January 2008

The Doctrine of Intervening Rights

A patent is issued for a fixed term–14 years for design patents; 20 years for other types–during which the patent holder has a right to exclude others from making, using or selling the subject of the patent. There are, however, certain circumstances under which a patent claim may become ineffective for the purposes of enforcing exclusive patent rights against possible infringers. United States patent law allows a patentee to request a reissue of a patent, a procedure used when a patent as issued needs to be corrected. There may be an error in the specification that undermines the validity of the patent, or a patentee may determine that the scope of the patent as issued is narrower or broader than intended. As long as the error occurred without deceptive intention, the patentee may seek a reissue of the patent.

Intervening Rights

The patent laws protect those who in good faith relied on the scope of the patent as originally issued in making, using, or selling some invention or process, who are said to have acquired intervening rights. If such use of the invention or process was not covered by the patent as originally issued, the statute protects that use. In such a case, a court has no discretion and must find that there is no infringement on the basis of the absolute intervening rights. Even if a person or business has not used the invention but has made substantial preparation towards making, using or selling it prior to the patent’s reissue, equitable intervening rights may still be found. In contrast to absolute intervening rights, a court will determine whether there has been a sufficient investment of time and money to find that equitable intervening rights have been obtained that justify protecting the investment by finding that no infringement of the reissued patent has occurred.

A similar situation occurs when a patentee seeks a reexamination of a patent. In such a case the patentee or a third party may discover evidence that a patent is not valid and wish to amend the claim in order to obtain patent protection or obtain a ruling from the United States Patent and Trademark Office (USPTO) that the claim as set out in the patent is valid. If the patent as reexamined contains a patentable new claim, intervening rights will protect the use or substantial preparation for the use of a process or invention not covered by the original patent in the same way as with a reissued patent.

The final way in which intervening rights may be established is when utility patent maintenance fees are not paid on time or within the six-month grace period following the due dates for those fees, which are payable at three different times over the life of a 20-year utility patent. Although the USPTO allows a patentee of an expired patent to petition the USPTO to reinstate a patent when failure to pay maintenance fees on time was unintentional or unavoidable, the law protects persons who relied on the presumption that the patent had been abandoned to use, make or sell the subject of the expired patent, or to make substantial preparations to use it. In such cases, intervening rights will be found to have been established in the same manner as in reissued and reexamined patents.

Indirect Patent Infringement

Patent rights are created by federal law and give an inventor the right to exclude others from making, using, selling, offering for sale, or importing a patented invention without the inventor’s permission for a limited period of time. The making, using, selling, offering for sale, or importing of a patented invention without the inventor’s permission is said to directly infringe the patent, for which the patent owner may be able to recover a remedy. Patent law also provides for indirect infringement of a patent.

Indirect Infringement

One way of becoming liable for indirect patent infringement is to induce another party to commit an act of patent infringement. In order to be liable for inducement to infringe a patent, one must actively solicit or assist another in the infringing of a patent. The United States Court of Appeals for the Federal Circuit, which hears appeals of patent cases, has held that to actively induce infringement, one must knowingly and intentionally induce the actual infringer. One basic requirement for liability for inducement to infringe is that there must be an actual case of direct infringement by another party; thus, one cannot be liable for attempting to induce the infringement of a patent when no infringement takes place. For example, offering to sell the parts necessary to build a patented invention and instructions on how to build it does not in itself amount to inducement to infringe; however, if someone accepts the offer to buy the parts and builds the invention, thus infringing the patent, the seller of the parts has induced the act of infringement.

Another form of indirect infringement is contributory infringement. The patent statute specifically defines contributory infringement as selling, offering to sell or importing an important part of a patented invention that has no substantial use except to build the patented invention. If the item being sold is a common item that has other uses, selling it is not contributory infringement even if the seller knows that the buyer intends to use the item to infringe a patent. As with inducement to infringe, liability for contributory infringement depends upon an actual act of direct infringement. The knowing and intentional element of inducement to infringe also applies to contributory infringement. Therefore, to be liable for contributory infringement, one must know that the item being sold, offered for sale, or imported has no real use except in the creation of an infringing product and that the person to whom the item is sold intends to use it in such a way that a patent will likely be infringed.

The Lanham Act section 43a

The Lanham Act is the federal law that provides a national system of trademark registration and protects the owner of a valid trademark against the use of similar marks if any confusion might result. The Lanham Act is not the exclusive law governing U.S. trademark law because both common law and state statutes also control some aspects of trademark protection. The common law cause of action on which Section 43(a) of the Lanham Act is based is called passing off or palming off of goods and occurs when a producer misrepresents his or her own goods or services as those of another producer.

While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a) has frequently been referred to as a federal unfair competition provision. Section 43(a) covers false designations of origin and false descriptions. Congress originally enacted the Lanham Act, including Section 43(a) in 1946 and amended it in 1988, but in both instances provided scant guidance on how courts should construe Section 43(a). This provision prohibits any use of a false or misleading description or representation in commercial advertising or promotion that “misrepresents the nature, characteristics, qualities, or geographic origin of. . . goods, services, or commercial activities.”

False Description of Goods and False Designation of Origin

Under Section 43(a), “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, is liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”

Elements for a Claim

Courts have formulated the following elements for a claim under Section 43(a) of the Lanham Act claim:

The defendant must have made a false or misleading statement of fact in advertising.

  • That statement must have actually deceived or had the capacity to deceive a substantial segment of the audience.
  • The deception must have been material, in that it was likely to influence the purchasing decision.
  • The defendant must have caused its goods to enter interstate commerce.
  • The plaintiff must have been or is likely to be injured as a result.

Enforcing Rights

It is not necessary to have a trademark registration in order to enforce rights under Section 43(a). One must, however, have “standing to sue” in order to seek relief under the law. Among the factors considered in evaluating this issue are the nature of the conduct alleged to be in violation of Section 43(a), the manner in which the person seeking relief has been or is likely to be damaged by such conduct, and whether the damage is of the type sought to be protected by the Lanham Act.

Monetary Damages

To obtain monetary damages, as opposed to simply injunctive relief, a Lanham Act plaintiff must also demonstrate actual consumer reliance on the false advertisement and a resulting economic impact on its own business. Although Section 43(a) appears to be aimed at protecting consumers, the Lanham Act provides no cause of action to consumers, only to business competitors.

Trademark Dilution

A trademark is infringed when the mark or a similar mark is used in a way that is likely to confuse the public into believing that the trademark owner is the source or sponsor of products that it does not actually make or endorse. Trademark anti-dilution laws are intended to enable trademark owners to prevent the gradual weakening or whittling away of the strength of their marks, through blurring or tarnishment, even if the public is not likely to be confused. Until 1996, trademark dilution laws consisted of a patchwork of non-uniform state statutes and common law. In early 1996, Congress enacted the Federal Trademark Dilution Act (FTDA) to provide nationwide injunctive relief for diluting uses of nationally famous trademarks.

Federal Trademark Dilution Act

The Federal Trademark Dilution Act (FTDA) became law in 1995. The new statute amends the Lanham Act to provide a federal remedy for dilution. State law is not preempted. In fact, the laws of many states go farther in granting more protection than that provided in the federal statute. Although many states had enacted laws that prohibited trademark dilution, the FTDA was intended to provide uniform and nationwide protection for famous marks. “Dilution” is defined in the FTDA as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” Prior to the enactment of the FTDA, courts found that dilution could occur as a result of either “blurring” or “tarnishment.” Both of these concepts are encompassed within the FTDA. The FTDA applies only to famous marks.

Famous Marks

In determining whether a mark is famous a court may consider the following non-exclusive factors:

  • the degree of inherent or acquired distinctiveness of the mark;
  • the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
  • the duration and extent of advertising and publicity of the mark;
  • the geographical extent of the trading area in which the mark is used;
  • the channels of trade for the goods or services with which the mark is used;
  • the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;
  • the nature and extent of use of the same or similar marks by third parties; and
  • whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.


“Blurring” typically refers to the “whittling away” of distinctiveness caused by the unauthorized use of a mark on dissimilar products. Dilution by blurring can occur when a trademark is used by someone other than the trademark owner on products that are very different from those normally produced by the trademark owner


“Tarnishment” involves the unauthorized use of a mark which links it to products that are of poor quality or which are portrayed in an unwholesome or unsavory context that is likely to reflect adversely upon the owner’s product. .

Remedy – Injunctive Relief

Generally, only injunctive relief is available under the FTDA. However, if the defendant willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark, the owner of that mark may also be entitled to other remedies, including defendant’s profits, damages, attorneys’ fees and destruction of the infringing goods. The availability of monetary relief is a striking departure from state dilution laws, which have typically provided only for injunctive relief. Additionally, the FTDA provides that the ownership of a valid federal registration is a complete bar to the assertion of a dilution claim under state law.

The FTDA allows injunctive relief to owners of famous marks against another’s use of the mark if:

  1. the use of the mark is commercial,
  2. the use began after the senior mark became famous, and
  3. the use dilutes the distinctive quality of the mark.

Nonactionable Use of a Famous Mark

The following are not actionable under the FTDA:

  • fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark
  • noncommercial use of a mark
  • all forms of news reporting and news commentary

State Dilution Laws

More than half of the states afford protection from trademark dilution through statutory or case law. The FTDA expressly states that the federal statute does not preempt state dilution laws. Where the federal statute provides protection for dilution of nationally famous marks, state statutes seek to protect interests of a more local nature. Courts have acknowledged that trademarks need not be nationally famous for a mark to be strong in a particular geographic region or industry segments. In addition, whereas the FTDA requires actual dilution, state laws sometimes require only a showing of likelihood of dilution to grant injunctive relief.

Dilution in the United States Patent and Trademark Office

Although the FTDA became effective in 1996, it was not until 1999 that dilution became a basis on which an application or registration of a mark could be challenged in a U.S. Patent and Trademark Office opposition or cancellation proceeding. It still is not a basis on which an examiner can reject an application during an ex parte examination.

Substantial Similarity

Plaintiffs may establish copyright infringement by proving that a defendant had access to the copyrighted work prior to the creation of the allegedly infringing work and that the two works are substantially similar. Generally, once a plaintiff demonstrates access and substantial similarity, the burden shifts to the defendant to prove that the allegedly infringing work is not a copy but was independently created.

Test of Similarity

The issue of similarity is a factual one to be determined by the trier of fact. The term “substantial similarity” causes confusion in the copyright infringement analysis because the same term has different meanings at two different points in the infringement analysis. To prove infringement, the plaintiff must show that the defendant copied elements of a work that are original. The test for infringement involves two separate inquires. The first inquiry is whether or not the defendant actually copied the plaintiff’s work. The second inquiry is whether or not the copied elements were protected expression and whether or not they were sufficiently important to be actionable. The term “substantial similarity” is used by the courts for both inquires but has a different meaning in each instance.

Actual Copying Prong

The first prong of the infringement test, which is the actual copying prong, can be established by showing access to the work and substantial similarity. Here, substantial similarity means that the works are in fact sufficiently similar to support a conclusion that one was actually copied from the other. This involves a relatively low threshold because substantial similarity for the purpose of showing actual copying involves a comparison of the works in their entirety, including protectable and unprotected elements.

Substantial Similarity Prong

The second prong of the infringement test also involves a showing of “substantial similarity” but the meaning is very different. Here, the question is limited to similarities of protected expression. This involves a higher threshold because it requires a showing that the defendant copied a substantial amount of protectable expression.