US Patent and Trademark Office Measures Taken in View of COVID-19 Outbreak: What Applicants and You Should Know

US Patent and Trademark Office Measures Taken in View of COVID-19 Outbreak: What Applicants and You Should Know

The US Patent and Trademark Office (USPTO) has implemented several measures over the past week to assist patent and trademark applicants in view of the COVID-19 outbreak and its disruption to businesses. The USPTO stresses that, until further notice, USPTO operations will continue without interruption. Below are the key USPTO measures and what you should know if you have a pending patent or trademark application, are planning to file such an application, or are involved actively in a PTAB proceeding. Unlike the European Patent Office and Canadian Intellectual Property Office, which have eased the burden on their patent applicants by extending all deadlines until at least the earliest April 17 and April 1, 2020, respectively, the USPTO has offered more limited relief. On March 16, 2020, the USPTO announced that it will not extend any deadlines, including new and existing patent and trademark application, prosecution, and PTAB deadlines. Instead, the USPTO will waive revival petition fees for those whose patent applications were deemed abandoned or had reexamination proceedings terminated when the effects of the COVID-19 outbreak led to a missed deadline. This waiver will also apply to trademark applications labeled abandoned or whose registrations were canceled or expired based on...

State of Vermont v MPHJ Technology Investments: A Case Study in the Timeliness and Basis of Removal 0

State of Vermont v MPHJ Technology Investments: A Case Study in the Timeliness and Basis of Removal

In State of Vermont v MPHJ Technology Investments, what appears initially as a factual simple matter, presents a complex procedural lesson in the timeliness and basis for removal of a matter from state court to federal court. In 2012, a number of Vermont businesses began receiving correspondence from MPHJ shell corporations alleging patent infringement. As a pattern, a business would receive an initial letter from the MPHJ corporation saying that the business had been identified as using patented technology. The letter included a survey to determine infringement and offered a licensing arrangement. If there was no response from Letter No. 1, Letter Nos. 2 and 3 would follow from MPHJ’s counsel, stating that the lack of a response was an admission and implying that litigation would follow.

Supreme Court’s Adoption of Proposed Amendments to the Federal Rules of Civil Procedures Will Require Heightened Pleading Standards in Patent Infringement Actions 0

Supreme Court’s Adoption of Proposed Amendments to the Federal Rules of Civil Procedures Will Require Heightened Pleading Standards in Patent Infringement Actions

Recently, the Supreme Court adopted proposed amendments to the Federal Rules of Civil Procedure, that barring any modification by congressional action, may eliminate the difference in pleading standards between patent infringement actions and all other federal actions. However, such standardization of pleading requirements may be short lived in view of the reintroduction of the Innovation Act, H.R. 9, in the House of Representatives, which proposes heightened pleading standard for patent infringement actions.

Federal Circuit Issues Its First AIA Appeal Ruling 0

Federal Circuit Issues Its First AIA Appeal Ruling

On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”). Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Patent No. 6,778,074 (the “’074 patent”) entitled “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit.” Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (“USPTO”) for IPR of claims 10, 14, and 17 of the ’074 patent. The PTAB found the claims to be invalid as obvious.

Lacking A Certain Je Ne Sais Quoi – Federal Circuit Finally Holds Ultramercial’s Patent Does Not Cover Patent Eligible Material 0

Lacking A Certain Je Ne Sais Quoi – Federal Circuit Finally Holds Ultramercial’s Patent Does Not Cover Patent Eligible Material

On November 12, 2014, the United States Court of Appeals for the Federal Circuit held that Ultramercial, LLC’s patent covering an eleven step process of watching a commercial as a condition of accessing free media content is invalid as covering patent ineligible material. The patent at issue, U.S. Patent No. 7,346,545 (“the ’545 patent”), claimed a method for distributing copyrighted products (such as songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. The Federal Circuit had held the ’545 patent claimed patent eligible subject matter twice before and both times was reversed by the United States Supreme Court. This iteration saw the Federal Circuit uphold the grant of a motion to dismiss claims of infringement by the United States District Court for the Central District of California on the basis of patent-ineligibility.

Has Alice Really Changed The §101 Standard for Patentability of Business Method Claims? 0

Has Alice Really Changed The §101 Standard for Patentability of Business Method Claims?

In the latest Supreme Court case on patentability under §35 U.S.C. 101, Alice Corp. Pty v. CLS Bank Int’l. (“Alice”), the Court addressed business method patent issues, finding that the claims at issue for mitigating settlement risks were drawn to an abstract idea and their generic computer implementation failed to transform the abstract idea into patent-eligible subject matter. 134 S. Ct. 2347 (2014).

USPTO Implements Test for Patent Eligible Subject Matter Under §101 Following the Supreme Court’s Alice Decision 0

USPTO Implements Test for Patent Eligible Subject Matter Under §101 Following the Supreme Court’s Alice Decision

We recently discussed the Supreme Court’s test for patentable subject matter under section 101 in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014). In its opinion, the Court applied the two-step process set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2102); (i) whether the claims are directed to patent-ineligible matter (e.g., abstract idea) and (ii) whether the claims contain an inventive concept (e.g., “additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea.”).

Momentum Builds on Patent Litigation Reform…Goodlatte Bill Passes House 0

Momentum Builds on Patent Litigation Reform…Goodlatte Bill Passes House

As we previously reported, House Judiciary Committee Chairman Bob Goodlatte (R-VA) recently introduced H.R. 3309, entitled “Innovation Act,” (hereafter, “the Goodlatte Bill”). After varying support and challenges to the bill, as well as a competing Senate version, on December 5, 2013, the House passed an amended version of the Goodlatte Bill with a bi-partisan vote of 325-91.

Senate Proposes Its Bill on Patent Litigation Changes 0

Senate Proposes Its Bill on Patent Litigation Changes

Last week, Senate Judiciary Chairman Orrin Hatch (D. UT) introduced the Patent Litigation Integrity Act, S. 1612. The Senate bill follows the introduction of a bill proposed by House Judiciary Committee Chairman Bob Goodlatte (R. VA), H.R. 3309, entitled “Innovation Act,” which also proposes a number of significant changes to patent litigation procedures.

Patent Law Bill to Rein in Litigation Abuses . . . (No really)! 0

Patent Law Bill to Rein in Litigation Abuses . . . (No really)!

Last week, House Judiciary Committee Chairman Bob Goodlatte (R-VA) introduced H.R. 3309, entitled “Innovation Act,” a 51-page bill proposing a number of significant amendments to the Patent Act (Title 35 U.S.C.). We reported last month on an earlier proposed draft of this bill. As we noted last month, among the more noteworthy provisions of the bill is a proposed new 35 U.S.C. § 281A, which heightens the pleading requirements for patent cases. Specifically, the proposed new section mandates providing detailed information about the patents alleged to be infringed, identifying each accused product/process, and providing information with “detailed specificity” regarding how the product infringes. This provision also sets forth that, for any required information not disclosed, the plaintiff must establish why such undisclosed information was not readily accessible, and the efforts made by such party to access it.