2014 could be a landmark year for the important question of whether software can be patented, and if so in what situations. After the Federal Circuit issued a highly-fractured non-decision on software patent-eligibility in CLS Bank Int’l v. Alice Corporation Pty Ltd., the U.S. Supreme Court has agreed to hear an appeal of the case.
In the May 2013 decision that is the subject of the appeal, the Federal Circuit ruled that certain patent claims covering methods and systems for managing risk merely covered an “abstract idea” and were not patent-eligible. However, as discussed in a previous IP Spotlight post, the opinion gave no clear guidance as to why the claims were not patent-eligible, nor did it explain what types of software claims would be patent-eligible. Although a majority of the judges agreed with the result, no majority agreed upon any particular reasoning. The published decision included seven different opinions. Half of the judges specifically found the system claims to be patent-eligible, and three of the judges asserted that all of the claims were patent-eligible.
In its Petition for Writ of Certiorari in the case, Alice Corporation argued: Continue reading
This week Wall Street Journal columnist Dennis Berman posed an interesting question: ”Is Peanut Butter Pop-Tart an ‘Innovation’?” In the article, Berman described the skyrocketing use – and likely overuse — of the word “innovation” by many American companies and asks: is this really innovation? When a food company introduces a new product, or a restaurant offers a new burger, is it innovation? Or are these simply the actions that a company needs to do on a day-to-day basis to stay competitive?
The article prompted me to think about how the word “innovation” can sometimes be confused with “invention.” Roget’s Thesaurus lists the two terms as synonyms of each other, and many dictionaries give the words nearly-identical definitions. However, there are subtle differences between the two terms. Continue reading
When licensing a patent, software or other intellectual property, it’s critical for the licensee to ensure that the license covers all entities who will use the IP. This may include the licensee’s parent company, subsidiaries, other affiliates, customers or other entities.
The license grant clause, along with the definitions of “licensee” and (if included in the license) “affiliate” will typically govern the entities who may take advantage of a license. Unless the agreement specifically calls out an entity, that entity may not be able to take advantage of the license, whether as a licensee or (depending on the nature of IP involved) as a sublicensee.
A recent court decision from the Central District of California illustrates how the definitions will typically control the scope of a license. In the case, nQueue Inc. v. Control Systems (USA) Inc., nQueue filed a patent infringement suit against Control Systems. In defense, Control Systems argued that it was covered by a license that nQueue granted to Control Systems’ ultimate parent company, Equitrac Corporation. Continue reading
The USPTO plans to hire at least 60 patent examiners and 20 Patent Trial and Appeals Board (PTAB) judges in 2014 at a new location in San Jose, California. Since 2013, the USPTO has operated a temporary satellite office in Menlo Park, California. This week the USPTO announced plans to make the location permanent in a move to the the San Jose City Hall Building.
According to USPTO Deputy Director Teresa Stanek Rea: “A permanent office will allow us to attract additional intellectual property professionals who will work closely with regional entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process—creating good jobs and promoting American innovation.”
The USPTO originally planned to open a Silicon Valley office in 2013, but delayed the opening due to budget cuts and sequestration. The USPTO already operates a satellite office in Detroit, and it also plans to open a satellite office in Denver in 2014.
Recently-announced changes to U.S. patent regulations will relax certain standards for acquiring and maintaining patents. The rule changes are designed to make U.S. patent procedures more consistent with the procedures of other patent offices worldwide.
The revisions include:
Changes to the requirements for revival of abandoned patent applications, and patents that lapsed for failure to pay maintenance fees:
Currently, abandoned patent applications and lapsed patents may be revived for a period of two years after the abandonment if the abandonment was unintentional. After the two-year period, patents and applications may only be revived if the applicant can show that the abandonment was “unavoidable,” which is a much more difficult standard to meet.
The new rules do away with the “unavoidable” standard and simply permit revival if the abandonment was unintentional.
Changes to the content requirement for utility patent applications:
Under the existing rules, U.S. utility patent applications must include at least one claim, a specification and drawings.
The new rules will allow applications to be filed without any claims. Instead, claims may be added after the filing date. However, this does not change the requirement that all material in the claims be supported by the specification. The new rules also allow an application to incorporate a previously-filed application by reference, instead of requiring a full specification. This option may be useful in continuation and divisional applications. This applicant will then have a limited period of time to file the complete specification and claims.
The new rule changes are scheduled to take effect December 18, 2013.
Provisional patent applications are a useful tool for patent applicants to preserve patent rights for a 12-month window before filing a formal patent application. However, they can create a false sense of security for applicants who don’t take the time to prepare a proper provisional filing.
In years past, a provisional patent application often consisted of a research paper, a marketing brochure or a very short description of an idea that the inventors planned to develop. Unfortunately, many patent applicants still consider a “quick and dirty” provisional application to be sufficient to preserve patent rights. Recent changes to U.S. patent law, along with recent court decisions, make it clear that a provisional patent application must fully describe and enable the invention.
Before filing a provisional patent application, be aware of the following important points:
A research proposal is typically not sufficient for a provisional patent application. In academic settings, inventors often want to file a Continue reading
A new California state law is prompting businesses around the country to update their website privacy policies to more fully describe how the business handles certain customer data.
My partner Mark McCreary prepared a detailed summary of the CalOPPA amendment and its additional disclosure requirements. Mark’s summary is available via this link.