Can I patent my recipe?

The New Food Economy answers that question (and hints:  “no one likes the answer”) in a new article published this week, linked here.  While the answer isn’t always “no,” in most cases it’s either difficult or too late.

How about recipes and other areas of intellectual property law (specifically, copyright)?  I answer that question in a post linked here.

New Copyright Office rule permits modification of vehicle software for diagnosis and repair, other exemptions to DMCA anti-circumvention rules

The Digital Millennium Copyright Act (“DMCA”) prohibits circumvention of technical measures that control access to copyrighted works. The DMCA’s anti-circumvention requirement permits copyright holders to control how users can access digital works, and also prohibit modification of those works without permission.

In the years since the DMCA was enacted, the Copyright Office has issued several exemptions to the DMCA’s anti-circumvention requirement. In October 2015, the Copyright Office published a new rule adding several new exemptions, including: Continue reading

USPTO announces plans to include claim constructions in the patent examination process

The USPTO recently announced three new Enhanced Patent Quality Initiative programs that are designed to (i) add more detail and clarity to the public record of each U.S. patent application, and (ii) improve consistency in how USPTO examiners’ work product is reviewed.

Of the new proposals, the Clarity of the Record Pilot could have the most significant effect on patent prosecution, as well as on litigation of the resulting patents. According to a blog post from USPTO Director Michelle Lee, the Clarity of the Record Pilot will require examiners to “include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims.”

The Clarity of the Record Pilot has been under development for several months, after USPTO leaders sought public input at various open forums.  Full details of the program are not yet released. However, the USPTO’s plans to have Examiners place claim constructions and definitions on the record raise an intriguing question as to how much deference the courts will give to the Examiner’s claim constructions when the resulting patents are litigated. If an Examiner places a claim construction on the record in a Notice of Allowability, the applicant should carefully review it to consider whether that is the construction that it would want to advance in litigation.

When announcing the new Clarity of the Record Pilot, Director Lee also stated:

Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights.

In addition to the results described above, these new prosecution procedures could significantly reduce the time devoted to claim construction disputes during litigation.

License On Transfer Network adds three new members

Lotnet LogoIn 2014, a group of America’s top technology companies created a unique way to combat the problem of patent assertion entities:  the License On Transfer (LOT) Network. Founding members of the LOT Network included Canon, Dropbox, Google, SAP and Ford Motor Company. In September 2015, Enplug Inc., Inductive Automation LLC, and SilverEdge Inc. joined the network.

Members of the LOT Network must sign an agreement to grant the other members a perpetual, royalty-free license to the member’s patents upon the occurrence of a “Triggering Event.” Triggering Events include a transfer of a patent (other than a defined “Non-Assertion Transfer”), or a change of control in which the surviving entity is a non-assertion entity.

As of the time of this post (September 2015), the LOT Network included over 50,000 granted patents and nearly 300,000 patent assets (including patents and pending applications). It serves as a unique, market-based solution that allows members to put their patents on the line when facing the challenge of patent assertion entities.


USPTO Introduces Expedited Patent Appeal Pilot for Small Entities

After a summer hiatus, IP Spotlight is back.  This week we will review some of the more significant business-related developments in intellectual property law over the last few months.

First up:  On September 15, 2015, the USPTO introduced a Streamlined, Expedited Appeal Pilot for Small Entities, a procedure by which small entities (and micro entities) can speed up the process of appealing a final rejection of their patent application. Unlike traditional appeals, which often sit for 2-3 years waiting for a Patent Trial and Appeal Board decision, the USPTO’s goal for the streamlined appeal pilot is to act on a petition to enter the streamlined appeal pilot within two months, and to render a final decision within four months after acting on the petition.

The pilot is only available to small entities and micro entities who have no more than one appeal pending before the Board. In addition, appeals that involve a rejection on the basis of lack of written description, enablement, indefiniteness or best mode are not eligible for the pilot. No fee is required to file a petition for expedited appeal under the new pilot. The pilot is open to the first 2,000 petitioners.

Although an expedited appeal can save patent applicants both time and money, applicants should consider the potential drawbacks before entering the pilot program. Specifically:

  • The applicant must agree that, for each ground of rejection, the Board may select a single claim and decide all claims that are subject to that ground in the same way that it decides the selected claim. This could be risky for applicants who are challenging a patent-eligibility rejection, since it allows the Board to uphold a rejection of all claims without assessing the potentially significant details of any dependent claims.
  • The applicant must agree to waive an oral hearing.

Because of this, the streamlined process may be valuable where the only issue is a rejection on the basis of novelty or obviousness and the applicant’s argument is strong for the broadest claim. In other situations, patent applicants should think carefully before submitting their applications to the new pilot program.

Full details about the USPTO’s Streamlined, Expedited Appeal Pilot for Small Entities are available here:

Supreme Court retains ban on post-expiration patent royalties

ExpiredIn a much-anticipated decision, the U.S. Supreme Court has retained the long-standing rule that patent holders cannot charge royalties for use of a patent after its term has expired.

In Kimble v. Marvel Enterprises, Inc., the Court considered an appeal of a case in which the inventors of a toy with Spider-Man-like web-shooting capabilities sold a patent covering the toy to Marvel Enterprises. The agreement imposed a 3% royalty and had no expiration date. After the patent expired , the inventors filed suit for breach of contract. Marvel argued that it was not obligated to pay royalties for sales made after the patent’s expiration. Both the district court and the U.S. Court of Appeals for the Ninth Circuit agreed with Marvel, but the inventors appealed to the Supreme Court.

In the appeal, the inventors argued that the the 50-year-old rule of Brulotte v. Thys Co., which states the “a royalty agreement that projects beyond the expiration date of the patent is unlawful per se,” was “[a] product of a bygone era” and should be overruled.

The Court disagreed. While acknowledging that “[t]he Brulotte rule … prevents some parties from entering into deals they desire,” the Court favored retaining the status quo since overturning the prior decision would “upset expectations” and there was no “superspecial justification” warranting reversal.

In addition, the Court noted that there are many ways for parties to structure deals that provide longer royalty periods without violating Brulotte, including:

  • payments for use of an invention during the patent’s term can be deferred into a post-expiration period;
  • post-expiration royalties can be tied to a non-patent right (such as a license of trade secrets); and
  • other business arrangements (such as joint ventures) can confer benefits long after a patent term has expired.

Patent licensors who want a longer royalty term should carefully draft license agreements to ensure that the royalties fall under these exceptions to the Brulotte rule and are not considered to be merely post-expiration patent royalties.

After a period in which the Court has seemed eager to change a number of fundamental principles of U.S. patent law, the Court’s citation of stare decisis in Kimble v. Marvel Enterprises, Inc. may strike some as surprising. At a minimum, it suggests that the Court isn’t ready to completely abandon predictability in U.S. patent law.

Western District of PA court proposes changes to local patent rules

WDPAThe United States District Court for the Western District of Pennsylvania has proposed a set of changes to its local rules governing patent infringement cases. The proposal would change and clarify several procedures, including:

  • the Initial Scheduling Conference will be replaced with a Planning Meeting and Report that will address more than just scheduling, such as whether a special master may be helpful, early motions, the format of the claim construction hearing, and whether a tutorial will be used;
  • the plaintiff’s Initial Disclosures must include all documents evidencing ownership of the patent;
  • the defendant’s Initial Disclosures must include summary sales or use information about the accused product process;
  • the plaintiff must provide a good faith damages estimate within 14 days of the defendant’s disclosure of summary sales information;
  • additional model language for a Protective Order is provided;
  • more precise pleading requirements for infringement will apply, including additional detail about the specific statutory section(s) asserted, direct infringement, and the doctrine of equivalents;
  • new requirements on amendments of contentions, advice of counsel defense, and a prehearing statement.

The changes adapt various requirements that some other courts are already using, along with recent changes to the Federal Rules of Civil Procedure.  The court will accept comments on the proposed changes through July 6, 2015. Additional details are available here.