United States: IP Buzz - August 2014

Last Updated: September 12 2014
Article by Martin L. Saad, Meaghan Hemmings Kent and Elissa Brockbank Reese


Copyright Registration v. Application: Is the Battle Over?

Author: Joshua J. Kaufman

The issue of whether one must have a registration or simply a pending application for registration in order to meet the prerequisite to file a federal copyright infringement lawsuit appears to have been decided, almost without notice.

Click here to learn about the decision and its implications.

The Battle to Keep the "Mister Softee" Brand from Melting Away

Authors: Marcella Ballard, Victoria R. Danta, and Michael Isselin*

The sight of a Mister Softee ice cream truck is a reminder that summer is here, and its jingle draws children to run and grab a cone. Mister Softee trucks are sprinkled around 15 states, with over 600 trucks operated by franchisees. Although the trucks move slowly enough for a child to catch, this number of mobile franchises can be difficult to monitor. In a recent attempt to police franchisees, Mister Softee took aim against a former franchisee that began operating "Master Softee" and "Soft King" trucks.

Click here to learn more about this case.

Michael Isselin is a summer associate and not licensed to practice.

The USPTO Issues Guidelines for Subject Matter Eligibility Analysis: Pathology v. Myriad and Mayo v. Prometheus

Authors: Stefan J. Kirchanski and Miguel A. Lopez

The U.S. Supreme Court's decisions in Molecular Pathology v. Myriad Genetics, Inc. (Myriad) and Mayo Collaborative Services v. Prometheus Laboratories (Prometheus), and its subsequent interpretations of 35 U.S.C. §101, have sparked tremendous controversy in the biotech industry. Similarly, the USPTO's interpretation of the Supreme Court's rulings as represented in its Guidance has not been without controversy. In last month's issue of IP Buzz, we summarized and highlighted the key points of the guide. In this month's article, we will discuss the guide's potential implications for inventors and legal service providers.

Changes to New Zealand Patent Examination Process and Renewal Fees

Effective September 13, 2014, there will be extensive changes to the New Zealand patent examination process and payment of renewal fees. Applications filed in New Zealand on or after this date will be subjected to an expanded examination procedure, which will include examination of inventive step and utility and a broader prior art base for novelty.

Click here to learn more about the new Act.

IP Buzz – Post Grant Practice August Edition

Last month, Venable issued a special edition of IP Buzz focused on inter partes litigation.

Click here to view the latest issue.


National Law Journal, Bisnow Feature Venable Participation in ALS Ice Bucket Challenge

On August 15, Venable attorneys and staff gathered on the roof of the firm's Washington, DC office to accept the ALS ice bucket challenge and raise money for ALS research. Damon Wright (DC, TY) led the 40-person line of participants in a full suit and challenged neighboring law firms, the Washington Wizards and the Washington Capitals to accept the challenge or donate to ALS research. The challenge, which raised over $2,000, was dedicated to Michael Gollin (DC) who also accepted the challenge. National Law Journal featured the challenge in an August 15 article as did Legal Bisnow on August 20.

Keynote Speaker Added! Venable IP Symposium

Wednesday, September 10, 2014 | 12:30 - 6:30 p.m. ET
Venable's Washington Office, Capitol Room

We are pleased to announce The Honorable Mike Lee, Senator for Utah and co-sponsor of the Patent Transparency & Improvements Act of 2013, as the keynote speaker at our IP Symposium. Senator Lee will join Venable IP attorneys and distinguished guest panelists for this half-day event in our Washington, DC office. Following the keynote address, we will have panel discussions on current trends in IP law and strategies for settling a case favorably, and we'll end the day with drinks on the rooftop. The Symposium is complimentary and CLE credit will be available.

Panel 1: Current Trends in IP Law

  • Recent developments in patent, trademark and copyright law and legislation
  • The effect of the latest Supreme Court decisions on IP law and practice

Panel 2: How to Settle Your Case Favorably

  • Different approaches to settling patent troll and Hatch-Waxman cases
  • Drafting settlement documents that best benefit your client


  • Tamany Bentz, Venable LLP
  • Ralph Dengler, Venable LLP
  • Nora Garrote, Venable LLP
  • Frank Gasparo, Venable LLP
  • Meaghan Kent, Venable LLP
  • Janet Satterthwaite, Venable LLP
  • Kenneth Cappel, Vice President, Global IP, Amneal Pharmaceuticals
  • Christopher Copeland, Senior Counsel, Contracts & IP, M&T Bank
  • Vicki Margolis, Associate General Counsel, Litigation, Kimberly-Clark Corporation
  • Elizabeth Winston, Associate Professor, Columbus School of Law, Catholic University

Click here to register.

Venable Brand IP Seminar: Los Angeles

Wednesday, September 24, 2014 | 11:30 a.m. to 2:00 p.m. PT
Venable's Los Angeles Office

We are pleased to invite you to attend our third Brand IP seminar at Venable's Los Angeles office on Wednesday, September 24, 2014. Our panel will include speakers from Lionsgate, Playboy Enterprises and Stussy, Inc., who will discuss the following:

  • Brand protection challenges in a global licensing program;
  • Protecting your brand in the movie industry; and
  • Best practices for any brand protection program.

Click here to register.

Bridging the Gaps: An Advertising Law Symposium

Monday, October 20, 2014 | 8:00 a.m. - 5:15 p.m. PT
Venable's San Francisco Office

Please join us for an invitation-only Advertising Law Symposium at the San Francisco Marriott Marquis on Monday, October 20, 2014. This all-day MCLE-accredited program will provide an opportunity for guests to exchange ideas and network with Venable attorneys, regulatory insiders, and top advertising law thought leaders. Key topics to be addressed include challenging competitor advertising, social media and ethics requirements, branded entertainment, digital media, gaming, health related marketing claims, and FTC and CFPB regulations.

Confirmed speakers include:

  • Ross Hoffman, Director of Brand Strategies US, Twitter (Keynote Speaker)
  • Sheila Jambekar, Senior Counsel, Zynga
  • Yan Fang, Senior Attorney, Federal Trade Commission, Western Regional Office
  • Gabriel Martinez, Advertising Counsel, The Clorox Company
  • Laura Brett, Staff Attorney, National Advertising Division of the Council of Better Business Bureaus
  • Judge Marilyn Patel (retired), U.S. District Court for the Northern District of California

Click here for more information and to register.

Venable's San Francisco Office Celebrates One Year

Monday, October 20, 2014 | 5:30 p.m. PT
Venable's San Francisco Office

Please join us for cocktails & hors d'oeuvres as we celebrate the one-year anniversary of our San Francisco office. The anniversary celebration will be held at the Press Club in San Francisco on October 20, 2014 at 5:30 p.m. This invite-only event will provide an opportunity for guests to network and learn more about Venable's efforts and achievements on the west coast. Venable attorneys from San Francisco and other offices will be in attendance as well.

Click here for more information and to register.

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