Tuesday IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.


  1. Utah State Bar Ethics Advisory Opinion 18-04 (http://www.utahbar.org/wp-content/uploads/2018/09/18-04.pdf) says that it is permissible for attorneys to include an indemnification provision in a retainer agreement at the commencement of representation that requires the client to indemnify the attorney and related entities against claims that arise from the client’s behavior or negligence. This could be useful to avoid being named jointly and severally liable for fee awards in IP cases to the extent the grounds for the fee award were the client’s behavior and/or negligence.  Whether this applies in California or other states should be considered.
  1. In a recent case, effort was made to introduce the limiting doctrine of aesthetic functionality into the design patent context from the trade dress context. The Eastern District of Michigan rejected the effort noting differences in the policies and purposes of design patents and trademarks/trade dress.  Nonetheless, this is likely not the last we will hear of this effort, and the case may have been appealed to the Federal Circuit.  The opinion is here  (https://scholar.google.com/scholar_case?case=14234805708761379892&q=automotive+body+parts+association+v+ford+global+technologies+llc&hl=en&as_sdt=2006).
  1. Make sure software development agreements refer to transfers of more than simply “code” or “software” from the developers to the contracting entity, assuming an ownership transfer of IP is desired. The agreements should refer to patentable methods, inventions, processes, algorithms, and the like, and assign them from the developers to the contracting party.  The opinion is here (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1506.Opinion.4-19-2018.1.PDF).
  1. To properly plead a product design trade dress claim, the Second Circuit held that it is insufficient to simply list the elements of the alleged trade dress. One must explain how the elements (alone or in combination) are distinctive and source-identifying. And, photographs of the shoes, without more, is not enough to overcome the deficiency.  The opinion is here (https://scholar.google.com/scholar_case?case=2541323024652215948&q=madden+eliya&hl=en&as_sdt=2003).
  1. USPTO Director Iancu wants to change the examination guidelines for Section 101, and said that legislation is too slow to accomplish this. The basic analysis he describes asks: (1) whether the application is directed to one of the four areas of patentable subject matter – process, machine, manufacture, composition of matter; (2) if so, do any of the claims recite an exception – laws of nature, natural phenomena, or abstract ideas (e.g., mathematical concepts, certain methods of organizing human interactions, or mental processes)?  (3) If so, is the exception integrated into a practical application?  If so, there is patentable subject matter.  If not, step (4) the analysis proceeds to Alice Step 2 and asks if the claim elements alone or in combination transform the nature of the claims into a patent-eligible application.  See Director Iancu’s comments from September 24, 2018 at the IP Owners Association Meeting here (https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-intellectual-property-owners-46th-annual-meeting).  See the new guidance from the USPTO – https://www.uspto.gov/about-us/news-updates/us-patent-and-trademark-office-announces-revised-guidance-determining-subject.