Dawn Ellmore Employment's Blog

IP and Legal Industry Updates


August 2016

Arbitration: A Useful Money and Patents Saver in Disputes

Arbitration is currently rarely used in patent disputes because arbitration provisions are part of patent licensing agreements but most patent disputes are not between licensees and licensors.

Arbitration can however be a valuable tool (saving time and money) in resolving patent disputes if parties to a license/industry dispute resolution agreement devote time and effort preparing an arbitration provision to meet their objectives

Use of arbitration is not limited to pre-existing contractual provisions. Parties can agree to arbitration after a dispute arises or even modify existing arbitration provisions after the details of the dispute are known.

With the soaring costs of litigation, patent holders have become more reluctant to enforce patent rights.  Artful and careful use of arbitration provisions can provide a company with the opportunity to design a potential solution that fits within the company’s objectives and budget.


Three Location-based Gaming Patents for Pokemon Go

Pokemon Go (the digital monster catching game which uses an augmented reality overlay) that launched in July 2016 has become one of the most downloaded games (100 million times in August 2016) and has netted $10 million in daily revenues despite being free to play.  The company obtains profits from selling geolocation data to marketers who want to know more about locations frequented by players.

The mobile-based gaming business is protected by the following 3 US patents:

  1. U.S. Patent No. 8968099System and Method for Transporting Virtual Objects in a Parallel Reality Game. It protects a computer-implemented method of transporting virtual objects in a virtual world having a geography that parallels real-world geography.
  2. U.S. Patent No. 9226106 Systems and Methods for Filtering Communication Within a Location-Based Game.  A computer-implemented method of filtering communications for a location-based game by receiving communication data for a plurality of players, filtering messages between players based on signals associated with each player and adjusting the filtered communication data for each player based on constraints associated with each player.
  3. U.S. Patent No. 9128789Executing Cross-Cutting Concerns for Client-Server Remote Procedure Calls.  A computer-implemented method which processes a source file defining a remote procedure call class specifying a plurality of remote procedure call (RPC) methods and then executing cross-cutting actions specified by decorator annotations contained within the source file in conjunction with executing RPC methods.


US Provisional Patents: What They Are and Why Inventors Need Them

US provisional patents can’t be granted but you can file a provisional patent application which if done correctly can be a very useful tool for inventors.

A provisional application for a US patent is:

  • US national application for patent filed in the USPTO
  • Filing without a formal patent claim, oath or declaration
  • Allows “Patent Pending” to be used with invention description
  • NB it is important to focus is on describing the invention as completely as possible

A provisional patent application lasts 12 months from the date the provisional application is filed so an inventor must file a non-provisional patent application claiming the priority of a provisional patent application within the 12 months.

In the US inventors need to file first before disclosing anything about their invention, offering it for sale or using the invention publicly.  A provisional patent application gives the benefit of a priority filing date without the patent term starting.  This is beneficial as anything that comes after your priority filing date cannot be prior art which an examiner can use against you when they examine your application.


Deadline Approaching to Review Trade Mark Specifications Following EU Trade Mark Reform

EU trade mark reform came into force on 23 March 2016 with a 6 month amnesty for trade mark owners to review and amend their existing trade mark specifications (the deadline being 23 September 2016).  The reform changes concerned the goods and services covered by a community trade mark (now renamed EU trade mark or EUTM).  It changed the level of goods and services classifications from broader to more narrow categories.  Whilst this is not an opportunity for trade mark owners to broaden their protection scope into new categories, it is a chance to clarify specifications to confirm if a competitor is infringing their trade mark(s).  It is less common in the UK than in other EU jurisdictions to file for broad class headings so action may not need to be taken.

Trade marks affected:

  • Community Trade Mark (CTM) registrations filed before 22 June 2012 and that contain entire Nice Classification class headings.
  • CTM registrations including other goods in the class along with the class heading where the additional wording doesn’t limit the class heading filed before 22 June 2012.
  • International registrations designating the EU filed before 22 June 2012.

If owners of affected trade marks take no action by the deadline then their marks will be interpreted by the literal meaning of the terms included in original the specification which could result in a loss of protection.


Forbidden Hashtags for Rio 2016 Olympics

Twitter launched a series of emojis for the Rio 2016 Olympics but unless you are an official sponsor you cannot use them.  The Olympic Committee has declared all non-sponsors are forbidden from tweeting about the games, using the “trade marked” hashtags, or retweeting from the official Olympic Team accounts.

Unless you are a news outlet or pursuing an educational purpose you can’t have your brand say this summer:

  • Let the Games Begin
  • Future Olympian
  • Olympian
  • Olympic

The International Olympic Committee have relaxed some rules allowing brands which are not official Olympic sponsors to promote their relationship with Rio 2016 athletes.


Latest Patented Technology Against Malware

Prominent security research and products company Kaspersky Lab has been awarded a fresh patent on a technology which will reveal malicious files trying to hide themselves with different re-packing methods.  At this stage, the patented technology only aims at the detection of malicious files created by .NET and ActionScript frameworks.


EU Expands Copyright to Furniture and Extends Term by a Century

The UK government has extended copyright for designs from 25 years to the life of designer plus 70 years.  This follows a decision in the European Union, where member states are required to adhere to such an order. This change means people will be prohibited from using 3D printing and other technologies to manufacture such objects for a full century.

Furniture was previously protected by a design patent and not by copyright.  This change will result in big changes for 3D printing: when something was under patent people were free to make copies of it for their own use with their own tools and materials under copyright this is illegal.


Augmented Reality Advertising for Snapchat with New Patent

Snapchat recently filed a patent which develops an advert overlay system that turns users photos into adverts.  The software recognizes the objects users of the app are photographing and then serves adverts back to them based on that content.  A monetary bidding war would then develop between advert providers to decide which provider gets to serve their advert.


Recent Trade Mark Rulings for Global Brands

A couple of trade mark rulings over colour trade marks and slogans hit the headlines recently:

Frucor Beverages, owner of the V energy drink, attempted to trade mark the green colour (Pantone 376C) used on its drinks can but this was blocked by Coca-Cola as Pantone 376C was said to not distinguish V because other soft drinks already used similar colours. Frucor Beverages is set to continue this legal battle at the US Federal Court.

Whole Foods Market tried to trade mark the slogan “World’s Healthiest Grocery Store” but this was rejected by the United States Patent and Trademark Office (USPTO) as they stated the slogan was “merely descriptive.”  Whole Foods Market have outlets in the United States, the UK and Canada which does not equate to a global footprint.  The phrase “World’s Healthiest Grocery Store” has also never been used by the retailer as a slogan in their marketing.

Sources: and

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