Weekly IP Buzz for the week ending June 21, 2019
Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending June 21, 2019.
Federal Government Prohibited from Raising AIA Patent Challenges | Return Mail v. USPS
Earlier this week, the United States Supreme Court decided that the federal government may not challenge the validity of U.S. patents using the three patent review processes (inter partes, post-grant, and covered business method review) introduced by the America Invents Act (“AIA”) in 2012. In Return Mail, Inc. v. United States Postal Service, the Supreme Court held that the U.S. federal government does not qualify as a “person” as necessitated by 35 U.S.C. Section 311 or 35 U.S.C Section 321.
Return Mail v. USPS Holds Government Not A “Person” Per AIA Challenge Requirements
Although the federal government has rarely initiated AIA patent review proceedings since the introduction of the AIA patent review, experts predict that patent holders will likely welcome the Supreme Court’s recent holding with open arms because it will minimize the ability of an actor as powerful as the United States from challenging patents via this avenue.
In Return Mail v. USPS, the Supreme Court specifically held that the U.S. Postal Service was not able to demonstrate that it, and consequently the federal government, could overcome the presumption that “person” as dictated by U.S. code does not include the sovereign. Further, the Supreme Court held that despite the long history of federal participation in the patent system, such activity was not sufficiently persuasive to prove that Congress intended for the federal government to be able to participate in AIA patent review proceedings as a “person.”
Read the full article here.
Supreme Court to Decide Trademark Licensee Rights in Bankruptcy Suit
The United States Supreme Court will hear arguments over whether a trademark license agreement remains enforceable after a trustee’s refusal to honor the agreement upon the company’s filing of bankruptcy.
In Mission Product Holdings v. Tempnology, Mission Product Holdings (“Mission”) and Tempnology agreed to a trademark licensing agreement where Mission would be able to sell Tempnology’s patented and proprietary products in conjunction with use of the Tempnology trademark.
Read the full article here.
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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.
Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.