November 2023

Cislo & Thomas LLP in U.S. News & World Report’s Fourteenth Edition of the “Best Law Firms” Ranking

We are proud to announce that we have been honored as a Tier 1 Best Law Firm recipient in the 2024 Best Lawyers of U.S. News & World Report!

The 2024 rankings are based on Best Law Firms’ proven methodology that relies on qualitative and quantitative data on legal skillset, achievements and client successes collected through a submission process managed by Best Lawyers®. The rankings highlight a unique combination of high-quality law practices and the full breadth of legal expertise that has always been differentiated by the credibility and transparent rankings process.

At Cislo & Thomas LLP, we always strive to provide Quality Client Care® in helping you achieve your intellectual property goals, and we owe this honor to our incredible clients. So thank you!

Federal Trade Commission (FTC) Challenges Over 100 Pharmaceutical Patents

Takeaway: The FTC has challenged over 100 U.S. pharmaceutical patents, alleging potential market exclusivity abuse.

The Federal Trade Commission (FTC) has challenged over 100 pharmaceutical patents, issued by the U.S. Patent and Trademark Office (USPTO), claiming that drugmakers may be overstating patent coverage for certain drugs, artificially extending the duration of market exclusivity and hindering generic competition. The dispute focuses on the FDA’s Orange Book, a public record of approved drugs and their patents, and whether listed patents are valid. While the FDA’s role is limited to verifying patent listings, the FTC contends that drug companies may be “double patenting,” with multiple patents claiming the same invention.

The FTC’s challenges include patents related to drugs like AbbVie’s Restasis, Glaxo Group’s Advair and Flovent, and AstraZeneca’s Symbicort. The FDA’s ability to independently act is constrained, and the FTC may resort to antitrust litigation if its challenges do not yield the desired results. The FTC’s actions could also prompt civil litigation and scrutiny of the validity of patents blocking generic competition.

The irony of this situation is one branch of the government, the FTC, is challenging patents issued by the USPTO, another branch of the government.


USPTO Introduces Design Patent Practitioner Bar

Takeaway: The U.S. Patent and Trademark Office (USPTO) is implementing a design patent practitioner bar, effective January 2, 2024, aiming to align criteria, improve quality, increase diversity, and lower costs in design patent law practice, requiring relevant degrees for applicants but not impacting those already registered for patent matters.

The U.S. Patent and Trademark Office (USPTO) has announced the implementation of a design patent practitioner bar. This follows a Notice of Proposed Rulemaking (NPRM) published in May 2023 and a request for comments (RFC) in October.

The new design bar aims to align criteria for design patent practitioners with examiners, improve quality and representation, increase diversity in design patent law practice, and lower costs. Applicants must have relevant degrees. Those already registered for patent matters won’t be affected. The rule will become effective January 2, 2024.

Opposition cited concerns about competency and potential confusion, but the USPTO emphasized maintaining similar standards and responsibilities for design practitioners. Design patents have been gaining popularity, and the new rule aims to accommodate evolving technology and encourage broader participation in the industry.

Amazon Resellers Petition Supreme Court Over Nationwide Jurisdiction

Takeaway: Amazon resellers are seeking U.S. Supreme Court intervention in a jurisdictional dispute, as a circuit split arises over whether sellers shipping products nationwide can be sued in all 50 states.

A group of Amazon resellers is urging the U.S. Supreme Court to address a jurisdictional question arising from a circuit split. The dispute centers on whether sellers shipping products nationwide can be sued in all 50 states. The Second, Fifth, Seventh, Eighth, and Ninth Circuit Courts have conflicting opinions on this matter.

The Ninth Circuit recently ruled in favor of jurisdiction in wellness company Herbal Brands Inc.’s trademark dispute, arguing that online sales do not compromise jurisdiction. The resellers argue that shipping products nationwide through Amazon should not establish a substantial connection with every state. They contend that the Ninth Circuit’s decision undermines due process rights for e-commerce sellers and are seeking Supreme Court review to resolve the split in circuit opinions.

Court Rejects Trademark for ‘Everybody vs. Racism’ Slogan

Takeaway: A U.S. appeals court has rejected a trademark application for the phrase “Everybody vs. Racism,” underscoring the importance of maintaining public access to universally relevant expressions related to social issues like racism.

In a recent decision, a U.S. appeals court denied a trademark application for the phrase “Everybody vs. Racism.” The court upheld the U.S. Patent and Trademark Office’s initial rejection, citing the phrase’s generic nature and the importance of keeping it in the public domain. The ruling underscores the belief that certain expressions tied to societal issues, like racism, should remain accessible to everyone for fostering widespread dialogue and activism. This decision does not hinder anti-racist efforts but emphasizes the need for inclusive language in the ongoing fight against racism.

Google Takes Legal Action Against Two Individuals for Alleged Massive DMCA Takedown

Takeaway: Misusing the DMCA takedown system could result in legal action, especially when done excessively and as wrongful impersonation.

Google has filed a lawsuit in a California federal court against two residents of Vietnam, Nguyen Van Duc and Pham Van Thien, accusing them of orchestrating a scheme to flood Google with over 117,000 fraudulent Digital Millennium Copyright Act (DMCA) takedown requests.

The complaint alleges that the defendants, connected to websites selling printed T-shirts, exploited the DMCA’s notice-and-takedown process, impersonating various companies and celebrities, including Amazon and Elon Musk, to gain a competitive advantage in the online T-shirt market. Google claims that the fraudulent requests caused financial losses, harmed advertising customers, and resulted in the removal of legitimate websites from search results. The tech giant is seeking injunctive relief and unspecified damages to stop the defendants’ illegal conduct.