Author: Kenneth Pearce

The Patent Exhaustion Doctrine - Monsanto Case on GMO Soybeans

The Patent Exhaustion Doctrine

When does the Patent Exhaustion Doctrine Apply?

In the US Supreme Court case of Bowman v. Monsanto Co., 569 U.S. 278 (2013), the Court set forth some thresholds for the application of the Patent Exhaustion Doctrine.

The Monsanto Facts

Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration.

Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement. That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. Under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose.

The Bowman Facts

Bowman, an Indiana farmer, devised an approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed. He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields. Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology.

When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds (and any non-resistant plants), and produced a new crop of glyphosate-resistant—i.e., Roundup Ready—soybeans.

In his defense, Bowman argued the Patent Exhaustion Doctrine.

The Bowman Court’s Holding on the Patent Exhaustion Doctrine

On Page 289 of Bowman, Justice Kegan wrote, “Our holding today is limited—addressing the situation before us, rather than every one involving a self-replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose…We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances. In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.”

If your company needs assistance with its Patent Applications, please contact Business Patent Law, PLLC.

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Can you have copyrights and trademarks on a work of art

Copyrights and Trademarks

Can Artworks be the Subject of both Copyrights and Trademarks?

Yes.  Certain works fixed in a tangible medium of expression can be granted both Copyrights and Trademarks Registrations by the US Copyright Office and the US Trademark Office.

Examples of Artworks that can be the Subject of Copyrights and  Trademarks

  1. Logo
  2. Painting
  3. Picture
  4. Sound Recording

17 U.S. Code § 102 – Subject matter of copyright: In general

17 U.S.C. §102, in part, reads:

(a)     Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

  1. pictorial, graphic, and sculptural works;
  2. sound recording;

15 U.S. Code § 1052 – Trademarks Registrable on Principal Register; Concurrent Registration

35 U.S.C. § 1052, in part, reads:

No trademark [or service mark] by which the goods [or services] of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

 (a)     Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

 (b)     Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

 (c)     Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

 (d)     Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

(e)     Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

(f)      See 15 U.S. Code § 1052 (f).

If your company needs assistance with its Copyrights and Trademarks or Service Marks, please contact Business Patent Law, PLLC.

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European Unitary Patent

What Is the European Unitary Patent?

The European Unity Patent, which came into effect on June 1, 2023, is a way to have a single patent cover multiple countries. As of September 1, 2024, it is expected that eighteen European countries will participate in the Unitary Patent System. In the future it is anticipated twenty-five European countries will participate.

Where Do I File?

A request for a Unitary Patent commences in the European Patent Office.

What are the European Patent Office’s Costs of Filing a European Unitary Patent?

It is estimated that the current cost of filing for a Unitary Patent is approximately 2000 Euros plus VAT, if any.  (This less than the traditional manner of validating a European Patent in selected jurisdictions.)

Which European Countries Currently Participate in the Unitary Patent System?

  • Austria
  • Belgium
  • Bulgaria
  • Denmark
  • Estonia
  • Finland
  • France
  • Germany
  • Italy
  • Latvia
  • Lithuania
  • Luxembourg
  • Malta
  • Netherlands
  • Portugal
  • Romania
  • Slovenia
  • Sweden

Which European Countries will Not Participate in the Unitary Patent System?

Switzerland and the United Kingdom are not members of the European Union and they participate only with the traditional validations of European Patents.

If your company needs assistance with its European Patent Applications or Patents, please contact Business Patent Law, PLLC.

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Codes used by the US Patent office

Letter Codes for US Patents

Letter Codes for US Patents & Published Patent Applications

Commencing on January 1, 2002, letter Codes were added to United States Patents.

In 2002, the United States Patent and Trademark Office (USPTO) began publishing Patent Applications that included letter Codes.

Some of the Letter Codes Used by the USPTO

Letter Code                    Document Type

A                                      Utility Patent Grant issued prior to January 2, 2001

A1                                    Utility Patent Application published on or after January 2, 2001

A2                                   Second or subsequent publication of a Utility Patent Application

A9                                   Correction published Utility Patent Application

Bn                                   Reexamination Certificate issued prior to January 2, 2001

B1                                   Utility Patent Grant without pre-grant publication issued on or after January 2, 2001

B2                                   Utility Patent Grant with pre-grant publication issued on or after January 2, 2001

Cn                                   Reexamination Certificate issued on or after January 2, 2001

E                                      Reissue Patent

S                                      Design Patent

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Federal Trade Commission Non-compete Ban

What is the FTC Non-Compete Ban?

Partial Summary of the FTC Ban

The Federal Trade Commission adopted a comprehensive ban on new non-competes with all workers, including senior executives. The final rule provides that it is an unfair method of competition—and therefore a violation of Section 5—for employers to enter into Non-competes with workers.

Unless a court intervenes, the new rule becomes effective 120 days subsequent to April 23, 2024.

Here are some of the legal parameters of the FTC non-compete ban:

Non-Compete Defined (16 CFR Part 910.1)

(1) A term or condition of employment that prohibits a worker from, penalizes a worker for, or functions to prevent a worker from:

(i) seeking or accepting work in the United States with a different person where such work would begin after the conclusion of the employment that includes the term or condition; or

(ii) operating a business in the United States after the conclusion of the employment that includes the term or condition.

(2) For the purposes of this part 910, term or condition of employment includes, but is not limited to, a contractual term or workplace policy, whether written or oral.

Definitions of Persons Affected by the Ban – Abbreviated

Officer: A president, vice president, secretary, treasurer or principal financial officer, comptroller or principal accounting officer, and any natural person routinely performing corresponding functions with respect to any business entity whether incorporated or unincorporated.

Person: Any natural person, partnership, corporation, association, or other legal entity within the Commission’s jurisdiction, including any person acting under color or authority of State law.

Preceding Year: A person’s choice among the following time periods: the most recent 52-week year, the most recent calendar year, the most recent fiscal year, or the most recent anniversary of hire year.

Senior Executive: A worker who:

(1) Was in a policy-making position; and

(2) Received from a person for the employment:

(i) Total annual compensation of at least $151,164 in the preceding year; or

(ii) Total compensation of at least $151,164 when annualized if the worker was employed during only part of the preceding year; or

(iii) Total compensation of at least $151,164 when annualized in the preceding year prior to the worker’s departure if the worker departed from employment prior to the preceding year and the worker is subject to a non-compete clause.

Worker: A natural person who works or who previously worked, whether paid or unpaid, without regard to the worker’s title or the worker’s status under any other State or Federal laws, including, but not limited to, whether the worker is an employee, independent contractor, extern, intern, volunteer, apprentice, or a sole proprietor who provides a service to a person. The term worker includes a natural person who works for a franchisee or franchisor, but does not include a franchisee in the context of a franchisee-franchisor relationship.

Unfair Methods of Competition (16 CFR Part 910.2) – Abbreviated

(a) Unfair methods of competition—(1) Workers other than senior executives. With respect to a worker other than a senior executive, it is an unfair method of competition for a person:

(i) To enter into or attempt to enter into a non-compete clause;

(ii) To enforce or attempt to enforce a non-compete clause; or

(iii) To represent that the worker is subject to a non-compete clause.

Exceptions to the FTC Non-Compete Ban (16 CFR Part 910.3)

(a) Bona fide sales of business. The requirements of this part 910 shall not apply to a non-compete clause that is entered into by a person pursuant to a bona fide sale of a business entity, of the person’s ownership interest in a business entity, or of all or substantially all of a business entity’s operating assets.

(b) Existing causes of action. The requirements of this part 910 do not apply where a cause of action related to a non-compete clause accrued prior to the effective date.

(c) Good faith. It is not an unfair method of competition to enforce or attempt to enforce a non-compete clause or to make representations about a non-compete clause where a person has a good-faith basis to believe that this part 910 is inapplicable.

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Trademark case in Supreme Court

Whiskey vs. Dog Toys – A Supreme Court Case about Trademark Infringement

Jack Daniel’s Whiskey Trademark vs A Dog Toys Trademark

Jack Daniels objects to Bad Spaniels Trademark. The Supreme Court Case – Jack Daniel’s Props. v. VIP Prods. LLC, 143 S. Ct. 1578, 216 L. Ed. 2d 161, 599 U.S. 140 (U.S.).

The Facts

On page 1582 of the Jack Daniel’s Props. Supreme Court case, Justice Kagan wrote, “This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels.” And the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The jokes did not impress petitioner Jack Daniel’s Properties. It owns trademarks in the distinctive Jack Daniel’s bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading consumers to think that Jack Daniel’s had created, or was otherwise responsible for, the dog toy. And Bad Spaniels had diluted the marks, the argument went on, by associating the famed whiskey with, well, dog excrement.”

The Court of Appeals, in the decision we review [953 F.3d 1170 (2020)], saw things differently. Though the federal trademark statute makes infringement turn on the likelihood of consumer confusion, the Court of Appeals never got to that issue. On the court’s view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so-called expressive work—here (so said the court), the Bad Spaniels toy. And that test knocked out Jack Daniel’s claim, whatever the likelihood of confusion. Likewise, Jack’s dilution claim failed—though on that issue the problem was statutory. The trademark law provides that the “noncommercial” use of a mark cannot count as dilution. 15 U.S.C. §1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a message—a kind of parody—about Jack Daniel’s.

Supreme Court Legal Principles from the Jack Daniel’s Props. Decision

  • A trademark is not a trademark unless it identifies a product’s source and distinguishes that source from others. In other words, a mark tells the public who is responsible for a product.
  • A source-identifying mark enables customers to select “the goods and services that they wish to purchase, as well as those they want to avoid.
  • The mark “quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked or disliked in the past. Because that is so, the producer of a quality product may derive significant value from its marks.
  • The Lanham Act creates a federal cause of action for the plaintiff when the defendant’s actions are “likely to cause confusion, or to cause mistake, or to deceive.”
  • The Lanham Act also creates a cause of action for the defendant’s dilution of famous marks, where the plaintiff does not need to prove “likelihood of confusion.”

 The Supreme Court’s Conclusions

  • A parody must “conjure up” “enough of [an] original to make the object of its critical wit recognizable.” The parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done, a parody is not often likely to create confusion.
  • The fair-use exclusion has its own exclusion: It does not apply when the use is “as a designation of source for the person’s own goods or services.” In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.
  • On infringement, we hold only that Rogers v. Grimalidi, 875 F. 2d 994, 999 (2nd Second 1989) does not apply when the challenged use of a mark is as a mark.
  • On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.

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Beneficial Ownership Information Reporting

What is the Beneficial Ownership Information Report?

Beneficial Ownership Information Report

The Beneficial Ownership Information Report, which went into effect on January 1, 2024, is authorized by the 2021 National Defense Authorization (Pub.L. No. 116-283, 134 Stat. 338). It contains anti-money laundering provisions and also includes the Corporate Transparency Act.

It is the United States Department of the Treasury that enforces the Corporate Transparency Act (CTA).

Unless a company has an exemption from the CTA, the company must file a Beneficial Ownership Information Report (BOIR) with the Department of the Treasury.

What Entities Must File The Beneficial Ownership Information Report

As a general rule, reporting companies are corporations, limited liability companies or professional limited liability companies that have filed one or more documents with a State’s Secretary of State or a similar office of an Indian Tribe.

A reporting company can be a domestic or a foreign jurisdiction company and must file a BOIR.

What Entities Are Exempt From Filing The BOIR

There are some business entities who are exempt from filing the Beneficial Ownership Information Report. They include:

1 Securities reporting issuer

2 Governmental authority

3 Bank

4 Credit union

5 Depository institution holding company

6 Money services business

7 Broker or dealer in securities

8 Securities exchange or clearing agency

9 Other Exchange Act registered entity

10 Investment company or investment adviser

11 Venture capital fund adviser

12 Insurance company

13 State-licensed insurance producer

14 Commodity Exchange Act registered entity

15 Accounting firm

16 Public utility

17 Financial market utility

18 Pooled investment vehicle

19 Tax-exempt entity

20 Entity assisting a tax-exempt entity

21 Large operating company

22 Subsidiary of certain exempt entities

23 Inactive entity

When Must File The BOIR Be Filed

For a company created before January 1, 2024, the BOIR must be filed by December 31, 2024. For a company created after January 1, 2024, the BOIR must be filed with 90 days of the company’s creation.

If your company needs assistance with its BOIR, please contact Business Patent Law.

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Claim terms in Patent documents

Patent Application Words Meaning

The Broadest Reasonable Interpretation

The words (or terms) used to outline and describe the claims of your patent application may be interpreted differently by different people. How is this resolved by the USPTO?

During USPTO examination, the Patent Application words (meaning of the claims term) must be “given their broadest reasonable interpretation consistent with the specification,” as per Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).

The broadest reasonable construction of the claims is determined “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

According to the USPTO Manual of Patent Examining Procedure, “The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach.”

The Patent Application in Plain Words

Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time.

“The Greatest clarity is obtained when the specification serves as a glossary for the claim terms”

The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).

“[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp.

The USPTO Manual of Patent Examining Procedure, in part, reads, “The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms.”

Patent Application Words Meaning – Explicit Definition

Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim, as per Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999)

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Trademark Examiner's Amendment

Should You Accept a Trademark Examiner’s Amendment?

Trademark Examiner’s Amendment of Application

A Trademark Examiner’s amendment is sometimes suggested and/or required during examination a US Trademark Application*.

Some Examiner’s amendments will alter the scope of rights associated with a future Trademark Registration. Other Trademark Examiner’s amendments will not modify the scope of rights associated with a future Trademark Registration.

Whether or not to accept the Trademark Examiner’s amendment is a business decision.

Potential Consequences of an Amendment

Applicant’s acceptance of the Trademark Examiner’s amendment generally results in Trademark Registration for the Applicant.

Failure to agree to the Examiner’s amendment can result in:

  • Legal arguments that the Examiner’s suggested amendment is inappropriate
  • A refusal to register the Trademark and the loss of long-term federal rights associated with a US Registration
  • An appeal to the Trademark Trial and Appeal Board where the Applicant can lose the appeal
  • Filing a new Application to register the Trademark, where the new Application is modified from the previously filed Trademark Application

About Section 707 – TMEP – Examiner’s Amendment*

Examples of Section 707 relevant procedures for Trademark Examiners include:

  • An Examiner’s amendment should be used whenever appropriate to expedite prosecution of an Application
  • An Examiner’s amendment is a communication to the Applicant in which the examining attorney states that the Application has been amended in a specified way
  • Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual Applicant, someone with legal authority to bind a juristic Applicant 700-20 October 2010 (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner
  • Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the Applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual Applicant, someone with legal authority to bind a juristic Applicant, or the Applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b)
  • If the Applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner
  • If the Applicant is pro se, the examining attorney must speak directly with the individual Applicant or with someone with legal authority to bind a juristic Applicant (e.g., a corporate officer or general partner of a partnership)
  • For joint Applicants who are not represented by a qualified practitioner, each joint Applicant must authorize the examiner’s amendment

*Along with Trademarks, the USPTO Trademark Manual of Examining Procedure (TME) also applies to Service Mark Applications.

If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law.

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Christmas Patent Products

Patents for Christmas Inventions

Do Investors Get Patents for Christmas Inventions?

Yes, many inventors receive patents for Christmas inventions!

In 2023, US Christmas sales are anticipated to exceed 950 billion dollars. Christmas inventions are a portion of this market. Some inventors hope to seize a portion of those sales.

Examples of Christmas Themed Inventions

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