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While most trademark practitioners are prepared to handle an initial refusal to register a mark from the U.S. Patent and Trademark Office ("PTO") based on likelihood of confusion or descriptiveness grounds, many are considerably less comfortable responding to refusals in which the PTO challenges whether a particular mark even qualifies for trademark status. Such refusals are often based on genericness, ornamentation, or functionality grounds. Strategies for overcoming such refusals are discussed in detail below.

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In a decision that is certain to impact both patent prosecution and patent litigation strategies, the U.S. Court of Appeals for the Federal Circuit recently ruled that the literal scope of claims reciting time-dependent claim terms is limited to the technologies existing at the time of the invention. <i>See PC Connector Solutions LLC v. Smartdisk Corp.</i>, 406 F.3d 1359 (Fed. Cir. 2005). Further, the court stated that such claims would not be infringed by later arising technology even under the doctrine of equivalents. This case, in combination with the Federal Circuit's earlier decision in <i>Kopykake Enterprises, Inc. v. The Lucks Company</i>, 264 F.3d 1377 (Fed. Cir. 2001), demonstrates that patent practitioners must be extremely careful when using words such as "conventional," "normal," "standard" or "traditional" in the claims or in specification definitions of claim terms. On the other hand, those accused of infringement should argue for the inclusion of such terms during claim construction, particularly when the accused device comprises technology developed after the invention date of the patent-in-suit.

Pharmaceutical companies have had some success extending the lives of their patent portfolios by obtaining patents that claim the combination of a known drug, a container for holding it, and a label providing instructions for a new use of the drug. These "drug labeling patents" have given such companies a leg up in their ongoing battle with generic drug manufacturers. However, a little-noticed judicial decision handed down by the Court of Appeals for the Federal Circuit ("Federal Circuit") has cast serious doubt over whether drug labeling claims constitute patentable subject matter.

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Highlights of the latest intellectual property news from around the country.

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The Internal Revenue Service has modified the rule prohibiting deferred compensation under a Section 125 cafeteria plan to allow a grace period of up to 2.5 months after the end of the plan year to use the benefits or contributions before those amounts are forfeited under the "use-it-or-lose-it" rule. Notice 2005-42, 2005-23 I.R.B. 1 (May 18, 2005) (the Notice) permits a 2.5- month grace period during which additional expenses can be incurred and which will be reimbursed from contributions made in the plan year preceding the grace period. An employer may adopt a grace period for the current cafeteria plan year by amending the plan before the end of the current plan year.

DLA Piper Rudnick Gray Cary has netted former House Minority Leader Richard Gephardt (D-MO), who retired from Congress in January.

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Tax Shelter Suit Against Sidley Austin, Deutsche Bank May Proceed <br>Brobeck Fight Turns to Venue Choice

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What Is the Uniformed Services Employment and Reemployment Rights Act of 1994? The Uniformed Services Employment and Reemployment Rights Act of 1994 (USERRA)…