USPTO Revises Patent Subject Matter Eligibility Guidance

March 7, 2019 | Intellectual Property 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 […]

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 […]

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 […]

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 […]

Inventor’s Purchase Order to Supplier May Place Invention On Sale

August 15, 2013 | Intellectual Property News

The patent statutes provide that an invention cannot be patented when the inventor has placed the invention on sale more than a year before the filing date of the patent application. The so-called “on-sale bar” is clearly applicable when an inventor manufactures an item and sells it directly to others, but its application is less […]

Court of Appeals to Address Standard of Review for Claim Interpretation

March 18, 2013 | Intellectual Property News

For nearly twenty years, the federal courts have addressed the interpretation of the claims in a patent as a question of law, rather than a question of fact. This standard has meant that the court of appeals owed no deference to the findings of the trial courts on matters of claim interpretation, and the lack […]

First to File, Other Patent Rules Effective March 16

February 28, 2013 | Intellectual Property News

The fist-inventor-to-file provision of the America Invents Act takes effect on March 16, 2013. After a long history of granting patents to the first applicant to invent an invention, the new law will now award a patent to the first applicant to file an application for the invention. Under the old system, an applicant faced […]

Court of Appeals Urges Professionalism in Persuasion

January 25, 2013 | Intellectual Property News

In a recent decision, the Federal Circuit Court of Appeals criticized the parties involved for the use of excessive hyperbole in their written submissions to the court, urging instead that counsel should offer a straightforward recital of the facts without the use of such shrill language. Clients sometimes believe that their attorneys should be “aggressive” […]

Federal Circuit Invalidates Soverain eCommerce Patents

January 24, 2013 | Intellectual Property News

In a decision this week, the Federal Circuit Court of Appeals invalidated a group of patents held by Soverain Software LLC and asserted against many companies for practicing electronic commerce, including use of a shopping cart model for sales transactions. Soverain Software sued many online retailers for infringement of several patents that include claims for […]

Court of Appeals Upholds Amendment to False Marking Statute

January 9, 2013 | Intellectual Property News

In the America Invents Act, Congress amended the false marking statute to remove the “qui tam” provision allowing any member of the public to file a complaint based on false patent marking. In a recent ruling, the court of appeals held that the amendment was constitutional. The false marking statue generally provides that products bearing […]