Category Archives: Patents

When is a Creative Director an inventor?

A recent intellectual property infringement lawsuit between Puma and Forever 21 regarding Puma’s Fenty X shoes garnered a lot of attention in the popular press. In no small part, the attention resulted because Puma’s creative director for its Fenty line was Rhianna.

A recent article in The Fashion Law examined whether a creative director (such as Rhianna) should be listed as an inventor in the company’s patents covering the creative director’s product line.

The answer to this question (with input from yours truly) is available in the article that is linked here. (Hint: it depends on whether the creative director actually participated in design of the product claimed in the patent.)

 

How long does it take to get a patent or trademark? (2018 update)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, with statistics about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2018. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or register a trademark?”

To answer that question, here are a few highlights from the USPTO’s FY 2018 report:

Patents:  The USPTO continued a seven-year trend of reducing overall patent application pendency in FY 2017. The average time between filing and first office action was 15.8 months, which is down a few week’s from last year’s measure. Average total pendency (time from start to grant or abandonment) also dipped to 23.8 months.

The report did not discuss the effect of the USPTO’s “Track 1” expedited examination option on the overall timeline. Applicants who pay the additional fee for Track 1 processing typically receive a first action within 4-6 months of filing, and allowance or final action within 12 months of filing.

The wait times vary depending on the technology involved. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while applications for communications and semiconductor technologies moved relatively quickly. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 12.5 months to first action, and an average total pendency of 22.9 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 18.0 months to first action, and an average total pendency of 27.3 months;
  • computer architecture (USPTO Technology Center 2100) had an average wait time of 19.4 months to first action, and an average total pendency of 28.4 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 15.9 months to first action, and have an average total pendency of 25.3 months;
  • communications technologies (USPTO Technology Center 2600) had some of the shortest average wait times — 11.0 months to first action, and an average total pendency of 19.9 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 12.7 months to first action, and an average total pendency of 21.6 months;
  • methods relating to transportation, construction, agriculture and e-commerce (USPTO Technology Center 3600, in which the e-commerce inventions are often considered to involve “business methods”) had an average wait time of 18.2 months to first action, and an average total pendency of 25.5 months; and
  • mechanical engineering products (USPTO Technology Center 3700) had an average wait time of 19.0 months to first action, and an average total pendency of 28.4 months.

339,534 patents issued in FY 2018 — a 2.3% decrease from last year’s all-time high. The overall patent allowance rate was 56.3% – a dip from last year’s 59.4% allowance rate.

The number of patent applications filed in FY 2017 was 647,349 — a slight (1% decrease from last year’s number. Of these applications, approximately 596,000 were utility filings and 169,000 were provisional filings. The other patent applications were design, plant, or reissue filings.

Trademarks:  In FY 2018 the average time from filing to first Office Action in a trademark application increased to 3.5 months, up from 2.7 months in 2017. Average total pendency remained about the same as last year: 9.6 months as compared to 2017’s 9.5 months.

The total number of trademark applications filed was 638,647, an all-time high and the third consecutive year of double-digit growth. The total number of registrations granted was 367,382, also an all-time high and a 12.2% increase over last year’s grant rate.

USPTO Updates Patent Examination Guidelines for Computer-Implemented Inventions: Less Abstract Ideas, More Specific Algorithms

On January 4, 2019, the U.S. Patent and Trademark Office released new guidance documents that USPTO Patent Examiners are to use when evaluating whether a patent application claims patent-eligible subject matter under Section 101 of the Patent Act. The new documents also address whether claims directed to computer-implemented inventions should be considered to be purely functional and/or indefinite under Section 112 of the Patent Act.

Taken together, the new guidance documents may narrow the situations in which Examiners issue rejections under Section 101 of the Patent Act, but may expand the number of rejections issued under Section 112 of the Patent Act. The documents indicate that inventors who want to patent computer-implemented inventions must be sure that the patent application: (a) describes and claims a practical application of the invention; and (b) discloses specific algorithms for performing claimed functions.

2019 Revised Patent Subject Matter Eligibility Guidance (Section 101)

Unlike previous USPTO patent-eligibility guidance, the new Section 101 guidance focuses on situations in which patent claims should be eligible, and it limits situations in which USPTO Examiners should issue rejections under Sections 101 of the Patent Act.

In particular, the 2019 Revised Subject Matter Eligibility Guidance opens the door to patent-eligibility for patent claims that are limited to practical applications. In particular, the Section 101 guidance states that “a patent claim or patent application claims that recites a judicial exception [i.e., a law of nature, a natural phenomena or an abstract idea] is not ‘directed to’ the judicial exception if the judicial exception is integrated into a practical application of the judicial exception.”

The new Section 101 Guidance states that to determine that a claim recites an abstract idea, Examiners must “(a) identify the specific limitations(s) in the claim … that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) fall within the subject matter groupings” — that is, one of the following judicial exceptions to patentability: (1) mathematical concepts; (2) certain methods of organizing human activity; or (3) mental processes. Laws of nature or natural phenomena are another subject matter grouping to be considered. If the Examiner believes that the claim falls within one of these groupings, the Examiner must “evaluate whether the claim integrates the judicial exception into a practical appplication.”

The new Section 101 guidance instructs Examiners that analysis of whether a claim includes significantly than the judicial exception is only needed if “a claim recites a judicial exception and fails to integrate the exception into a practical application.” The guidance also states that “a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. When the exception is so integrated, then the claim is not directed to a judicial exception … and is eligible.”

Examples of practical applications include:

  • an element that improves the functioning of a computer or other technology;
  • an element that effects a particular treatment or prohylaxis for a disease or medical condition;
  • an element that is operates in conjunction with a particular machine or manufacture that is integral to the claim; or
  • an element that applies or uses the exception in a menaingful way beyond generally linking the use of the exception to a particular technological environment, so that the claim is more than a drafting effort designed to monopolize the exception.

The Section 101 guidance also states claims that include elements that are not well-understood, routine or conventional in a way that does not simply append those elements to the claim may be eligible.

Also significant: even if an Examiner rejects claims under Section 101, the Examiner must still examine each claim under Sections 102, 103 and 112 of the Patent Act.

The 2019 Section 101 guidance “supercedes all versions of the USPTO’s Quick Reference Sheet[s]” and indicates that those prior documents “should not be relied upon” by Examiners or Applicants.

Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. §112

The USPTO’s 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 provides cautionary warnings to patent applicants who describe and claim computer-implemented inventions in only broad, general terms. This new guidance is intended to address the “problem with broad functional claiming without adequate structural support in the specification” and address “when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved.”

In the past few months, USPTO Examiners have more frequently issued Section 112 rejections against computer-implemented invention claims, even if the claims do not explicitly use means-plus-function language. The new guidance suggests that this is not appropriate by stating that “a claim limitation that does not use the term ‘means’ will trigger the presumption that 35 U.S.C. §112(f) does not apply.”

However, the guidance notes that certain phrases can be generic placeholders for means-plus-function language, in particular: “module for,” “device for”, “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for” and “system for.” The guidance also cautions against phrases that use the term “module” in connection with the module’s function.

The guidance also states: “for a computer-implemented … claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite” (emphasis added). The guidance notes that “the requirement for disclosure of an algorithm cannot be avoided by arguing that one of ordinary skill in the art is capable of writing software … to perform the claimed function.”

The new guidance documents took effect on January 7, 2019, the USPTO is accepting public comments on the new guidance through March 8, 2019.

Federal Circuit finds software license verification technology patent-eligible under Section 101

A new Federal Circuit decision found the claims of a patent directed to software license verification to be eligible for patenting under Section 101 of the Patent Act.

In Ancora Technologies, Inc. v. HTC America, Inc., the court reviewed the claims of U.S. patent 6,411,941, which involved methods of restricting software operation on a computer to be within a license for that computer. Representative claim 1 of the patent is:

A method of restricting software operation within a license for use with a computerincluding an erasable, non-volatile memory area of a BIOS of the computer, anda volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memoryof the BIOS, the verification structure accommodating data that includes atleast one license record,

verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and

acting on the program according to the verification.

Thus, the method required storage of a license record in a “verification structure” created in a portion of the computer’s BIOS memory.

In its decision, the court noted that as in its Enfish, Visual Memory, Finjan, Core Wireless and Data Technologies cases, “[i]mproving security — here, against acomputer’s unauthorized use of a program — can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.” The court also found that because in the representative claim “a license record is stored in a particular, modifiable, non-volatile portion of the computer’s BIOS … the claim addresses a technological problem with computers:  vulnerability of license-authorization software to hacking.”

Quoting its SAP America, Inc. v. InvestPic, LLC decision, the court also noted that the claim has “the specificity required to transform a claim from one claiming only a result to one claiming away of achieving it.” Therefore the court stated that it did not need to consider step two of the Alice analysis.


[1] ____ USPQ2d____ (Fed. Cir. Nov. 16, 2018).

[2] 127 USPQ2d 1597 (Fed. Cir. 2018).

Federal Circuit: Even the inventor can challenge patent’s validity

Historically, inventors who assign a patent to a company or other entity have been barred from later challenging the patent’s validity under the doctrine of “assignor estoppel.” This common-law doctrine has been in place for years. However, a new Federal Circuit decision scales it back by holding that assignor estoppel cannot stop certain inter partes review (IPR) proceedings filed by inventors with the Patent Trial and Appeals Board (PTAB).

In Arista Networks v. Cisco Systems, Inc. (Fed. Cir. Nov. 9, 2018), the court considered an appeal from the PTAB decision in an IPR proceeding. In the case, a company founded by an inventor (who was a former employee of the patent holder) argued that certain claims of the patent were obvious in view of prior art. While acknowledging that assignor estoppel is a “rule well settled by 45 years of judicial consideration and conclusion,” the court found that in the America Invents Act reveals Congress’ intent for a different rule in IPR proceedings. Specifically, since 35 U.S.C. §311(a) states that any “person who is not an owner of the patent” may file an IPR petition, the court ruled that an inventor who has assigned his or her interest — and who therefore is no longer an owner of the patent — may file an IPR petition that challenges validity of the patent.

In Vanda decision, Federal Circuit finds method of treatment claims eligible for patenting

A recent Federal Circuit decision provides patent holders and applicants some guidance as to when patent claims that include methods of treatment may be eligible for patenting.

In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l Ltd. (Fed. Cir. Apr. 13 2018), the decision involved U.S. Patent 8,586,610, which is directed to a method of trating a patient who is suffering from schizophrenia with iloperidone. The representative claims included the steps of performing a genotypic assay on the patient, and administering one of multiple dosages of iloperidone to the patient depending on the results of the assay.

The defendant argued that the claims were not patent-eligible “because they are directed to a natural relationship between iloperidone, CYP2D6 metabolism, and QT prolongation, and add nothing inventive to those natural laws and phenomena.” The patent holder argued that while the claims may “touch upon” laws of nature, they are not directed to any law of nature.

The court agreed with the patent holder, nothing that while the “inventors recognized the relationships between iloperidone [and certain natural phenomena,] that is not what they claimed. They claimed an application of that relationship. Unlike the claim at issue in Mayo [v. Prometheus], the claims here require a treating doctor to administer iloperidone in the amount of either (1) 12 mg/day or less or (2) between 12 mg/day to 24 mg/day, depending on the result of a genotyping assay.” Thus, the court found that the “patent claims are ‘a new way of using an existing drug’ that is safer for patients because it reduces the risk of QTc prolongation,” rather than purely a law of nature.

The Vanda decision can be a useful reference point for applicants who seek to claim personalized medicine delivery methods. The court’s discussion of claims that touch on, but are not directed to, laws of nature may be helpful for those who are inventing new and useful methods that rely on laws of nature, but which aren’t inherently laws of nature on their own.

Are invention disclosure documents protected by attorney-client privilege?

A common first step in the patent filing process is the completion of an invention disclosure form. The form asks the inventors to provide basic details about the invention, including who invented it, what problem does the invention solve, and how is the invention different from the prior art.

Many businesses and research institutions with patent filing programs require their inventors to complete invention disclosure forms to help the entity decide whether to file a patent application. The form may be reviewed by an intellectual property manager, by a patent review committee, or by others who decide whether or not to pursue a patent application for the invention.

Are invention disclosures protected by attorney-client privilege?

Recent court decisions indicate that the answer depends on what happens after the inventors complete the form. Continue reading