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

    Patent reform is once again on the Senate Judiciary Committee's legislative agenda.  S.23--the Patent Reform Act of 2011--was introduced on the Senate floor by Committee Chairman Patrick Leahy (D-VT) on January 25, 2011.  The bill, which resembles previous reforms, is co-sponsored by eight: three Republicans, four Democrats, and one Independent.

     In his introductory remarks on the floor, Leahy suggested that failing to pass patent reform this year would allow China to dominate the world in innovation activity.  Quoting a Newsweek study published last year, he said that only "41 percent of Americans believe that the United States is staying ahead of China on innovation. A Thompson Reuters analysis has already predicted that China will outpace the United States in patent filings this year. China, in fact, has a specific plan not just to overtake the United States this year in patent applications, but to more than quadruple its patent filings over the next 5 years." Leahy also called for reforming the patent system to "stimulate the American economy" through innovation.  He quoted Thomas Freidman, who wrote "We might be able to stimulate our way back to stability, but we can only invent our way back to prosperity."

     Senatory Orrin Hatch (R-UT), also speaking on the Senate floor in support of S. 23, noted that patent reform was needed to address the backlog of 700,000 patent applications pending in the Patent Office.  He said that number "reflects the vibrant, innovative spirit that has made America a world-wide leader in science, engineering, and technology, but also represents dynamic economic growth waiting to be unleashed."

     The current version of patent reform looks like previous ones.  A quick summary of the major provisions is shown below:

Sec. 1: Short Title
Sec. 2: First Inventor to File
Sec. 3: Inventor's Oath or Declaration
Sec. 4: Damages
Sec. 5: Post-Grant Review Proceedings
Sec. 6: Patent Trial and Appeal Board
Sec. 7: Preissuance Submissions by Third Parties
Sec. 8: Venue
Sec. 9: Fee Setting Authority
Sec. 10: Supplemental Examination
Sec. 11: Residency of Federal Circuit Judges
Sec. 12: Micro Entity Defined
Sec. 13: Funding Agreements
Sec. 14: Tax Strategies Deemed Within the Prior Art
Sec. 15: Best Mode Requirement
Sec. 16: Technical Amendments
Sec. 17: Effective Date; Rule of Construction

     What will be the fate of S.23?  If history is any indication, the reform measure may go the way of previous legislative attempts and end up scuttled before it gets much traction.  But at least this Congress is starting the process early.  Below is a list of previous Congressional attempts to reform the Patent Act and the fate of each bill.

111th Congress: S. 515 (Patent Reform Act of 2009: Dead)
111th Congress: S. 610 (Patent Reform Act of 2009: Dead)
111th Congress: H.R. 1260 (Patent Reform Act of 2009: Dead)
110th Congress: S. 1145 (Patent Reform Act of 2007: Dead)
110th Congress: S. 3600 (Patent Reform Act of 2008: Dead)
110th Congress: H.R. 1908 (Patent Reform Act of 2007: Passed House)
109th Congress: S. 3818 (Patent Reform Act of 2006: Dead)
 

     As it has in the past, the Biotechnology Industry Organization (BIO) came out in support of S. 23, with BIO President and CEO Jim Greenwood noting the legislation's benefits to bio: "Innovation in biotechnology is based upon the strong and predictable protection of intellectual property provided by our nation’s patent system. Without strong and predictable patent protection, investors would shy away from investing hundreds of millions of dollars, over a decade or more, in high-risk biotechnology companies, and will simply put their money into projects or products that are less risky or offer a more immediate return but are of less value to society."  Other stakeholders, as they have in the past, will undoubtedly step forward for or against the legislation.

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     The White House's Office of the U.S. Intellectual Property Enforcement Coordinator, led by Victoria Espinel, better known as the government's "IP Czar," marked her first year anniversary on the job by reporting the seizure by the government of 82 websites allegedly selling counterfeit goods.  

     Said U.S. Immigration and Customs Enforcement Director John Morton, whose National Intellectual Property Rights (IPR) Coordination Center worked with the Department of Justice (DOJ) in making the seizures, “The sale of counterfeit U.S. brands on the Internet steals the creative work of others, costs Health and Safety our economy jobs and revenue and can threaten the health and safety of American consumers. The protection of intellectual property is a top priority for [Homeland Security] and the [IPR Center].” 

     IPR and IPEC want the public's help.  With a click of a "Report IP Theft" button, left, "members of the general public, industry, trade associations, law enforcement and government agencies" may (anonymously, if they wish) report violations of intellectual property rights.

     Intellectual Property-related prosecutions by DOJ are listed in its cybercrimes new releases ; more complete case descriptions may be found here.

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     Plaintiffs filed 27 copyright lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2010, according to records available from Justia.com and PACER.  That level compares to 34 lawsuits in 2009 (a 21-percent difference) and 40 suits in 2008 (a 33-percent slide).

     Patent litigation activity also declined in 2010 compared to previous years.  Twenty-two patent lawsuits were filed last year, compared to 31 lawsuits in both 2009 and 2008, respectively (a 29-percent downward difference).

     Bucking the trend, trademark plaintiffs brought more lawsuits in 2010 compared to earlier years.  In 2010, 40 trademark lawsuits were filed, compared to just 34 in 2009 (an 18-percent difference) and 36 in 2008 (11-percent).

     All combined, plaintiffs brought 89 copyright, patent, and trademark lawsuits in Maryland in 2010, a 10-percent drop compared to 2009, and a 17-percent decrease in 2008 levels. 

     Maryland's neighboring districts saw a lot more IP litigation last year: Delaware: 272 combined cases; Virginia: 176 total; Pennsylvania: 255.

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          On a Chamber of Commerce road sign along a busy Baltimore corridor, someone has appended the word “Hon” to the end of “Welcome to Baltimore.” Ask most people who have lived there for a period of time and they’ll says that Hon (pronounced “hun”) is part of the charm of Charm City, as much as blue crabs and Orioles baseball. But Hon is now also at the center of a growing intellectual property controversy.

          Around Baltimore, Hon is generally used in place of “sir” or “ma’am” or when one doesn’t know another’s given name, though it can also be used as a short version of “honey” and in other contexts. The term might be part of a greeting: “How are you, hon?”  Or used politely at a diner: “Would you please hand me that salt, hon?” It is often associated with blue-haired, hard working-class women from an earlier generation with sixties-era glasses and big hair, a character right out of John Water’s Hairspray. Hon is as entrenched in the region’s vernacular as “y’all” is to those in the south, “bra” is to locals in Hawaii, and “fogetaboutit” is to New Yorkers. Hon is so closely tied to Baltimore’s roots that its use immediately informs the recipient of the speaker’s geographical residence.

          It should come as no surprise, then, even to Baltimoreans, that the term Hon would be used by local businesses to sell their goods and services. What better way to connect with local customers? Denise Whiting, the owner of Café Hon and the founder of the annual Honfest, would certainly agree. Her Café Hon restaurant has been operating in Hampden, a northwest Baltimore neighborhood, for more than a decade; she registered the business name as a U.S. trademark in 1992. Ms. Whiting’s business also owns separate HON trademarks related to restaurant services, for paper goods (bumper stickers, napkins, and the like), and in connection with retail gift shops. Her HONFEST trademark, first used in 1997, is associated with “conducting entertainment exhibitions in the nature of community cultural festivals.” 

          But no one, it seems, knew about her trademarks, at least not until recently when the Baltimore Sun and others reported that Whiting’s trademark lawyers had successfully enforced her trademarks against a local merchant at the BWI Airport, shutting down the merchant’s retail sales of Hon-related products. The lawyers also interceded when Baltimore City wanted to use Hon-related images as part of an advertising campaign. In December 2010, a small group of vocal protesters gathered in front of Café Hon to voice their opposition to the HON trademarks. More recently, Bruce Goldfarb, a Catonsville, Maryland, writer, publicly challenged the trademarks by selling “Hon” mugs on his “Welcome to Baltimore, Hon” website, openly inviting Whiting to sue him so he could challenge the legality of the trademarks in court. Goldfarb and other opponents want Hon back in the public domain. 

          But that may be impossible in the case of Whiting’s marks, which she claims are incontestable.  And it may take more than protests and unpredictable lawsuits to return HON to the public domain, because any decision by a court in Goldfarb’s favor would only directly affect Whiting’s marks, and may not bar the next person from trademarking Hon in connection with, say, the sale of bicycles or t-shirts on Ocean City’s boardwalk. Baltimoreans seeking a more permanent remedy should look West, to Montana.

          Residents of the Big Sky state had a similar problem in 2001. Back then, a Nevada company called Last Best Beef sought to register Montana’s state slogan: THE LAST BEST PLACE, in connection with the company’s sale of meat, beef, clothing, accessories, even travel-related information. The vitriolic public response caught the eye of then Senator Conrad Burns and later Senator Max Baucus, who has inserted language in various federal appropriations bills to prohibit the use of federal funds to “register, issue, transfer, or enforce any trademark of the phrase THE LAST BEST PLACE.” His 2006 measure was challenged by Last Best Beef in court, but the Fourth Circuit Court of Appeals in Richmond, Virginia, upheld Baucus’ spending ban in 2007. As Sen. Baucus said on his official website, “Trying to trademark ‘The Last Best Place’ is as ludicrous as someone trying to patent a Montana sunset. If I have to insert this [appropriation] provision for the next 20 years, I will because that is how important this saying is to our state.” According to Trademark Office records, Last Best Beef’s trademarks and trademark applications are indefinitely suspended as a result of the Baucus spending ban. 

          So Maryland’s contingent in Congress could for do for HON what Sen. Baucus has done for THE LAST BEST PLACE.  And they might very well succeed, though for such legislation to pass muster it may need to be limited to just preventing, prospectively, any new marks from using the term HON.  Even if legislation could be enacted that affects Whiting’s marks, would such a measure be fair?  After all, her trademark applications were laid open by the Trademark Office for public opposition many years ago and before the marks were officially registered, and no one then successfully blocked them. Time, it seems, has only made them stronger.  Will the marks survive today’s challenges?  As those in Baltimore might say, we’ll just have to wait and see, Hon.

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U.S. Patent & Trademark Office (PTO) records show that for the one year period ending December 31, 2010, the agency granted 2,462 patents naming at least one Maryland resident, a 24% increase over the number of patents issued to Maryland inventors in 2009 (1,988), and a 27% increase over 2008 (1,942). Because patents generally take three years to issue after they are filed, the sharp increase in patents issued in 2010 may represent an increase in innovation in 2007.

PTO records show that for the one year period ending December 31, 2010, the PTO published 3,249 patent applications naming at least one Maryland resident, a 2% increase in the number of patent applications published to Maryland inventors in 2009 (3,171) and 2008 (3,187).

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