IP Spotlight

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 →

This week the United States Supreme Court issued a key decision in which it struck down a patent covering a medical testing method, holding that the subject matter is ineligible for patenting under Section 101 of the Patent Act.  In Mayo v, Prometheus (No. 10-1150, March 20, 2012), the Court held that U.S. Patents 6,355,623 and 6,680,302 covered mere “laws of nature” that are not patent eligible under Section 101 of the U.S. Patent Act.

What does the ruling mean for life science businesses?   Continue reading →