The attachment below is a brief overview of U.S. trademark opposition proceedings. Oppositions before the Trademark Trial and Appeal Board (“TTAB”), the judicial arm of the U.S. Patent and Trademark Office, are somewhat similar to a civil action in court. The party opposing registration of an application files a Notice of Opposition―analogous to a complaint―stating the bases for its opposition. Once filed, the TTAB issues an “institution order” to both parties detailing the discovery and trial schedule for the action along with the due date for the Answer. The Answer is usually a short, plain denial of the allegations in the Notice of Opposition, sometimes followed by affirmative defenses. In some cases, the applicant may counterclaim to seek cancellation of the opposer’s registration(s).

Finnegan attorneys Christine Lehman and Ronald Smith discuss the issues veterans face with disability claims.

Finnegan partner Erika Arner examines recent patent case law and asks if the time has come for the Supreme Court to redefine what kinds of inventions may be patented.

Finnegan Partner Erika Arner examines recent patent case law and asks if the time has come for the Supreme Court to redefine what kinds of inventions may be patented.

In Verizon Services Corp. v. Vonage Holdings Corp., Nos. 07-1240, -1251, -1274 (Fed. Cir. Sept. 26, 2007), the Federal Circuit affirmed the district court's claim construction, jury instructions, and injunction for two of three Verizon Services Corporation, Verizon Laboratories Inc., or Verizon Communications, Inc. (collectively "Verizon") patents asserted against Vonage Holdings Corporation and Vonage America, Inc. (collectively "Vonage") with respect to Voice over IP ("VoIP") technology. For the third patent, the Federal Circuit revised the district court's claim construction, remanded for a new trial, suggested further court consideration of jury instructions relating to obviousness in light of KSR International Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), and vacated the lower court's injunction. The Federal Circuit also vacated an award of $58,000,000 in damages and a 5.5% royalty rate because the jury verdict did not apportion damages among the three patents.

In two decisions issued September 20, 2007, the Court of Appeals for the Federal Circuit limited the reach of patent protection under 35 U.S.C. § 101, which permits patenting "any new and useful process, machine, manufacture, or composition of matter." In In re Comiskey, the Court held that claims reciting business methods can be patented only if a claimed process involves another class of statutory subject matter, such as a computer. In In re Nuijten, the Court held that a signal is unpatentable subject matter because "transitory electrical and electromagnetic signals propagating through some medium" do not fall within a statutory category of patentable subject matter.

On August 21, 2007, the United States Patent and Trademark Office (USPTO) published final rules regarding continuation and claim examination practice. Depending on the circumstances of your patent portfolio, these final rules will affect U.S. patent prosecution practice. Though the rules go into effect on November 1, 2007, certain patent prosecution actions taken prior to this effective date will affect options available after November 1, 2007.

Finnegan's summary of the final rules outlines some of the more immediate issues to consider when practicing under these rules. While this memorandum alerts you to some of the broad issues and strategic concerns that arise under the new rules, the memorandum does not recommend any particular strategy for specific cases. Each situation is different, depending on the particular facts and applicable legal principles.