Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     Today the U.S. Patent and Trademark Office (USPTO) announced it will pilot a program to accelerate the examination of certain “green” technology patent applications. Under the pilot program, patent applications meeting certain criteria will be accelerated in order to "further the development and deployment of green technology, create green jobs, and promote U.S. competitiveness," a USPTO press release said. Pending patent applications in green technologies will be eligible to be accorded special status and given expedited examination, which will have the effect of reducing the time it takes to patent these technologies by an average of one year, the USPTO said. The press release stated that earlier patenting of green technologies enables inventors to secure funding, create businesses, and bring vital green technologies into use much sooner. 

     Green technologies are defined as those patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, or greenhouse gas emission reduction.

     Under the pilot program, patent applications are normally taken up for examination in the order that they are filed. The average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision. Under the pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the USPTO will examine the applications on an accelerated basis (i.e., 12 months to a final decision).

     Critics have complained that green patents mean higher prices for these newest pollution-reducing technologies due to licensing fees sought by patentees, fees that effectively put the technology out of reach of companies and countries that can’t pay the premiums.  The result is that companies and countries that need the most pollution abatement will look to older, less efficient technologies because they are less expensive than state of the art technologies being patented today.

     Federal Register Notice: 74 FR 64666

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• Please visit the Maryland IP Jobs page for a list of Intellectual Property jobs in Maryland (if you would like to have an IP-related job in Maryland listed on this website--for free--please send me the information)
   
• Invotex Group's Michele Riley will be co-presenting a WEBINAR to the MD Bar Association - IP Section titled "Removing the Mystery: Damages in Intellectual Property Disputes" on Thursday, September 10, 2009 from 8:30 to 9:30 a.m.  For more information, click here. 
   
• A reader pointed out that in the case of Dayna Staggs v. Kanye West, No. 8:2008cv00728 (filed March 20, 2008), the U.S. District Court for the District of Maryland granted in part and denied without prejudice in part Defendant The Island Def Jam Music Group, a division of Universal Music Group's motion to dismiss (memorandum opinion; entered August 17, 2009).  In doing so, the Court, reviewing Plaintiff's copyright infringement claim, found "it it is by no means clear that Staggs would be able to establish that the Universal Defendants had access to his Song ["Volume of the Good Life"], [but] for purposes of the Motion to Dismiss, since Staggs has alleged that [Kanye] West had access to it through his MySpace page, and since the Universal Defendants could conceivably have had access through West, the Court finds that this element is satisfied." Notwithstanding, the Court also found that, "as a matter of law, there is no substantial similarity between the songs ["Volume of the Good Life" and West's "Good Life"]."

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     U.S. Patent & Trademark Office (PTO) records show that for the year ending June 30, 2008, the PTO granted 1,983 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO). That represents a 1% increase in the number of patents issued to Maryland inventors for the previous year ending June 30, 2008 (1,956), but a 4% decline over the year ending June 30, 2007 (2,071).

      The number of published patent applications naming at least one Maryland inventor during the year ending June 30, 2009, was up 3% compared to the previous two years. According to the PTO, 3,172 patent applications naming at least one Maryland inventor were published during the year ending June 30, 2009, compared to 3,076 patent applications published in the year ending June 30, 2008, and 3,066 applications published in the year ending June 30, 2007.

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     If you're looking for a registered patent attorney (or patent agent) in Maryland near you, visit this website, which provides a map showing the location of registered patent attorneys and agents in Maryland based on address information supplied to the U.S. Patent & Trademark Office's Office of Enrollment, and their names and addresses.  Rolling over the pointing tabs on the map brings up the practitioner's name and contact information. A snapshot of the map is shown below.  Hat tip to Ryan Durham for providing the app and the link.

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     In their forthcoming Berkeley Technology Law Journal article (alternative link), visiting University of Maryland Associate Professor of Law Davida Isaacs and University of Kentucky Assistant Professor of National Security Robert Farley discuss the Military and State Secret Privilege and its negative impact on innovation, the discovery process, and government procurement.  As previously noted on this blog, the counties surrounding Washington, D.C., are home to many government contractors, possibly triggering use of the privilege.

     In the article, Isaacs and Farley review the Federal Circuit's Crater Corp. v. Lucent Techs., 423 F.3d 1260 (Fed. Cir. 2005), cert. denied, 547 U.S. 1218 (2006), case in some depth, suggesting that there are some troubling constitutional issues regarding the assertion of the privilege, and arguing that widespread use of the privilege could have a significant negative effect on military innovation and procurement.  On the former point, where the information involved constitutes “trade secrets”, the authors point out that effective quashing of litigation through invocation of the privilege arguably amounts to an unconstitutional taking. On the latter, the authors note that loose use of privilege endangers the intellectual property rights of companies interested in doing business with the military, and in particular of small companies that cannot depend either on their connections with the Pentagon or on an expectation of repeat business for protection. (This is particularly problematic given the stated interest of the Pentagon in pursuing non-traditional defense contractors for innovative technologies.)

     The Military and State Secrets Privilege has been receiving an enormous amount of attention lately, write Isaacs and Farley.  As the article also notes, just a few months ago Congress proposed legislation that is meant to rein in the Government’s use of the privilege, or at least encourage independent judicial consideration of the privilege’s application. But, the authors argue, particularly with regard to the use of intellectual property, this legislation still does not go far enough in ameliorating the negative effects described above.

• Cite:  D. Isaacs and R. Farley, Privilege-Wise and Patent (and Trade Secret)-Foolish?: How the Courts’ Misapplication of the Military and State Secrets Privilege Violates the Constitution and Endangers National Security; 23 Berkeley Tech. L.J. __ (2009) (forthcoming).

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• UPDATE: American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

     As previously reported on this website, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment in the case of American Mensa v. Inpharmatica. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous. Now, after trial, a jury has returned its verdict form, finding in favor of the Defendants including, among other things, a finding that “Defendant’s use of the 'Admensa' and 'ADMEnsa' [marks] was not likely to cause confusion, or cause mistake, or to deceive about the affiliation, connection, or association of the Defendants with American Mensa as to the origin, sponsorship, or approval of their goods or services by American Mensa.” Judgment was entered by Judge Quarles on May 5, 2009.

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• UPDATE: Star Scientific vs. R.J. Reynolds Tobacco Co.

     Next Monday, Petersburg, Virginia-based Star Scientific, Inc. and R.J. Reynolds Tobacco Co. will resume their battle over allegations of RJR's infringement of Star's U.S. Patent Nos. 6,202,649 and 6,425,401, as the parties open the first of five days of their jury trial in the courtroom of the Honorable Marvin Garbis of the U.S. District Court for the District of Maryland. Star's lawsuit has a long history, including a bench trial on the issue of the enforceability of the asserted patents in 2005. On June 25, 2007, Judge Garbis found Star’s patents to be unenforceable on the basis of inequitable conduct by Star’s attorneys during prosecution of the patents before the U.S. Patent & Trademark Office. On appeal, the U.S. Court of Appeals for the Federal Circuit (Judges Michel, Dyk, and Schall) reversed, and now the case is back before the trial court. Start time: 10:00 am, May 18.

Related posts:  Inequitable Conduct, Conspiracy Theory

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• A.V. (Minors) v. iParadigms, LLC, No. 08-1424 and 08-1480 (4th Cir. Apr. 16, 2009)

     Plaintiffs, four minors (who at the time of their complaint attended high schools in McLean, VA, and Tucson, AZ), brought a copyright infringement suit against iParadigms, LLC, based on the company's use of essays and other papers written by plaintiffs for submission to their high school teachers through an online service operated by iParadigms called "Turnitin Plagiarism Detection Service." 

     According to iParadigms, Turnitin offers high school and college educators an automated means of verifying whether works submitted by students are originals and not the products of plagiarism. When a school subscribes to iParadigms’ service, it typically requires its students to submit their written assignments "via a web-based system available at www.turnitin.com or via an integration between Turnitin and a school’s course management system."  The website uses a "click-wrap" agreement (outlining terms and conditions) for site use. Turnitin then compares the submitted paper and produces a report for teachers suggesting a percentage of the work, if any, that appears not to be original. 

     Three of the students submitted papers with a disclaimer objecting to the archiving of their works. Plaintiffs alleged that iParadigms infringed their copyright interests in their works by archiving them in the Turnitin database without their permission.

     The issue for the Fourth Circuit was whether the archiving of the students' works was a "fair use," one of the statutory exceptions to a copyright owner’s bundle of rights (17 U.S.C. § 107). In reaching its decision, the Fourth Circuit considered the four nonexclusive factors in making a "fair use" determination: 

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     Rockville, MD-based Yogiberry, Inc., filed an application for registration of the mark YOGIBERRY in the U.S. Trademark Office on March 11, 2008, which was approved for publication and subsequently published for opposition on September 2, 2008.  On November 21, 2008, Hanna-Barbera Productions, Inc., owner of several marks related to the Yogi Bear franchise of cartoons that first appeared on television in 1958, filed an opposition.  In its answer to the opposition, Yogiberry stated that its mark is related to retail frozen yogurt stores, and does not overlap with any goods and services associated with Hanna-Barbera's YOGI BEAR MARKS.  Yogiberry further stated that the parties' respective marks are not confusingly similar or likely to cause confusion amongst consumers or the trade.

     Yogiberry, Inc., is the owner of Registration No. 3498624 for the mark shown below, which was registered on September 9, 2008, based on an application filed February 4, 2008:

     In view of the above opposition, Yogiberry, Inc., and Pinkberry, Inc., filed in the U.S. District Court for the District of Maryland a stipulated motion to a stay their pending trademark litigation.  The parties' motion was granted.

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