Intellectual Property

Once a proposed mark has been chosen, it is always a good idea to have your trademark attorney conduct a trademark search. Even if you are not aware of any competitors or related companies that use the same name it does not mean that there are none. A trademark search will also look for marks that are “confusingly similar” to the mark being searched or are likely to cause confusion in the consuming public. We will discuss the concept of confusing similarity and likelihood of confusion in the context of trademark infringement in a later post.

If you are considering several marks, it may be possible to narrow the field by conducting a quick Internet search using Google or a similar search engine. If that search finds a direct hit, you can quickly move on to your next contender. This strategy can save time and money for when the final options need to have a closer look taken by your trademark attorney.

Selecting a strong trademark is the key to being able to protect the trademark. As we discussed last week, the first and central step in branding is selecting your trademarks, which will serve to promote your reputation and help your company stand out among your competition. However, when choosing a name for a product or service, the inherent strength of mark should be considered as this will affect many things going forward from the cost of a search to your ability to stop others from using similar names.

“Branding” is one of the most popular buzz words in the advertising and marketing arena. But what does it mean to have a “brand” and what is needed to create and maintain your “brand”? Is it really important for a small physician’s office or local hospital? The short answer is yes – branding is important, even for small providers.

Abbott Labs recently obtained a preliminary injunction prohibiting numerous pharmacies, wholesalers, and other distributors from importing or otherwise using in the U.S. Abbott’s FreeStyle® blood glucose test strips that are intended for sale internationally. Chief Judge Amon of the Eastern District of New York found that Abbott is likely to succeed on the merits of its Lanham Act claim that consumers will likely be confused by the sale of “gray market” FreeStyle test strips in the U.S.

The patentability of genes is under scrutiny all over the world.

Several weeks ago, the High Court of Australia shed light upon the patentability of nucleic acids (D’Arcy v. Myriad Genetics Inc.). Similar to the situation in the U.S. for 35 U.S.C. §101, the High Court found that an isolated nucleic acid coding for a mutant BRCA1 protein was not patentable subject matter.

Recent trends in the U.S. Food and Drug Administration’s (“FDA’s”) utilization of Complete Response Letters (“CRLs”) would indicate there may be a disconnect between the intended use of CRLs and the reality of how they are actually being used by the FDA. Pharmaceutical companies seeking to acquire FDA regulatory approval for their New Drug Applications (“NDAs”) or Abbreviated New Drug Applications (“ANDAs”) will often receive a CRL from the FDA instead of an approval.

The U.S. Food and Drug Administration (“FDA”) panel’s unanimous recommendation to approve Sandoz’ application for a filgrastim biosimilar of Amgen’s Neupogen® on Jan. 7, 2015, brings into sharp focus the provisions of the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”) for resolving patent issues. The imminent approval by the FDA of Sandoz’ application now leaves resolution of patent issues for Sandoz to contend with as it prepares to launch its biosimilar filgrastim product. The lawsuit to resolve these issues, however, has just begun.

Case law regarding written description is in a state of flux so it is beneficial for the patent practitioner to understand some key Federal Circuit decisions involving the written description requirement.

One might ask why a separate written description of the invention is needed in the specification when the claims are there to define the subject matter of the invention. The reason is historical.

Dietary supplements represent a huge sector of the consumer market and changes in both intellectual property law and the regulations governing the market entry and advertising of these products is changing.

The new America Invents Act allows anyone to challenge the validity of patents under the inter partes review (IPR) process. In a Sept. 9 webinar, Husch Blackwell Partner Joseph Cwik, who recently won the first pharmaceutical IPR case, will provide an overview of this new process and explain how it is more cost-effective, efficient and successful than the traditional litigation.