Category Archives: Patents

In a brief, one paragraph order issued on May 21, 2012, the U.S. Supreme Court hinted that a recent decision covering patent-eligibility for medical testing methods is also relevant to Internet-based methods.

To provide some  background:  in 2008, Ultramercial LLC received U.S. patent 7,346,545 covering media distribution methods that allow users to view copyrighted material over the Internet free of charge in exchange for watching advertisements.  Ultramercial sued Hulu LLC and WildTangent, Inc.  for patent infringement.  However, in August 2011, the U.S. District Court for the Central District of California struck down the patent, finding that its claims covered an abstract idea and thus  were not eligible for patent protection.

Ultramercial appealed, and in September 2011 the U.S. Court of Appeals for the Federal Circuit reversed the decision.  The Federal Circuit explained that “[a]lthough abstract principles are not eligible for patent protection, an application of an abstract idea may well be deserving of patent protection” (emphasis added).  The Federal Circuit also found that the claimed processes  could not be performed by a human but rather “require, among other things, controlled interaction with a consumer via an Internet website, something far removed from purely mental steps.”   Noting that the patent covered the application of certain steps to “monetizing and distributing copyrighted products over the Internet,”  the Federal Circuit found the claims to be patent-eligible.

In the latest development, the Supreme Court may have swung the patent-eligibility pendulum back toward the district court’s conclusion.   Continue reading →

On May 14, 2012, the U.S. Patent and Trademark Office proposed an increase in its patent fees for Fiscal Year 2013.  As in most years, the fee increase is based on fluctuations in the consumer price index (approximately 2.9% this year).  This means that the USPTO proposes to increase many of its basic fees effective October 1, 2012, including:

• utility patent application basic filing fee:  $390 (increase of $10)
• utility patent examination fee:  $260 (increase of $10)
• provisional application filing fee:  $260 (increase of $10)
• extension of time fees:  increased $20 after two months, $40 after three months, $60 after four months, and $80 after five months:
• maintenance fees:  increased $30 at the first stage, $80 at the second stage, and $140 at the third stage.

Although the proposed increases reflect what the USPTO typically implements each year, this may be end up being atypical.  First, the current fees already reflect a 15% increase that occurred in September 2011 in response to requirements of the America Invents Act.  Second, the America Invents Act also gave the USPTO increased fee-setting authority, and the USPTO’s May 14 notice hints of future use of that authority by stating that “[AIA] Section 10 fee-setting will be addressed in a future proposal.”

The USPTO will accept public comments on the fee increases through June 13, 2012.

When filing a patent application, all inventors and others involved with the application are required to inform the U.S. Patent and Trademark Office (USPTO) if they are aware of any prior art that may be material to patentability.  This obligation continues so long as the patent application is pending — even if the patent application is allowed and the applicant has paid the issue fee.

Sometimes, during prosecution, applicants become aware of additional prior art.  For example, if the application is pending in multiple countries, a foreign patent office may cite a patent or other document that the applicant hasn’t seen before.  If so, the applicant must file an Information Disclosure Statement with the USPTO to ensure that the USPTO is informed of that document.  However, if the issue fee has already been paid, previously applicants needed to file a request for continued examination (and a substantial fee) to ensure that the USPTO considered the newly-discovered document.

The USPTO recently announced a four-month pilot program that will obviate the need for a request for continued examination in most such cases.  Under the new “Quick Path Information Disclosure Statement (QPIDS)” pilot.  Under the pilot, a request for examination (but no fee) must be included with the IDS.  However, the USPTO will only require the fee and act on the request for continued examination if the USPTO determines that the new information warrants reopening prosecution.

The QPIDS pilot program will run through September 30, 2012.

In January 2012, the USPTO proposed new rules for a supplemental examination proceedings, as mandated by the America Invents Act.  A supplemental examination proceeding will permit a patent owner to request supplemental examination of a patent by asking the USPTO to consider, reconsider, or correct information that may be relevant to the patent.  The information that can be submitted includes prior art publications or patents, as well as other information that may be relevant to patentability such as video recordings or evidence of enablement.

The new program is intended to help patent owners avoid costly challenges that could be raised against a patent during litigation.  The program is also intended to help patent owners avoid charges of inequitable conduct based on an allegation that the patent holder withheld material information from the USPTO.  However, information pled against a patent holder during litigation is not eligible, so the program’s practical effect may be limited to pre-litigation correction of a patent before a lawsuit is filed.

In addition, because patent holders who are considering litigation will likely be hesitant to highlight potential weaknesses in the patents, and because the supplemental examination rules require patent holders to explain why the submission raises a substantial new question of patentability, patent holders may be hesitant to file for supplemental examination in most situations.

Under the proposed rules, within three months of filing the USPTO will consider the patent owner’s request and either (a) issue a certificate confirming patentability or (b) initiate an ex parte reexamination to review the patent.

The proposed fee for requesting supplemental examination is $5,180.  If the USPTO orders an ex parte reexamination, an additional fee of $16,120 will be required.  In a related action, the USPTO proposed to raise the fees for filing a request for ex parte reexamination from $2,520 to $17,750.

A recent decision from the U.S. District Court for the Northern District of California considered whether a magazine article about an upcoming product could trigger the “on-sale” bar to patentability.  In Speedtrack, Inc. v. Wal-Mart.com USA, LLC (No. 4-06-cv-07336, Feb. 22, 2012), the court considered a magazine article that discussed the patented software.  The article was published more than one year before the filing date of the patent, but the article did not discuss details of the product or indicate that the product was available for sale.  On this basis, the court held that the magazine article did not trigger the Patent Act’s “on-sale” bar, stating:  ”Reasonably construed, this fails to satisfy the ‘clear and convincing’ evidence that defendants would need in order to demonstrate a ‘definite offer to sell the product,’ as such an offer would be understood in contractual terms.”

One of the more significant developments in patent law over the past two months was the USPTO’s proposal of new rules for post-grant opposition proceedings under the America Invents Act.  The rules, proposed on February 9 and 10, 2012 in a series of Federal Register notices, will establish the following new proceedings for challenging patents and patent applications:

• inter partes review (IPR), which may be used to challenge the validity of an issued patent on the basis of prior art patents or published applications;
• post grant review (PGR), used may be used challenge the validity of an issued patent on any basis within 9 months of its grant;
• a transitional program for covered business method patents (CBM), a variant of PGR that may be used by an entity who has been sued or charged with infringement of a patent covering data processing operations used in the management of a financial transaction or service;
• derivation proceedings, which may be used by an inventor who claims that the invention covered by a co-pending application was derived from the inventor.

In each program listed above, any person may request a proceeding by filing Continue reading →