USPTO publishes October 2019 update to Patent Eligibility Guidance

On October 17, 2019, the USPTO published an update to its 2019 Patent Subject Matter Eligibility Guidance (2019 PEG). The October 2019 update does not significantly change the patent eligibiity analysis, but it clarify several of the examination procedures that the USPTO first set out in January 2019.

Notably, the October 2019 update indicates that “the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract ideas.” Thus, Examiners should no longer focus on individual court decisions in their rejections but instead will determine whether the claims recite any of the groupings of abstract ideas listed in the 2019 PEG.

The October 2019 update also included several new subject matter eligibility examples, including examples for both life science and data processing inventions.

USPTO requires non-U.S. trademark applicants to use U.S. counsel

Effective August 3, 2019, a new United States Patent & Trademark Office (USPTO) rule requires all foreign trademark applicants to be represented by a United States licensed attorney when applying for a U.S. trademark registration.

My partner Elizabeth Patton recently published a summary of the new rule and its impact. For more details, see her post on Fox Rothschild’s Above the Fold blog.

Using invention to provide service prior to patent filing can trigger on-sale bar

Using an invention to provide a service before filing the patent application can trigger the on-sale bar to patentability, according to a recent decision from the U.S. Court of Appeals for the Federal Circuit.

The court’s decision in Quest Integrity USA, LLC v. Cokebusters, LLC involved U.S. Patent 7,542,874, which relates to a system for displaying inspection data collected from a furnace. The patent’s priority date was June 1, 2004. However, the court found that the patent owner used the invention to commercially perform furnace inspection services at a Louisiana refinery in March 2003, which is more than one year before the priority date.

The patent owner did not sell hardware or software to the customer. However, the patent’s method claims included the step of “generating a display of at least a portion of said partitioned inspection data arranged to represent said physical geometry of a plurality of said tube segments and enable visual detection of a problem area comprising one or more of said tube segments.” The court found that this claimed method included the production of “strip charts,” which are shown by way of example in Figures 3 and 4 of the ‘874 patent.

The court held: “Sale of a product (here, sale of the [strip charts]) produced by performing a claimed process implicates the on-sale bar.” The court also noted: “Performance of a claimed method for compensation, or a commercial offer to perform the method, can also trigger the on-sale bar, even where no product is sold or offered for sale.”

The case indicates that inventors should not delay before filing a patent application for a new process, especially if commercialization activities that relate to the process are expected.


What U.S. tech employers need to know about upcoming H-1B filing changes

H-1B workers continue to be an important resource for U.S. tech and other companies, particularly in the STEM fields.  Many such employers are subject to the annual H-1B cap. The U.S. Customs and Immigration Service (USCIS) recently decided to reverse cap lottery selection beginning this year, with electronic registration of petitions being required at some point in the future.

Full details are available on the Fox Rothschild Immigration View blog, available at this link.

Confidential sales before filing patent application can waive patent rights

U.S. patent law states that any invention that was “on sale in this country, more than one year prior to the date of the application for patent” is not eligible for patent protection.

The Supreme Court recently confirmed that a confidential sale — such as a sale under a nondisclosure agreement — is still a “sale” that can trigger loss of patent rights. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Court considered agreements by which the patent holder (Helsinn) agreed to license and sell palonosetron, which is the active ingredient a drug that treats chemotherapy-induced nausea. The agreements required the licensee/buyer to keep dosage and other product information confidential. Two years later, Helsinn applied to patent a method of treatment using the dosage.

In its decision, the Court held that “an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a)” of the Patent Act. The Court also noted that its ruling is consistent with long-standing precedent on the subject, and that the changes that Congress made to §102(a) in the America Invents Act of 2011 did not alter this premise.

Notably, the facts that led to the Court’s decision involved a sale from the patent holder to a third party. In 2016, the Federal Circuit held that a sale from a contract manufactuer to the patent holder would not trigger the on-sale bar because it was a sale of manufacturing services, and not a sale of the invention. (See The Medicines Co. v. Hospira, Inc.) The Supreme Court’s decision in Helsinn did not address a sale in the contract manufacturing context. However, in its holding the Court specifically mentioned that it was considering “an inventor’s sale of an invention to a third party,” So, it does not appear that the Court’s decision will affect contract manufacturing arrangements.

However, the Court’s decision highlights the importance of filing for patent protection before any offer to sell the invention – even if the offer is made under a nondisclosure agreement. Also, even though U.S. patent law provides a one-year window for filing, most other countries’ patent laws provide no such grace period.




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.