Category Archives: Patents

What does the Federal Circuit’s recent decision in CLS Bank Int’l v. Alice Corporation Pty Ltd. mean for software patents? Is it the “death of hundreds of thousands of patents” as one judge stated, or just a bump in the road?

In a per curiam opinion published May 10, 2013, the Court ruled that the method and computer-readable medium claims of four patents were not directed to patent-eligible subject matter. The patents at issue were U.S. patents 5,970,479; 6,912,510; 7,149,720; and 7,725,375. In broad terms, the patents covered methods and systems for managing risk, such as the risk that may arise from one party failing to perform an obligation (such as pay a debt or honor a warranty) to another party.

The Court’s five-judge panel opinion determined that the claims merely covered an “abstract idea.”  In support of this determination, the panel’s opinion noted: Continue reading →

A new bill introduced in the Senate this week would expand the scope of patents whose validity may be challenged as a “Covered Business Method” patent under the America Invents Act (AIA).

Under the AIA, entities who have been charged with infringement of a covered business method (CBM) patent can challenge the patent’s validity in an additional proceeding after the 9-month post-grant review (PGR) period for other types of patents have has expired.  The AIA currently defines a CBM patent as one that claims “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service.”  Parties who are sued for infringement of a CBM patent may take advantage of PGR proceedings within one year after being named in a lawsuit or otherwise charged with infringement.

The very short bill, S. 866, introduced by Senator Chuck Schumer (D-NY) on May 6, 2013, would expand the AIA’s CBM program in two ways.  First, it would eliminate the program’s sunset provision, which states that the CBM program will end after 8 years.  Second, and more broadly, it would expand the CBM definition beyond those involving financial products or services to include any “enterprise, product, or service.”  Under this definition, any patent covering “operations used in the practice, administration, or other operations of an enterprise, product or service” would be subject to challenge as a CBM patent.

The rules implementing the CBM opposition program took effect in September 2012.  Since then,  over 20 CBM challenges have been filed, and the first hearing before USPTO’s Patent Trial and Appeal Board for a CBM review occurred on April 17, 2013.

This week will be an active one for changes to U.S. patent filing procedures.  In addition to the new first-to-file law taking effect on March 16, significant patent fee changes will take effect on March 19, 2013.  The changes include:

• utility patent application total filing, search and examination fees:  $1,600 (increase of $340)
• provisional application filing fee:  $260 (increase of $10)
• issue fee:  $960 (decrease of $780)
• request for continued examination:  $1,200 for the first one (increase of $270), and $1700 for the second one.
• maintenance fees:  increased by $450 at the first stage, $700 at the second stage, and $2,590 at the third stage.

Applicants who don’t mind delaying the examination process can defer some of the initial fees by filing a basic filing fee of $280, and deferring the search and examination fees to a later date.

The 7.5-year and 11.5-year maintenance fees may spur some patent holders to abandon non-business critical patents:  patent holders who wish to maintain a patent must pay $3,600 at the 7.5-year point, and $7,400 at the 11.5-year point.  The new maintenance fees total over $12,000 for the life of a patent.

Applicants who qualify as either a small entity or a micro-entity will be entitled to reductions in the standard fees listed above.

The new fees also establish hefty charges for the new post grant patent review proceedings that are available under the America Invents Act:

• Ex parte reexamination:  $12,000
• Inter partes review:  $23,000
• Post grant review:  $30,000

Some charges will go down for applicants who follow procedures that are more efficient for the USPTO.  For example, an applicant can avoid the $2,000 Appeal Brief fee if the applicant can settle the case with the Examiner before forwarding the Appeal Brief to the Patent Trial and Appeals Board for review.  In addition, recording assignments will now be free if filed electronically.

A summary of the fee increases is available at the USPTO website via this link.

[Photo credit:  401(k) 2013]

The USPTO has published its long-awaited first-to-file rules and examination guidelines, which will take effect March 16, 2013.   The new rules will convert U.S. patent law from a “first-to-invent” system to a “first-to-file” system.  In its simplest form, this means that if two people  separately invent the same invention, and if both file patent applications for the invention, the first person who filed his or her application will receive the patent.

However, as one might expect when the final rule requires 35 pages in the Federal Register and the examination guidelines require another 29 pages, the rule has more than a few caveats and nuances.  Highlights of the new rule include: Continue reading →

In today’s new media society, effective advertising often requires more than just generating innovative content. To reach potential customers, the method of delivery of an advertisement can be just as important as the message itself. Whether the advertisement involves an interactive website, a mobile phone app, a smart TV or another vehicle, in many cases today’s  advertisements don’t just use technology, they are technology.

In the field of intellectual property,  technology typically means patents.  More and more often, advertisers who successfully use new technologies to reach consumers are finding themselves faced with patent infringement claims.

I recently wrote an article describing what companies who use new media advertising activities can do to mitigate the risks of patent infringement claims.  The article appears in the latest issue of the Association for Corporate Counsel. Western Pennsylvania Chapter’s quarterly Focus publication, and is available at the Fox Rothschild website via this link.  It  describes precautions that smart advertisers should take, including:

• training corporate staff what to say (and not to say) when they receive a patent infringement claim;
• managing vendor and insurance agreements to help cover the costs of the claims; and
• understanding possible strategies to resolve the dispute.

For more details, the full article is available here.

U.S. patent law experienced a significant number of changes in 2012, as the America Invents Act, new regulations, USPTO actions and court decisions all left an impact that will affect patent filings for years to come.

In a previous post, we discussed changes that arose due to the America Invents Act, a landmark 2011 law that made sweeping changes to U.S. patent law.  This post, will address other significant changes spurred by the USPTO and the courts.

Increased Resources at USPTO

In 2012, the USPTO opened its first satellite office in Detroit, Michigan.  It also announced plans to open three additional satellite facilities in Dallas, Denver and Silicon Valley.  The three additional offices are expected to open in 2013, and the USPTO hired former Google Deputy General Counsel Michelle Lee to head the Silicon Valley Office.

The USPTO also increased the size of its examining corps by about 17%.  This increase in manpower helped the USPTO reduce the average wait time for a first office action from 28 months in 2011 to 21.9 months in 2012 — a 21% decrease.

Court Decisions

The Federal Circuit was active as usual.  Significant decisions include: Continue reading →

U.S. patent law experienced a significant number of changes in 2012, as the America Invents Act, new regulations, USPTO actions and court decisions all left an impact that will affect patent filings for years to come.

This post will discuss changes that arose due to the new laws, including the America Invents Act, a landmark 2011 law that made sweeping changes to U.S. patent law.   A second post will address other significant changes spurred by the USPTO and the courts.

America Invents Act Implementation

On September 16, 2012, the USPTO implemented a second round of significant actions under the America Invents Act (AIA).  As described in a previous IP Spotlight post, the AIA created several immediate changes when it took effect in September 2011, and the final round of changes will be implemented in March 2013.

2012′s new rules created several new options for challenging granted patents, as well as a new process for third-party participation in patent application examination.  The 2012 rules included:

Options for challenging patents and applications:

• Post Grant Review:  The USPTO implemented a post-grant review (PGR) process in which it will accept petitions to reconsider its decision to grant a patent.  A PGR petition must be filed within Continue reading →