A key, and controversial, element of the bill is a revision to the Patent Act to provide a presumption that the winner of any infringement suit will have its attorney’s fees paid by the loser.

Despite its early wide-spread bipartisan support, the Innovations Act has lost its momentum and appears to be dead – at least for the time being.  As it turns out, there are several critics to the bill’s concepts, including universities and other research and development-based businesses that do not generally practice the inventions they create. Undaunted, Representative Bob Goodlatte (R-Va) vows to keep up the fight.
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For the last several years, there have been rumblings about the possibility of a truly unified set of laws for the protection of trade secrets. Well, that day may be right around the corner. Recently, the Senate Judiciary Committee approved the Defend Trade Secrets Act (“DTSA”), which will, if signed into law, amend the Economic

Congratulations to Michael Annis, Sam DiGirolamo and Dan Cohn on a precedent setting decision for Husch Blackwell in intellectual property. This is for the American Simmental Association, which is attempting to invalidate a set of patents directed to utilizing genetic information to value feed animals.

These petitions for post-grant review, filed in January

Earlier this year, we reported on the full-frontal legal assault on so-called patent trolls (here) and (here).  Now at the end of the year, we thought a look back on what has happened in the conflict since our last posts and a look forward into what may be in store for 2015 would be of interest to those who have or may be impacted by allegations of infringement by non-practicing entities.

The Federal Trade Commission dipped its toes into the troll infested waters in early 2014 when it initiated a study of patent assertion entities (PAE) and their impact on American commerce.  Shortly thereafter, the FTC, for the first time, initiated its consumer-protection authority against a PAE.  Specifically, the FTC issued an administrative complaint against MPHJ Technology Investments, LLC (a PAE ); its officer, Jay Mac Rust; and its outside legal counsel, Farney Daniels, P.C., for deceptive sales practices in violation of the FTC Act by conducting a campaign to promote and sell licenses for the company’s computer scanning and networking patents.  Most of the 8,000 plus demand letters sent by MPHJ (or its sister licensing companies) were sent to small business across the country, including several animal heath related entities.   In early November, the FTC announced a proposed settlement where, without admitting or denying the allegations, the respondents agreed to cease making certain misleading or unsubstantiated representations in patent assertion communications.  The FTC’s continued interest in monitoring and evaluating demand letters from PAEs will no doubt be something to watch in 2015.
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As we advised in a previous post, there seems to be an all-out war against so-called patent trolls. A patent troll is, in general, a pejorative term associated with entities that do not practice their own patents but nonetheless assert those patents against others. Also known as “patent assertion entities,” patent trolls often “assert”

Last Thursday (June 19), the U.S. Supreme Court unanimously decided that the federal Food, Drug and Cosmetic Act (“FDCA”) does not preclude POM Wonderful’s deceptive labeling claims under the Lanham Act against Coca-Cola.  POM Wonderful LLC v. Coca-Cola Co., No. 12-761, slip op. at 2 (June 12, 2014).  POM sued Coca-Cola under the Lanham

The Canadian Government recently introduced Bill C-31, the Economic Action Plan Act 2014, No.1.  This omnibus bill includes changes to a wide variety of laws in Canada.  The potential amendments to Canada’s Trade-marks Act will have a significant impact on brand owners, as well as intellectual property practitioners worldwide.  The bill is intended to ensure that Canada meets its international trademark obligations outlined in the Singapore Treaty on the Law of Trade-marks, the Nice Agreement, and the Madrid ProtocolAlthough the bill is still moving through the legislative process, the essence of the changes that will impact brand owners will likely remain unchanged and become law in Canada.  It will be important to monitor the legislation because, once implemented, the changes will be far-reaching.

Notably, C-31 radically changes trademark use requirements.  Presently, Canada, like the U.S., is a use-based jurisdiction, meaning a party can only register a trademark if it has been used in Canada, or if it has been both used and registered outside of Canada.  Bill C-31 eliminates this requirement.  Brand owners doing business internationally are likely quite familiar with the potential issues that arise when a country does not require use of a mark prior to registration.  A party may register your mark—even a famous mark—and try to keep you from doing business in that country, claiming infringement, absent what often may be a high payment to purchase the registration and  to use the mark.  The Apple iPad situation in China is a classic example.  Apple had to pay $60 million to resolve the dispute concerning use of its mark in China because another party had obtained a registration for that mark in China. 
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