Supreme Court Litigant Speaks to Oregon Bar

Simon Tam, founding member of the All-Asian punk rock band, the Slants, gave a powerful speech about Trademarks and race at the Intellectual Property Year in Review CLE this past week in Oregon.* Simon intertwined the practical significance of Trademarks with how bureaucrats at the Trademark Office are making race-based decisions that disparately impact minority groups in the name of protecting those very minority groups from disparagement.

If you have never heard Simon speak, you should find a way to hear him. He is a powerful speaker. He speaks from the heart in an intelligent and logical way that makes every audience member an instant fan – not necessarily of his music, but of Simon Tam the person.

Simon’s trademark application for THE SLANTS has been in contention for approximately eight years.  He has battled through the USPTO, including the TTAB, then the Federal Circuit, then the Federal Circuit en banc, and finally now to the Supreme Court.  Oral arguments were recently held January 18, 2017.  The Supreme Court has not yet issued its decision as of the writing of this post.

In his talk, Simon gave great context as to why he was fighting. His personal story is impressive, and his sense of justice and equality drives has guided him through this journey.

What is hard to understand is why the Obama administration fought Simon so hard, and with so much gusto. At the very time they were filing briefs to block his registration, other parts of the administration were hiring Simon and his band for minority outreach programs. Simon talked about how he and his band even performed for NATO troops in Kosovo. Simon juxtaposed these issues in a way that crystalized the hypocrisy of the government’s position in way that gives much more context beyond what can be extracted from the court records. The case itself seems to have taken on a life of its own and what is lost is the real issue of how the USPTO effectively discriminates against minorities in a disparate way in granting federal registration rights. 

Simon had an interesting graph where he talked about how the more "Asian" his band was, the less likely the government would approve his application. 

Whatever you think of the legal issues, its hard not to feel a true sense of wrong in how he has been treated. We will see what the Supreme Court has to say on this issue soon.

*In the interest of full disclosure, I was on the planning committee that helped organize the CLE topics. 

Swearing Behind with A Draft Patent Application

While the recent changes to a first to file system have been applicable for several years, many pending applications still fall under pre-AIA rules where an inventor can swear behind a reference that would otherwise qualify as prior art.

Swearing behind a reference, such as via a Rule 131 affidavit, generally requires that one have some evidence of prior invention and diligence.  While an invention disclosure form or inventor notebook is a traditional type of evidence in this situation, there is another avenue that can be very helpful to an application. That alternative avenue relates to using drafts of a patent application as evidence of prior invention.

A draft patent application is often much more attractive for swearing behind a reference since it usually has language that matches pending claims, meaning that it is strong evidence of all of the claimed elements.  Whereas a notebook may have general concepts, a draft patent application usually has detailed language and sample claims that are hopefully close to the currently pending claims (which may have been amended to avoid other prior art applied by the USPTO). 

One example illustrating how to navigate through the issues in this situation is US SN 12/357,078. The Applicant in this application, WMS Gaming, used a draft application prepared by patent counsel to swear behind a prior art reference. The Examiner failed to accept the draft application and the Applicant appealed to the PTAB.  The PTAB confirmed that a draft patent application is perfectly acceptable for showing prior invention. The issue in this case was whether the draft application showed possession of the claimed invention.  The PTAB explained that the specification provided sufficient disclosure because it disclosed the claimed features as one possibly way of achieving the desired results, and it was not necessary that it disclose the claimed features verbatim. 

So, for cases falling under pre-AIA rules, if the cited reference can be antedated by a draft application that supports the claimed features, consider filing a Rule 131 declaration and supporting evidence of diligence to remove the reference.