IP Spotlight

On February 23, 2010, my partners Josh Slavitt and Susan Krembs will host a webinar that focuses on IP issues and opportunities facing companies that do business in both the U.S. and Canada.   The webinar will address similarities and differences between U.S. and Canadian patent laws.   In addition, the webinar will review some of the most significant recent U.S. court decisions on patent law, with a focus on how those cases present new risks and opportunities for Canadian and U.S. companies, including new areas of inquiry for conducting due diligence in acquisition and financing transactions.

More details about the webinar are available via this link. 

Click here to register for the webinar.

The U.S. Patent and Trademark Office (USPTO) has several “Patent Prosecution Highway” (PPH) programs with the patent offices of other countries.  In the PPH programs, the USPTO will expedite examination of an application containing claims that have been allowed by another PPH country. 

On January 29, the USPTO announced what may be the most significant PPH program yet:  the PCT-Patent Prosecution Highway Pilot (PCT-PPH).  Under the PCT-PPH, applicants who filed both a U.S. patent application and an international patent application under the Patent Cooperation Treaty (PCT) can petition the USPTO for expedited examination (more…)

Yesterday the USPTO published a guidance memo regarding patentability of computer-readable media (i.e., software patents).   The USPTO has rejected many claims directed to computer-readable media if the claim could be broadly interpreted to cover a transitory propagating signal, rather than only tangible media such as hard drives or computer-readable disks.  The USPTO’s rejections state that such claims cover non-statutory subject matter under 35 U.S.C. § 101. 

This week the USPTO issued a new guidance memo containing specific language that the USPTO considers sufficient to overcome subject matter eligibility rejections involving computer-readable media.  Specifically, the USPTO advises applicants who receive 101 rejections to amend the claims to state that the computer-readable medium is a “non-transitory” medium.

According to the guidance memo, the USPTO does not believe that this amendment will add new matter to a claim, even if the specification did not originally use those words, so long as the specification disclosed something other than a signal per se as the computer-readable medium.

(Thanks to my colleague Dan Scolnick for the heads up about this guidance memo.)

inovia llc, which offers the pctfiler product for PCT national stage patent filings and epvalidation for European patent validation, has launched a new blog dedicated to information about filing patents on a global basis.  According to inovia’s press release:

The foreign filing blog is dedicated to all issues of foreign patent filing, ranging from the PCT process and cost-savings measures, to country-specific issues related to national stage entry.

The term of a U.S. Patent is, with certain exceptions, 20 years from the filing or priority date of the patent application.  Section 154(b) of the Patent Act requires the USPTO to extend the term of a patent if the USPTO did not act promptly on the patent application while the application was pending.   For example, if the USPTO fails to take certain actions within required time periods (such as issue a patent within 4 months of the date of payment of an issue fee), then the patent must be extended to account for the delay.  (35 USC 154(b)(1)(A).)  In addition, if the USPTO’s delay causes a patent application to pend for more than 3 years, the USPTO must add one day to the term of the patent to account for each day of the delay.  (35 USC 154(b)(1)(B).)

In practice, if delays occurred under both the first clause (A) and the second clause (B) of Section 154(b)(1), the USPTO has reduced the period of patent term extension under clause B by the amount granted under clause A.   A  new Federal Circuit case says that this practice short-changed patent applicants.  In Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010), the Federal Circuit held that if an “A” delay and a “B” delay occur on different days, then there is no overlap, and the USPTO must extend the term of the patent to account for both periods of delay.

My colleagues Paul Legaard and Dan Scolnick have prepared a more detailed analysis of the Federal Circuit decision.  To read their article, click here.

When a company sells a product for which it also holds a patent, it is common practice for the company to mark the product with the patent number.  Patent marking serves to place the public on notice that the product is patented  — thus potentially deterring infringers.  More importantly, marking a product helps to maximize the damages available in an infringement action.  Section 287(a) of the Patent Act states that a patent owner who fails to mark its products can only collect damages for infringement if the infringer was notified of the infringement and continued to infringe anyway.

However, the decision to mark must be carefully made.  Falsely marking a product with a patent number also creates a risk for the seller of the product.   Section 292 of the Patent Act states that whoever marks a unpatented product as if it were patented may be subject to a fine.  Marking a product with an expired patent number or an incorrect patent number can also create liability under this section.

A recent Federal Circuit case has significantly raised the stakes associated with false patent marking.  (more…)