Following a rejection by the United States Patent and Trademark Office (“USPTO”) under section 102(f) for a rehabilitative dog harness, the Federal Circuit recently affirmed the rejection because the applicant “did not himself solely invent the subject matter sought to be patented.” In re VerHoef, No. 2017-1976 (Fed. Cir. May 3, 2018). Jeff VerHoef built … Continue Reading
With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts. Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al the Supreme Court found that inter partes review is constitutional under Article III and the Seventh Amendment of the Constitution in a 7-2 opinion delivered by Justice Thomas. The Court determined that inter partes review falls “squarely” within the public rights doctrine. … Continue Reading
When examining subject matter eligibility of a patent application under 35 U.S.C. §101, the United States Patent and Trademark Office (USPTO) relies on a two part test established by the Supreme Court of the United States (See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)). The first part of the … Continue Reading
We are delighted to announce that Rahul Pathak has been recognized as an Intellectual Property Trailblazer by the 2018 National Law Journal. Rahul works with clients on a wide range of patent matters, including prosecution, portfolio management, opinions and due diligence, particularly in the chemistry and biochemistry fields. He was chosen from hundreds of candidates … Continue Reading
Appeals from United States Patent and Trademark Office rejections of patent applications are a critical component of patent prosecution practice. But, the rule governing the all-important question of when a rejection is ripe for appeal is not the model of clarity that practitioners might expect (See 35 U.S.C. §134). Under 37 CFR §41.31(a)(1) (emphasis added), … Continue Reading
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court of the United States established a two part test for determining patent subject matter eligibility. While most practitioners tend to focus on the second part … Continue Reading
The scope of patent claims is generally based on the product itself and not the process, In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) —except when it’s not, In re Garnero, 412 F.2d 276, 279 (CCPA 1969) (holding that a process claim connotes specific structure in a claimed composite and therefore should be … Continue Reading
On February 14, 2018, a Federal Circuit panel in Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452, overturned a Middle District of Florida decision that held patent claims to systems and methods for importing data into viewable form on a computer to be patent-ineligible under 35 U.S.C. § 101. According to the majority opinion … Continue Reading
Challenges to patent eligibility under 35 U.S.C. § 101 have become so routine in patent litigation that it is easy to overlook the opinions that seem to issue almost daily from the district courts and, less frequently, from the Federal Circuit. If one were to judge solely by the tenor of recent cert petitions filed with … Continue Reading
Is a patent-holder precluded from recovering lost-profits damages for patent infringement if those profits would have been earned on contracts for services to be performed outside of U.S. territory? That is the $93.4 million question presented by the cert petition in WesternGeco L.L.C. v. ION Geophysical Corp., No. 16-1011 and that the Supreme Court is … Continue Reading
The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) … Continue Reading
The U.S. Patent and Trademark Office (USPTO) has announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path Information Disclosure Statement (QPIDS) pilot programs have been extended to September 30, 2018. AFCP 2.0 and QPIDS are programs intended to further the goals of compact prosecution and foster increased collaboration between examiners and stakeholders. … Continue Reading
In Part One of this post, I summarized the Federal Circuit’s recent ruling on patent eligibility in Visual Memory LLC v NVIDIA Corp. In this second part I look at Judge Hughes’ dissent and the majority’s response to Hughes. Dissent Judge Hughes believed the claims could not be described at a lower level of abstraction … Continue Reading
In a rare reversal of a district court’s patent-ineligibility holding, the Federal Circuit found the claims at issue in Visual Memory LLC v NVIDIA Corp. patent-eligible under Step 1 of the Supreme Court’s two-part eligibility test in Alice v. CLS Bank. The Federal Circuit found that the claims (directed to computer memory) were, for purposes … Continue Reading
The United States Patent and Trademark Office (“USPTO”) recently released a Report summarizing the comments received during two roundtable discussions that the USPTO hosted in 2016 on patent subject matter eligibility. Since 2010, the U.S. Supreme Court has issued four major decisions that have transformed subject matter eligibility law, and the USPTO has responded with … Continue Reading
In a landmark judgment the Supreme Court has rewritten the rules on how patents are to be interpreted. The new world is great news for patent lawyers but not necessarily for their clients. The Old World Since section 6 of the Statute of Monopolies came into force on 25 May 1624, it has been possible … Continue Reading
The Intellectual Property (Unjustified Threats) Act 2017 (the “Act”) comes into force on 1 October. It will reform UK law on unjustified threats in intellectual property infringement disputes. What will change and will this benefit IP owners? Currently, UK legislation provides that a person (typically the rightsholder) must not threaten another person with proceedings in … Continue Reading
Scientific information—features of an invention that are known through physical analysis—often provides the foundation for patent claims. But providing such information can also risk the validity of a patent if it is not clearly explained in the patent. Since the Supreme Court’s 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc. heightened the patent law … Continue Reading
The launch of the Unified Patent Court and Unitary Patent has been dealt a blow from an unexpected corner. Following delays caused by Brexit and the political uncertainty in the UK, the attention suddenly shifts to the ratification process in Germany. It is being reported that the German Federal Constitutional Court (Bundesverfassungsgericht) has asked the … Continue Reading
Both houses of the German parliament have recently passed a bill limiting the tax effects of royalty and licence fees paid to patent boxes. The essence of the new rule is that royalties will not be tax deductible for German businesses if the effective tax rate of such royalties in the hands of the recipient … Continue Reading
On May 30, 2017, the U.S. Supreme Court continued its recent string of decisions reversing Federal Circuit holdings on fundamental issues of patent law. Taking on patent exhaustion in Impression Products, Inc. v. Lexmark Int’l, Inc., No. 15-1189, the Court unanimously held that that “a patentee’s decision to sell a product exhausts all of its … Continue Reading
Earlier today (May 22, 2017), the U.S. Supreme Court unanimously held that venue for patent infringement suits against U.S. companies is limited to the company’s state of incorporation or where the company has a “regular and established place of business.” The Supreme Court’s decision—TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341—dramatically reshapes … Continue Reading
The two year countdown to Brexit has begun. With the clock ticking, there is now a more urgent need for businesses to plan for the impact that Brexit will have on their operations. We have produced an updated briefing for intellectual property owners explaining the likely implications for their EU-wide IP protection, particularly where there … Continue Reading
