U.S. Patent and Trademark Office Extends Deadlines for Claiming Priority/Benefit

June 15, 2020 | Intellectual Property News, Legal News
Pursuant to the CARES act and 37 C.F.R. 1.183, the USPTO is further extending the time period to petition to restore the right of priority to or claim benefit of a foreign or provisional application to July 30, 2020.  Details can be found in the full notice. Please contact us with any questions.

U.S. Patent and Trademark Office Further Extends Deadlines

May 30, 2020 | Intellectual Property News, Legal News
The USPTO has further extended the time to file certain patent-related documents and to pay certain required fees pursuant to the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act). Specifically, for small and micro entities, filings that would have been deemed timely filed, if filed by June 1, 2020 pursuant to the CARES Act Notice dated April 28, 2020, will now be deemed timely filed if filed by July 1, 2020.  For large entities, after May 31, 2020, relief will be available to those who need it on a case-by-case basis. Such requests can be submitted through a petition for an extension of time or a petition to revive.  Details are available on the USPTO website.  Please contact us with any questions.

U.S. Patent and Trademark Office Extends Deadlines

April 29, 2020 | Intellectual Property News, Legal News
The USPTO has issued additional guidelines and procedures to address the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act) that additionally extend some deadlines until June 1, 2020. The details for patent situations are available in a USPTO Patent Notice.  The details for trademark situations are available in a USPTO Trademark Notice.  These new notices supercede the prior notices announced March 31st. In many situations, these revised procedures include extensions of 30 days when accompanied by a statement that shows that the delay was due to being personally affected by the COVID-19 outbreak. The particular situations are defined in these notices.

The USPTO remains open electronically for the filing of documents and fees. More information generally regarding USPTO notices during this Coronavirus breakout can be found on the USPTO website. Please contact us with any questions.


U.S. Copyright Office Announces Timing Provision Changes

April 2, 2020 | Intellectual Property News, Legal News
On March 31, the U.S. Copyright Office announced that it will temporarily extend some deadlines relating to the submission of copyright registration physical specimens and notices of termination in concert with the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act) the Register's assessment that there is a national emergency generally disrupting the normal operation of the copyright system.  The details of are found on the Copyright Office website and generally require a statement that the applicant is subject to a stay-at-home order issued by a state or local government or a statement that the applicant is unable to access required physical materials due to closure of the business where they are located. The U.S. Copyright Office remains open electronically for the filing of documents and fees. Please contact us with any questions.

USPTO Revises Procedures for COVID-19 Breakout

April 1, 2020 | Intellectual Property News, Legal News
As announced March 31, the USPTO has instituted new guidelines and procedures to address the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act) signed into law on March 27th, including extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. The details for patent situations are available in a USPTO Patent Notice. The details for trademark situations are available in a USPTO Trademark Notice. In many situations, these revised procedures include extensions of 30 days when accompanied by a statement that shows that the delay was due to being personally affected by the COVID-19 outbreak. The particular situations are defined in these notices. The USPTO remains open electronically for the filing of documents and fees. More information generally regarding USPTO notices during this Coronavirus breakout can be found on the USPTO website. Please contact us with any questions.

USPTO Responds to Public in a Subject Matter Eligibility Update

October 28, 2019 | Intellectual Property News, Legal News
On October 18, 2019, the U.S. Patent and Trademark Office provided an update to their prior guidelines released on January 7, 2019 in response to public comments. (84 FR 50, Jan. 7, 2019, “Guidance.”) The Guidance revises USPTO procedures for determining whether or not a patent claim or patent application claim is directed to one of the judicially created exceptions to 35 U.S.C. § 101: laws of nature, natural phenomena, and abstract ideas. In the October update (“Update”), the USPTO clarifies how an examiner should determine whether a claim “recites” a judicial exception in Step 2A (Prong One). Claims that either state (set forth) a judicial exception or describe a concept that falls under a judicial exception without necessarily explicitly naming it are determined to “recite” a judicial exception. Prong Two of Step 2A analyzes whether the recited judicial exception has been integrated into a practical application. A claim is “directed to” a judicial exception when it satisfies both Prong One and Prong Two of Step 2A of a patent subject matter eligibility assessment. Thus, if a claim is determined to integrate the judicial exception into a practical application, the claim is not directed to the judicial exception. The October Update explains that, in performing Prong Two of Step 2A to determine whether the recited judicial exception has been integrated into a practical application, the Examiner should take into consideration all of the claim limitations as a whole and how those limitations interact and impact each other. For example, the Manual of Patent Examination Procedure (“MPEP”) explains that examiners should evaluate any improvement in the functioning of a computer/other technology/technical field by determining whether the specification provides sufficient details regarding such improvement and, if so, whether the claim reflects the disclosed improvement. The Update notes that this determination, as described by the MPEP and the Guidance, is not an explicit test sanctioned by the courts for performing a Prong Two analysis. Also, as part of this analysis, the examiner should consider other factors that may indicate integration into a practical application such as implementing the judicial exception with a particular machine or manufacture, effecting a transformation or reduction of an article, and applying the judicial exception in some other meaningful way. Whether a claim limitation is, for example, an extra-solution activity is considered without reference to whether such extra-solution activity is well-known, conventional, or routine. The Update also includes a set of further examples and characterizations of court decisions to aid in examiner training.

USPTO Revises Patent Subject Matter Eligibility Guidance

March 7, 2019 | Intellectual Property News, Legal News
On January 7, 2019, the U.S. Patent and Trademark Office released the “2019 Revised Patent Subject Matter Eligibility Guidance” to assist USPTO personnel in evaluating subject matter eligibility. (84 FR 50, Jan. 7, 2019, “Guidance.”) The Guidance revises the procedures for determining whether or not a patent claim or patent application claim is directed to one of the judicially created exceptions to 35 U.S.C. § 101: laws of nature, natural phenomena, and abstract ideas. The new guidelines revise the procedures under what is known as the Alice/Mayo test for determining patent subject matter eligibility. Under prior examination procedure Step 2A, the examiner first determines whether a claim is “directed to” a patent-ineligible concept (laws of nature, natural phenomena, abstract idea) and if not, the inquiry ends there, as the claim is patent eligible. Otherwise, the examiner determines under Step 2B whether the balance of the claim adds “significantly more” to the judicial exception. This analysis is performed by considering the elements of the claim both individually and as an ordered combination. A portion of this analysis involves determining whether the additional elements transform the nature of the claim into a patent-eligible application, such as by reciting aspects that are not “well-understood, routine, conventional activity.” Under the revised procedure, Step 2A is divided into two separate prongs to elucidate the “directed to” inquiry. Under Prong 1, the examiner first evaluates whether the claim recites a judicial exception. For an “abstract idea,” the examiner performs this evaluation by a) identifying the specific limitation(s) in the claim that individually or in combination recites the judicial exception and b) determining whether the identified limitation(s) fall within one of the subject matter groups enumerated in the Guidance, namely mathematical concepts, certain methods of organizing human activity, and mental processes. Examples from the caselaw are cited in support of each of these groups. If the examiner concludes that the identified limitations do fall within one or these groups, then the analysis proceeds to Prong 2. If not, the claim is subject matter eligible. Under Prong 2, which applies to all three types of judicial exceptions, the examiner evaluates whether the identified judicial exception is integrated into a practical application. For example, if the claim applies, relies on, or uses the identified judicial exception in a manner that “imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception,” then the claim is patent subject matter eligible. Otherwise, analysis proceeds to Step 2B, which remains unchanged. With these revised guidelines, the USPTO appears to be attempting to increase the predictability and consistency of the examination process. Of particular note, USPTO personnel is no longer permitted to use the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” Also, the revised guidelines insist that the examiner must consider the claim as a whole when evaluating whether the judicial exception is “integrated into a practical application.” The guidelines further note that a claim that includes conventional elements may still be patent subject matter eligible by integrating a judicial exception into a practical application.

Enfish Decision Breathes New Life Into Computer-Implemented Patents

May 13, 2016 | Intellectual Property News
In the Supreme Court’s pivotal decision in Alice Corp. Pty. Ltd. v. CLS Bank, Int’l (2014), computer-implemented inventions were considered unpatentable if they were directed to an abstract idea. Since that time, many applications have been rejected and issued patents invalidated on the grounds that they were directed to an abstract idea and therefore contained unpatentable subject matter. In Enfish, LLC v. Microsoft Corporation (2016), the Federal Circuit Court of Appeals issued a clarifying decision that should stem the tide and provides an important clarification to support the patentability of many computer-implemented inventions. In setting up a two-stage inquiry for patentability of such inventions, the Supreme Court declared: “We must first determine whether the claims at issue are directed to a patent ineligible concept.” That formulation plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The “directed to” inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” The Federal Circuit then concluded that “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract.” According to the formulation of Enfish, the issue should be determined by a close evaluation of the claims. As the Court held, “Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.” The patentability of computer-implemented inventions is still very much a case-by-case issue, but after the decision of Enfish there is once again room for pursuing such patents, particularly where the claims are written to be more particular to the specific functionality of the improvement, rather than generally to a broad or abstract idea that merely happens to be implemented on a computer.

Trial Court Claim Interpretation Given No Deference On Appeal

March 2, 2014 | Intellectual Property News
In a recent decision, the Federal Circuit Court of Appeals reconfirmed that decisions of a trial court interpreting the meaning of terms used in patent claims are not given deference on appeal. Instead, the court of appeals reviews patent claim interpretations de novo, and need not give the trial court decisions any weight. In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1976), the Supreme Court held that patent claim instruction must be performed as a matter of law by judges, not as a matter of fact by juries. Since that time, trial courts have commonly conducted separate claim construction procedures to interpret any disputed terms used in patent claims in order to instruct the jury as to such meanings rather than allowing the juries to interpret the language themselves. This process has created distinct roles in which judges interpret patents while juries decide whether patents have been infringed. Because the matter of patent interpretation has been deemed a question of law, rather than fact, there is no discretion, no weighing of facts, and no reason for a trial court judge to have a better vantage point than an appellate court judge. As a result, the Federal Circuit Court of Appeals has consistently held that it must review trial court decisions that interpret patent claims as a matter of law, without giving the trial court judge any deference. In LIghting Ballast Control LLC v. Philips Electronics North America Corp., Lighting Ballast argued that the court of appeals should afford some deference to the district court’s interpretations. In particular, it argued that interpretation of documents such as patents is fundamentally factual in nature, and that merely stating that the issue is “an issue of law” does not alter the reality that there are factual aspects in every exercise of claim construction. After all, claim construction is frequently performed by evaluating expert testimony and a variety of documentary forms of evidence, and this analysis shares much in common with evaluating questions of fact. Even if it is property characterized as a question of law, there are sound reasons to give deference to the trial court. Numerous amici submitted briefs taking sides that either aligned with Lighting Ballast, argued that appeals should continue to be a matter of de novo review, or urged a hybrid approach in which underlying factual issues would be given deference but ultimate conclusions would be treated as a question of law. In a divided opinion, the majority primarily expressed a concern for stare decisis, pointing out that in the fifteen years since its holding in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the review of claim construction on a de novo basis has created a significant body of precedent. As far as the majority could discern, there was no argument of public policy, no changed circumstance, and no problem in the ability to apply the current approach. In addition, there was no showing that the Cybor approach was inconsistent with any law or precedent, or that affording greater deference would produce any greater public or private benefit. Without any grave necessity or special justification, the majority of the en banc court could not justify departing from the current approach. A key argument in favor of greater deference to the trial court is that deference would create greater certainty and thereby also reduce the likelihood of an appeal in the first place. The majority argued that this proposition is unsupported, and that the available data seems to indicate that the percentage of cases that are appealed has been declining. Regardless of whether the standard of review affects the number of cases that are appealed, the lack of deference does make it more likely that an appellant can gain a reversal of the claim construction ruling.

Supreme Court to Consider Awards to Successful Patent Defendants

October 2, 2013 | Intellectual Property News
The patent statutes allow the award of attorneys’ fees in a patent infringement lawsuit to the prevailing party—plaintiff or defendant—in exceptional cases. The Federal Circuit Court of Appeals has long held that a prevailing accused infringer must prove the plaintiff’s position was objectively unreasonable and that it was subjectively (that is, knowingly) asserted in bad faith. Some companies that have been sued for patent infringement contend that the standard should be lowered, making it easier for a successful defendant to recover its fees when defending against a weak patent infringement case. Now the Supreme Court has agreed to consider that question. On October 1, the Supreme Court agreed to hear two similar cases. A first case involves Icon Health against Octane Fitness in which Octane prevailed but its request for attorneys’ fees was denied. Octane argued that the standard for exceptionality should be lowered to require objective unreasonableness, but not proof of subjective bad faith. In most cases, the subjective element is extremely difficult or impossible to prove. The Federal Circuit declined the request to lower the standard, and the Supreme Court has agreed to consider it. The Supreme Court also agreed to review an appeal involving Highmark and Allcare Health. The issue in the Highmark appeal involves a similar issue related to the ability of the court of appeals to reconsider a decision made by the trial court. In Highmark, the trial court concluded that the case was exceptional and awarded $5 million in fees to Highmark. In part, the Federal Circuit concluded that the typically high amount of such fee awards is reason to make the standard to award them quite high. After evaluating the lower court decision, the Federal Circuit reversed the award. The issue to be considered by the Supreme Court is whether that reversal was proper, and the degree of deference that must be afforded to a trial court decision finding a case to be exceptional. The Supreme Court will likely hear arguments and issue a decision sometime in summer, 2014.