IP Spotlight

Today the U.S. Court of Appeals for the Federal Circuit re-ignited the long-running saga regarding the legality of the USPTO’s proposed limits on claims and continuations in U.S. patent applications. 

The USPTO originally proposed the rules in 2007, and a summary of the proposal is available in a previous post on this site.   In a 2008 opinion, the Eastern District of Virginia enjoined the rules on the basis that they were substantive, and not merely procedural, because they altered rights given to applicants under the Patent Act.  In March 2009, the Federal Circuit overturned the District Court’s decision and upheld many portions of the USPTO’s proposed rules (see Tafas v. Doll).

Today, July 6, 2009, the Federal Circuit agreed to rehear the case en banc.  Thus, the Court vacated its March 2009 decision and re-opened the appeal in Tafas v. Doll.   The parties’ first round of briefing the revived appeal will begin August 6, 2009.

Last week a committee assembled by Chief Judge Paul Michel of the U.S. Court of Appeals for the Federal Circuit released a set of model jury instructions for patent infringement cases.  The instructions have not yet been officially endorsed by the Federal Circuit or any other court, but instead “are intended to provide a simple and easy-to-understand set of model jury instructions that will be helpful to judges and lawyers across the country.”

The model instructions address many items that are unique to patent cases, such as:

•  What is a patent and how is one obtained?
• A glossary of patent terms
• Various instructions relating to types of infringement (direct, indirect, inducement, contributory infringement, means-plus function claims, and more)
• Various instructions relating to invalidity (including best mode, enablement, anticipation and obviousness)
• Various instructions relating to damages (including lost profits, and a definition of “reasonable royalty”)

The complete model instructions are available at www.nationaljuryinstructions.org

The National Patent Jury Instructions Project included members of both the bench and bar:  Kenneth C. Bass III, Donald R. Dunner, Pamela Banner Krupka, Judge Roderick R. McKelvie, Teresa Stanek Rea, Edward R. Reines, Judge Patti B. Saris, Judge John T. Ward, and Judge Ronald M. Whyte.

Special thanks to my partner Josh Slavitt for the information for this post.

I recently had the opportunity to read Robert Plotkin’s new book, Genie in the Machine.  Patent attorneys, inventors and current patent laws have long considered “invention” to be an activity that is performed by humans.  For example, Section 101 of the U.S. Patent Act states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.

Section 115 of the Patent Act states:

The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent.

In The Genie in the Machine, Plotkin asks how patent laws may treat an invention that is conceived by a computer, if the human operator merely presents the computer with a problem to be solved.  In other words, who is the inventor –  and should we award a patent to the invention  — if the human merely presents a “wish”, and the computer generates the invention based on that wish? 

The new book explores developing technologies — such as Stephen Thaler’s “Creativity Machine” — that automate many of the activities that are normally associated with invention.  It raises interesting questions about our concept of invention, and how that concept may change in the future.

Today the U.S. Supreme Court granted a petition for certiorari in the appeal of In re Bilski, the 2008 Federal Circuit opinion which altered the standard for patentability of processes under U.S. patent law. 

In Bilski, the Federal Circuit rejected previous caselaw stating that a process could be patented merely because it produced a “useful, tangible and concrete result.”  Instead, the Court held that a patent-eligible process must satisfy the “machine or transformation” test, meaning that the process must be either (i) tied to a particular machine, or (ii) transform a particular article into a different state or thing.  Additional detail about the Federal Circuit’s Bilski opinion is available here.

In their petition, co-appellants Bernard Bilski and Rand Warsaw asked the Supreme Court to determine whether the Federal Circuit erred in holding that a process must be tied to a particular machine or apparatus, or else transform a particular article into a different state or thing, in order to be eligible for patenting.

Gene Quinn of IP Watchdog has compiled a list of 50 top blogs that discuss patent issues.  He is hosting a quick two-question survey that allows readers to vote for their favorites.

To take the survey and vote for your favorite patent blogs, click here.

To read Gene’s insightful IP Watchdog blog, click here.