New Federal Circuit decision finds packet monitoring patent claims eligible under Section 101

For the first time since 2020, the Federal Circuit issued an opinion finding claims of a computer-related invention to be eligible. Although designated as non-precedential, the case may signal a key claim feature that the court will look for in future Section 101 cases involving computer-related inventions.

In Mentone Solutions LLC v. Digi International Inc. (Nov. 15, 2021), the court reversed the District Court of Delaware’s finding that the claims of U.S. Patent 6,952,413 are invalid. The court focused on claim 5 of the patent, which is directed to a “multiple access communication method in a mobile station”.  The claim requires the steps of:

  • monitoring an assigned PDCH [(packet data channel)] to detect a USF [(uplink status flag)], and
  • (i) if shifted USF operation is not used then a first assigned PDCH is monitored to detect a USF corresponding to the first assigned PDCH and (ii) if the shifted USF operation is used then a second assigned PDCH is monitored to detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH.

The district court noted that claim 5 does not recite “when, how, or why one would . . . shift the USF or how a shifted USF would specifically improve the functioning of a prior art system.” On this basis, the district court found the claim to be ineligible.

On appeal, the Federal Circuit reversed, finding that “claim 5 is directed to a patent-eligible improvement to computer functionality, namely permitting additional multislot configurations for certain classes of mobile stations using extended bandwidth allocation.”

Notably, quoting its April 2020 Uniloc USA Inc. v. LG Electronics USA, Inc. decision, the Federal Circuit stated: “To the extent either the Appellees or the district court believe claim 5 must expressly mention the additional timeslots available or enabled by this achievement, they are mistaken. ‘Claims need not articulate the advantages of the claimed combinations to be eligible.’”

The Federal Circuit also contrasted the claims of this patent with those that it held ineligible in a previous case (Two-Way Media Ltd. v. Comcast Cable Communications), noting that in the past case “[w]e held the claims ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,”  “monitoring,” and “accumulating records”) using ‘result-based functional language’ without the means for achieving any purported technological improvement. … Here, there is no functional claiming, nor are there abstract steps.’”

The court’s quote from its Uniloc decision may signal that that in future cases, the court (or at least the judges on this panel) will more closely assess whether claims merely cite a result or a technical means of achieving the result, and the Uniloc decision (which is precedential) may become prominent in future cases.

H1-B cap registration opens March 9

Tech companies and other employers note: H1-B cap registration opens March 9, 2021.

Full details are available at this blog post by my partner Catherine Wadhwani, published on Fox Rothschild’s Immigration View .

How long does a U.S. patent or trademark application take to grant? (2020 edition)

The USPTO recently released its FY2020 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question:

Patents: In 2020 the USPTO’s eight-year trend of reducing patent application pendency continued to trend downward. The average time from filing to first action was 14.7 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 23.3 months. Both of these numbers were slightly below last year’s averages. The numbers also exceeded the USPTO’s goals.

The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 13.3 months to first action, and an average total pendency of 22.6 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 16.8 months to first action, and an average total pendency of 26.9 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) had an average wait time of 16.0 months to first action, and an average total pendency of 26.5 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 12.9 months to first action, and have an average total pendency of 23.1 months;
  • communications technologies (USPTO Technology Center 2600) had the shortest average wait times — 11.4 months to first action, and an average total pendency of 29.2 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 13.1 months to first action, and an average total pendency of 21.1 months;
  • transportation, construction, agriculture and e-commerce technologies (USPTO Technology Center 3600) had an average wait time of 16.7 months to first action, and an average total pendency of 26.4 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) had an average wait time of 17.7 months to first action, and an average total pendency of 28.0 months.

The total number of nonprovisional patent applications filed dropped by about 2%, to 653,311 in 2020. However, the number of provisional patent applications increased by about 3% to an all-time high of 174,464.

399,055 patents issued in FY 2020, also an all-time high of 665,231.  The allowance rate increased to 61.7%.

Trademarks: In FY 2020 the average time from filing to first Office Action in a trademark application was 3 months. Average total pendency was 9.5 months for applications that were not opposed or suspended during prosecution.

Notably, despite the year’s pandemic, during which many brand holders consolidated or dropped brands, the total number of trademark applications filed increased by nearly 10% to 738,112.  The number of active certificates of trademark registration increased by 5.7% to over 2.6 million.

Cyber Security in a Post-Corona World: Startup Opportunities and Challenges

On Nov 5, 2020 at 9 am EST / 3 pm CEST / 4 pm IDT, global innovation platform Axis Innovation will host a webinar titled Cyber Security in a Post-Corona World: Startup Opportunities & Challenges. This webinar will share actionable insights for companies (especially early stage companies) who seek to address global cybersecurity needs.

The speakers and topics include:
Developing Effective Cybertech Patent Strategies – with me, Jim Singer, Intellectual Property Department Chair of Fox Rothschild.
Cyber During Covid-19 – Going global by cooperating with leading international cyber leader Kaspersky – Vitaly Mzokov, Head of Kaspersky iHub.
Effective Fund Raising for your startup – with leading UK Venture Capitalist, Endre Sagi of Skylake Capital.

The webinar is free of charge, with more information and registration details available here.

Update: a recording of the event is available at this link.

Large entity, small entity or micro-entity: which type of patent applicant are you?

When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 50%. Applicants who are micro entities can reduce certain fees by 75%. An applicant who is neither a small entity nor a micro-entity is considered to be a large entity and must pay standard fees.

The savings resulting from small entity or micro entity status can be substantial.  As of June 1, 2020 the standard combined application, search and examination fee for a new utility patent application was $1,720. However, a small entity only pays $860, and the equivalent micro entity fee is $430. Also, in order to maintain a patent in effect, the owner must pay maintenance fees at the 3.5, 7.5, and 11.5-year anniversaries of the patent’s issuance. These costs can become significant over time. Small entity or micro entity status can help reduce those costs.

Small and micro entities also can take advantage of certain fee waivers and deadline extensions that are currently available to patent applicants who are adversely affected by the COVID-19 crisis. More details about those programs are available in this IP Spotlight post and in the Intellectual Property section of the Fox Rothschild Coronavirus Resource Center.

However, the consequences of mis-declaring entity status can be severe. In cases where courts have found applicants paid the small entity fee without a good faith basis for considering themselves to be small entities, the courts have Continue reading

IP and the Open Covid Pledge

Are you developing new technologies, treatments or other inventions that are useful to combat the COVID-19 epidemic? If so, my colleagues Gunjan Agarwal and Chipo Jolibois recently wrote a useful article discussing the Open COVID Pledge and how it can be used when patenting COVID-19-related inventions.

For the full article on Law360, click here.

Use caution before taking advantage of extended IP filing deadlines under CARES Act

(Note: This post was updated June 30, 2020 to reflect the new extension dates that the USPTO published on that date.)

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

Patent and trademark filing extensions

Extensions available through June 30, 2020

On March 31, 2020, and updated on April 28, 2020, the USPTO issued notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicated that certain deadlines that arise between March 27, 2020 and June 1, 2020 were extended to June 1, 2020 if the applicant or patent/trademark registrant could certify that the delay in filing was because the applicant, inventor, patent or trademark registrant, petitioner, or attorney or agent was “personally affected” by the COVID-19 outbreak.  The USPTO subsequently revised this extension period for patents to June 30, 2020 for small and micro entities only.

The patent-related deadlines that were permitted to be extended include due dates for Office Action responses, maintenance fee payments, issue fees, appeal filings, and certain Patent Trial and Appeals Board filings. The trademark-related deadlines that may be extended include deadlines for Office Action responses, statements of use and affidavits of use, renewal applications, and notices of opposition.

Patent filing extensions available through July 31, 2020

On June 12, the USPTO published an additional notice indicating that it will extend the time for claiming priority to a provisional patent application in certain situations. The typical rules are that an applicant who files a utility patent application has 12 months to claim priority to a provisional patent application, and that the applicant can petition for a two-month grace period if the applicant unintentionally missed the 12-month deadline. The new notice states that if an applicant missed a 12-month deadline that ended between March 27, 2020 and July 30, 2020 and the reason for the delay was that the applicant was “personally affected” by the COVID-19 outbreak, the USPTO will extend the two month period until July 31, 2020 or the end of the two-month period, whichever is later. The USPTO also provides some relief for missed international filing deadlines, but that relief is limited to a waiver of the petition fee. (The two-month grace period is not extended for international applications.)

Ongoing flexibility for trademarks

Although the official extension period for trademark filings expired on May 31, 2020, the USPTO stated that “[i]the interest of maintaining flexibility and options for our stakeholders, the USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that became abandoned or expired/cancelled as a result of the COVID-19 outbreak, with a statement that the delay in filing or payment was due to the COVID-19 outbreak.”

Patent Fee Extensions

Finally, on June 29, 2020, the USPTO further extended fee payment deadlines for small and micro entities only. Specifically, small and micro entities who can make the required certification can defer until September 30, 2020 payment of filing fees, issue fees, maintenance fees and certain other fees due after March 27, 2020.

The USPTO has created a form that applicants should use when requesting any extension of time due to the COVID-19 outbreak. The form is available at this link.

Copyright extensions

The U.S. Copyright Office has extended certain registration timing requirements that typically must be followed in order to seek statutory damages in an infringement claim. In general, a copyright owner is eligible for statutory damages in an infringement action only if the work is registered prior to the infringement or within three months of the work’s first publication. The Copyright Office is extending the three-month window for certain works having a window close date that is between March 13, 2020 and the date that the Acting Register of Copyrights announces an end of the disruption period. However, this extension is only available if the applicant submits evidence that the applicant was “unable to submit a physical deposit of the work and would have done so but for the national emergency.” The extension is not available for works that can be submitted entirely in electronic form.

The Copyright Office also expanded the types of documents that it will accept electronically to include notices of termination for recordation, requests for reconsideration of refusals to register, and requests for removal of personally identifiable information from the public record. For applications filed after April 2, 2020 that require physical deposit material, the Copyright Office is also accepting electronic copies so long as the applicant also mails a physical copy later.

Cautions before taking advantage of extended deadlines

Patent and trademark applicants and registrants should exercise caution before relying on the USPTO’s extended deadlines under the CARES Act. First and foremost, patent application filing deadlines are not changed. The extended deadlines for patents only apply to granted patents and already-filed applications.

Also, certain of the patent deadline extensions are only available to small entities and micro entities. Notably, only small entities and micro entities may extend maintenance fee payments.

Also, to qualify for any of the USPTO’s extended deadlines the late filing must be accompanied by a statement that the applicant, patent or trademark owner, inventor, attorney or agent, or petitioner was “personally affected” by the COVID-19 outbreak. This means that “the outbreak materially interfered with timely filing or payment.” Patent and trademark applicants, owners and their representatives who contracted COVID-19, or applicants (such as healthcare providers) whose businesses are focused on COVID-19 response can likely state that the outbreak materially interfered with the filing. Patent and trademark applicants, owners and representatives with an affected family member likely also can make the statement. It’s likely that applicants, owners, and representatives who are subject to “stay at home” government mandates and who are caring for family members and/or home-schooling young children could also do so. Further, applicants that are businesses with cash flow concerns due to business distruption should be able to make this statement, especially if the deadline involves payment of a fee.

However, someone who simply chooses to delay may not be able to truthfully say that the outbreak “materially interfered” with timely filing or payment. Thus, patent and trademark applicants, owners, and their representatives should carefully consider whether they qualify for the extended deadlines before relying on them.

Copyright applicants should consider whether they can provide evidence that they were “unable” to file the application within the normal three-month window. If the work is of a type that can be electronically deposited, the applicant must do so within the unextended time period unless the applicant provides evidence that it could not do so, for example by certifying that the applicant had no access to a computer and/or the Internet. If the work is of a type that cannot be electronically deposted, the applicant must certify that it was subject to a government stay-at-home order, or that it was unable to access physical materials due to business closure.

Special thanks to my Fox Rothschild colleagues Flynn Barrison, Dianna El Hioum, and Brienne Terril for their contributions to this post. A version of this article also appears on the Fox Rothschild Coronavirus Resource Center.

U.S. Supreme Court: states are immune from copyright infringement liability

A new Supreme Court decision holds that states are immune from infringement suits under the United States Copyright Act, despite a 1990 law that attempted to remove states’ sovereign immunity in copyright infringement cases.

In Allen v. Cooper (decided March 23, 2020), the Court considered a case involving videos and photos of a shipwreck that the state of North Carolina published online. The owner of the copyrights sued the state for copyright infringement. The state moved to dismiss the suit on the ground of state sovereign immunity. The copyright holder countered that the Copyright Remedy Clarification Act of 1990 (CRCA) removed states’ sovereign immunity in copyright infringement suits.

In its decision, the Court noted that “a federal court generally may not hear a suit brought by any person against a nonconsenting State.” However, exceptions can be made if (1) Congress enacts “unequivocal statutory language” that takes away states’ immunity in defined situations, and (2) some constitutional provision permits the encroachment on states’ immunity. The Court found that the CRCA met the first test, but not the second test, and thus did not qualify for an exception.

In particular, the Court noted that Article I (the Intellectual Property Clause) of the U.S. Constitution gives Congress the power to secure copyright holders the exclusive right to their discoveries, but the Clause says nothing about abrogating states’ sovereign immunity.

The Court’s decision harmonizes copyright law with patent law. In a 1999 decision (Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank), the Court reached the same conclusion regarding states’ sovereign immunity and the Patent Act.

CARES Act authorizes USPTO to extend certain patent and trademark deadlines

NOTE:  A more recent post with specific details about extended deadlines is available at this link.

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

In the United States, many filing deadlines are set by statute. Because of that, as of the date of this writing, the United States Patent and Trademark Office (USPTO) has not yet extended patent or trademark deadlines, as it did not have authority to do so. Section 12004 of the CARES Act gives the USPTO Director to toll, waive or modify statutory deadlines under the Patent Act, the Trademark Act, and the Leahy-Smith America Invents Act.

The USPTO is now permitted to extend deadlines that fall between March 13, 2020 and May 12, 2020.

The Act also gives similar authority to the Register of Copyrights to extend copyright filing deadlines.

Note that no deadlines are actually extended yet. We expect the USPTO and Copyright Office to act on this quickly. IP Spotlight will post details of any specific deadline extensions when available.

 

How will the shutdown of “non-essential” businesses affect trademark rights?

As “non-essential” businesses are required to close in more and more United States jurisdictions, many businesses have paused operations. This pause may interrupt continuous use of trademarks in connection with the products and services that the affected businesses offer.

When renewing trademark registrations, trademark holders must declare that the trademark has been in continuous use in commerce.

How might a lapse in use of a trademark during a coronavirus-related shutdown affect the trademark holder’s ability to maintain or renew a trademark registration?

My partner Bridget Short answers this question in a post that is available on the Fox Rothschild Coronavirus Resource Center, available at this link.