A significant risk that brands fear is that others may file their trade mark first in a new market, as most trade mark systems operate under a ‘first to file’ approach. Brands can therefore be comforted by the UK Intellectual Property Office’s (UKIPO) invalidation of a third party’s trade mark despite there being no earlier registered mark in the UK.
Read MoreFor applicants with a patent application having, or amended to have, a streamlined claim set—one independent claim and a maximum of nine singly dependent claims—the United States Patent and Trademark Office (USPTO) recently launched a new mechanism for accelerating initial review of the application. This Program (the Streamlined Claim Set Pilot Program) is separate from the USPTO’s existing procedures to advance out of turn (accord special status) the examination of a utility application, which includes (1) a petition to make special, or (2) a request for prioritized examination.
Read MoreFollowing the Sky v. SkyKick judgement, issued in December 2024, the UKIPO has now issued a practice note providing applicants with guidance on drafting and filing trade mark applications in the UK. Sky v SkyKick highlighted that filing an application for unduly broad specifications of goods and services with no genuine intention to use the mark can constitute bad faith and applicants are now provided with the tools to avoid the most common pitfalls.
Read MoreIP Australia has updated its practice for the calculation and processing of excess claim fees. Currently, excess claim fees are charged at acceptance, on the basis of the final claim set as accepted, regardless of the number of claims examined during examination. Therefore, the applicant can often have a large claim set examined but avoid excess claim fees by amending to reduce the claim set prior to acceptance.
Read MoreOn 26 July 2024, the Federal Circuit entered its decision in SoftView LLC, v. Apple Inc.1 holding that patent owner estoppel2 applies to newly presented and amended claims, but does not apply to issued claims. The Federal Circuit also confirmed that patent owner estoppel prevents a patent applicant from later obtaining a patent claim that is “not patentably distinct” from a finally refused or cancelled claim, but that patent owner estoppel does not apply to defending issued, unamended claims.
Read MoreOn 21 May 2024, the Federal Circuit overturned the Rosen-Durling test used to assess non-obviousness of design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Court en banc ruled the same conditions for patentability that apply to utility patents apply to design patents, specifically holding the obviousness rationale articulated in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), will now apply to design patents. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, 2024 WL 2280728, at 1 (Fed. Cir. May 21, 2024) (en banc).
Read MoreThe UK Intellectual Property Office (UKIPO) has released an update this month in relation to the issue of trade mark applicants and owners providing a valid address for service. Particularly following Brexit there has been concerns about would-be trade mark owners filing applications with false or ineffective addresses for service and as a result the UKIPO is now taking a more proactive approach using their powers under Rule 11 of the Trade Mark Rules 2008.
Read MoreIn a recent update to a lengthy battle over car parking technology used by the City of Melbourne, SARB Management Group Pty Ltd (SARB) has scored a partial win over rival company Vehicle Monitoring Systems (VMS) on appeal in Full Court of the Federal Court of Australia.
Read MoreIn Australia, domain names under the .au namespace are subject to stringent eligibility and allocation rules. Importantly, non-Australian commercial entities are only eligible for registration for an Australian domain if they have applied for or hold an Australian trade mark registration with an exact match to the relevant domain name.
Read MoreThe recent refusal of a patent application by PayPal Inc. at the Australian Patent Office sheds light on the challenges surrounding the patentability of AI and machine learning systems (PayPal Inc. [2023] APO 54). The rejected application, which proposed a system for generating more accurate recommendations using AI machine learning, faced scrutiny on the grounds that, while the combination of machine learning models was innovative, it did not offer a substantial technical contribution beyond standard computer usage.
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