John E. Martin will replace Magistrate Judge Andrew P. Rodovich in the Northern District of Indiana’s Hammond Division. Rodovich is retiring from the bench.
Mr. Martin is a deputy federal community defender in Hammond, representing indigent clients. Prior to working as a federal defender, Martin worked in private practice and was a deputy prosecutor in Porter County. He has also worked as a part-time public defender in Porter Superior Court.
Forty-two people applied for the judgeship.
Washington, DC The Federal Circuit on October 9, 2012 granted en banc review of a case in which a Federal Circuit panel held that a claim must not be deemed inadequate under 35 U.S.C. §101 if, after taking all of the claim recitations into consideration, it is not “manifestly evident” that a claim is directed to a patent ineligible abstract idea. The court vacated the panel decision and requested briefing on the following questions:
The panel decision stressed that patent eligibility must be determined by what is evident from specific, concrete applications of the ideas behind an invention disclosed in the claims. The panel opinion, written in the wake of the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), included the following observation:
“[N]othing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims. It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 USC §101. Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised.”
Practice Note:
The challenged patents in this case are directed to a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” The district court granted a summary judgment motion that the claims were not patent eligible because they are directed to an abstract idea. On appeal the Federal Circuit panel reversed, concluding that the system, method, and media claims are directed to practical applications of an invention falling within the categories of patent eligible subject matter defined by Section 101.
Washington DC: President Obama on October 5, 2012, signed legislation (H.R. 6215) that restores the limitation of the federal registration defense to trademark dilution claims based on state law only.
Background
In 1995, Congress enacted the Federal Trademark Dilution Act with a federal registration defense intended to encourage federal trademark registation. Section 43(c)(6) of the Lanham Act, 15 U.S.C. 1125(c)(6) included a complete bar for state dilution claims brought against federally registered marks. In 2006, the Trademark Dilution Revision Act addressed a number of problems with the legislation, including an amendments to make the federal registration defense specify not simply “dilution,” but “dilution by blurring” and “dilution by tarnishment.”
The House version of the 2006 amendment stated that a federal registration bars an action that is brought under state law and that seeks to prevent dilution, or that asserts harm to distinctiveness. When the bill was in the Senate, the language was unchanged, but the elements were enumerated in a way that changed the meaning. Thus, the enacted bill stated that a federal registration bars an action (A)(i) that is brought under state law and (ii) that seeks to prevent dilution, or (B) that asserts harm to distinctiveness. The result was that a federal registration could bar both state and federal dilution actions.
Signed Legislation
H.R. 6215 restores the intent of the House-passed version of 15 U.S.C. 1125(c)(6) as follows:
(c)(6) The ownership by a person of a valid registration … shall be a complete bar to an action against that person, with respect to that mark, that —
(A) is brought by another person under the common law or a statute of a State; and
(B) (i) seeks to prevent dilution by blurring or dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or
reputation of a mark, label, or form of advertisement.’.
The House Report (H. Rept. 112-647) for H.R. 6215 points out that Congress could not have intended that federal registration could serve to bar all dilution claims since that result would make it difficult to cancel a diluting mark that is registered. That would only encourage illegitimate mark holders to register diluting marks, and would force legitimate mark holders to expend greater resources monitoring registrations as well as other marks being used in commerce, the Report noted.
Practice Tip:
The need for this legislation was recently confirmed by a ruling of the Trademark Trial and Appeal Board in the cancellation action in Academy of Motion Picture Arts and Sciences v. Alliance of Professionals and Consultants, Inc., TTAB, Canc. No. 95055081, 9/24/2012. The TTAB dismissed the action, finding that the language of the 2006 amendment barred a federal dilution claim against a federally registered mark. The TTAB explained as follows:
While a “most extraordinary showing of contrary intentions” by Congress may justify a departure from the plain language of a statute, Garcia v. United States, 469 U.S. 70, 75 (1984), there is scant legislative history, and certainly not enough to support an alternative reading in this case. The Board must apply and enforce the statute as written, rather than picking and choosing a preferred interpretation. “Congress’ intent is found in the words it has chosen to use.” Harbison v. Bell, 556 U.S. 180, 198 (2009) (Thomas, J., concurring).
Indiana patent attorneys obtained issuance of the following 173 patents from the US Patent Office to persons and businesses in Indiana in September, 2012:
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The US Trademark Office issued the following 160 trademark registrations to persons and businesses in Indiana in September, 2012, based on applications filed by Indiana Trademark Attorneys:
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Indiana patent attorneys obtained issuance of the following 115 patents from the US Patent Office to persons and businesses in Indiana in August, 2012:
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Apparatus and method of segmenting an image in an image coding and/or decoding system |
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Perturbed decoder, perturbed decoding method and apparatus in communication system using the same |
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The US Trademark Office issued the following trademark registrations to persons and businesses in Indiana in August, 2012 based on applications filed by Indiana trademark attorneys:
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The USPTO seeks public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO . The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection 
of trademark application fees, and the Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO. Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process. A Notice of Inquiry has been published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20127.pdf. Responses are due b y October 15, 2012.
The USPTO seeks public comment on the possibility of amending federal law to shorten by two years the first filing deadline to demonstrate either use or excusable nonuse of a registered trademark. Although any such change would require a legislative amendment of the Trademark Act, and thus is beyond the authority of the agency, the USPTO wishes to collect public comment that might assist in the consideration of such an amendment, or another alternative. The goal would be to remove marks no longer in use, known as “deadwood,” from the register sooner.” Under this proposal, Sections 8 and 71 of the Trademark Act would be amended, requiring a trademark owner to file the first Affidavit of Declarations of Use or Excusable Nonuse within three to four years after the registration date, or the six-month grace period that follows. Under current law, owners must file their first Affidavit between five and six years after the registration date, or the six-month grace period that follows. A request for comments has published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20130.pdf, and responses are due by October 15, 2012.
Washington, DC. Current EPO regulations require that search results from an application, to which a European patent application filed on or after January 1, 2011 claims priority, must be filed with the EPO by the patent attorney without delay after the search results are made available to applicants. See Amended Rule 141(1) EPC (European Patent Convention). For the time being, U.S. applicants are exempt from personally providing search results for a U.S. priority application to the EPO as a result of an arrangement worked 
out between the USPTO and the EPO, whereby the USPTO will electronically deliver search results from priority U.S. applications to the EPO, as a no-charge service to applicants. See Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office, 76 FR 82279 (December 30, 2011).
Maintenance of the exemption, however, is dependent upon delivery of search results by the USPTO to the EPO as soon as they become available, including when search results are available prior to publication of the U.S. application. Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.
Practice Tip: Inventors should timely file the Certification and Authorization form PTO/SB/69 (available at http://www.uspto.gov/forms/sb0069.pdf) in each application that is intended to form the basis for a claim of priority to a corresponding application filed with the EPO. This form provides applicant’s consent for the USPTO to deliver to the EPO the search results from an unpublished U.S. application. Applicants should file the form prior to filing a European application that claims priority to the U.S. application in order for search results to be delivered to the EPO without delay should they become available prior to publication of the U.S. application. When filing form PTO/SB/69 using EFS-Web, applicants should be careful to select the correct document description,”PTO/SB/69 – Authorize EPO Access to Search Results,” which can be found under the General Transmittal category. Identifying form PTO/SB/69 using any other document description will significantly delay or prevent delivery of the search results from an unpublished U.S. application to the EPO.
