Updates on IP news from our global team!

January Insights

Federal Circuit Applies Functionality Doctrine to Deny Registrability of a Color Trademark

The functionality doctrine in U.S. trademark law states that a functional mark is not registrable. The doctrine prevents the use of trademarks for impeding legitimate competition by ensuring that companies seek protection for utilitarian features through patents having limited terms, and not with trademarks which are renewable indefinitely.

When a patent term expires, competitors are free to use the functional product features disclosed in the expired patent.

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A Reminder that Written Description and Enablement also Require a Look Back in Time

Analyzing patent validity requires consideration of the circumstances at the time of the patent’s filing. For example, when deciding whether patent claims are invalid as anticipated or obvious, one must look at the available prior art and knowledge of a person of ordinary skill in the art available at the time of the patent’s earliest effective filing date. The recent decision In re ENTRESTO is a reminder that this timing perspective also applies to written description and enablement analyses.

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CAFC Rules Cytiva’s Claims Unpatentable under 35 U.S.C. § 103: Inherent Properties

in an Otherwise Obvious Claim

The interplay between the legal doctrines of inherency and obviousness was recently considered by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit or CAFC) in Cytiva BioProcess R&D AB vs. JSR Corp. In particular, the CAFC discussed that if a claimed property is considered inherent in an otherwise obvious claim, then there is no question of a reasonable expectation of success.

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Lead Compound Analysis Not Required Where the Prior Art References Expressly Suggest the Proposed Modification

When assessing obviousness of a chemical compound, Federal Circuit caselaw generally follows a two-part inquiry referred to as the “lead compound” analysis. However, in Cytiva BioProcess R&D AB v. JSR Corp., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit” or “CAFC”) explained the flexibility in the use of lead compound analyses when determining patentability or validity of claimed chemical compounds under 35 U.S.C. § 103.

While commonly used, the lead compound analysis is not, as a strict rule, always required. Rather, because the Supreme Court emphasized flexibility over rigid and formalistic rules in considering obviousness in KSR, such flexibility should also be applied to obviousness assessment of new chemical compounds.

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Trademark Updates

Iraq TMO Adopts 11th Edition of the Nice International Classification

The Iraqi Trademark Office has announced that it will adopt the 11th Edition of the Nice International Classification, effective January 14, 2025. All new trademark applications will be subject to this classification.

Saudi Arabia Has Joined the Hague System for the International Registration of Industrial Designs

The Saudi Authority for Intellectual Property announced its accession to the Hague Convention for the International Registration of Industrial Designs. Saudi Arabia is the 99th country to join the Hague System.