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.
On March 18, 2020, President Trump issued an Executive Order under authority of the Defense Production Act of 1950. The Executive Order stated: “I find that health and medical resources needed to respond to the spread of COVID-19, including personal protective equipment and ventilators, meet the criteria specified in section 101(b) of the Act (50 U.S.C. § 4511(b)). Under the delegation of authority provided in this order, the Secretary of Health and Human Services may identify additional specific health and medical resources that meet the criteria of section 101(b).”
This development has some manufacturers asking: Can we supply hospitals with personal protective equipment and ventilators in this time of COVID-19 response without risk of patent infringement?
In a post on the Fox Rothschild Coronavirus Response Resource Center, my partner Jeff Schwartz and I address this question. The short answer is, in most cases, no. However, there are actions that manufacturers can take to mitigate their risk, including:
- Seek a license from the patent holder. This could be done anonomously with help from counsel, from public officials or from others who have influence in the community who can help negotiate reasonable terms, and to avoid identifying the manufactuer to the patent holder in the initial call.
- Consider ways to design around the patent.
- Avoid creating emails and other communications that discuss the potential patent risk. Those documents could later be used against the company as evidence in patent infringement litigation.
For more details and the full article, click here.
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.
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
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 2017. 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 2017 report:
Patents: The USPTO continued a six-year trend of reducing overall patent application pendency in FY 2017. The average time between filing and first office action was 16.3 months, which is about the same as last year. However, average total pendency decreased to 24.2 months (down from last year’s 24.2-month average pendency, and down from a high of 33.7 months in 2012).
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 in the biotech and organic chemistry fields moved relatively quickly. The breakdown by technology included: Continue reading
The USPTO recently published an adjusted fee schedule for certain patent fees. The new schedule significantly increases the fees for challenging the validity of a patent in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) proceedings. (A comparison of these three types of proceedings is available from the USPTO at this link.)
The new fees for an IPR proceeding (request fee + post-institution fee) total $30,500 — an increase of $7,500. Additional fees apply if the IPR proceeding involves more than 15 claims.
The new fees for a PGR or CBM proceeding (request fee + post-institution fee) total $38,000 — an increase of $8,000. Additional fees also apply if the PGR or CBM petition involves more than 15 claims.
The office also established a new “streamlined reexamination” option for ex parte reexamination requests that do not exceed 40 pages. Line spacing (double-spaced or 1-1/2 spaced), font size (12-pt non-script), and margin requirements apply. The fee for a streamlined reexamination is $6,000, compared to the standard $12,000 ex parte reexamination fee.
The fee hikes also include:
- a $100 increase (to $1300) in the fee for filing a first request for continued examination (RCE);
- a $200 increase (to $1900) in the fee for filing a 2nd or subsequent RCE;
- a $180 increase (to $760) for the search and examination fees required for new design patent applications;
- a $240 increase (to $2,240) in the cost of moving an appeal of a final rejection from the briefing stage to the Patent Trial and Appeals Board for review; and
- other fee increases for various petitions, such as petitions to revive an abandoned patent application and petitions to accept a delayed maintenance fee payment.
The costs listed above are the standard fees. Small entities and micro-entities may qualify for 50% or 75% reductions of certain USPTO fees.
The new fee schedule will take effect on January 16, 2018.
Posted in Patents
Tagged fees, patent, USPTO
The USPTO recently announced three new Enhanced Patent Quality Initiative programs that are designed to (i) add more detail and clarity to the public record of each U.S. patent application, and (ii) improve consistency in how USPTO examiners’ work product is reviewed.
Of the new proposals, the Clarity of the Record Pilot could have the most significant effect on patent prosecution, as well as on litigation of the resulting patents. According to a blog post from USPTO Director Michelle Lee, the Clarity of the Record Pilot will require examiners to “include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims.”
The Clarity of the Record Pilot has been under development for several months, after USPTO leaders sought public input at various open forums. Full details of the program are not yet released. However, the USPTO’s plans to have Examiners place claim constructions and definitions on the record raise an intriguing question as to how much deference the courts will give to the Examiner’s claim constructions when the resulting patents are litigated. If an Examiner places a claim construction on the record in a Notice of Allowability, the applicant should carefully review it to consider whether that is the construction that it would want to advance in litigation.
When announcing the new Clarity of the Record Pilot, Director Lee also stated:
Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights.
In addition to the results described above, these new prosecution procedures could significantly reduce the time devoted to claim construction disputes during litigation.
The U.S. Patent and Trademark Office has launched a new tool that helps interested parties monitor pending patent applications and receive alerts when applications of interest are published. The Patent Application Alert Service enables registered users to receive notice of published applications using various search criteria, including:
- applications filed by particular inventors or assignees;
- applications containing specified keywords in the claims, abstract, title or description, or
- applications having certain CPC classifications.
The USPTO noted that the new service may help more third parties participate in the “pre-issuance submission” process. In that process, any interested party can submit prior art against a pending patent application for the USPTO Examiner to consider. The time frame for submitting prior art against an application is the later of (i) six months from publication, or (ii) the date of first rejection by the Examiner.
The USPTO’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
Recent U.S. Patent and Trademark Office actions relating to software patents have confused and frustrated many patent applicants. After the U.S. Supreme Court published its opinion in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the USPTO’s application of the Court decision to software inventions has been anything but consistent. Does the USPTO’s action signal a need for Congressional action or another Supreme Court decision with more concrete guidelines?
In Alice, and as explained by the recent USPTO Preliminary Examination Instructions in view of the Supreme Court Decision in Alice, the determination of subject matter eligibility involves a two part test: (1) Is the claim directed to an abstract idea? (2) If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?
However, rather than a rigorous application of any test, in the past few months the USPTO’s patent-eligibility determinations contain little analysis of any specific claim language. Instead, they primarily consist of a boilerplate paragraph stating that the claimed invention is directed to an abstract idea.
To illustrate this problem, the USPTO recently issued a rejection asserting that the following claim was patent-ineligible because it is directed to a “fundamental economic practice:”
8. A device for predicting a future occurrence of a transportation system incident, the device comprising:
a processor; and
a computer readable medium operably connected to the processor, the computer readable medium containing a set of instructions configured to instruct the processor to perform the following:
collect historic operating information related to the previous operation of a vehicle along a transportation route,
determine schedule deviation information for the transportation route based upon the historic operating information and observed schedule adherence for the vehicle along the transportation route, the schedule deviation information comprising at least an identification of a driver and a sequence number for a period of time associated with the historic operating information and the observed schedule adherence,
construct a plurality of models, each of the plurality of models including at least one combination of factors that contribute to schedule deviation,
rank each of the plurality of models according to at least one information criterion,
assess an impact of the driver and the sequence number on a highest ranked model to produce a results set, wherein the results set comprises at least a highest ranked model showing at least one combination of factors that most contributes to schedule deviation, and
present the results set. Continue reading