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Is Final really Final? Alternative Patent Prosecution Routes after a Final Office Action

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution, Uncategorized

The prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO) can be a prolonged and costly process. The patent prosecution process can include the issuance of an Office Action by the USPTO and the subsequent filing of an Office Action response by the applicant. While such communications can occur multiple times, the USPTO can close the prosecution of the patent application by the issuance of a Final Office Action[1].

A Final Office Action is usually issued when previous arguments are unpersuasive or a new ground of rejection is required by an applicant’s claim amendments.  The most conventional routes for continuing the prosecution of a patent application after the issuance of a Final Office Action have included: (1) the filing of a request for continued examination (RCE) along with new arguments and/or amendments that address the Final Office Action[2]; or (2) the filing of a Notice of Appeal followed by an Appeal Brief, which initiates appeal proceedings before the Patent Trial and Appeal Board (PTAB)[3].

However, the filing of an RCE may further prolong the prosecution of a patent application without providing substantial guidance to the applicant. Likewise, appeal proceedings can be very prolonged and costly.

Various pilot programs enacted by the USPTO can avoid the time and costs associated with RCE and appeal proceedings. Such pilot programs include: (1) the Post-Prosecution Pilot Program (P3 Program)[4]; (2) the After Final Consideration Pilot 2.0 program (AFCP 2.0)[5]; and (3) the Pre-Appeal Brief Conference Program[6].

As outlined in more detail below, each of the aforementioned programs can be used to provide more direction and guidance to the applicant prior to the filing of an RCE or a Notice of Appeal. Participation in each of these programs could also result in the allowance of the application without the need for any further proceedings.

 The P3 Program: Reconsideration by a Panel of Examiners

The P3 Program, which began in July 2016, allows for an applicant to request the reconsideration of a Final Office Action by a panel of examiners. No claim amendments or fees are required to participate in the P3 Program.

To participate in the P3 Program, the applicant must file a request within two months of the mailing date of the Final Office Action along with an Office Action response that is no more than five pages[7]. Upon the receipt of the request, the Patent Office will contact the applicant to schedule a conference (e.g., a teleconference call)[8]. During the conference, the applicant will make an oral presentation to a panel of examiners[9]. Thereafter, the applicant will be informed of one of three outcomes in writing: (1) the upholding of the Final Office Action; (2) finding of allowable subject matter, which will be followed by a Notice of Allowance; or (3) the withdrawal of rejections and the reopening of patent prosecution, which will be followed by a new Office Action[10].

AFCP 2.0: Reconsideration of Additional Claim Amendments

AFCP 2.0, which precedes the P3 Program, allows for the Examiner to search and/or consider an applicant’s additional claim amendments after a Final Office Action and communicate those findings to the applicant. No fees are required to participate in AFCP 2.0.

To participate in AFCP 2.0, the applicant must file a request along with a response to the Final Office Action that includes a non-broadening amendment to at least one independent claim[11]. Thereafter, the Examiner will consider the applicant’s arguments and claim amendments[12]. The Examiner may also conduct additional searches[13]. The Examiner will then communicate his or her findings to the applicant. For instance, the Examiner may hold a brief interview (e.g., a teleconference call) with the applicant to outline the detailed reasons why the Final Office Action is being upheld[14]. Alternatively, the Examiner may find allowable subject matter and issue a Notice of Allowance[15].

Pre-Appeal Brief Conference Program: A Route to Avoiding Appeal

The Pre-Appeal Brief Conference Program provides an applicant with an opportunity to request a panel of examiners to formally review the legal and factual bases of the rejections in the Final Office Action before the initiation of appeal proceedings[16]. To participate in the Pre-Appeal Brief Conference Program, the applicant must file an Office Action response of no more than five pages along with a Notice of Appeal and the requisite fees[17]. A panel of examiners will then consider the applicant’s response and issue a written decision that will state one of the following: (1) the patent application remains under appeal because there is at least one actual issue for appeal; (2) prosecution on the merits is reopened, which will be followed by an Office Action; or (3) the patent application is allowed, which will be followed by a Notice of Allowance[18].

Choosing the Right Pilot Program

Choosing between the different patent prosecution pilot programs after the issuance of a Final Office Action can depend on numerous factors.  For instance, pursuing a request under AFCP 2.0 may be suitable if the applicant desires the Examiner to consider additional claim amendments and arguments.  Likewise, pursuing a request under the P3 Program may be suitable if the applicant desires a panel of examiners to re-consider the previously presented claim amendments and/or arguments.  Similarly, participation in a Pre-Appeal  Brief Conference Program can provide an applicant with an opportunity to determine whether or not the patent application is in a condition for appeal before pursuing a prolonged and costly appeal proceedings.

[1] See Manual of Patent Examining Procedures (M.P.E.P.) § 2271.

[2] M.P.E.P. § 706.07(H).

[3] M.P.E.P. §§ 1201-1216.

[4] Federal Register Notice, Vol. 81, No. 132, July 11, 2016, pages 44845-44849.

[5] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, pages 29117-29119.

[6] Official Gazette Notice entitled  “New Pre-Appeal Brief Conference Pilot Program”, July 12, 2005.

[7] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44846.

[8] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44848.

[9] Id.

[10] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44849.

[11] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, page 29118.

[12] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, pages 29118-29119.

[13] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, page 29119.

[14] Id.

[15] Id.

[16] Official Gazette Notice entitled  “New Pre-Appeal Brief Conference Pilot Program”, July 12, 2005.

[17] Id.

[18] Id.

Patent Law: Making On-Sale Bar Jurisprudence Coherent

Posted in Development & Commercialization of Technology, Intellectual Property Litigation, Patent Counseling & Strategies, Patent Prosecution, Technology Transactions, Uncategorized

“Rather than rest our decision on formalities, our focus is on what makes our on-sale bar jurisprudence coherent: preventing inventors from filing for patents a year or more after the invention has been commercially marketed, whether marketed by the inventor himself or a third party.”  The Medicines Company v. Hospira, Inc., No. 2014-1469, slip op. at 25 (Fed. Cir. July 11, 2016).

An invention cannot be patented in the United States if the invention “was on sale in this country, more than one year prior to the date of application for patent in the United States”.  35 U.S.C. § 102(b) (pre-AIA).  Any patent claims to a product that was on-sale prior to this one-year date are invalid and the right to exclude others from making, using and selling the product is lost.

The Court concluded that to be “on-sale” “a product must be the subject of a commercial sale or offer for sale, and that a commercial sale is one that bears the general hallmarks of a sale pursuant to Section 2-106 of the of the Uniform Commercial Code.”  The Medicines, at 3.  When “no actual sale is present ‘[o]nly an offer which the other party could make into a binding contract by simple acceptance (assuming consideration)’ triggers the on-sale bar.”  Id. at 27 (quoting Group One, Ltd. v. Hallmark Cards, Inc. 254 F.2d 1041, 1048 (Fed. Cir. 2001)).

This case involved product-by-process claims and a supply contract for a third-party to produce three batches of the drug using the claimed processes.  The Federal Circuit held that the supply contract was for performing services and not a commercial sale.  “[A] contract manufacturer’s sale to the inventor of manufacturing services where neither the title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale under § 102(b).”  Id.at 33.

What the Court makes coherent is that the “on-sale” bar is based on activities that constitute a commercial sale or offer for sale and not merely pre-commercial activities in preparation for future sales.  “The on-sale bar is triggered by actual commercial marketing of the invention, not preparation for potential or eventual marketing.”  Id. at 26.

What the Court also makes coherent is that the best course of action is to file an application for patent as soon as the invention is ready for patenting.

Next up is Helsinn v. Teva and whether on-sale activity under the AIA includes secret sales or is limited to public sales only.

Unitary Patents, the Unified Patent Court, Opt-Out Timing, Pros and Cons

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events

Regardless of the June 23, 2016 vote on Brexit, all owners of European patents, and all applicants seeking patents in Europe, will have both new options, and a new set of important decisions to make.  Most commentators anticipate that the Unitary Patents (UPs) and the Unified Patent Court (UPC) will come into effect and patentees will still need to make decisions about their granted EPs and applications.   Owners of European patents (EPs) likely will need to make decisions about their portfolios by the end of 2016.  The following is based on materials provided by our colleagues at HGF, and with thanks especially to Andy Camenisch, acamenisch@hgf.com.

The UPC opt-out option

Current predictions are that by Q2 2017 patentees will be able to opt for a UP, a single patent covering up to 26 participating member states of the EU. The UPC, a central court that will for patent litigation in the EU should also open at or about the same time. It is time now to review and prepare existing patent portfolios anticipating these changes, as there may be as little as 6 months’ notice of the UPC going live.

At this early stage, the initial review and decisions will be focused on whether to opt patents out of the jurisdiction of the UPC.

The opt-out

When the UPC opens for business, unless they are opted-out, granted EPs will be subject to the jurisdiction of the UPC as well as the relevant national courts. This will mean that a patent holder will be able to enforce EPs in a single action across all Member States that have ratified the UPC and for which the patent is validated.

It will also mean that an EP can be revoked in a single action brought before the UPC’s Central Division. In contrast to the current position where an EP is a bundle of national rights, each of which must be revoked in separate actions in the national courts. The Rules of Procedure allow for a sunrise period in order for patentees to opt-out their existing EPs from the UPCs jurisdiction before the court opens its doors.  For a transitional period of 7 years there will be an opt-out to take existing, pending and future EPs out of the jurisdiction of UPC for the lifetime of those patents. The opt-out allows patentees to keep any litigation before the relevant national court.

Factors for consideration

The opt-out decision will depend on many factors, and will not be appropriate across all patents in a portfolio of any size.  In a given case there may be advantages to keeping some patents within the jurisdiction of the UPC, or to strategize for each patent.  The Rules and Procedures for the UPC system are still evolving, resulting in patentees considering a nuanced approach to the opt-out (or remaining subject to the UPC’s jurisdiction) for their patent portfolio.

Pros regarding UPC’s jurisdiction (i.e. not opting out)

  • potential for a pan-EU injunction throughout the participating Member States in a single infringement action before the UPC.
  • 12 month target timeline for resolution of first instance proceedings within the UPC is significantly better than proceedings before many other national Courts (and equivalent to English, Dutch and German Courts).
  • after the transitional period of 7 years the opt-out closes, there could be advantages in waiting for the new system to fully develop
  • there may be no choice, licensees may not have control over whether to opt-out

Also, in the beginning, it is anticipated that not all of the 26 Member States who have signed the UPC Agreement will have ratified the Agreement so validations of EPs in those countries will be treated in the same way as they are under the current system, leading to multiple jurisdictional enforcement combinations.

Cons for exercising the opt-out

  • a single action before the UPC’s Central Division could lead to the revocation of the patent, in all Member States. If a patentee might opted-out the “crown jewels” of their patent portfolio, patents would have to be revoked in the national courts separately.
  • if EPs are opted-out, only the national courts have jurisdiction; you maintain the status quo.
  • the UPC will be an unknown and untested forum, with about the quality and consistency of the judgments across all Local, Regional and Central Divisions.
  • there is no fee for opting-out your patents but there are likely to be administration costs in terms of considering strategy and ensuring that the opt-out is validly implemented across a portfolio.
  • assuming no ongoing national litigation, an opt-out can be withdrawn at a future date (although a subsequent second opt-out will not be possible).

Actions to take now

Portfolios of EP patents should be reviewed, considering the following issues:

  • the strength of the relevant patents;
  • the value of the technology covered by each patent or patent family to the business in the relevant jurisdiction;
  • how your various patents interact to protect your commercial products;
  • the likelihood in your industry that a third party will attack the validity of your patents;
  • for patents that are jointly owned or licensed into or out of the business – who has the right to exercise the opt-out of the EPs (and any associated SPC)?

Ideally these reviews and decisions should be done before the launch of the UPC to allow time to execute any opt-out during the sunrise period.

Not also that if the decision is made to opt-out, the correct party or parties must exercise that opt-out to ensure that it is validly executed. Failure to validly opt-out creates risk that competitors might seek to revoke the patent centrally at the UPC.

Functional Features in Design Patents

Posted in Intellectual Property, Patent Counseling & Strategies

The treatment of functional features in design patents was discussed in the recent Federal Circuit case for Sport Dimension, Inc. v. The Coleman Company, Inc., Case No. 15-1553 (Fed. Cir. 2016).  The Court rejected the district court’s claim construction, which completely removed functional features.

As noted by the Court, “[a] design patent cannot claim a purely functional design—a design patent is invalid if its overall appearance is ‘dictated by’ its function. But as long as the design is not primarily functional, ‘the design claim is not invalid, even if certain elements have functional purposes.'”  Id, at 5. “Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”  Id, at 6.

The district court adopted claim construction that eliminated the left and right armbands and the side torso tapering, and also found the armbands, armband attachments, shape of the armbands, tapering of armbands, and tapering of the side torso to be elements that were functional rather than ornamental.  Id, at 4. The Patent Owner’s design and the competitor’s design are shown below:

Figs. 1 & 2

United States Design Patent No. D623,714 (Id, at 2).

 

Life vest front   Life vest back

 

 

 

 

Competitor’s Design (Id, at 3).

In three prior cases, courts used claim construction to “assist a finder of fact in distinguishing between functional and ornamental features,” but none of these cases entirely eliminate a structural element (that also had a functional purpose) from the claimed ornamental design.  Id, at 7.  The Court noted that while the following factors are for determining whether a claimed design is dictated by function and invalid, they may provide useful guidance to claim construction functionality:

  • whether the protected design represents the best design
  • whether alternative designs would adversely affect the utility of the specified article
  • whether there are any concomitant utility patents
  • whether the advertising touts particular features of the design as having specific utility
  • whether there are any elements in the design or an overall appearance clearly not dictated by function

Id, at 8.

Sequenom v. Ariosa Diagnostics: A Supreme Court Petition that Requests Clarification on the Patent Eligibility of Diagnostic Methods

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution

Under the Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[1] Common exceptions to what can be patented include laws of nature, natural phenomena, and abstract ideas[2].  In Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Sequenom), the United States Court of Appeals for the Federal Circuit held that a patent covering methods of detecting cell-free fetal DNA is not eligible for patenting because it pertains to nothing more than a natural phenomenon[3].  The patent at issue in Sequenom pertained to a method of detecting cell-free fetal DNA (cffDNA), a non-cellular DNA that floats freely in the blood stream of pregnant women[4].  The detection methods involved amplifying segments of the cffDNA by various methods, such as the polymerase chain reaction[5].

In reaching its decision, the Court reasoned that the patent at issue is not eligible for patenting because it “starts and ends with a naturally occurring phenomenon”[6] (i.e., cffDNA).  Moreover, the Court reasoned that the cffDNA amplification step did not make the invention eligible subject matter because the amplification methods were “conventional, routine and well understood applications in the art.”[7]  In particular, the Court indicated that, “[b]ecause the method steps were well-understood, conventional and routine, the method of detecting …cffDNA is not new and useful.”[8]  The Court also stated that “appending routine, conventional steps to a natural phenomenon, specified at a high level of generality, is not enough to supply an inventive concept.”[9]

In response to the Court’s ruling (and a subsequent upholding of the ruling in an en banc decision by the same Court), Sequenom, Inc. filed a Petition for Writ of Certiorari in the U.S. Supreme Court[10].  In the Petition, Sequenom has asked the Supreme Court to consider “whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery.”[11]

Many have identified a lack of clarity on the aforementioned issue as a “crisis of patent law and medical innovation.”[12]  Moreover, different opinions exist on when an application of a natural phenomenon can be eligible for patenting.  For instance, in its Petition, Sequenom has asserted that “new methods assembled by combining previously known techniques even when those methods are motivated by or incorporate new insights into nature and its laws” are still eligible for patenting[13].  Therefore, if the Supreme Court grants Sequenom’s Petition, the Supreme Court’s subsequent ruling could provide more clarity on the above issue.

 

[1] 35 U.S.C. § 101

[2] Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)

[3] Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2014-1139, 2014-1144, (Fed. Cir. 2015)

[4] Id. at page 3

[5] Id.

[6] Id. at page 13

[7] Id.

[8] Id. at page 11

[9] Id. at page 13

[10] Petition for a Writ of Certiorari, Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., Docket No. 15-1182, March 21, 2016

[11] Id. at page i

[12] Id. at page 15

[13] Id. at page 21

Virtual Patent Marking

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies

Patent Marking

Under the patent marking statute, 35 U.S.C. § 287(a),  notice can be actual, or  constructive notice. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with the word “patent” or abbreviation “pat.” along with the patent number. There are potentially significant consequences for not marking products.  If a patented product is not marked with the patent number, damages for infringement will be limited to the time period after the patentee gives actual notice to an alleged infringer.

To recover damages under the marking statute, the patentee’s marking must be “substantially consistent and continuous.”   Generally speaking, a patentee fails to meet this standard if it doesn’t mark some of the manufactured articles covered by the patent or stops marking such articles altogether for some period of time.  There are penalties for false marking so patentees who utilize marking must be careful to properly identify the patent numbers marked on their products.

Since the enactment of the America Invents Act in 2011, patentees have been able to “virtually” mark products instead of having to substantially, consistently and physically mark products with the number of each patent the patentee holds that covers the product or its various components.  The goal of providing this means of marking was to use the wide spread reach of the Internet to inform the public which patents attach to what product, at the same time as providing the benefit of minimal time and expense for patentees to create and update to keep current their product marking.

As required by the statute, the USPTO published a report in 2014 of the effect of this new procedure, finding that it had probably met its goals of reducing manufacturing costs and facilitating public notice, but also revealing that it was seriously underutilized.  Even now, 5 years after enactment, the procedure has not been adopted as widely as expected, for reasons that are not clear, but generally proposed to be lack of knowledge of the availability of virtual marking, lack of interest, or uncertainty of how to comply based on the lack of guidelines or case law.

Marking Under the AIA

The AIA provides for virtual patent marking rather than physically.  Instead of printing the actual patent number on the product, patentees can display the term ‘‘patent’’ or ‘‘pat.’’ along with an accompanying URL address of a Web site where the actual patent number is located.  As there is no USPTO or case law guidance for what information must be presented for proper virtual marking notice, patentees have been looking to existing marketing law.  Best practices can be boiled down to listing:

– text ‘The following US Patents apply to this product “

-the branded product name (as sold)

-model #, UPC code

– a specific list of U.S. Patent numbers for each listed product

Examples

Some of the uncertainty resulting from lack of USPTO or case law guidance for virtual marking can be countered by reviewing what other companies are coming up with on their virtual patent marking lists.  Obviously there are many different technical solutions that can work, some common ones are a link to a database search such as PatentStatus, individual PDF listings via landing page, single landing page list, or a URL that auto forwards to a PDF listing.  Although various formats are found common themes are apparent from a review of the samples from the short list that follows.  :

  • Nanoleaf http://nanoleaf.me/patents/
  • Christi Digital https://www.christiedigital.com/SupportDocs/Anonymous/Christie-Virtual-Patent-Marking.pdf
  • Valencell https://www.christiedigital.com/SupportDocs/Anonymous/Christie-Virtual-Patent-Marking.pdf
  • PDF3D http://www.pdf3d.com/2016/
  • Cirba www.cirba.com/company/Virtual-Patent-Marking.htm
  • Arthrex www.arthrex.com/corporate/virtual-patent-marking
  • Symantec https://www.symantec.com/about/legal/repository
  • Tivo https://www.tivo.com/legal/patents
  • Kimberly-Clark http://www.kimberly-clark.com/ourcompany/innovations/patents.aspx
  • Cosco http://patent.coscoproducts.com/Public

Subscription services

In addition to company run and managed virtual marking sites such as those referenced above, there are also commercial patent virtual marking subscription services.  A patent holder’s decision of whether to create and operate such a site in house, or to subscribe to a service will be based on the size of the patent portfolio, the IT know how or resources available to the patentee, resources available for maintaining the system, in view of the outside services available and cost.

At a minimum subscription services should probably include a high number of patent numbers and/or patent application numbers per registered article, automatic patent term calculation, patent expiration and abandonment alerts, and product/patent disassociation when a patent expires or an application is abandoned.

Adoption of the virtual patent marking procedures has been slower than expected, especially in contrast to the acceleration usually associated with internet based systems.  The increasing number of company virtual marking web sites, and the existence of commercial subscription services appear to be signs that virtual marking is becoming more widely known and appreciated.

Patent Issues Arising from Consulting Agreements (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016))

Posted in Consulting Agreements, Intellectual Property Litigation, Patent Counseling & Strategies

In a recent dispute between two medical device companies, a consultant’s alleged contributions to Angioscore patents became a central issue (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016)). The dispute underscores several patent issues that can arise from consulting agreements. A brief summary is provided below:

  • The consultant Dr. Lotan claimed an inventive contribution arose from his work in connection with the development of the AngioSculpt catheters in 2003, which was allegedly reflected in the AngioScore patents.
  • In particular, before the May 1, 2003, effective date, Dr. Lotan performed a single-day study testing AngioSculpt prototypes.
  • Lotan also provided a memorandum highlighting the retraction issue and providing recommendations, as well as conducted two follow-up meetings with AngioScore where he provided design recommendations to address the retraction issue.
  • Several years later in 2014, Dr. Lotan granted TriReme, a competitor of Angioscore, an exclusive license to “any and all legal and equitable rights” he held in the AngioScore patents.
  • In response, AngioScore asserted that it had acquired rights to all inventive work completed by Dr. Lotan under a Consulting Agreement effective May 1, 2003, particularly § 9(a) and § 9(b).

§ 9(a) stated – If, in the course of providing the Services, Consultant incorporates into a Company product, process or machine or into any Invention (as defined below), a Prior Invention owned by Consultant or in which Consultant has an interest, the Company is hereby granted and shall have a non-exclusive license…

§ 9(b) stated – Consultant agrees to promptly disclose to the Company and hereby assigns to the Company, or its designee, all right, title and interest in and to all inventions, original works of authorship, developments, concepts, know-how, improvements or trade secrets …

  • The Court stated – at most, § 9(a) of the Consulting Agreement grants AngioScore a nonexclusive license in the event that the consultant incorporates a prior invention into an AngioScore product during the term of the Consulting Agreement.
  • The Court remand to the district court to consider whether Dr. Lotan’s continued work on and after May 1, 2003 would constitute the type of work listed in § 9(b) of the Consulting Agreement that Dr. Lotan was obligated to assign.

 

 

Still Alice: Not all software patents are being invalidated under Alice Corp. v. CLS Bank Int’l

Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies, Uncategorized

On June 19, 2014, the U.S. Supreme Court issued a unanimous decision in Alice Corp. v. CLS Bank Int’l (Alice)[1].  In Alice, the Court held that several patents that pertained to a computerized platform for eliminating risk in conducting financial transactions between two parties were ineligible for patenting under 35 U.S.C. §101[2].  The Court reasoned that the patents were merely drawn to an abstract idea of intermediated settlement that utilized a “generic computer implementation.”

Since the issuance of Alice, many lower court decisions have relied on Alice to invalidate numerous patents directed to computer-implemented inventions.  Examples of these court decisions were summarized in a prior blog post[3].

However, not all patents directed to computer-implemented inventions have been affected by Alice.  For instance, in recent court decisions, many software-related patents were held to be patent-eligible in view of Alice. Examples of some of these decisions are summarized below:

  • DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014). Invention directed towards generating a composite web page that combined certain aspects of a host website with information from a third-party merchant was eligible for patenting because the invention addressed an important business challenge (i.e., retaining website visitors through the use of computer technology).
  • Inst. of Tech. v. Hughes Communs., Inc., Case No. 2:13-cv-07245-MRP-JEM (C. D. Cal., 2014). Invention directed to a data error correction code through encoding and decoding data was held to be patent-eligible because the utilized algorithm represented an inventive application of the underlying abstract ideas.
  • Helios Software LLC et al v. SpectorSoft Corporation, Case No. 12-081-LPS (Del., 2014). Invention directed to the remote monitoring of computer network sessions and network access was held to be eligible for patenting because it utilized a computer to play a significant and specific role in the monitoring process.
  • AutoForm Engineering GmbH v. Engineering Technology Associates, Inc., Case No. 2:2010cv14141, (E.D. Mich., 2014). Invention directed to a method of designing surfaces for tools used in sheet metal formation was held to be eligible for patenting because the process was described through numerous limitations that narrowed the scope of the patent.
  • McRO, Inc., v. Activision Publishing, Inc case, Case No. 2:14-cv-00336 (C.D. Cal., 2014). Invention directed towards configuring animated lips based on timed phonemes were held to be eligible for patenting because it addressed a technical process of automated three-dimensional computer animation.
  • Smartflash LLC et al v. Apple Inc, et al., Case No. 6:13cv447-JRG-KNM (E.D. Tex. 2015). Invention relating to data storage and controlled access systems for paying for and downloading digital content was held to be eligible for patenting because it aimed to prevent piracy while allowing instantaneous access.

The aforementioned court decisions suggest that software inventions that improve the functioning of a computer may remain eligible for patent protection in some instances.  The aforementioned court decisions also suggest that software inventions that improve a technical field may remain eligible for patent protection. Nonetheless, the full effect of Alice remains to be determined.

[1] Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ___, No. 13-298 (June 19, 2014).
[2] 35 U.S.C. §101 states that, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”  Judicial exceptions to what constitutes patent eligible subject matter have included “abstract ideas,” “laws of nature,” and “natural phenomena.”
[3] See http://www.wintechblog.com/2014/10/alice-in-wonderland-the-ongoing-impact-of-alice-corp-v-cls-bank-intl-on-computer-implemented-inventions/

 

Two Hundred and Twenty Fifth Anniversary of U.S. Patent X000001

Posted in Development & Commercialization of Technology, IP Counseling and Strategies, Technology Transactions

U.S. Patent X000001 was granted on July 31, 1790 to Samuel Hopkins. The original document went missing for many years, only resurfacing in 1956.

The inventor named is Samuel Hopkins, but which Samuel Hopkins was much in dispute until fairly recently. For many years a small town in Vermont celebrated their local resident as the inventor of U.S. Patent X000001, marking the location with a historical marker on the Pittsville, Vermont village green. The marker stood, from 1956 until just a couple of years ago, even in the face of documentation first published in 1998 by a lawyer historian in Philadelphia, David Maxey. Maxey’s generally accepted research shows the patent was issued to an inventor Samuel Hopkins of Philadelphia.

The entirety of the patent is reproduced below. It is signed by President George Washington, Secretary of State Thomas Jefferson, and Attorney General Edmund Randolph.

U.S. Patent X000001

U.S. Patent X000001

Demonstrating a serial entrepreneur’s bent, Hopkins took out two later patents in addition to his first patent. And less than a year after the potash patent was granted in the United States, the Quebec Parliament passed an ordinance to “reward” him for his discovery. Legal experts now consider this Canada’s first patent.

The invention is for a potash refining process, today an obscure and seemingly low tech process in light of today’s technologies, but closer review highlights this as a worthy predecessor for all of the technology to follow. As is well described in Henry M. Paynter’s INVENTION & TECHNOLOGY article (paraphrased hereafter), Patent X000001 was not only the first of its kind but also vitally linked the nation’s early economy. In fact, potash was America’s first industrial chemical. Potash was essential for making soap and glass, dyeing fabrics, baking, and making saltpeter for gunpowder.

During the fourteen-year term of Hopkins’s patent, potash sold at from two hundred to three hundred dollars a ton, and over this period more than ninety thousand tons, worth at least twenty million dollars, were exported from the United States. If were anywhere near Hopkins’s estimates, this arrangement was a bargain for the asheries as well.

The forest-based potash industry of the colonial days, with abundant hardwood forests, is now long gone, but it was essential in the early years of the nation, and Samuel Hopkins’ patent permitted it to thrive. Potassium salts continue to be invaluable industrial and agricultural chemicals, and a stream of important patents concerning them has followed Samuel Hopkins’s down to this day. Moreover, his disclosure, marketing plan, and license agreements, set worthy precedents for subsequent inventors.
References:
1. Paynter article from INVENTION & TECHNOLOGY, Fall 1990;
2. Maxey’s articles from The PENNSYLVANIA MAGAZINE of HISTORY & BIOGRAPHY, Jan/Apr 1998

The Impact of Ariosa Diagnostics v. Sequenom on the Patent Eligibility of Biomarker Detection Methods

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution

Under the Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[1] Common exceptions to what can be patented include laws of nature, natural phenomena, and abstract ideas[2]. In a recent decision in Ariosa Diagnostics v. Sequenom (Sequenom), The United States Court of Appeals for the Federal Circuit held that a patent covering methods of detecting cell-free fetal DNA is not eligible for patenting because it pertains to nothing more than a natural phenomenon[3]. Unless this decision is reversed by the Supreme Court, it could adversely affect the patentability of some biomarker detection methods.

The patent at issue in Sequenom pertained to a method of detecting cell-free fetal DNA (cffDNA), a non-cellular DNA that floats freely in the blood stream of pregnant women[4]. The detection methods involved amplifying segments of the cffDNA by various methods, such as the polymerase chain reaction[5].

In reaching its decision, the Court reasoned that the patent at issue is not eligible for patenting because it “starts and ends with a naturally occurring phenomenon” (i.e., cffDNA)[6]. Moreover, the Court reasoned that the cffDNA amplification step did not make the invention eligible subject matter because the amplification methods were “conventional, routine and well understood applications in the art.”[7] In particular, the Court indicated that, “[b]ecause the method steps were well-understood, conventional and routine, the method of detecting …cffDNA is not new and useful.”[8] The Court also stated that “appending routine, conventional steps to a natural phenomenon, specified at a high level of generality, is not enough to supply an inventive concept.”[9]

The full impact of Sequenom remains to be determined. It is doubtful that the ruling in Sequenom will affect the patentability of all biomarker detection methods. For instance, biomarker detection methods that utilize “unconventional” detection methods may still be eligible for patenting in view of Sequenom. However, the ruling in Sequenom may affect the patentability of diagnostic methods that rely on the amplification of naturally occurring biomarkers through “conventional” and “routine” techniques. Furthermore, terms such as “unconventional”, “conventional” and “routine” may become subject to different interpretations.

[1] 35 U.S.C. § 101

[2] Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)

[3] Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2014-1139, 2014-1144, (Fed. Cir. 2015)

[4] Id. at page 3

[5] Id.

[6] Id. at page 13

[7] Id.

[8] Id. at page 11

[9] Id. at page 13