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.