Archives for January 2013

U.S. Supreme Court Finds Broad Covenant Not To Sue Moots Competitor’s Counterclaim

In a January 9, 2013, decision, the U.S. Supreme Court found a broad covenant not to sue filed by trademark owner Nike mooted the defendant’s counterclaim for trademark invalidity. Applying the voluntary cessation doctrine, the Supreme Court held that the defendant’s only legally cognizable injury — Nike’s enforcement of its trademark — was gone in view of Nike’s covenant not to sue. Further, given the breadth of the covenant, that injury could not reasonably be expected to recur. Thus, because there was no other basis on which to find a live controversy, the case was moot.  For a link to our summary of the case, click here.

USPTO Announces New Fee Schedule To Be Effective March 19, 2013

The USPTO has announced that its new fee schedule will be published in the Federal Register tomorrow (January 18). The effective date of the new fee schedule will be Tuesday, March 19, 2013. We will issue a Special Report detailing the changes within the next few days.

AIA Technical Corrections Act Has Been Signed Into Law

The AIA Technical Corrections Act discussed in our January 2 Special Report was signed into law by President Obama on January 14, 2013.  Corresponding USPTO rules regarding the IPR “dead zone” were published on March 25, 2013.


On December 31, the USPTO appealed the decision of the U.S. District Court for the Eastern District of Virginia holding that the USPTO has improperly shortened many patent term adjustments, as discussed in our November 20, 2012 Special Report.  That decision will be reviewed by the U.S. Court of Appeals for the Federal Circuit over the next year.  However, on January 28, 2013, the U.S. District Court for the Eastern District of Virginia issued a decision in conflict with the previously-reported Exelixis decision.  That decision has also been appealed, and the appeal will be consolidated with the pending Exelixis appeal.


The final major changes to U.S. patent law under the America Invents Act (AIA), will go into effect on March 16, 2013.  The USPTO has issued, and will continue to issue, Final Rules implementing aspects of this legislation involving Patent Office procedure.  Our analysis and recommendations are discussed in Special Reports that are available in the Resources section of our website.  We will continue to issue additional Special Reports for major developments.