Category Archives: Uncategorized

Supreme Court to address two intellectual property issues in fall 2016

The U.S. Supreme Court recently agreed to review two cases that involve important IP questions in the Court’s fall 2016 session. One case will consider whether to modify or do away with the long-standing defense of laches in patent infringement cases. The other case will address the extent to which apparel can be protected by copyright.

The doctrine of laches is a defense to patent infringement that protects accused infringers if (1) the patent holder unreasonably delayed in filing the infringement lawsuit, and (2) the accused infringer was materially prejudiced by the delay. If a patentee delays bringing suit for more than six years after the date the patentee knew or should have known of the alleged infringer’s activity, laches may be presumed. In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, et al. (Fed. Cir. Sept. 18, 2015), the accused infringer argued that a 2014 Supreme Court decision that abolished laches as a defense in copyright cases should also apply to patent cases. The Federal Circuit disagreed and held that the defense of laches is still available in patent infringement cases. The Supreme Court will now resolve this dispute and determine whether the reasoning of its previous decision under copyright law equally applies to patents.

In the second case, the Court will address the extent to which copyright law covers apparel designs. In Varsity Brands Inc. v. Star Athletica, LLC (Sixth Cir. 2015), the U.S. Court of Appeals for the Sixth Circuit ruled that several copyright registrations on cheerleader uniform designs were valid. The designs included various stripes and chevrons, and the Sixth Circuit rejected an argument that those designs were functional and found that the designs were “’pictorial, graphic, or sculptural works’ and not uncopyrightable ‘useful articles.’” The Supreme Court will now address the question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”

However, the Supreme Court also denied petitions in several other IP-related cases. Notably, so far the Court has denied at least seven petitions asking for clarity of the boundaries of patent-eligibility in view of the Court’s previous decisions in Alice Corp. v. CLS Bank Int’l and Mayo Collaborative Services v. Prometheus Laboratories, Inc..  Each of those decisions addressed the scope of Section 101 of the Patent Act, and each decision has resulted in confusion and inconsistency in lower court decisions and USPTO actions that have attempted to apply those decision.

 

USPTO issues May 2016 Subject Matter Eligibility Update

A new USPTO memo directs Examiners to provide more detail and support when rejecting patent applications under Section 101 of the Patent Act.

A common criticism of the USPTO’s implementation of subject matter eligibility issues is its use of boilerplate analyses when asserting that a patent application merely claims an abstract idea or naturally-occurring phenomenon. The new memo, released on May 4, 2016, directs Examiners to be more specific in their responses, to consider all language of each claim, and to provide legal support for their rejections.  The memo states:  “If the original rejection did not identify a Supreme Court or Federal Circuit decision in which a similar abstract idea was found and applicant challenges identification of the abstract idea, the examiner would need to point to a case in which a similar abstract idea was identified and explain why the abstract idea recited in the claim corresponds to the abstract idea identified in the case to maintain the rejection.”

Guidance relating to abstract idea rejections

When asserting that a patent application claims an abstract idea, the new memo states that Examiners must refer to specific claim language to “identify the judicial exception by referring to what is recited … and explain why it is considered an exception” and “should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.”

The memo also notes that “an additional element…may be enough to qualify as ‘significantly more’ if it meaningfully limits the judicial exception, improves another technology or technical field, improves the functioning of a computer itself, or adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application. In addition, even if an element does not amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still amount to significantly more when considered in combination with the other elements of the claim. For example, generic computer components that individually perform merely generic computer functions (e.g., a CPU that performs mathematical calculations or a clock that produces time data) in some instances are able in combination to perform functions that are not generic computer functions and therefore amount to significantly more than an abstract idea (and are thus eligible).”

Guidance relating to law of nature, product of nature and natural phenomena rejections

In the life science area, the new memo states that Examiners must identify the law of nature, product of nature, or natural phenomenon as it is recited “and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.”

The USPTO also updated its set of life science eligibility examples for Examiners and applicants to consider.

Guidance common to all rejections

If an Examiner finds an abstract idea, law or product of nature or natural phenomenon in the claim, the memo states that the Examiner must consider the claim elements “both individually and as a combination” when determining whether the claim covers more than just the abstract idea.  The guidance notes:  “It is important to remember that a new combination of steps in a process may be patent eligible even though all the steps of the combination were individually well-known and in common use before the combination was made.”

When an Examiner finds that particular claim limitations are well understood, routine, or conventional, “the rejection should explain why the courts have recognized, or those in the relevant field of art would recognize, those claim limitations as being well-understood, routine, conventional activities.”

Notably, the memo states that Examiners should not rely on USPTO examples that do not carry the weight of court precedent. This guidance is also relevant to applicants, since the USPTO’s examples can be useful but do not carry the weight of legal authority.

The memo also warns applicants that an argument that the claim “does not preempt all applications of the exception” will not in itself save the claim. The memo notes that “preemption is not a standalone test for eligibility.”

India Patent Office: No patent if invention is merely software

After months of deliberation, India’s Patent Office has issued new guidelines that firmly maintain the country’s practice of not granting patents for software inventions. Issued February 19, 2016, the new Guidelines for Examination of Computer Related Inventions put to rest the country’s recent debate over whether software can be patentable if it has industrial applicability.

India’s patent law does not define or use the term “software,” but it does say that “a mathematical or business method or a computer programme per se or algorithms” are excluded from patentability, as is “a presentation of information.” However, during the past year, the Patent Office began to interpret this exclusion narrowly by stating that software could be patentable if it is applicable to a particular industry.

The new Guidelines reject that notion and direct examiners to apply a three-part test when examining claims for computer-related inventions:

  1. Properly construe the claim and identify the actual contribution;
  2. If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
  3.  If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

The Guidelines indicate that a claim must use some type of unique hardware, and that claims directed to “computer programmes,” a “set of instructions/ Routines and/or Sub-routines, “computer programme products,” a “Storage Medium having instructions,” a “Database,” or a “Computer Memory with instruction” should not be considered patentable.

The Guidelines include 15 examples of claims that are not patentable in India. Notably, the Guidelines include no examples in which the claims would considered acceptable.

The new Guidelines have been viewed as a win for Indian software company trade associations who lobbied hard to keep software out of the realm of patentability.

 

 

How long does patent and trademark prosecution take? (2015 edition)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, which is loaded with data about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2015. 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 trademark registration?”

To answer that question, here are a few highlights from the USPTO’s FY2015 report:

Patents:  The USPTO’s efforts to reduce patent application pendency continued to pay off in FY 2015. The average time between filing and first office action was 17.3 months, down from 18.4 months in FY 2014 and a sharp improvement from the 28-month average time to first action that was the norm five years ago.  Average total pendency also decreased, from 27.4 months in FY 2014 to 26.7 months in FY 2015, despite the large number of patent applications that were facing difficult patent-eligibility rejections in the past year.

The pendency rates vary depending on the technology covered by the patent application. For example: Continue reading

USPTO retires SAWS: will it have an effect on the USPTO’s effort to screen out poor quality patents?

The USPTO sealUSPTO’s recent announcement that it is retiring its Sensitive Application Warning System (SAWS) yielded mixed reactions from the patent community. While many noted that the announcement was a win for transparency and accountability in government, others (including some patent applicants) found little comfort after they incurred substantial time and expenses resulting from the USPTO’s delay of patent applications that were assigned to the secret program.

With roots dating to 1994, SAWS first came to light in 2006 after a leaked memo revealed that the USPTO was flagging certain patent applications that could be considered “controversial or noteworthy.” SAWS applications could not be allowed before the Examiner prepared a memo to the USPTO Deputy Commissioners for Patent Operations and Patent Examination Policy.

Some of the criteria for SAWS designation were straightforward:  applications covering perpetual motion machines, anti-gravity devices, and technologies that violate laws of physics were included in the list. Other criteria were more fuzzy: Continue reading

USPTO to open permanent Silicon Valley location in 2014

The USPTO plans to hire at least 60 patent examiners and 20 Patent Trial and Appeals Board (PTAB) judges in 2014 at a new location in San Jose, California. Since 2013, the USPTO has operated a temporary satellite office in Menlo Park, California. This week the USPTO announced plans to make the location permanent in a move to the the San Jose City Hall Building.  

According to USPTO Deputy Director Teresa Stanek Rea: “A permanent office will allow us to attract additional intellectual property professionals who will work closely with regional entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process—creating good jobs and promoting American innovation.”

The USPTO originally planned to open a Silicon Valley office in 2013, but delayed the opening due to budget cuts and sequestration. The USPTO already operates a satellite office in Detroit, and it also plans to open a satellite office in Denver in 2014.

 

 

 

 

Ninth Circuit upholds good faith defense to claim of malicious prosecution in patent infringement case, relies on patentee’s advice of counsel

In Fisher Tool Co., Inc. v Gillet Outlillage, the US Court of Appeals for the Ninth Circuit affirmed its recognition of the “good faith” safe harbor defense to a malicious prosecution claim brought by a plaintiff who won on the merits in the patent infringement case.

In Fisher Tool, Gillet brought a patent infringement suit against Fisher Tool and others, asserting that Fisher Tool et al. infringed Gillet’s patent for hose claimp pliers.  However, Gillet dropped the suit after a Markman hearing resulted in a narrow construction of the patent’s claims.  After Gillet dropped the patent infringement suit, Fisher Tool sued Gillet for malicious prosecution, Lanham Act 43(a) (false representation) violations, and state law claims based on allegedly false statements that Gillet and its representatives made to third parties about Fisher Tool’s alleged infringement.

However, before filing suit and making the statements to third parties, Gillet consulted counsel to obtain opinions as to whether infringement occurred.  The court noted that two in-house counsel and a third outside counsel all issued written statements of opinion that the accused products infringed the patent.  Nothing that the malicious proseuction claims required a showing of bad faith, the court refused to find Gillet liable for mailicious prosecution.

The case reminds patent holders who are asserting infringement claims that pre-litigation opinions can be very useful to help avoid liability in case the infringement case does not end up in the patent holder’s favor.