Yesterday, the U.S. Supreme Court heard oral arguments in the much-publicized gene patenting case AMP v. Myriad Genetics. Myriad and the University of Utah own several patents directed to isolated gene sequences for mutations in the BRCA-1 and BRCA-2 genes, as well as methods of using the same for predicting risk of breast cancer. AMP is seeking to invalidate these patents for claiming inventions that are not patentable subject matter, i.e. merely products of nature, which should not be restricted from widespread use. Myriad maintains that since the patents are for isolated gene sequences, they do not cover genes as naturally occurring within the body, and therefore are not overly restrictive and should properly be the subject of patent protection.

Tuesday, 02 April 2013 14:35

ICANN Opens Trademark Clearinghouse for New GTLDs

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With potentially hundreds of new generic top level domains (“gTLDs,” e.g. .store, .law, .food) just around the corner, the Internet Corporation for Assigned Names and Numbers (ICANN)—the organization response for overseeing Internet domain name allocations--recently opened its Trademark Clearinghouse (TMCH), where current brand owners can record their existing trademarks.

In addition to the often discussed “first-to-file” provisions of the America Invents Act (“AIA”), the expanded scope of public materials which patent examiners can now cite as “prior art” (when evaluating whether a patent should be granted on an applicant’s invention) provides some additional motivation for filing U.S. patent applications with more urgency than in the past. For instance, public disclosures made anywhere in the world prior to the effective filing date of a new U.S. patent application can now, for the most part, be considered as prior art. By way of contrast, under the “old” laws, there was a one year grace period in which third party publications could potentially be exempt from citation if published no more than one year before the application filing date.

It its much anticipated 6-3 decision in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court ruled  that “the first sale doctrine applies to copies of a copyrighted work lawfully made abroad.”

Along with the widespread recognition achieved by many professional athletes comes substantial "publicity rights," which can be cultivated for financial benefit. In short, publicity rights protect a person's name or likeness from being used by others for commercial gain, unless that person grants permission. As such, publicity rights are generally regarded as a tangential aspect to traditional intellectual property rights like patents, trademarks, copyrights or trade secrets. Indeed, there can even be a certain overlap of publicity rights with other IP rights, particularly with trademark rights - such as when a person's name is linked to a specific product or service.

In connection with a trade dress infringement action by Nike, Inc. against another shoe company, Already, LLC, involving Nike’s federally registered trade dress for a certain shoe design, the U.S. Supreme Court decided an important issue regarding the scope and ramifications of covenants not to sue. 

Thursday, 03 January 2013 14:31


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In 2012, the Philippines, New Zealand, Colombia, and Mexico acceded to the Madrid system, bringing to 89 the total number of members to join the Madrid Protocol for the International Registration of Marks.  Administered by the World Intellectual Property Organization, the Madrid System for the International Registration of Marks (“Madrid system”) is designed to provide a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

Tuesday, 03 December 2013 14:30


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On Friday, the U.S. Supreme Court granted certiorari in the Association for Molecular Pathology v. Myriad Genetics case.  As noted in our previous posts, this case deals with whether patent claims directed to "isolated DNA sequences" are patent eligible subject matter under the patent laws, in connection with the BRCA-1 and BRCA-2 genes involved in breast cancer.

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