PRIOR ART SEARCHING BEFORE PATENT FILING CAN SAVE BOTH TIME AND MONEY – Judicious Budgeting Decisions for Patent Portfolio Owners

Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate why the invention is novel over the prior art or, still worse, fail to highlight the significance of the differences between the invention and the prior art. It is imperative to know the prior art before filing a patent application to avoid these pitfalls.

The recent case MPHJ Tech v. Ricoh (Fed. Cir. 2017)[16-1243-opinion-2-9-2017-11] is illustrative of the avoidable pitfalls a quickly-prepared provisional application can generate. The court instructs that a “provisional application can contribute to understanding the claims…[and that in] this case, it is the deletion from the [provisional]… that contributes understanding of the intended scope of the final application.” The patentee was unsuccessful in arguing for a narrow claim construction to avoid a prior art reference because its provisional patent application was drafted unnecessarily broadly, ostensibly without consideration of the prior art that the patentee was unable to overcome. Continue Reading

Weekly Data Privacy Alert – 6 February 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection and Cybersecurity team. This week’s alert covers news from Germany, the UK and the US.


  • Federal Ministry of Transport and Digital Infrastructure Adopts New Draft Regulation on the Use of Drones
  • Federal Data Protection Commissioner: National Amendment and Implementation of the GDPR Must Be Improved
  • Bavarian Data Protection Commissioner Presents Activity Report for 2015/2016
  • German Data Protection Commissioners Celebrate the 11th European Data Protection Day


  • Business Owners With CCTV Could Be Fined If They Fail to Register With the ICO
  • ICO Creates International Strategy and Intelligence Department


  • US House of Representatives Passes Email Privacy Act
  • Department of Justice Publishes “Covered Countries” Under Judicial Redress Act

For more information on any of these items, or data privacy issues generally, please feel free to call any of the following individuals:

Annette Demmel (Germany)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

Philip Zender (San Francisco)

Weekly Data Privacy Alert – 30 January 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection and Cybersecurity team. This week’s alert covers news from France and the UK.


  • Digital Republic Bill Brings Material Changes to the Framework Regulating the French Telecommunications Industry
  • CNIL Publishes Guidelines on Password Protection


  • ICO Warns Against Taking Clients’ Personal Information to a New Company
  • High Court Rules on Legal Professional Privilege Exemption to Subject Access Request
  • A Claim Under the Data Protection Act May Be Brought Alongside a Defamation Claim
  • Minister for Digital and Culture Clarifies the UK’s Approach to the GDPR

For more information on any of these items, or data privacy issues generally, please feel free to call any of the following individuals:

Stephanie Faber (France)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

USPTO Considers Terminating Accelerated Examination Program

In 2006, the USPTO implemented the accelerated examination program that allows a patent application to be examined more quickly out of turn.  The program requires the applicant to file a petition to make special with an appropriate showing.  Now, the USPTO has published a ‘Request for Comments Regarding the Continuation of the Accelerated Examination Program’.

The USPTO is considering the termination of the accelerated examination program because the number of requests has been too low to justify the cost of continuing the program. The lack of popularity of the accelerated examination program is mainly due to the introduction of the prioritized examination program (referred to as ‘Track One’) in 2011.  The Track One program was provided for in the America Invents Act (AIA) and also provides the ability to advance an application out of turn, but without some of the burdensome requirements of the accelerated examination program.  Since its introduction, requests for Track One have approached 10,000 annually compared with fewer than 250 applications accepted into the accelerated examination program each year.

As a result, it is unclear whether the accelerated examination program continues to provide an adequate benefit to the public to justify its cost of implementation.  The USPTO has opened the period for comment on this issue through March 13, 2017.

UK – Court rulings heighten the risk of employees inadvertently amending contracts

An anti-oral variation clause is drafted into most commercial agreements. Typically, this boilerplate clause will say that any changes to the terms of the contract must be agreed in writing and signed by all of the contracting parties.  The objective is to avoid the uncertainty, and potential for disputes, that would arise if the contract could be informally varied, either orally or by conduct.

However, a line of recent judgments has cast doubt on the effectiveness of these clauses. In each of these cases, the court found that the contract had been varied orally, or by conduct, despite the contract containing an anti-oral variation clause.  The courts acknowledged the value of anti-oral variation clauses in promoting certainty, but said that the courts should give primacy to the principle of party autonomy and this meant that the parties could not, by a term of the contract, fetter their future ability to amend it.

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Recent District Court reliance on Federal Circuit’s Enfish / McRO decisions may signify trend for Alice/Mayo patent eligibility test

In June 2014 the Supreme Court introduced the two-step Alice/Mayo test for patent eligibility, intended to exclude from patenting claims directed to ineligible abstract ideas under 35 USC 101.  Since that time, the Federal Circuit has issued numerous precedential opinions applying this test to software claims.  This body of law, however, has yet to provide a decisional mechanism beyond factual comparisons between a patent claim at issue with claims previously adjudicated under Alice/Mayo.  Eventually this unwieldy state of the law will evolve into something more manageable. In the meantime, district courts continue to struggle with applying the Alice/Mayo standard to software claims.  As expressed by Judge Gilliam of the Northern District of California, “[w]hile the Court is of the view that a more concrete standard for identifying abstract ideas would improve predictability and enable more efficient use of judicial and party resources, it will do its best to apply the current guidance.”

Enfish v. Microsoft Corp. and McRO v Bandai Namco Games America Inc. stand out from among the more recent Federal Circuit decisions applying the Alice/Mayo test to software claims.  These are the first decisions upholding the validity of software patent claims as not directed to a patent-ineligible abstract idea (prior decisions either held, or assumed, a software claim was directed to an abstract idea).  More importantly, though, the holdings in Enfish and McRO are based on a legal framework not so heavily dependent upon finding a factual similarity with a previously adjudicated patent claim before deciding whether the claim is patent eligible.  Instead, the eligibility determination is more grounded in a statement of law embodying generally-applicable principles concerning invention. For example, the panel in Enfish phrased the question of patent-eligibility this way:

“whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

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The Post-Prosecution Pilot (P3) Program – Worth Reactivating?

The U.S. Patent and Trademark Office (USPTO)’s Post-Prosecution Pilot (P3) Program, launched on July 11, 2016, was terminated on January 12, 2017, just 6 months after it began.  In general, the P3 Program combined the benefits of a Pre-Appeal Brief Request for Review and the After Final Consideration Pilot 2.0 program (AFCP 2.0), and included additional benefits for the applicant.  For instance, filing under this program provided for an after final response to be considered by a panel of examiners, an after final response to include claim amendments, and an opportunity for applicants to make a presentation to the panel of examiners to discuss why their claimed invention is patentable.  In addition, there was no government fee for filing a response under the P3 Program.

The P3 Program was ultimately designed “to increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision[.]” Federal Register, Vol. 81, No. 132, (July 11, 2016).  According to the USPTO, the P3 Program was also designed to “reduce the number of appeals and issues to be taken up on appeal to the Patent Trial and Appeal Board (PTAB), and reduce the number of Requests for Continued Examiner (RCE), and simplify the after final landscape.” (Id.) Continue Reading

When Does a Suggestion Become an Invention?

This is a question that every patent attorney faces during their career.  Who contributed to the invention covering a product can become contentious, particularly in the pharmaceutical context where successes are few and far between.  The Federal Circuit addressed the issue of when a suggestion amounts to a contribution to conception of an invention in the recent decision of Cumberland Pharmaceuticals Inc. v. Mylan Inc., No. 16-1155 (Fed. Cir. Jan. 24, 2017).

Background Facts

The patent at issue, US 8,399,445 B2, covers methods of treating acetaminophen overdose with stable acetylcysteine compositions substantially free of chelating agents.  Mylan challenged the patent under 35 USC 102(f) arguing that the listed inventor derived the invention from a suggestion of the Food and Drug Administration (FDA).

Cumberland sought FDA approval of an acetylcysteine formulation that contained the chelating agent EDTA.  While reviewing Cumberland’s New Drug Application, the FDA instructed Cumberland to provide scientific and regulatory justification for including the chelating agent EDTA in the formulation since the amount included was non-trivial.  Based on the understanding in the prior art that a chelating agent was needed to stabilize the drug in the formulation, Cumberland responded to the FDA’s request that lowering or removing EDTA would raise questions about the safety and efficacy of the product.

The inventor testified that shortly after this exchange, he had the idea of testing the stability of the formulation without EDTA.  As part of a post-marketing commitment, Cumberland conducted stability studies and found that not only was EDTA not required for a stable solution, but that a stable solution could be prepared without any chelating agent, which finding formed the basis of the claims in the patent. Continue Reading

New Bill Changes Telecoms Regulation in France

In earlier posts, we have highlighted the impact of the Digital Republic Bill in France on regulation in the digital sphere, such as open data, the online cooperative economy and access to the internet. This post highlights the changes introduced by the Bill that will particularly affect stakeholders in the telecommunications sector. The key measures in the Bill of particular interest to them are:

Implementation of the Net Neutrality principle -this principle is enshrined in the Bill to ensure continuous and non-discriminatory access to the internet, in line with Regulation 2015/2120 of the European Parliament and Council. The French Telecommunications Authority (“ARCEP”) is tasked with monitoring the implementation of the principle and the enforcement of these new rules;

Introduction of the obligation to publish coverage maps – ARCEP must release to the public the coverage maps provided by electronic communications providers along with the data used to create them. These coverage maps will be available as open data files. Everyone will be able to use these maps and develop innovative applications, in particular for comparing operators. This confirms the plan announced by ARCEP last year at its strategic review to implement a data-driven regulation;

Introduction of incentives to foster superfast network rollouts – the Bill strengthens ARCEP’s ability to foster superfast network rollouts, in particular by granting ‘fibre zone’ status, an incentive to stimulate operators’ investments in fibre networks. The terms and conditions for the granting of this status, along with any obligations attached to the granting of it, are yet to be determined by the Ministry in charge of electronic communications;

Introduction of incentives to encourage experimentation – ARCEP can suspend, for a maximum of two years, some of the legal obligations incumbent on an operator who has been granted the right to use frequencies or numbering resources in order to support and facilitate its efforts to develop an innovative technology or service;

Increased investigatory powers of ARCEP – the investigatory powers of ARCEP are strengthened, particularly in relation to the seizure of documents; and

Introduction of requirements for the development of the IPv6 standard – as of 1 January 2018, all new terminal equipment available on the French market, either for sale or for rent, must be compatible with the IPv6 standard.

These changes are significant for those operating in the telecommunications sector. For more information, please feel free to contact Anne Baudequin.







Biometrics, Gaming & Privacy Laws

LicensingAs avatars and other uses of biometric information become more and more popular, game developers should be sure to review the applicable privacy laws governing the collection and use of such information.  Otherwise developers could find themselves being sued.

Just this week, the U.S. D.C. for the Southern District of New York rejected a proposed putative class action claiming that Take-Two Interactive Software, Inc. (“Take-Two”), collected and retained facial scans of gamers in violation of the Illinois Biometric Information Privacy Act (“BIPA”).  See Vigil v. Take-Two Interactive Software, Inc., 2017 BL 25907 (S.D.N.Y., No. 15-CV-8211, 1/30/17).  However, given that Illinois, Texas and Connecticut have biometric privacy laws on the books there is no doubt we will see similar litigation in the U.S. in the near future.  And since most game developers sell to a worldwide audience, they will need to make sure they are in compliance with biometric privacy laws in foreign jurisdictions as well.

 How BIPA Affects Game Developers

Under BIPA (740 Ill. Comp. Stat.  § 14/15), companies collecting biometric information or identifiers (e.g. fingerprints, facial scans) must provide notice to the individual explaining how their information will be stored, for how long and the purpose of the collection, and receive written consent from the individual to use the information. Violations under BIPA can result in statutory fines up to $5,000 or actual damages per violation, reasonable attorney’s fees and costs, and other relief as appropriate, including injunctions. Continue Reading