Insights

IP Update, Vol. 13, No. 3

by Marc S. Weiner | BSKB

Today’s Federal Register posted the Final Rules to the Hague Agreement Concerning International Registration of Industrial Designs. A copy of the Final Rules can be found here.

IP Update, Vol. 13, No. 2

by Marc S. Weiner | BSKB

On January 9, 2015, the USPTO issued a final rule, Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, setting forth final rule changes. The Notice (linked here)implements changes clarifying many PTA issues and implementing the holding of Novartis v. Lee, which are discussed below.

IP Update, Vol. 13, No. 1

by Marc S. Weiner | BSKB

On December 16, 2014, the U.S. Patent and Trademark Office (USPTO) published Interim Eligibility Guidance (linked here) that offers the USPTO’s current view of subject matter eligibility in line with the U.S. Supreme Court decisions in Alice Corp. [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.__, 134 S. Ct. 2347 (2014)], Myriad [Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013)], Mayo [Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012)] and related case law. This December 16, 2014 Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Instructions in view of the Supreme Court decision in Alice Corp. and supersedes the March 4, 2014 USPTO procedures issued in view of the Supreme Court decisions in Myriad and Mayo. Since this is Interim Guidance, the USPTO is seeking public comment and suggestions.

IP Update, Vol. 12, No. 8

by Marc S. Weiner and Aslan Ettehadieh | BSKB

Earlier this year, the United States Patent and Trademark Office (USPTO) initiated a new program called the Glossary Pilot Program.This new program was designed for the USPTO to study how the use of a glossary section in the specification of a patent application would improve the clarity of the patented claims.In order to participate in this program, numerous requirements must first be met. For example, one key requirement is that a glossary must be included within the specification.Another key requirement is that the application must be classified in software-related technological fields under the jurisdiction of Technology Centers 2100, 2400, 2600, or the Business Methods area of Technology Center 3600.Upon acceptance into this program, the USPTO will provide the expedited examination of the application (only) up to the mailing of the first Office Action.

IP Update, Vol. 12, No. 7

by Marc S. Weiner and Aslan Ettehadieh | BSKB

The After Final Consideration Pilot (AFCP) 2.0 program was scheduled to expire on September 30, 2014. However, the USPTO has recently announced that the AFCP 2.0 program has been extended to run through September 30, 2015.

IP Update, Vol. 12, No. 6

by Marc S. Weiner and Cynthia Leonard | BSKB

The purpose of this notice is to provide you with an additional option that has been made available by the United States Patent and Trademark Office with respect to Patent Term Adjustment (PTA).

IP Update, Vol. 12, No. 5

by Marc S. Weiner and Michael B. Marion | BSKB

The U.S. Supreme Court issued its opinion in Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13-298, concluding that a computer-implemented scheme for mitigating “settlement risk” was invalid for not claiming patent-eligible subject matter under 35 U.S.C. § 101. (Slip. Op. at 1.) The Court applied its framework established in Mayo Collaborative Services v. Prometheus Laboratories, Inc., to determine when patent claims are drafted to patent-ineligible concepts of laws of nature, natural phenomena, and abstract ideas. (Slip. Op. at 7.) After finding the patent claims are drawn to the abstract idea of intermediated settlement, the Court asked, “[w]hat else is there in the claims before us?” and found that the claims only recited a generic computer, when the claims were viewed as individual elements and an “ordered combination.” (Slip. Op. at 7.) The Court held that, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention,” rejecting the patentee’s argument that the existence of the tangible computer would satisfy patent-eligibility. (Slip. Op. at 13-14.) All of the claims before the Supreme Court failed its test, rejecting method, system, and computer-readable media claims directed to the same abstract idea.

IP Update, Vol. 12, No. 4

by Marc S. Weiner, MaryAnne Armstrong, Ph.D., and Ali M. Imam | BSKB

On June 2, 2014, the Supreme Court handed down the long-awaited decision in Limelight v. Akamai, which considered the issue of whether a party could be liable for inducing infringement under 35 U.S.C. §271(b) in a situation where no one single [controlling] party is liable for direct infringement under 35 U.S.C. §271(a). In their decision the Supreme Court overturned the earlier ruling of the CAFC and held that if there is no direct infringement under 35 U.S.C.§271(a) there can be no liability for inducing infringement under 35 U.S.C.§271(b). However, the Court stated that their decision was predicated by the earlier holding of the CAFC in Muniauction, Inc. v. Thomson Corp.,232 F. 3d 1318 (2008), which held that for there to be direct infringement under 35 U.S.C.§271(a) a single party must be responsible (either themselves or through the control of a third party), for the complete infringement of the claimed invention. Essentially the Court instructed that the same standard dictated in Muniauction for determining liability for direct infringement under 35 U.S.C.§271(a) must be applied to a determination whether there is the prerequisite of the direct infringement required for a finding of inducing infringement. However, in the decision the Court also invited the CAFC to revisit the Muniauction holding. As such, the question of whether liability for inducing infringement may be found even if a single party cannot be found liable for direct infringement possibly remains open for further consideration by the CAFC. However, until and unless the CAFC chooses to reverse the Muniauction holding, under Limelight if there is no direct infringement under 35 U.S.C. §271(a), there can be no inducement of infringement under 35 U.S.C. 271(b).

IP Update, Vol. 12, No. 3

by Marc S. Weiner, Eugene T. Perez, Andrew Meikle, and Leonard Svensson | BSKB

On March 4, 2014, the USPTO issued its Guidance (guidelines) on subject matter eligibility under 35 U.S.C. § 101 in view of the recent Supreme Court decisions of Association for Molecular Pathology v.Myriad Genetics, Inc. (2013) and MayoCollaborative Services v. Prometheus Laboratories, Inc. (2012).

IP Update, Vol. 12, No. 2

by Marc S. Weiner and Michael B. Marion | BSKB

The U.S. Supreme Court handed down a pair of decisions on April 29, 2014, on the issue of when a case is exceptional under Section 285 of the Patent Act: Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184 and Highmark, Inc. v. Allcare Health Mgmt Sys. Inc., No. 12-1163. In short, the cases lower the standards for awarding a prevailing party attorney’s fees under Section 285, and afford district court judges with greater discretion in awarding attorney’s fees.

IP Update, Vol. 12, No. 1

by Marc S. Weiner, Aslan Ettehadieh, and Leonard R. Svensson | BSKB

The USPTO has launched new PPH pilot programs which simplify the entire PPH program for nearly all current PPH users. The new PPH pilot programs are called Global PPH (GPPH) and IP5 PPH. GPPH and IP5 PPH pilot programs have replaced existing PPH programs for the offices that have chosen to participate in these new programs. The aim of Global PPH (GPPH) and IP5 PPH programs is to further simply requirements consistent across the participating offices.

IP Update, Vol. 11, No. 6

by Marc S. Weiner and Aslan Ettehadieh | BSKB

The After Final Consideration Pilot (AFCP) 2.0 program was scheduled to expire on December 14, 2013. However, the USPTO has recently announced that the AFCP 2.0 program has been extended to run through September 30, 2014 (extending for the remainder of the USPTO’s fiscal year 2014).

IP Update, Vol. 11, No. 5

by Marc S. Weiner and Aslan Ettehadieh | BSKB

On October 21, 2013, the United States Patent and Trademark Office (USPTO) published its final rule regarding the changes to the agency’s rules of patent practice consistent with implementation of the Patent Law Treaty (PLT).

IP Update, Vol. 11, No. 4

by Marc S. Weiner and Aslan Ettehadieh | BSKB

The USPTO has announced that, in the event of a general government shutdown on October 1, 2013, the United States Patent and Trademark Office (USPTO) will remain open for (at least) approximately four weeks. The USPTO plans to use their prior year reserve fee collections to operate as usual for those approximate four weeks. In anticipation of the USPTO’s prior year reserve fee collections being depleted, the USPTO will also assess their continual fee collections to determine how much longer they could operate at certain capacities during the general government shutdown.

IP Update, Vol. 11, No. 3

by Marc S. Weiner, Nicholas P. Godici, and Leonard R. Svensson | BSKB

Similarly, while the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics on June 13, 2013 will have consequences and will alter patent practice, the decision should not lead to a conclusion of great damage or death to the U.S. biotech industry. Many types of subject matter are still patentable and the negative consequences should not be as far reaching as some have predicted. The Court’s opinion rather narrowly concluded that unmodified naturally existing gDNA sequences are not patent eligible, but non-naturally existing sequences (such as cDNA), and modified sequences (if the claims recite the modification) are still patent eligible.

IP Update, Vol. 11, No. 2

by Marc S. Weiner, Nicholas P. Godici, Cynthia Leonard, and Eugene T. Perez. | BSKB

The USPTO has modified the After Final Consideration Pilot Program (AFCP) to create (AFCP 2.0). The goal is to reduce the number of RCEs filed and increase collaboration between the applicant and the examiner. To participate, the application must contain an outstanding final rejection and be an original filed utility, plant, design, international or continuing application. Reissue or reexamination applications are not eligible. The pilot runs from May 19, 2013 until September 30, 2013 and may be further extended.

Descriptive Trademarks Offer Narrow Scope of Protection

by Michael T. Smith | Inside Counsel

The use of descriptive marks often sparks disagreement between corporate marketing and legal departments

Consumer Reviews May be Protected by Anti-SLAPP Laws

by Michael T.Smith | Inside Counsel

Anti-SLAPP laws should serve to further give a potential plaintiff pause when considering a civil action for negative online reviews and comments

Having Facebook Fans Doesn’t Count as Business Expectancy

by Michael T. Smith | Inside Counsel

Facebook can take down your company’s page if another party complains of infringement

Effective Terms of Use Agreements

by Michael T. Smith | Inside Counsel