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M. Cionca2/19/2016 10:09:35 PM
About the Design Application For PatentMore
A design patent, as described by the US Patent and Trademarks Office, “consists of the visual ornamental characteristics in, or applied to, an article of manufacture.” This means that, while a utility patent deals with how a device works, a design patent focuses on how a device looks. If an inventor comes up with an original, unique design for the physical appearance of a device, the inventor is able to file a design patent.
It is important to understand what qualifies for a design patent, and what does not. If the shape or surface design of an object is based on its function, it is not considered “ornamental” and does not qualify for a design patent. A milling machine, for example, has a shape defined by the need for the milling head to travel along various axes. This results in a design that is not ornamental, and is not acceptable for a design patent. A design patent can be filed if the surface design of an object has no effect on the objects function, such as the shape of a coke bottle. Finally, a design patent only protects the ornamental appearance of a device, and not its function or structure. If you are seeking to protect the function of an invention, a utility patent will be necessary.
The design can relate to the whole device, a part of the device, or even something that is attached to the device. Whatever part of the device’s design the inventor wishes to patent, it must be made very clear which parts of the device are not included in the claimed design. There is a very simple method for differentiating the two, and it allows the inventor to show the design in its “environment” without confusing the examiner. Ensuring the examiner fully understands your application is important, otherwise the application will be rejected and will require modifications to the drawings before resubmission.
Due to the simplicity of a design patent compared to a utility patent, the cost of filing a design patent is about 1/3 the cost of filing a utility patent. Additionally, it’s much easier to get a design patent granted by the USPTO, partly because of the simplicity of the requirements.
Sections of a Design Application for Patent
A design application has six sections:
1) Preamble, which gives basic information regarding the application (applicant name, patent title, brief description, etc.).
2) Description of the figures presented in the drawing section.
3) A description of features (optional).
4) A single claim (design patents cannot have more than one claim).
5) Drawings (or photographs).
6) Executed oath or declaration.
When selecting a title for the application, it helps to choose one that describes the nature of the design. Using a “code name” does not help the examiner, or the general public, understand the purpose of the invention. A short, informative name is best.
The description of the figures, also known as the Specification, is usually simplified into a list that describes the view of each figure (isometric view, top view, etc.). Additional information is not required, as the drawings themselves are the best way to describe the design. The Specification section may also include additional information, such as descriptions of the design’s use (if that was not already covered in the preamble).
As mentioned above, design patents only have one claim, which defines the design “as shown.” If there is a specific verbal description of the design, the design is claimed “as shown and described.” As there are no other aspects of the patent other than the design, additional claims are not necessary.
The drawing section is the most important aspect of the design patent, and care should be taken to ensure every aspect of the design is visibly presented in this section. Generally, the drawing section should have a minimum of seven figures: top, bottom, front, back, left, right, and a perspective view. If two views are mirror images (left and right side of a chair, for example), it is acceptable to present only one figure, and state the mirror image nature of the two sides in the description of the figures. More complex designs will require more figures. If, for example, the design has moving components, perspective drawings should be included of the design in its various states of motion.
Drawings are required to use black ink on white paper.
Broken lines in a drawing are used to portray components that are not claimed in the patent, but are important aspects of the design’s “environment” that need to be displayed to better understand the design’s usage.
Steps for submitting a Design Application for Patent
The actual process of applying for a design patent is relatively simple. The first step is to draft an application that includes all of the sections mentioned above, with emphasis on the drawing section. The application is then filed with the USPTO, along with the correct filing fee. Upon receiving both the application and fee, the Office assigns the application an Application Number and a Filing Date. The applicant is then sent a Filing Receipt that contains this and other relevant information. An examiner checks the application for adherence to filing rules and formalities, completeness and accuracy of the drawings, and compares the design with “prior art,” which constitutes all of the public information and filed patents prior to the filing date of the patent under examination. If the examiner feels that the design is patentable, then the application is considered “allowed,” and the applicant is given instructions on how to finalize the application process.
If the patent application is unclear, however, or if prior art shows that the claim is unpatentable, then the examiner will reject the patent and issue an Office Action to the applicant. The Office Action explains what aspects of the patent were unsatisfactory, and tends to offer suggestions for rectifying these errors. A response is required from the applicant in a timely manner, or the application will be considered abandoned. The applicant must address every error listed by the examiner for the application to be reconsidered.
Upon receiving the response, the examiner will review the changes and either withdraw the rejection or repeat it and make it “final.” If an application is rejected again in this way, the applicant my attempt to file an appeal with the Board of Patent Appeals and Interferences.
M. Cionca2/24/2016 9:43:26 PM
The PCT International Patent Application ProcessMore
The Patent Cooperation Treaty (PCT) is a treaty that allows for the facilitation of filing a patent application in multiple countries that cooperate with the PCT. Instead of requiring an applicant to file a patent application for each country, the PCT allows the applicant to start the international application process, file a single application, and apply it to all relevant countries.
What is it?
The Patent Cooperation Treaty (PCT) is a treaty that allows for the facilitation of filing a patent application in multiple countries that cooperate with the PCT. Instead of requiring an applicant to file a patent application for each country, the PCT allows the applicant to start the international application process, file a single application, and apply it to all relevant countries. Several benefits afforded to applicants by the PCT include a formalities check, an international search and an optional supplementary international search, an optional international preliminary examination, and an automatic deferral of national processing. These options provide an application with more time and a better idea of whether or not it’s advisable to file an application, and in which countries.
It is important to note that there is no such thing as an international patent, only international patent applications. The PCT procedure does not allow an applicant to receive a “global patent” of sorts that applies to all relevant national Offices. The PCT procedure merely simplifies the process of applying for a patent in multiple countries through the use of an international application process. As detailed below, the international application is sent to each national Office, where it will be either approved or rejected on a country-by-country basis. Use of the PCT, however, still carries a number of advantages, and should certainly be considered if an applicant plans on working towards receiving recognition for a patent in multiple countries.
What can it be applied to?
The international application process can only be applied to the protection of content tha falls under the category of “inventions”. This pertains to inventions, inventors’ certificates, utility certificates, utility models, and several other kinds of patents and certificates. Essentially, if an applicant wishes to file for something that falls outside the scope of “inventions,” such as for a design patent, the applicant cannot do so under the PCT.
How does it work?
The PCT procedure has two different phases, informally referred to as the International Phase and National Phase. The international application process begins in the International Phase, and then (if the results of the international application are favorable) through the National Phase of the relevant countries. The International Phase consists of five parts, three of which are required. The three required steps involve: 1) filing the international application and having it processed by the “receiving Office” (usually the PCT office of the inventor’s native country); 2) the preparation of an international search report and written opinion by an “International Search Authority”; and 3) the publication of the international application with the international search report. This publication is then sent by the International Bureau to the national Offices where the applicant wishes to have a patent granted.
The optional fourth and fifth steps are additional procedures that happen concurrently with step three. Should they be utilized, the resulting reports are sent along with everything else by the International Bureau to the relevant national Offices. The fourth step includes conducting a supplementary international search, carried out by one of several International Search Authorities that were not involved in the primary international search. These supplementary searches result in supplementary search reports, which may also be sent to the relevant national Offices during the third step. The fifth step involves an “International Preliminary Examination” which results in an international preliminary report on patentability. The report analyzes aspects of the invention and determines the general patentability of the invention. If conducted, this report is also sent to the relevant national Offices during the third step.
In order to proceed to the National Phase, the applicant must also take several additional actions in each of the relevant national Offices. These include paying required national fees, providing the Offices with applicable translations of the application, and appointing a patent agent where required. If these steps are not completed within the specified time restraints in a particular national Office, the application is no longer relevant in that Office.
Upon completing the required steps for each relevant national Office, those Offices then examine the application and either grant or refuse the national patent to the applicant. This is where the application is in the National Phase. An application can proceed into the National Phase in some countries while remaining in the International Phase in others, usually if the applicant began the filing process for an application in a specific country before utilizing the PCT. Be aware that subsequent changes to the application in the International Phase will not retroactively affect applications that are already in the National Phase. Applying those changes to applications in the National Phase require the applicant to directly change the national application(s).
Why is it beneficial?
There are several benefits to using the PCT procedure. The largest benefit, however, is the simplification of the international patent application process for the applicant. The PCT allows the applicant to file the international application in one place, in one language, and pay one set of fees. This application is then recognized in all relevant national Offices, and so the applicant does not have to file a separate application for each Office (as would be the case without the PCT).
Most countries that use the PCT have a national Patent Office where the applicant can file the international patent application. This allows an applicant to remain in his or her native country throughout the process and localizes the applicant’s efforts in one place. This localization benefit also allows the applicant to file the application under one language accepted by the Office (which usually ends up being the native language of the applicant) and have the fees paid using one currency, thus avoiding currency exchange difficulties that would otherwise result. The required forms are also standardized under the PCT, allowing applicants to fill out a single set of forms and not worry about dealing with different forms used by different national Offices.
Chances of patentability
Additionally, search and opinion reports produced by the International Phase of the international application process assist the applicant in making decisions regarding whether it is worth prosecuting the application and where. Again, this saves a considerable amount of time and effort on behalf of the applicant, as a centralized report avoids the need to have searches and opinions conducted in each relevant national Office. The option to have supplementary searches conducted by International Search Authorities other than the one who carried out the main search increases the value of the PCT even further. Supplementary searches may provide the applicant with a much clearer picture of relevant prior art and allow the applicant to better determine the chances of successfully patenting the invention under consideration.
The extra time afforded to the applicant by using the PCT is also a very valuable benefit. Most national Offices under the PCT allow for 30 months from the priority date before the application must enter the National Phase. This considerably long grace period in the International Phase gives the applicant time to examine and consider the results of searches and opinions provided by the International Search Authorities, as well as assess the international technical and economic climate. It is then that the applicant can decide which countries are worth the time and cost commitment of applying for a national patent, and save on translation, agent, and filing costs in those that are not.
Another benefit is that a favorable international search report will carry considerable weight when the applicant enters the National Phase and attempts to acquire a national patent for an invention. The benefit of a favorable international preliminary report on patentability (if the applicant chose to have one conducted) is even greater. If the report is only partly favorable, the applicant has the opportunity to modify the claims in the application to focus on the aspects that were favorable. If the report is entirely unfavorable, the applicant can choose not to proceed any further, saving a considerable amount of time and money.
What is included in an international application?
The elements of an international application are, in order: a PCT request, description, claim(s), abstract, and drawing(s). Drawings are usually necessary to the understanding of an invention, but certain inventions may not need them.
The request is essentially a petition for the international application to be processed under the PCT. It is similar to the Application Data Sheet that is filed with non-provisional utility patents to the USPTO, but also includes additional items such as the applicant’s choice of International Searching Authority.
The description for an international application is almost identical to the description for any utility application filed with the USPTO. As described by WIPO, “the description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.” There is an accepted order to the (six) sections of the description, which should contain the following headings: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention,” and “Industrial Applicability.”
The claims for an international application, like the description, are the same as the claims for non-provisional utility applications filed with the USPTO. As described by the WIPO, “the claim or claims must ‘define the matter for which protection is sought.’”
Drawings are included in an international application when they are required. As described by the WIPO, drawings must be included “when they are necessary for the understanding of the invention.” It is also important to note that any designated Office may require the applicant to file drawings during the National Phase, even if they weren’t required during the International Phase.
Iris Kim PhD2/26/2016 9:01:17 PM
The Patent Trial and Appeal Board Denies Request for Inter Partes Review for Late FilingMore
On January 27, 2016 and February 2, 2016, the Patent Trial and Appeal Board (PTAB or Board) denied two requests from Lannett Holdings for inter partes review (IPR) of AstraZeneca’s U.S. Patent Nos. 6,750,237 and 7,220,767. These petitions for IPR were filed one day after the one-year bar that is set by 35 U.S.C. 315(b), which prevents a petitioner from requesting an IPR of a patent if one year has passed since the petitioner has been served with a complaint alleging infringement. AstraZeneca sued Lannett Holdings for patent infringement on July 25, 2014, making the one-year deadline July 25, 2015, which fell on a Saturday. This meant that the deadline became Monday, July 27, 2015. However, Lannett Holdings filed their petition the following day, July 28, 2015.
With regards to the late filing, Lannett Holdings “disputed whether there was an effective service” (IPR2015-01629) when AstraZeneca served their complaints of infringement of the ‘237 and ‘767 patents. Lannett Holdings’s argument was that AstraZeneca’s failure to deliver its complaints directly to a manager of Lannett Holdings’s registered agent CSC Entity Services, LLC, was improper under Delaware law. Their proof of service showed that the company rather than an individual had accepted the service. However, the Board found that “the entity status of the petitioner, and not [of] its registered agent for accepting service” is the one that “dictates the proper procedure for service of process.” (IPR2015-01629, Paper 14 at 5; IPR2015-01630, Paper 16 at 3.) The Board concluded that AstraZeneca was in compliance with Delaware law.
The Board ultimately made its decision and said that “based on evidence of the record, Petitioner has not made sufficient showing that it is not barred from requesting an inter partes review,” (IPR2015-01629). The Board determined that both petitions were indeed time-barred, and denied both requests. Petitioners should be cautioned that any service of a complaint may trigger a time-bar, whether they believe this service to be proper or not, and thus should take care to timely file their requests.
See the following article on the precedential decision LG Electronics v. Mondis Tech Ltd. for more discussion on the 35 U.S.C. 315(b) time bar:
M. Cionca2/29/2016 8:30:54 PM
A Short Patent Obviousness HistoryMore
The concept of obviousness is an extremely important concept in U.S. patent law. Many battles are won or lost when obviousness is an issue. Inventors cannot obtain a patent unless their inventions are not obvious to one of ordinary skills in the respective art. Asserted patents can be invalidated by an infringer in PTAB proceedings (e.g., inter partes reviews) or in court for claiming something that is obvious.
In the beginnings of U.S. patent law, that an invention be nonobvious in order to deserve a patent was not required. First US patent statute of 1790 only required that the invention be “sufficiently useful and important.” 1 The following patent statutes between 1793 – 1952 only required that the invention be useful (i.e., utility requirement) and novel (i.e., novelty requirement).
The concept of obviousness was first developed by the courts. Its origin 1 can be probably traced to the 1850 case of Hotchkiss v. Greenwood 2. The Supreme Court held that that a patent for a new product can be invalidated if only the skills of an “ordinary mechanic” familiar with the field of invention would be required to construct the product. The patented product in this case was a door knob made of potter’s clay or of porcelain. Before this knob, knobs were essentially the same but made from metal or wood. The patented knobs proved to be cheaper, more attractive and lasted longer. In other words, it was a better product. Still, the patent was invalidated just because no “ingenuity” was required to construct the knob, ordinary mechanic skills were enough. In a later case however Smith v. Goddyear Dental Vulcanite Co. (1876) 3, which in this author’s view is not much different, the Supreme Court held that a patent directed to false teeth set in rubber was valid, in spite of known false teeth set in gold, silver, etc. The simple substitution of a material was patentable according with the Court because of value recognized by dentists and because of commercial success of the product. The Court appears to introduce here for the first time 1 what it is known today as the concept of “secondary considerations” (e.g, commercial success, failure of others, long-felt need in the art) that can tilt the balance in favor of patentability in a tight case.
The Patent Act of 1952 codified the concept nonobviousness, also known as “inventive novelty” in Section 103 by requiring that the subject matter sought to be patented be nonobvious to a “person having ordinary skills in the art” (PHOSITA) at the time the invention was made.
The America Invents Act of 2011 changed the “at the time the invention was made” language to the “effective filing date” to make the nonobviousness requirement consistent with the first-to-file patent regime introduced by the act.
See 2 Donald S. Chisum, Chisum on Patents, Vol. 2, § 5.02 (Matthew Bender)
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 265 (1850)
Smith v. Goddyear Dental Vulcanite Co. 93 U.S. (3 Otto) 486 (1876)
M. Cionca3/10/2016 10:02:13 PM
Key Considerations for a Successful Life Science StartupMore
I have recently participated at an event organized by OCTANe in Orange County, California, called “Startup Series: Building a Life Science Startup.” The speakers addressed several key issues a startup company in general and a life science company in particular needs to address in order to increase the likelihood of business success. It was a good refresher on what it takes to start right. I’ll address some of the key issues briefly below.
Key No. 1: Strong Intellectual Property Protection
The founders of a life science startup, who often are inventors of new drugs, treatments or other technology in the space need to take seriously the efforts of procuring strong intellectual property (IP) protection for the inventions or technology they developed, Patents, but also trademarks and other forms of IP need to be considered. One aspect often overlooked is the chain of ownership of the inventions. Under US patent law, inventors are the initial owners of the inventions they develop. Oftentimes, a startup will engage a consultant (e.g., a researcher, a prototype developer, a manufacturer, etc) to help develop the technology. If the consultant contributes inventive aspects to the technology, the consultant is co-owner of any patent granted for the technology UNLESS an assignment agreement was in place that clearly transfer ownership to the startup. It is a myth to believe that an NDA (non-disclosure agreement) will accomplish this critical objective, unless of course, such NDA is well drafted to include strong invention and other IP assignment provisions.
Key No. 2: Get Ready for the FDA and other Regulatory Approval
If needed, clinical trials have to be well planned out. It is often less expensive and more expedient to launch the startup in smaller markets, such as Canada, gather clinical data in those markets and use that data later in U.S. Navigating the regulatory landscape is not an easy task, and thus, engaging a professional consultant specialized in this area is recommended.
Key No. 3: Create and Refine the Startup’s Brand before Launch
This entails more than choosing a name for the company and a name for the product or service. That is only the start. A coordinated and integrated messaging strategy is needed across all communication platforms.
Key No. 4: Raising Funds from Investors
The success in raising funds from the investors depends primarily on how well the first key issue was handled. Investors will do their own due diligence by investigating the strength of the IP the startup owns. Thus, once again, securing strong IP protection is critical. Also, the right investor in the startup is often the investor who has expertise in the space the startup intends to operate in. If the investor is also passionate about solving the problem the startup’s technology solves, that is even better.
Marin Cionca, Esq.4/2/2016 7:28:40 PM
What a Patent Is and What is Not!More
Inventors and entrepreneurs often come up with ideas for new products and services and look for ways to protect their ideas. Often they think of a patent as the protection tool of choice. In my many years of intellectual property law practice I have seen a common misunderstanding of what kind of protection a patent offers. I’ll attempt to clarify what a patent does and does not in this short article.
A patent IS NOT a right to sell the innovative product
Often, inventors believe that they would need to get a patent in order to have the right to sell their new product or service without interference from the government, competitors or anybody else. They believe in other words that the patent will give them an exclusive right and a clear path to make and/or sell the new product and make a lot of money in the process. The second part regarding making lots of money may be true if there is a strong market demand for the new product. However, the first part of the belief is unfortunately wrong.
For example, the inventor entrepreneur may be able to obtain a patent for the product and still not be allowed to make or sell the product. To illustrate, let’s say the inventor invented a new product comprised of component A and component B. The inventor may obtain a patent (i.e., patent A+B) if for example component B is new and nonobvious to one of the ordinary skills in the respective field of technology, even if component A is a well known. However, the inventor entrepreneur may not be allowed to make and sell the new product if component A is protected by a valid and unexpired patent. Thus, in this scenario, even though a patent is obtained, the road ahead to the market place is blocked by the patent on component A. To clear the way, some kind of agreement with the patent owner for component A will have to be entered into, often called a patent licensing agreement.
A patent IS a right to exclude others
A patent gives the patent owner the right to exclude others from making, using, selling or importing the innovative product. If the patent is a US patent, all these activities would be prohibited in United States, unless the patent owner’s permission is secured first. This is not a small thing. If a utility patent for example, it may be a monopoly in making money with the new product for up to 20 years. This is particularly valuable if for example in the scenario above component A is not covered by any patent or is only covered by an expired patent. That would mean that the patent owner need no one’s permission to exclusively make and sell the new product. Even if, as in the example above, component A is protected by a valid and unexpired patent, the patent on A+B has great value. As stated earlier, with a license from patentee A, patentee A+B can still make and sell the new A+B product. In addition, with a patent on A+B, the inventor entrepreneur blocks patentee A from making and selling the new product A+B. This advantage may be used for example in negotiations with patent A owner.
Iris Kim, PhD4/21/2016 8:57:51 PM
New Patent Trial and Appeal Board Post-Grant Proceedings Rules are Introduced by the USPTOMore
The U.S. Patent and Trademark Office (USPTO) released a new set of rules for AIA post-grant proceedings at the Patent Trial and Appeal Board (PTAB or the Board) in early April 2016, to go into effect on May 2, 2016. The Federal Register with the final rules can be found here. The new rules amend the post-grant proceedings practices of PTAB trials of inter partes review (IPR), covered business method (CBM) review, post-grant review (PGR), and derivation proceedings.
Among the changes are that: the patent owner’s preliminary response may contain testimonial evidence, a claim construction similar to that used by the district courts will be applied for patents that will expire before the final written decision is entered, all parties make Rule 11-type certifications on their papers filed in a proceeding, parties have 7 instead of 5 business days to review oral hearing demonstratives, and there are new word count limits for many papers.
Under the current rules, newly created testimony and evidence cannot be used during the pre-institution stage. With the changed rules, when a patent owner is in AIA proceedings, they may now have the option to find experts and evidence for their preliminary response rebutting the petitioner.
For patents expiring before the final written decision is entered, either involved party may request by motion within 30 days of the petition that the Phillips standard be used, where the plain and ordinary meaning of claim terms are applied. The Board will then decide if the motion is appropriate.
Rule 11 of the Federal Rules of Civic Procedure (FRCP) requires that all papers are to be signed by the attorney if the party is being represented by one. The rule also allows for sanctions on an attorney or party if their filed pleading is deemed to be for an improper purpose, was not warranted, lacks evidentiary support, or was frivolous. By applying a Rule 11-type certification to the papers filed in PTAB post-grant proceedings, a sanction may be placed on parties found to be in violation of a duty of candor to the USPTO.
Marin Cionca5/17/2016 9:06:33 PM
Lessons from Orange County World Trade WeekMore
On May 17, 2016, I have participated at an event called Orange County World Trade Week at Marriott in Irvine. Presenters and sponsors included Irvine Chamber of Commerce, Edwards Life Sciences, LA Ports, U.S. Small Business Administration (SBA) and U.S. Export Assistance Center of the Department of Commerce. Keynote Speaker was Kelly Vlahakis-Hanks, President & CEO of Earth Friendly Products. Attendees included businesses interested in exporting their products and services to foreign countries.
Basically all speakers, during the sharing of their knowledge, experience and advice to businesses interested in exporting, suggested due diligence and planning, which MUST include intellectual property (IP) protection efforts abroad. That intellectual property the business may have may include one or a mix of patents, trademarks, copyrights and trade secrets.
IP protection secured in U.S. cannot protect a business in a foreign country. A U.S. patent gives exclusive rights to the patent owner to make, use, sell or import a product only in U.S. Similarly, a trademark registration in U.S. protects the owner typically only in US.
Thus, IP filings in the countries were exporting is desired may be critical to protecting exporter’s technology, designs, inventions, trademarks or other intellectual property. Sometimes, a U.S. IP counsel may help secure protection in foreign countries, using international channels, such as the Madrid protocol for trademarks. Other times, local foreign IP counsel is needed to secure for example a patent in the respective foreign country. These IP efforts and associated expenses have to be part of a good plan to expand business internationally.
Marin Cionca5/17/2016 9:11:21 PM
IP ALERT: Renewed Hope for Software Patents?More
On May 12, 2016, the United States Court of Appeal for the Federal Circuit (CAFC) issued a decision in ENFISH, LLC v. MICROSOFT Corp. et al., a case related to computer technology and software. The decision appears to give some additional hope to inventors and patent owners in the software space.
After the 2014 decision in Alice, by the Supreme Court, software patents were more difficult to obtain and easier to invalidate. Software inventions were deemed “abstract ideas” unless it was shown that the invention improved the computer technology itself.
Enfish sued Microsoft for infringement of several patents related to a “self-referential” database. In contrast to the relational model, the patented self-referential database has two features that are not found in the relational model: first the self-referential model can store all entity types in a single table, and second the self-referential model candefine the table’s columns by rows in that same table. This allows for faster searching of data, more effective storage of data and more flexibility in configuring the database.
A representative claim reads as follows:
A data storage and retrieval system for a computer
means for configuring said memory according
to a logical table, said logical table including:
a plurality of logical rows, each said logical
row including an object identification
number (OID) to identify each said logical
row, each said logical row corresponding to a
record of information;
a plurality of logical columns intersecting
said plurality of logical rows to define a plurality
of logical cells, each said logical column
including an OID to identify each said logical
means for indexing data stored in said table.
The district court concluded that the claims were directed to the abstract idea of “storing, organizing, and retrieving memory in a logical table” or, more simply, “the concept of organizing information using tabular formats.” However, the CAFC held that “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” It found in the end “that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”
This case seems to signal that the CAFC is ready to apply Alice test more narrowly and allow some software patents to survive. Again, the key is to be able to show that the invention actually improves the way computers operate. USPTO also issued a memorandum to examiners on May 4, 2016 which appears to increase the requirements for how examiners should formulate a subject matter eligibility rejection under§ 101, using Alice. Both of these events give renewed hope to inventors and patentees in the software and computer technology field.
M. Cionca and I. Kim6/15/2016 5:10:40 PM
PATENT LAW ALERT: Patentees’ Path to Enhanced Damages is Now EasierMore
35 U.S.C. 284 of the Patent Act, provides that in patent infringement cases, the courts “may increase the damages up to three times the amount found or assessed.” Following In re Seagate Technology, LLC, 497 F. 3d 1360, 1371 in 2007, the Federal Circuit had developed a two-step test, where damages may be increased if a patent owner can “show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” The patentee also had to show that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” Only then could enhanced damages be awarded.
New Supreme Court Decision
On June 13, 2016 the Supreme Court decided the cases of Halo Electronics, Inc. v. Pulse Electronics, Inc., et al., No. 14-1513 and Stryker Corp. et al. v. Zimmer, Inc., et al., No. 14-1520. In Halo, the Supreme Court set out to answer whether the Federal Circuit erred in providing that rigid, two-step test, since the test was said to be “the same as the rigid, two-part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for imposing attorney fees under the similarly-worded 35 U.S.C. § 285” (Petitioner’s Opening Brief, No. 14-1513). In rejecting the test for awarding attorney’s fees, the Supreme Court had found that the framework for the test was not consistent with the statutory text. In Halo, the Supreme Court again held that the test was indeed too rigid, allowing some egregious infringers to not be subject to the payment of enhanced damages.
Halo Electronics, a manufacturer of circuit board transformers, had claimed that Pulse Electronics infringed its patents. Although Halo Electronics won in its case for infringement, the district court did not find that enhanced damages were appropriate to be awarded, under the two-step Federal Circuit test. This decision was affirmed by the Federal Circuit, which found that Pulse Electronics “did not sell or offer to sell within the United States the accused products that Pulse manufactured, shipped, and delivered to buyers outside the United States,” and the alleged infringement was said to be “not willful” (Halo Electronics, Inc. v. Pulse Electronics, Inc., Nos. 13-1472, -1656 (Fed. Cir. Oct. 22, 2014)).
Similarly, Stryker Corp, a maker of medical devices, had been denied enhanced damages by the Federal Circuit, following winning a patent infringement case. Stryker Corp. and Halo Electronics alike argued that an infringer having a reasonable defense may be able to avoid paying enhanced damages under the rigid two-step test.
When the Supreme Court granted writ of certiorari to review this decision, it was unanimously decided that the two-step test was not consistent with the language found in 35 U.S.C. 284, and the judgment was vacated, stating that the two-step test “requires a finding of objective recklessness in every case before district courts may award enhanced damages,” which “excludes from discretionary punishment many of the most culpable offenders.” Because “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct,” it was held that the “subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”
Additionally, the “clear and convincing evidence” standard of the Federal Circuit was repaced by the Supreme Court, which stated that “patent-infringement litigation has always been governed by a preponderance of the evidence standard,” and added that enhanced damages “are no exception” to this. The concluding remarks by Chief Justice John Roberts in the Supreme Court’s decision included the statements that the “Court holds that awards of enhanced damages should be reviewed for an abuse of discretion… I agree. But I also believe that, in applying that standard, the Federal Circuit may take advantage of its own experience and expertise in patent law. Whether, for example, an infringer truly had ‘no doubts about [the] validity’ of a patent may require an assessment of the reasonableness of a defense that may be apparent from the face of that patent… And any error on such a question would be an abuse of discretion.”
More now than before, patentees may want to create a clear record by sending for example cease and desist letters to infringers. That may prevent the infringers from alleging lack of knowledge and thus ease up the path to enhanced damages.
Product developers on the other hand, also more than before, would be wise to create their own record to help them show if necessary that they acted in good faith, by for example requesting advice from patent counsel.
Marin Cionca7/12/2016 4:34:40 PM
PATENT LAW ALERT: USPTO Provides New Tool to Patent Practitioners for Overcoming Final RejectionsMore
On July 11, 2016, the United States Patent and Trademark Office (USPTO) has published a notice in the Federal Register outlining a new pilot program that can be used by applicants for patent and patent practitioners in the effort to overcome final rejections issued by patent examiners. The new pilot program is called Post-Prosecution Pilot Program (P3) and was designed to “test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal.”
The P3 Program
The P3 program combines new features with features of two existing programs that will remain in effect along with the P3 program. They are the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal program), and the After Final Consideration Pilot Program 2.0 (AFCP 2.0). The new combination of features under P3 includes for example “(i) an after final response to be considered by a panel of examiners (Pre-Appeal), (ii) an after final response to include an optional proposed amendment (AFCP 2.0), and (iii) an opportunity for the applicant to make an oral presentation to the panel of examiners (new). Finally, the panel decision will be communicated in the form of a brief written summary. Section II of this notice provides a more complete identification of the requirements and procedures of the P3.”
To be considered under the P3 program, a patent applicant must submit the following items:
(1) P3 Request: A transmittal form, such as form PTO/SB/444, that identifies the submission as a P3 submission and requests consideration under the P3 program;
(2) Response to Final Rejection: a response under 37 CFR 1.116 comprising no more than five pages of patentability arguments; and
(3) Applicant Statement: a statement that the patent applicant is willing and available to participate in the conference with the panel of patent examiners.
(4) Optional Amendment: a P3 request may include a proposed non-broadening amendment to patent claim(s).
After the USPTO determines that a P3 request is timely and compliant a Supervisory Patent Examiner (SPE) (preferably the SPE of the examiner of record) will coordinate a panel experienced in the relevant field of technology to review the response under filed with the P3 request. “The panel may include the examiner of record, the SPE, and a primary examiner (preferably the signing primary examiner for the examiner of record, if the examiner of record is a junior examiner).”
The conference between the patent applicant and the P3 panel can be held in-person, by telephone, or by a video conferencing tool set up by the Office, such as WebEx®.
This new tool should be welcomed by patent applicants and patent practitioners alike. The P3 program may be particularly useful when working with the examiner of record does not advances the application toward allowance, and especially when the examiner of record does not become a member of the P3 panel. It provides the opportunity for the applicant to place both, written arguments AND oral arguments, including a product demonstration for example, in front of two, potentially three, additional experienced patent examiners.
Full USPTO notice regarding the P3 program is available at: https://www.federalregister.gov/articles/2016/07/11/2016-16423/post-prosecution-pilot-program
Marin Cionca8/24/2016 9:33:38 PM
Patent Claim Construction: Recent Case Law ExamplesMore
Claim construction is critical to the scope of a patent, and thus, to the patent value, but also to its validity. For example, a narrow construction of a term or phrase recited in a claim may significantly reduce the claim scope and thus the value of the patent but may in the same time lead to overcoming an invalidity challenge based on prior art. Vice versa is also generally true. Thus, a broad patent claim or broad interpretation is not always good, as it exposes the patent claim to a higher risk of being found to overstep into the prior art, and thus invalid. Similarly, while a narrower claim it is more unlikely to be found invalid, its value may be limited by its narrower scope, which makes it harder to catch infringers. It should be apparent that a “right” balance is desirable, and that’s a moving target, which challenges the inventors, patent owners and patent practitioners alike.
EXAMPLE ONE: “COLLECTION VESSEL”
On January 29, 2016, a panel of the Court of Appeal for the Federal Circuit issued a unanimous decision in Akzo Nobel Coating, Inc v. Dow Chemical Company, finding no infringement by Dow Chemical Company of Akzo’s U.S. Patent No. 6,767,956 (the ‘956 patent). At issue was the phrase “pressurized collection vessel,” which the district court construed earlier as being a “tubing, piping, or other container, where a desired material accumulates.” The district court found no infringement of the asserted patent claim containing the pressurized collection vessel limitation because Dow’s equipment did not accumulate the dispersion traveling through it. Akzo argued for a plain meaning construction of the term collection, to mean “gather or receive.” The appeal panel rejected Akzo’s proposed construction and explained that Akzo’s position would render the term “collection” superfluous, as any vessel can “gather or receive.” The panel reiterated that a patent claim construction that gives meaning to all claim terms is preferred.
EXAMPLE TWO: “ANALYZER SERVER”
On February 26, 2016, a panel of the Court of Appeal for the Federal Circuit issued a unanimous decision in Apple Inc. v. Samsung Electronics Co., Ltd. In the dispute, Apple asserted five patents. A claim of one of the asserted patents included recited “program routines including an analyzer server for detecting structures in the data” and then linking certain actions (e.g., calling a detected phone number). Accused Samsung’s Browser and Messenger applications used software stored in program libraries to perform the detection and linking functions. Apple argued that the software stored in the shared program libraries was the “analyzer server” required by the asserted patent claim. Based on testimonies of experts and inventors, the Federal Circuit saw a distinction between a program run by server separately as is typical in a client-server implementations and a program borrowed from a library and used by those applications. As such, no infringement by Samsung was found.
As a practical matter, during the drafting and prosecution of application(s) for patent, inventors, applicants and patent practitioners should consider, if the budget permits of course, spending the necessary resources to refine and distil the claims. For example, after an application for patent is allowed, a continuation application can be filed with a new refined or redirected set of claims to align better with the technology to be protected and with desirable constructions of the claims.
Iris Kim, PhD9/22/2016 9:45:13 PM
A New and Useful End Result of a Process for Preserving Cells is Patent-Eligible Subject MatterMore
The Federal Circuit held in Rapid Litigation Management v. CellzDirecton July 5, 2016 that the claims of U.S. patent no. 7,604,929 were directed to patent-eligible subject matter. This case occurred after summary judgment by the District Court that the claims were invalid under 35 USC 101, meaning that the claims were directed to unpatentable subject matter, and the owner of the patent had appealed this decision. The case addresses some key issues concerning the Mayo analysis, discussed here, which uses two steps for analyzing a subject matter’s patent eligibility.
The claims were directed to methods for producing and preserving pure cultures of mature hepatocytes, a type of liver cell. Hepatocytes are useful for research purposes involving testing treatments and performing diagnostics, and previous techniques used cryopreservation to save the cells for later use. This process involves freezing the hepatocytes, thawing them, and recovering any viable cells using a method called density gradient fractionation. One of the drawbacks of this procedure is that it can damage the hematocytes and therefore lead to poor recovery of viable cells. Another drawback is that, with this method, the cells could only be frozen once, and upon thawing, must be used or discarded.
It was then found by the owners of the ‘929 patent that some hematocytes could survive multiple freeze-thaw cycles, resulting in better recovery of cells. This innate property of the hematocytes that allow them to survive could not be patentable, since, as a law of nature, would be considered patent-ineligible subject matter, and this was what was concluded by the District Court initially. Although the refreezing behind the preservation method could have been characterized as a law of nature, the claims reciting the method led to a new and useful result. The claims were found to not simply directed to the ability of the hematocytes to survive the freeze-thaw cycles. Thus, the improved preservation technique that outlines the steps of preserving and reusing the cells was found to be patent eligible.
An unexpected outcome was described by inventor Dr. Hardy, stating that “initially we just proved that you could twice freeze the cells and still have viable cells… [T]he unexpected outcome was that cells twice frozen behaved like cells that were once frozen.”
As stated in the opinion by the Federal Circuit, “Repeating a step that the art taught should be performed only once can hardly be considered routine or conventional. This is true even though it was the inventor’s discovery of something natural that led them to do so. Just as in [Diamond v.] Diehr, it is the particular ‘combination of steps’ that is patentable here. The inventors discovered that some percentage of hepatocytes can survive multiple freeze-thaw cycles and applied that discovery to improve existing methods for preserving hepatocytes. To require something more at step two [of the Mayo test] would be to discount the human ingenuity that comes from applying a natural discovery in a way that achieves a ‘new and useful end.’”
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899VERIFY