Weekly IP Takeaways

In IP Blog

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

1. The Supreme Court unanimously ruled that the prohibition in the Lanham Act (the federal trademark law) against immoral or scandalous marks is an unconstitutional violation of the First Amendment. At issue was a trademark application for a clothing line, FUCT. The Trademark Office rejected the mark as immoral and/or scandalous. The rejection was upheld by reviewing courts, until now. Justice Kagan, writing for the Court, noted the statute made a distinction between registrable versus unregistrable marks based on viewpoint, which violates the First Amendment. Justice Alito, concurring, noted, “Viewpoint discrimination is poison to a free society.” This opinion tracks the Matal v. Tam opinion, which struck down a portion of the same statute as violative of the First Amendment over the trademark for “The Slants,” which was a 1980s band, the trademark for which was rejected as disparaging. Good to see the First Amendment getting some love at SCOTUS. Note: I am not advocating for raunchy or disparaging speech. But, if you believe in the First Amendment, as I do, we cannot pick and choose what passes muster. We must accept speech that we agree with as much as speech we disagree with; otherwise, the First Amendment will eventually die.

2. Last week, the United States Patent and Trademark Office (USPTO) enacted a final rule, effective as of August 3, 2019, that will require all non-U.S. trademark applicants to be represented at the USPTO by an attorney licensed to practice law in the U.S. While this may have been something that should have been done a long time ago, as many other countries have such an approach for foreign trademark applicants, it has become apparent that some non-U.S. applicants have been “filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules.” The takeaway on this is that any non-U.S. clients and companies seeking trademark protection in the U.S. now require U.S. counsel to represent them at the USPTO.

3. A challenging area of patent law under 35 U.S.C. Section 101 and subject matter eligibility (i.e., the issue of whether patent claims district to medical diagnostic assays using materials from human subjects (e.g., DNA, proteins, other compounds) are patentable) continues to confound all involved. In a recent order, the judges of the United States Court of Appeals for the Federal Circuit, which hears appeals of all patent cases in the U.S., denied rehearing en banc regarding an earlier panel opinion of patent invalidity under 35 U.S.C. Section 101 of patent claims directed to diagnosing the neurological condition, myasthenia gravis, by detecting antibodies in a subject against a muscle-specific receptor protein. The invalidity opinion is here. The issue is that the Federal Circuit is bound by Supreme Court precedent in Mayo Collaborative Services v. Prometheus Laboratories, Inc., and the Supreme Court’s denial of certiorari in Ariosa Diagnostics, Inc. v. Sequenom, Inc., which raised similar issues to the present Athena case. Thus, the judges of the Federal Circuit that participated in the decision not to rehear the Athena case en banc concluded that they were bound by precedent, and that the eligibility law for diagnostic method patents needed to be changed by the Supreme Court and/or Congress. Takeaway: medical diagnostics are hugely important, and taking away the incentive to develop new diagnostic kits and assays by continuing to affirm the removal of their patent protection in significant part is potentially disastrous.