September 2009

Relitigation of Patent Claims

In a patent case, under collateral estoppel, once a court has ruled upon an issue of fact or law, that ruling may preclude relitigation of the same issue or fact in a different suit involving the same parties. Once a patent has been declared invalid, a collateral estoppel barrier is created against further litigation involving the same patent, unless the plaintiff can demonstrate that he or she did not have a full and fair chance to litigate the validity of the patent in the earlier case. Similarly, defendants may be estopped from contesting issues of infringement and patent validity.

The collateral estoppel bar also applies where a reissue examination is sought of a patent when the patent has been held invalid or unenforceable for fraud or violation of duty of disclosure. Ordinarily, collateral estoppel must be raised as an affirmative defense by the party seeking to use it, or else it is waived.

Collateral estoppel requires the following:

  • the issue at stake is identical to the one involved in the prior proceeding;
  • the issue was actually litigated in the prior proceeding;
  • the determination of the issue in the prior litigation must have been a critical and necessary part of the judgment in the first action; and
  • the party against whom collateral estoppel is asserted must have had a full and fair opportunity to litigate the issue in the prior proceeding.

The collateral estoppel bar is inapplicable when the claimant did not have a full and fair opportunity to litigate the issue decided by the other court. Thus, a claimant can file a federal suit to challenge the adequacy of state procedures. The preclusive effect of a state court judgment in a federal proceeding is governed by state law.

Foreign Patent Offices

The issuance of a patent by the United States Patent and Trademark Office provides patent protection to an inventor only within the United States. Because each country has its own patent laws, neither other countries do not provide patent protection to a U.S. patentee, nor does the United States provide patent protection to a foreign patentee. Originally, if a U.S. inventor wished to obtain patent protection in other countries, he or she was required to obtain patents from each country in which patent protection was desired, which obviously entailed substantial time and expense. However, under the Paris Convention, international cooperation has streamlined the process of obtaining patents in other countries in many cases.

Paris Convention

The first international treaty applying to patents was the Paris Convention for the Protection of Industrial Property (Paris Convention), which was first signed in 1883. Countries that signed the Paris Convention (“party countries”) were required to make their patent laws available to inventors from other party countries. However, although the filing process of each party country was available to inventors from other party countries, inventors still had to go through the patent filing process to obtain patent protection. Finally, in the mid-20th century, a number of regional patent offices were established.

Regional Patent Offices

Regional patent offices are patent offices within a separate region or country and are the subject of regional treaties. Although each region has its own rules, the regional patent offices provide a single patent filing system for all member countries. The patent applicant chooses the member countries from which he or wishes patent protection. A patent issued by a regional office generally confers upon the patentee the same protection as would be provided under the individual laws of the party countries. The European Patent Office (EPO), founded in 1973, originally provided centralized patent processing for about 20 European countries. Former members of the Soviet Union later joined the European Patent Convention, which governs the EPO. As of 2004, the European Patent Office represented 28 countries, with several more countries expected to join. In addition, five other countries recognize patents issued by the EPO but are not members of the EPO.

There are several other regional patent offices, some of which are smaller organizations made up of members of the EPO. There are two regional patent offices in Africa: the African Regional Industrial Property Organization (ARIPO), and the African Intellectual Property Organization (OAPI), which each have 16 members. Applicants to ARIPO receive national patents for each of the member countries in which patent protection is sought. The OAPI provides a uniform patent law for all member countries that is applied by all courts of its member countries, and an OAPI patent application automatically seeks patent protection from all its member countries. Also in the OAPI, existing patent protections may be extended to new countries that join the OAPI.

Trademark Rights of Priority

In the United States, subject to one exception, trademark rights arise from use in commerce, regardless of whether or not the mark is registered. The first user of a mark generally takes priority over all subsequent users with respect to use of the mark in that market.

The first user of a mark in commerce, labeled the senior user, will have priority over the use of that mark by any other user, labeled the junior user, within the geographic area of the senior user’s use. However, as soon as a senior user files an application to federally register the mark, the senior user will have nationwide priority over any junior users of the mark, except for any junior users who were already using the mark in a geographically remote area as of the filing date of the senior user’s application.

The one exception to the rule of priority based on use in the U.S. is that a prospective user can file an application for federal registration of a trademark on an intent-to-use basis. In that case, once the mark is used in commerce, the priority date will relate back to the date of the filing of the application, not the date of first use.

A federal trademark registration application should be filed immediately after a search is performed to ensure that the mark is not already in use. This is necessary to establish a nationwide priority date.


Although, it is recommended to speak with an attorney to advise you of your rights, in general the attorney should review the following issues in order to claim priority based on an existing trademark registration:

  • A true copy, a photocopy, a certification or a certified copy of the applicant’s trademark registration in the country of origin must be provided.
  • A translation of the registration if not in English, signed by the translator, must be submitted.
  • The applicant must verify that the applicant has a bona fide intention to use the mark in commerce.
  • The scope of the goods covered by the U.S. application cannot exceed the scope of the goods or services in the foreign registration.
  • If the applicant is not domiciled in the United States, the applicant must designate a domestic representative, which is a person residing in the United States that may be served notices or process in proceedings affecting the mark.

Trade Dress Protections

Trade dress is governed by the same set of laws that protect unregistered trademarks. While traditional trademark law protects words or logos, trade dress law protects the total packaging and design of a product. Because trade dress often serves the same function as a trademark or service mark — the identification of goods and services in the marketplace — trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the United States Patent and Trademark Office.

When Trade Dress is Protectable

To be protectable, trade dress must be inherently distinctive or possess secondary meaning, which means that the public associates the packaging with a single source. Such evidence of secondary meaning may be shown through long term use of the design, large volumes of sales and advertising, unsolicited public comments concerning the design, licenses and requests to license the design, copying of the design and consumer testimony concerning the design. Additionally, the trade dress must be nonfunctional.

Infringement of Trade Dress

Protectable trade dress is infringed when a “likelihood of confusion” exists between a plaintiff’s trade dress and a defendant’s trade dress. The similarity between trade dress is gauged by the “ordinary buyer” standard, that is, whether an ordinary buyer would believe that both products came from the same source. Courts weigh various factors to determine likelihood of confusion, including the following:

  • the strength or distinctiveness of the trade dress;
  • the intent to copy and “cash in” on plaintiff’s reputation and goodwill;
  • the similarity of the products;
  • evidence of actual confusion;
  • degree of care exercised by buyers; and
  • the area, manner, and degree of concurrent use.

Trade Dress Rights

Similar to trademark protection, trade dress rights arise from use of the particular trade dress. Generally, trade dress rights become stronger the longer and more extensively they are used. When a party is successful in establishing a protectable trade dress interest, that party may assert its rights against others offering goods having a confusingly similar trade dress. The overall appearance of the articles or their packaging is then compared to determine whether the trade dress at issue is infringed.

Copyright Joint Authorship and Ownership

According to the Copyright Act, the authors of a joint work jointly own the copyright in the work they create. A joint work is defined in the Copyright Act as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” Courts have interpreted this to mean that all putative joint authors must intend to make a joint work at the time of the creation of that work. If joint authorship exists, the authors of the “joint work” will be recognized as the co-owners of the copyright in that work. The contributions to a joint work do not need to be equal in quality or quantity, they only need to be copyrightable contributions and the parties must agree that the work is a joint work.

Standards for Copyright Protection

One does not become the author of a joint work merely by contributing ideas or supervision to a work. One does so by contributing material that meets the standards for copyright protection. In order to be considered a joint work, each author’s work must be independently copyrightable and inseparable from the whole.

No Consent Required to Use or License Work

When the copyright in a work is jointly owned, each joint owner can use or license the work in the United States without the consent of the other owner, provided that the use does not destroy the value of the work and the parties do not have an agreement requiring the consent of each owner for use or licensing. A joint owner who licenses a work must share any royalties he or she receives with the other owners.

Many foreign countries require that all joint owners consent to the grant of a license. Generally, joint ownership is not recommended because of the complications it adds to licensing worldwide rights. In addition, it is unclear what effect the filing of bankruptcy by one joint owner would have on co-owners.

The Rights and Duties of a Co-Author

If the work qualifies under the law of copyright as a work of joint authorship the co-authors or collaborators may allocate the rights and duties of the work of authorship among themselves. However, since no formal agreement is required between the co-authors or collaborators, a legal relationship of joint authorship may occur even without the intent of the respective authors to create a work of joint authorship.

Authorized Uses

If a joint work is formed, all joint authors are joint owners of the entire work (as opposed to each author only owning their own contribution.) This sets up important issues relating to how the work may be used and who may authorize any use. As a co-owner of the entire work, any joint author can:

  • modify, reproduce, and distribute copies of the entire work
  • grant a nonexclusive license to others to use the work without obtaining the consent of the other co-authors (but must share the profits generated from the license unless the authors agree otherwise) and
  • transfer his or her interest to a third party (by written assignment) without the permission of the other owners.