IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Tag Archives: Patent Prosecution

Patent 101

Posted in Patent
On the heels of CLS Bank Int’l v. Alice Corp. Pty presently before the Supreme Court, the Federal Circuit and district courts in 2014 have continued to issue decisions analyzing computer-implemented inventions under 35 U.S.C. § 101. These courts have generally sought to answer similar questions: whether the claim is an abstract idea; whether this abstract idea preempts all other uses or can be performed in the human mind (or on a pen and paper); and whether the claim contains other limitations to narrow it sufficiently, such as being tied to a specific machine or transforming the data into a different thing… Continue Reading

IP Practitioners — Get Ready for the Global Patent Prosecution Highway!

Posted in USPTO
Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway ("GPPH"): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet… Continue Reading

The Texas Two Step, A Tale of Two Texas District Courts’ Differing Views Concerning Stay Requests Pending Inter Partes Review

Posted in Patent
The District Courts for the Southern and Western Districts of Texas appear to have taken different positions with regard to estoppel in an inter partes review ("IPR") context, in e-Watch v. FLIR Systems, Case No. 4-13-00638 (S.D. Texas) and e-Watch v. ACTi Corp., Case No. 5-12-cv-00695, (W.D. Texas), respectively… Continue Reading

Resuscitating Therasense? CD Cal Court Finds Inequitable Conduct by Patentee

Posted in Patent
IP practitioners have witnessed the dearth of inequitable conduct findings in the wake of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). There, the Federal Circuit reiterated en banc that to establish unenforceability for inequitable conduct before the United States Patent and Trademark Office ("PTO"), a party must prove by clear and convincing evidence that (1) information material to patentability was withheld from the PTO, or material misinformation was provided to the PTO, and that such act was done (2) with the intent to deceive or mislead. A few months ago, we reported on a case that continued to signal the death knell of this formerly ubiquitous defense, and thus begging the present question: is inequitable conduct even alive anymore? Of course it is… Continue Reading

The USPTO Launches the Global Patent Search Network

Posted in Patent
On July 8, Teresa Stanek Rea, Acting Director of the United States Patent and Trademark Office ("USPTO"), announced on her official blog the launch of the Global Patent Search Network ("GPSN"). The GPSN is the result of a cooperative effort between the USPTO and China's State Intellectual Property Office ("SIPO"). Users of the GPSN will be able to search full text Chinese patent documents and English machine translations, thus enabling searches in both English and Chinese. The initial database of documents will include published applications, granted patents, and utility models dated from 2008 to 2011. The database will be periodically updated. In addition, the USPTO anticipates the network will expand to include patent documentation from other foreign intellectual property offices… Continue Reading

Uniloc v. Rackspace – 35 U.S.C. § 101 Lockdown in the Eastern District of Texas

Posted in Patent
In Uniloc USA, Inc. v. Rackspace Hosting, Inc., Eastern District of Texas Chief District Judge Leonard Davis granted Rackspace's motion to dismiss Uniloc's complaint under Fed. R. Civ. P. 12(b)(6) for failure to allege infringement of a patentable claim under 35 U.S.C. § 101. This ruling is notable for several reasons: the Court granted an early motion to dismiss for the defendant in a historically pro-patentee jurisdiction (E.D. Texas), and the early dismissal resulted from the court finding the patent invalid under 35 U.S.C. § … Continue Reading

New USPTO Filing Fees Announced ….

Posted in Patent
IP practitioners are well aware of the new rules heralded by the America Invents Act ("AIA"). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to "recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents... and trademarks..., including administrative costs of the Office with respect to such patent or trademark fees." Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 ("CFR")… Continue Reading

USPTO Launches First CBM Post-Grant Review

Posted in Patent
The America Invents Act (AIA), created a transitional program for post-grant review of certain patents claiming subject matter referred to as covered business methods ("CBM"). As defined by AIA § 18(d)(1) and 37 C.F.R. § 42.301, a CBM is "a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service." 37 C.F.R. § 42.301 does, however, provide an exception for technological inventions. Whether a claim recites a technical feature is determined based on whether the claim is "novel and unobvious over the prior art; and [whether the claim] solves a technical problem using a technical solution." Id… Continue Reading

PTO Announces Software Partnership Roundtable Meetings

Posted in Patent
In an effort to "enhance the quality of software patents," the United States Patent and Trademark Office ("PTO") has announced a partnership with the software community. The Software Partnership will provide roundtable discussions between stakeholders and the PTO to share ideas and insights on software-related patents. The PTO will sponsor two roundtable events, one in Silicon Valley on February 12, and the other in New York City on February 27. In addition, the PTO plans to make each roundtable event available via Web cast, and will post Web cast information on its Internet Web site before the events… Continue Reading

Cooperative Patent Classification System Underway to Streamline Prior Art Searching

Posted in USPTO
As we previously reported, the US Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) with the aim of producing a common classification system for technical documents and the promise of transparent and harmonized global classification for patent documents… Continue Reading

AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President’s Signature

Posted in Patent
As most Americans focused on the Congressional efforts to avoid the "fiscal cliff," IP practitioners noted that Congress passed Senate-amended versions of a bill to amend the Smith-Leahy America Invents Act (AIA) (H.R. 6621) and a bill to increase penalties under the Economic Espionage Act (EEA)(H.R. 6029) on to the White House on January 1, 2013, for signature by President Obama. It is expected that President Obama will sign both bills into law shortly… Continue Reading

2013: The IP Law Year Ahead

Posted in Patent
Like 2012, 2013 promises to be a busy and significant year for intellectual property law. The Supreme Court is slated to decide a number of IP cases, including: Already, LLC d/b/a Yums v. Nike, Inc. (addressing the significance of a limited covenant-not-to-sue on declaratory judgment jurisdiction); Bowman v. Monsanto (determining whether the Federal Circuit erred by not finding patent exhaustion in second generation seeds and created an exception to patent exhaustion for self-replicating technologies); Gunn v. Minton (pertaining to whether federal courts have exclusive "arising under" jurisdiction when legal malpractice claims stem from a patent case); Kirtsaeng v. John Wiley & Sons, Inc. (regarding international copyright exhaustion, i.e., how Section 602(a)(1) and Section 109(a) of the Copyright Act apply to a copy that was legally acquired abroad and then imported into the United States); Federal Trade Comm'n v. Watson Pharm., Inc. (involving whether Hatch-Waxman reverse payment settlement agreements are legal); and most recently, Ass'n for Molecular Pathology v. Myriad Genetics, et al. (regarding the patentability of human genes and whether the petitioners have standing to challenge those patents)… Continue Reading

DNJ Rejects Double-Patenting Claim

Posted in Patent
Last week, in Gilead Sciences, Inc. v. Natco Pharma Ltd., the District of New Jersey ruled on summary judgment that Gilead Sciences did not unlawfully extend its patent protection on oseltamivir (Tamiflu), a neuraminidase inhibitor used to treat the flu, covered by U.S. Patent No. 5,763,483 ("the '483 patent"). Natco Pharma sought to invalidate the '483 patent for obviousness-type double patenting in its attempt to market a generic version of Tamiflu prior to the patent's expiration. Natco had alleged, inter alia, that the claims of the '483 patent were invalid due to obviousness-type double-patenting over Gilead's later issued U.S. Patent No. 5,952,375 ("the '375 patent")… Continue Reading

The USPTO Sets Up Two Additional Pro Bono Assistance Programs in California and D.C.

Posted in USPTO
Upon the passage of the America Invents Act ("AIA") and in an effort to help individuals and corporations who are unable to afford legal advice relating to intellectual property, the USPTO has recently announced two additional pro bono assistance programs in California and the District of Columbia. With the addition of these two programs, the USPTO has created four intellectual property pro bono programs across the United States and is forecasting an additional ten by the end of … Continue Reading

Did You Submit an IDS During Reexamination? Does It Matter?

Posted in Patent
Earlier this month, the Federal Circuit in Belkin Int'l, Inc. v. Kappos, 2012-1090, published an important decision potentially limiting the scope of both ex-parte and inter-partes reexaminations. Traditionally during reexamination, practitioners submit information disclosure statements (IDS) to the Patent Office disclosing patents and printed publications with the understanding that the examiner would consider those references in relation to the claims subject to reexam. Very often, if the references were properly submitted, the examiner would record that the references were considered, but would not apply the references against the claims. The benefit to the patent owner is that this could create a heavy burden for subsequent defendants to show that the claims were invalid in view of this prior art. Belkin v. Kappos may change this practice and understanding… Continue Reading

USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012

Posted in Patent, USPTO
On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, … Continue Reading

Patent Marking Under the America Invents Act – Virtual Marking

Posted in Patent
As practitioners know, U.S. patent law provides for the recovery of patent infringement damages for a period of time when an infringer has actual or constructive notice of the infringed patent. Actual notice is provided by way of letter or similar mechanism to the infringer after infringement has begun. Constructive notice can be provided by placing the patent number on the patented product. Such constructive notice provides notice to the infringer of the existence of a patent prior to actual notice, thereby extending the time period for recovering damages up to the date the infringement begins… Continue Reading

Patent Classification Harmonization

Posted in USPTO
The United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) and released a finalized set of CPC definitions. The CPC is operational at both the EPO and USPTO. The USPTO and EPO developed the CPC with the collaborative aim of producing a common classification system for technical documents. The CPC brings the promise of transparent and harmonized global classification for patent documents… Continue Reading
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