Bear Declines Invitation to Oust MDL from Patent Infringement Realm

By Kyle Meziere

Recently, the Judicial Panel on Multidistrict Litigation (JPML) addressed the contention that the America Invents Act precludes multidistrict litigation (MDL) centralization for patent infringement proceedings. The current legality of MDL centralization was questioned due to an arguable conflict with 35 U.S.C. §299, which was enacted by the America Invents Act. The statute prohibits the alleged infringers, in most patent infringement cases, from being joined in one action. 35 U.S.C.S. §299 (§299). Since the 1960’s, pretrial proceedings for cases involving infringement of the same patent have commonly been centralized into one district under the authority of 28 U.S.C. §1407 (§1407). This has been a way for parties to conserve their resources. It also results in more consistency within a set of closely related cases. In the wake of §299’s implementation, the question of how §299 affects the availability of MDL centralization in patent infringement cases was raised.

In May, the JPML granted a motion by Bear Creek Technologies to centralize fourteen separate actions to one district. In re Bear Creek Technologies, Inc., MDL 2344, 2012 U.S. Dist. LEXIS 60884 (J.P.M.L. May 2, 2012). In the process, the panel addressed the issue of whether §299 modified §1407. The motion stemmed from a group of cases involving alleged infringements upon Bear Creek’s patent for a “[s]ystem for interconnecting standard telephony communications equipment to internet protocol networks.” At the time of the motion, there were fourteen allegedly infringing entities, including Vonage Holdings Corporation.

The legal issue was whether §299 modifies §1407. §1407 in the pertinent part states:

When civil actions involving one or more common questions of fact are pending in different districts, such actions may be transferred to any district for coordinated or consolidated pretrial proceedings. Such transfers shall be made by the judicial panel . . . upon its determination that transfers for such proceedings will be for the convenience of parties and witnesses and will promote the just and efficient conduct of such actions.

28 U.S.C.S. §1407 (2012).

The statute requires the cases to be remanded back to their respective districts no later than the conclusion of the pre-trial proceedings. Section 1407 was enacted in 1968 and has been applied to several dozen patent infringement cases since.

Vonage opposed centralization of the cases. It argued §299 prohibits centralization of cases which are related merely by the parties’ alleged infringement upon the same patent. Vonage cited specifically to the portion of §299 that reads: “accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the [same] patent . . . .” 35 U.S.C.S. §299 (2012). The JPML rejected this argument. The panel found the following arguments more persuasive. First, §299 does not manifest an intent to modify §1407, which had commonly been applied to patent infringement cases for 40 years at the time congress enacted §299. Secondly, §299 addresses only trial phase proceedings expressly.  Section 1407 applies to pretrial proceedings and requires cases to be remanded back to their respective districts before the trial phase begins. Thirdly, the JPML emphasized that their role is limited to centralizing the cases to one district; the district judge determines if the pretrial proceedings are to be consolidated. Accordingly, the panel found there was no conflict between the two statutes.

One month later, the JPML reaffirmed its Bear Creek holding in Maxim. In re Maxim Integrated Products, Inc., MDL No. 2354, 2012 U.S. Dist. LEXIS 79496 (J.P.M.L. June 8, 2012). All of the suits Maxim sought to centralize involved infringement on various patents related to the secure transfer of data. The court reiterated that §1407 still allowed centralization of pre-trial proceedings for patent infringement cases. However, the parties opposed to centralization further argued that §299’s practical guarantee of separate trial proceedings should factor into the JPML’s judgment of whether centralization would further the goals of efficiency and justice. The panel found this argument to be sound, but not determinative.  The panel found that the cases’ similarities and the prospective efficiency of centralization overcame any inefficiency that resulted from the cases having to be remanded to their respective districts for trial. The court also noted that §299 may affect how the transferee judge deals with the cases. In particular, §299 may cause the transferee judge to remand the cases to their respective jurisdictions earlier than he may have before §299 was passed.

The effects of §299 on how the JPML gauges the appropriateness of MDL centralization for a particular set of cases and the statute’s effects on the decisions of the transferee judges remains to be seen. More importantly, however, MDL centralization remains available for dealing with patent infringement cases.

Fourth Circuit Remands Rosetta Stone Ltd. v. Google Inc. 2010 Ruling

By Virginia Dudley

On April 9, 2012, the U.S. Court of Appeals for the Fourth Circuit revived the trademark infringement case Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010). The Fourth Circuit overturned the summary judgment granted in favor of Google by the U.S. District Court for the Eastern District of Virginia.

The Rosetta Stone case stemmed from Google’s sale of marks as AdWords. Adwords are Google’s online advertizing tool that allows a sponsor to “purchase” keywords that prompt the appearance of the sponsor’s advertisement when the keyword is entered as a search item. Rosetta Stone, a language-learning software company, was established in 1992 and began advertizing in connection with Google’s website in 2002.

Rosetta Stone initially accused Google of trademark infringement as a result of the website’s use of their mark in AdWords. In terms of this appeal, the Fourth Circuit re-addressed the possible elements of confusion, application of the functionality doctrine, dilution claims, and Google’s knowledge of infringement formerly discussed in favor of Google by the district court.

In August 2010, the district court rejected Rosetta Stone’s claim of an element of confusion caused by Google’s use of their mark by considering 3 out of 9 “likelihood-of-confusion” factors: (1) Google’s intent, (2) actual confusion, and (3) sophistication of the consuming public. The district court dismissed confusion claims against Google by ruling that Google did not intend to create confusion and that high consumer sophistication could be determined based on the nature and price of the product alone.

Conversely, the Fourth Circuit called for greater proper analysis of possible evidence of confusion and found a genuine issue of fact in terms of the previously discussed three factors of confusion. In particular, the Fourth Circuit reasoned that Google’s shifting trademark policies from the year 2004 on, as well as Rosetta Stone’s evidence of 123 complaints from those who had purchased knockoff software believing it to be legitimate, could reveal that Google had an intent to confuse. Also, the presence of confusion was further suggested by the difficulty Google’s own witnesses experienced in distinguishing between authentic and counterfeited Rosetta Stone advertisements on the search engine’s site.

Secondly, the district court held that the use of Rosetta Stone marks as keywords was protected by the functionality doctrine. The court found that Google’s use of Rosetta Stone’s trademarks as keywords was functional in that the keywords have “an essential indexing function because they enable Google to readily identify in its databases relevant information in response to a web user’s query.”[1] Trademark law’s functionality doctrine states, “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” The district court claimed that Google’s AdWords were also protected under the Lanham Act, which states that a party cannot receive exclusive rights over solely functional features. 15 U.S.C. § 1114(a).

This past April, the Fourth Circuit stated that the district court did not consider whether the mark was functional in the way Rosetta Stone used the mark. Instead, the appellate court affirmed that the District Court focused solely on how Rosetta Stone’s mark made Google’s product more useful. The Fourth Circuit asserted that the functionality doctrine had been incorrectly applied to the case. In general, the Fourth Circuit emphasized that the words “Rosetta Stone” are not necessary to the function of the language-learning software, thus establishing the mark’s non-functional nature.

As for dilution claims against Google, the district court denied the presence of dilution in Google’s use of the mark. The district court also applied the fair use argument, which is present in the federal statute dealing with dilution 15 U.S.C. §1125 (c) (3) (a). The district court confirmed that Google did not use Rosetta Stone’s mark to identify its services. Moreover, the possibility of dilution of the mark was also disregarded by the district court as a result of the increase in public awareness of Rosetta Stone’s mark following its appearance in Google’s AdWords.

The Fourth Circuit, on the other hand, found evidence of dilution and stated that the notion of good faith arises in regards to the fair use inquiry mentioned by the district court.

Lastly, the Fourth Circuit addressed the extent of Google’s knowledge of infringement. In 2010, the district court referenced the Second Circuit ruling in Tiffany v. eBay 600 F.3d 93 (2d Cir. 2010)to claim that generalized knowledge of infringement makes Google less liable. The district court also ruled that Google would not be liable unless Rosetta Stone could provide concrete evidence that the search engine was aware that an act of infringement was occurring.

However, the Fourth Circuit held that the district court’s decision was gathered in an inappropriate and untimely manner. As with many of the other aspects addressed in this case, the appellate court supported Rosetta Stone and called for further analysis on Google’s knowledge of infringement in its use of the words “Rosetta Stone.”

Such recall of a former trademark infringement case also occurred on April 5, 2012 when the U.S. Court of Appeals for the Second Circuit heard Viacom International Inc. v. YouTube Inc., No. 10-3270 (2d Cir. April 5, 2012). Similar to Rosetta Stone Ltd. v. Google Inc., the Appellate Court pushed for greater analysis of trademark infringement claims against Google because they found the trial court to have been too swift in their decision making.

In sum, in focusing on the factors of confusion, mark functionality, dilution, and Google’s knowledge, the Fourth Circuit remanded the summary judgment granted by the U.S. District Court for the Eastern District of Virginia in favor of Google. [1]

[1] Rosetta Stone Ltd. v. Google Inc. Court of Appeals, Fourth Circuit 2012. available at http://scholar.google.com/scholar_case?case=11203645518793090722&q=rosetta+stone+v.+google&hl=en&as_sdt=2,9&as_vis=1

Per se legal? The Eleventh Circuit Rejects FTC’s “Unlikely to Prevail” Antitrust Challenge to “Reverse Payment” Patent Settlements

By Meera El-Farhan

In F.T.C. v. Watson Pharmaceuticals, Inc., 677 F.3d 1298 (11th Cir. 2012) the U.S. Court of Appeals for the Eleventh Circuit rejected the Federal Trade Commission’s (“FTC”) antitrust challenge to “reverse payment” patent settlements. Under the terms of the “reverse payment” (or “pay-for-delay”) agreement, the patent owner of AndroGel, Solvay Pharmaceuticals, Inc. (“Solvay”), agreed to make over $20 million annual payments to the generic challengers Watson Pharmaceuticals, Inc., Par Pharmaceuticals, Inc., and Paddock Laboratories, Inc. In return, the generic challengers agreed to stay out of the market until 2015, unless another generic version was to enter the market before then.

 

The FTC brought suit against all parties to the agreement. The FTC challenged the “pay-for-delay” settlement on the basis of unfair restraint of trade (the settlement allegedly being an “unlawful agreement not to compete,” in violation of section 5(a) of the Federal Trade Commission Act[1] (“FTCA”)). The FTC argued that such monopolies allow both generic and patent holding pharmaceuticals to make more profits at the expense of consumer welfare (increasing drug costs by an estimated amount of $3.5 billion per year). On appeal, the FTC argued, among other things, that Solvay’s ‘894 patent [2] was “unlikely to prevail.” According to the FTC, because the patent was unlikely to bar Watson and Par, and Paddock’s generic drug from entering the market the settlement was an unlawful restraint on competition.

The Eleventh Circuit rejected the “more likely than not” standard contended for by FTC. The court held the “unlikely to prevail” standard to be insufficient to state a claim; thus, a patent did not thereby exceed its “exclusionary potential.” The court adhered to the test set-forth by its precedent: “absent sham litigation or fraud in obtaining the patent, a reverse payment settlement is immune from antitrust attack so long as its anticompetitive effects fall within the scope of the exclusionary potential of the patent.”[3]

Although critics of the court’s decision argue such a test makes reverse payments “per se lawful” due to resulting difficulty in challenging reverse payment agreements, the Eleventh Circuit proffered convincing arguments for rejecting the FTC’s challenge. Among other things, the court argued FTC’s “predict-the-likely-outcome-that-never-came” approach would not only impose a retrospective burden on parties and courts (even if the burden of proof fell on the plaintiff), but also, such a test would not align with the strong public policy favoring settlements.

The court noted that parties settle patent litigations to “cap the cost” of litigation and avoid the “all or nothing” outcomes from courts. Settlements are one option for parties who “might not want to play the odds for the same reason that one likely to survive a game of Russian roulette might not want to take a turn.” The Eleventh Circuit further explained that the costly and tedious process of developing new drugs should also be supported by strong public policy favoring settlements over costly litigation. The court, with reference to the maxim “More Money, More Problems,” sided with pharmaceutical companies’ incentive to recoup costs of research and development. The court proffered additional reasons such as the exclusive appellate jurisdiction of the U.S. Court of Appeals for the Federal Circuit over patent cases and the court’s lack of expertise to rule on the patent.

The heart of resolving such cases, as noted by the Eleventh Court, is in striking the balance between antitrust law interests (promoting competition) and intellectual property law interests (allowing temporary monopolies to provide innovators with incentives to create). Antitrust laws aim to protect consumers from artificially high prices, maximize efficiency of the market, and also promote improvement of products through competition. On the other hand, granting patents ensures parties have the incentive to innovate in the first place. Although one can easily recognize the tensions between antitrust law and intellectual property law, one must also recognize the common goal: promoting innovation for a better future.

However, there is no consensus over resolving this tension yet. In the Sixth Circuit and the District of Columbia Circuit, reverse payment agreements are per se unlawful under the Sherman Act.[4] However, the Second Circuit, like the Eleventh Circuit, refused to assess the ex post validity of the patent at trial, but instead the court held that the question is whether “the exclusionary effects of the agreement exceed the scope of the patent’s protection.”[5] In devising a test that can better serve both interests, per se rules are unlikely to accommodate such a goal. However, with a growing circuit split among federal courts, in addition to a silent United States Supreme Court (as it passed the opportunity to articulate a unifying a standard at this point in time), the FTC will have many more opportunities to argue for, perhaps better, multi-factored tests.


[1] 15 U.S.C. §45(a)(1) (2006).

[2] U.S. Patent No. 6,503,894 (filed Aug. 30, 2000) (issued Jan. 7, 2003).

[3] F.T.C. v. Watson Pharmaceuticals, Inc., 677 F.3d 1298, 1312 (11th Cir. 2012)

[4] See In re Cardizem CD Antitrust Litig., 332 F.3d 896 (6th Cir. 2003); see also Andrx Pharmaceuticals, Inc. v. Biovail Corp. Int’l, 256 F.3d 799 (D.C. Cir. 2001)

[5] In re Tamoxifen Citrate Antitrust Litig., 466 F.3d 187, 213 (2d Cir. 2006)

Federal Circuit Finds Prior Use By Another Invalidates Patent

In Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP, 100 U.S.P.Q.2d 1852 (Fed. Cir. 2011), Teva Pharmaceutical Industries Ltd. (“Teva”) appealed the District Court for the Eastern District of Pennsylvania’s grant of summary judgment in favor of AstraZeneca Pharmaceuticals LP (“AstraZeneca”).  The district court’s decision invalidated four asserted claims of Teva’s U.S. Patent No. RE39,502 (“‘502 patent”) based on AstraZeneca’s prior invention of the subject matter claimed therein.

Teva’s ‘502 patent is directed to formulations of statins, which are a class of compounds useful in the treatment of dyslipidemia, or high blood pressure.  Statins are inherently unstable and so must be manufactured in stabilized formulations; Teva’s patent is directed to formulations that are stabilized by an amido-group containing polymeric compound (“AGCP compound”).

In October 2008, Teva sued AstraZeneca for infringement of the ‘502 patent based on AstraZeneca’s manufacture and sale of its Crestor drug, which is also a stabilized statin formulation for the treatment of dyslipidemia.  AstraZeneca designed this drug with a non-AGCP compound as a stabilizer; however, the drug also contains crospovidone, an AGCP compound, which was included as a disintegrant as AstraZeneca did not understand it to have a stabilizing effect at the time.

AstraZeneca moved for summary judgment of invalidity under 35 U.S.C. § 102(g)(2), alleging that it conceived and reduced Crestor to practice prior to Teva’s first conception of the claimed subject matter.  AstraZeneca showed that it manufactured large batches of its formulation containing the same ingredients in the same amounts as its commercial drug prior to Teva’s date of conception and reduction to practice.  The district court held that AstraZeneca was not required to have “an appreciation of the stabilizing effect of crospovidone,” it only needed an “appreciation of the stabilization of its overall pharmaceutical composition that contained crospovidone.”  As such, the district court granted AstraZeneca’s motion and held the asserted claims invalid. Teva appealed to the Federal Circuit.

On appeal, the Federal Circuit held that the district court correctly concluded that AstraZeneca’s earlier development of Crestor satisfied the requirements for prior invention under 35 U.S.C. § 102(g)(2) and therefore affirmed.  The court determined that as a matter of law, AstraZeneca did not have to understand that crospovidone acted as a stabilizer in its drug prior to Teva’s conception.

35 U.S.C. § 102(g)(2) provides that:

A person shall be entitled to a patent unless … before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

The court discussed three previous cases,[1] explaining that they stand for the following: (1) “[t]o establish prior invention, the party asserting it must prove that it appreciated what it had made;” (2) “[t]he prior inventor does not need to know everything about how or why its invention worked;” and (3) “[n]or must [the prior inventor] conceive of its invention using the same words as the patentee would later use to claim it.”

The court noted that AstraZeneca had to appreciate that its drug was stable and what the components were, which AstraZeneca undisputedly did.  However, the court held that AstraZeneca did not have to appreciate which component of the drug was responsible for the stabilization, as that would require AstraZeneca to have first conceived of its drug in the same words that Teva chose to use to claim it.  The invention is not the language of the claim but the subject matter thereby defined.  AstraZeneca knew what it had made, even if it did not know precisely the cause of the stability.

Teva argued that the district court implicitly adopted a broadened claim construction, but the Federal Circuit disagreed.  The court noted that there was no instant dispute over the scope of the asserted claims because AstraZeneca made a limited concession of infringement for the purpose of advancing its summary judgment motion.  Thus, Teva essentially was arguing that AstraZeneca needed to understand its invention in the same terms used in Teva’s asserted claims, which as discussed above, is without merit.  For the same reason, the court declined to resolve how, if at all, the doctrine of inherency applies to priority under § 102(g), because this case did not involve a factual dispute over whether the prior art included a certain claim limitation (expressly or inherently).  Finally, the court held that AstraZeneca did not suppress or conceal its understanding that crospovidone was a stabilizer in its drug formulation, again because AstraZeneca was not required to appreciate the stabilizing effect of crospovidone.

Significance to Prior Users

While the American Invents Act in 35 U.S.C. § 273(a) allows the “new” defense when the infringing subject matter is “a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process” and where the defendant was “acting in good faith” and “commercially used” the subject matter in the United States, the defense itself has been in existence under existing law, albeit under different labels.  As pointed out in “Review of the Effects of the Leahy-Smith America Invents Act on Third Party Participation Applicants“, prior users could use portions of 35 U.S.C. §102(b) to i   The use must also be internal 35 U.S.C.  §102(g) as was done in Teva.  In contrast, under the 35 U.S.C. § 273(a) defense, a similar showing is required, but there will be an additional hurdle in that the use or commercial transfer, and have been ongoing for at least 1 year before the effective filing date or the disclosure date of new 35 U.S.C. § 102(b).   Therefore, while it likely inadvertent, it appears that the American Invents Act actually narrowed the prior user defense as compared to existing law.


[1] Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005); Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001); Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001).

Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce

In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana.

Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development. Continue reading

The “America Invents Act” to Improve and Harmonize the U.S. Patent Filing System

By Kyle Meziere

On March 16, 2013, the United States will transition from a “first to invent” patent system to a “first inventor to file” system under the Leahy-Smith America Invents Act (AIA).[i] The AIA is an effort to both reform the U.S. patent system and harmonize the U.S. system with foreign systems. Most notably, the AIA changes an underlying principle of how the U.S. patent filing system functions. It implements the basic “first to file” principle, but maintains some features that are characteristic of “first to invent” systems.

Presently, the U.S. system for identifying who has a right to a patent differs substantially from most international systems. Currently, U.S.C. §102 governs the U.S. system according to a “first to invent” principle.[ii] When two parties contest the right to a particular valid claim, the U.S. system awards the patent to the first applicant to reduce the invention to practice, either actually or constructively. Also, the system allows the inventor a one year grace period in which to file after the subject matter of a prospective patent has been publicly disclosed.

Most foreign jurisdictions utilize some variation of a “first to file” system. If two parties apply for the same valid patent claim, then the party who files for a patent first has the superior right.

The European Patent Convention (EPC) is one example of a “first to file” based patent regime. [iii] In general, the first person to file for a patent within the EPC system has a right superior to all others to the claim. Another characteristic of the EPC is its strict public disclosure rule. The European system bars patenting subject matter that has been publicly disclosed. Exceptions exist only for disclosures made as a result of an abuse of a special relationship with the applicant or for disclosures made at specific international conventions.  As a result, under the EPC there are a lot more scenarios where nobody has a valid claim.

Other foreign jurisdictions use a “first to file” system that incorporates a broader grace period for inventors to file after subject matter has become publicly available. The Japanese patent system offers a six month filing grace period to inventors who publish an article on their work, or who present at an approved exhibition or academic meeting. [iv] The six month grace period is also available for inventors whose material is made public against their will.

The AIA system combines elements characteristic of “first to file” systems with elements typical of “first to invent” systems. Like the EPC, the AIA will generally grant the patent to the first party who files. Like the current U.S. system, it allows a broad one year grace period for public disclosures made by the applicant. The AIA synthesizes particular “file to file” and “first to invent” characteristics, resulting in a system closer the international norm.

Although the AIA results in greater harmony amongst the world’s patenting systems, there will still be some dissidence. The differences between the EPC strict novelty standard and the exceptions to the novelty requirement in the AIA could potentially cause the AIA system to function starkly different than the EPC system.[v] For example, an inventor who independently invents second and files second could win the patent. This would result if he publishes before the first inventor files or publishes. Typically, this result could not occur under either the current U.S. or European systems. Ostensibly, it could occur under the Japanese system due to its broader scope of exceptions to what qualifies as prior art. Also worth noting is that the EPC does not distinguish between disclosures made by the applicant and ones made by a third party. The AIA, like the Japanese system, allows mostly only disclosures made by the applicant to qualify for the grace period.

The drafters of the AIA desired to both harmonize the U.S. system with foreign systems and improve its functionality and efficiency.[vi] The legislature endeavored to accomplish this by taking the best elements of the “first to invent” and “first to file” systems and combining them.[vii]   The legislator utilized what they deemed to be the best elements of each filing system while managing to move the U.S. system closer to an international norm. The largest remaining difference, which could seriously affect how the different systems behave, is the length and scope of the respective grace periods.


[i] Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29, 125 Stat. 285 (amendment effective 18 months after enactment date).

[ii]35 U.S.C.S §102 (2010), amended by Pub. L. No. 112-29, 125 Stat. 285 (2011).

[iii] European Patent Convention art. 55, Oct. 5, 1973, 1065 U.N.T.S. 254 as revised Dec. 13, 2007, available at http://www.epo.org/law-practice/legal-texts/html/epc/1973/e/contents.html.

[iv] Tokkyo Ho [Japanese Patent Law], Law No. 121 of 1959, arts. 29-30 (Japan).

[v] Brad Pedersen and Justin Woo, The Matrix for Changing First-to-Invent: an Experimental Investigation into Proposed Changes in U.S. Patent Law, 1 Cybaris An Intell. Prop. L. Rev. 1, 5 (2010).

[vi]  H.R. Rep. No. 112-98, pt. 1, at 39-40 (2011).

[vii] Id. at 42.

ICANN’s New gTLD: Dot.Protect.Your.Trademark

By Meera El-Farhan

The Internet Corporation for Assigned Names and Numbers’ (ICANN) leap into the new generic Top-Level Domains (gTLDs) will introduce one of the largest unprecedented Internet developments. ICANN’s introduction of the New gTLDs is aimed to promote competition, add consumer choice, increase market differentiation and enhance the diversity pool of geographical and service providers.[1] The New gTLD program allows any private or public entity worldwide to apply for any custom-made gTLDs (example: .com or .yournewdomainname). Furthermore, gTLD strings will be capable of incorporating characters from other languages such as Mandarin Chinese.

Although many corporations and other organizations publicly announced their application to certain gTLDs -Google announcing its application to .google, .docs, .youtube, and .lol- ICANN has postponed sharing applicants’ information until “Reveal Day” (June 13, 2012). On Reveal Day ICANN will publicly post all TLD character strings entities have applied for; thus, triggering the processes of trademark “protection” mechanisms.

Background

The new gTLD is designed to virtually introduce an unlimited number of namespaces. Qualifying for a new gTLD requires an applicant to meet a fairly limited but stringent number of requirements. Once the applicant satisfies the financial requirements, such as the $185,000 fee, the applicant may apply to two types of gTLDs:

  1. Community-based: whereby the applicant must demonstrate its association and representation of a recognizable and defined community.

 

  1. Standard: applications that do not qualify for community-based usually fall under the standard category.

Additionally, as part of the application process, ICANN will conduct background screening to ensure an applicant passes specific criteria for criminal history and general business diligence.

Furthermore, to be mindful of potential trademark protection challenges, ICANN incorporated mechanisms within the gTLD system itself to ensure legal rights are protected. Prior to the introduction of the new gTLD, previous gTLD expansions allowed ICANN to better-prepare for the coming trademark challenges. Nevertheless, the appropriate balance between protecting trademark owners and other interests cannot be perfected. To assist ICANN with the coming new gTLD, the World Intellectual Property Organization identified the need for “preventative mechanisms;” prior solutions rather than post-remedies. To create such “preventative mechanisms,” ICANN formed the Implementation Recommendations Team (IRT), a team consisting of a diverse group of trademark experts. IRT’s recommendations formed the basis for trademark protections. IRT sought to provide a “tapestry of globally effective-solutions to some of the major overarching issues of trademark protection in connection with the introduction of new gTLDs.”[2] Additionally, many parties in the trademark community also had an influential impact on increasing the protection mechanisms for the new system.

 

Strategies for Trademark Protection

Although many individuals argue that ICANN’s trademark protection mechanisms tip in favor of trademark owners, such assertions do not translate into guaranteed trademark protections. Private and public entities must remain on the lookout to ensure that their trademark rights are not infringed. Accordingly, there are three approaches a trademark owner may take.

First, participating in ICANN’s processes. ICANN outlined the following three main protection processes within the application to provide various forums for interested groups to discuss, object, or resolve trademark protection issues: (1) Application Comment Process, (2) Program Feedback, and (3) Objection Period.  Trademark owners will likely find the Objection Period to be the most relevant to protecting their trademark rights. According to ICANN, grounds for filing an objection include (1) String Confusion Objections: objecting to strings likely to result in user confusion, (2) Legal Rights Objection: objecting to strings infringing on existing legal rights, (3) Public Interest Objection: objecting to strings contrary to international legal norms of morality and public order, (4) Community Objection: a significant portion of the community which the gTLD string is targeted at objecting to the gTLD. [3] Note that an objector does not need to be an applicant.

Second, utilizing the mechanisms ICANN will facilitate once the new gTLD program is operating:

  1. 1.      Trademark Clearinghouse: this repository organization accepts, authenticates, stores and pertains rights of trademark holders. Trademark holders are advised to register their trademarks to increase trademark protections. Additionally, the Clearinghouse will serve as an information bank enabling trademark owners to have access to a wide-variety of gTLD information.
  1. 2.      Uniform Dispute Resolution Policy (UDRP): UDRP is limited to clear cases of “bad-faith, abusive registration and use of some domain names.”[4] UDRP, being an out-of-court mechanism, applies to all gTLDs. Successful claims enable the transfer of the infringing domain name to the complainant’s control.
  1. 3.      Uniform Rapid Suspension system (URS): URS is also limited to clear cases of trademark infringements. Remedies under the URS are limited to temporary suspension of a domain name for the duration of the registration period.  Additionally, a successful complainant has the option of paying for one additional year at commercial rates.

Third, additional steps a trademark owner is recommended to take are: (1) applying for a second-level domain within a new gTLD registry, and (2) monitoring Reveal Day’s published gTLD strings to object to those in conflict with the entity’s trademarks.

Future Considerations and Challenges

Introducing the new gTLD will create a multitude of global challenges thus affecting organizations of all sizes. Entities are advised to avoid the wait-and-see strategy. Instead, entities should reassess risks associated with their trademarks continuously. Although the new gTLD’s risks might not be fully understood today, organizations are advised to plan, discuss, and carefully evaluate the implications of the new gTLDs as it unfolds itself worldwide.