Tag Archives: patents

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

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 extensions

On March 31, 2020, the USPTO issued two notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicate that certain deadlines that arise between March 27, 2020 and April 30, 2020 will be extended by 30 days if the applicant or patent/trademark registrant can 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 patent-related deadlines that may 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.

Copyright extensions

The U.S. Copyright Office has extended certain registration timing requirements that typically must be followed in order to seek stautory 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.

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.

IAM Global Leaders 2020

I am honored to be named to the inaugural IAM Global Leaders list, a new publication featuring interviews with patent pratitioners ranked in the gold tier of the IAM Patent 1000.

In my interview with IAM, I discuss how our team at Fox Rothschild is working to anticipate client expectations and lead the way in managing patent projects to meet or beat those expectations. I also discuss key questions that clients should consider when building an intellectual property strategy.

The full interview is available via this link or this link.

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.

 

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.

Physically impossible, yes. But is it still obvious?

A recent Federal Circuit decision held that a patent directed to a tool attachment for demolition equipment was obvious in view of two prior art references. The court reached this conclusion even though it did not deny that the proposed combination was physically impossible.

FIG 1 489 patentIn Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC (Fed. Cir. June 15, 2016), the court reviewed certain claims of the patent, which included various features for attaching and detaching jaw sets from a demolition tool. The Patent Trial and Appeals Board found the patent to be obvious based on two prior patents:  one covering a different jaw attachment system, and the other describing a convertible bucket attachment for an excavator.

The patent holder argued that the proposed combination would render the prior art devices inoperable. The court did contradict this assertion. In fact, the court conceded that the combination “may impede the quick change functionality” disclosed in the first patent. Nonetheless, the court agreed with the PTAB and found it to be irrelevant:  “it is not necessary that [the prior art] be physically combinable to render obvious the [‘489 patent].” The court also quoted a 1983 decision stating that “the criterion [is] not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”

Notably, the court did not explain how its decision could be reconciled with certain other conflicting precedent. For example, previous Federal Circuit decisions held that if a combination of two references would render one of them unsuitable for its intended purpose, the prior art then teaches away from the combination. In re Gordon, (Fed. Cir. 1984). In fact, in cases as recent January 2016’s In re Urbanski, a different panel of Federal Circuit judges held: “[i]f references taken in combination would produce a ‘seemingly inoperative device,’… such references teach away from the combination and thus cannot serve as predicates for a prima facie case of obviousness.”

The Federal Circuit’s conflicting decisions leave open substantial questions about the effect that impossibility and inoperability have on obviousness.

No more bright lines: Supreme Court overturns test for willful patent infringement

In a consolidated decision involving two new cases, the U.S. Supreme Court continued its trend of shunning bright-line rules in patent infringement cases. The cases overturned the “objective recklessness” test that the Federal Circuit established in 2007 as a threshold criterion for finding that an accused infringer willfully infringed a patent.

In Halo Electronics, Inc. v. Pulse Electronics Inc. (consolidated with Stryker Corp. v. Zimmer Corp.) the Court held that Section 284 of the Patent Act gives district courts the discretion to determine whether to award enhanced damages against those guilty of patent infringement, and if so how much. The Court expressed concern that the “objective recklessness” test made it too easy for bad-faith infringers to avoid enhanced damages by simply presenting a reasonable defense to infringement at trial — even if the defense was unsuccessful and the infringer did not act on the basis of that defense. Instead, the Court said that in the context of willfulness, the proper rule is that “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.”

However, the Court cautioned that district court discretion is not without limits:  “Awards of enhanced damages under the Patent Act … are not to be meted out in a typical infringement case, but instead are designed as a ‘punitive’ or ‘vindictive’ sanction for egregious infringement behavior” and “are generally reserved for egregious cases of culpable behavior.”

Because of this, the Court’s decision may not significantly alter the situations when damages are actually awarded for patent infringement, nor is the decision likely to have much effect on the amounts awarded. However, the decision will likely to make it easier for patent holders to bring patent infringement claims and avoid having those claims cut off in a summary judgment ruling. In addition, the decisions will ensure that truly bad-faith infringers don’t use a bright-line rule such as objective recklessness as a shield to avoid enhanced damages.

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.