In an effort to support ongoing research and development efforts related to treatments and diagnostic tools for COVID-19, the United States Patent and Trademark Office (“USPTO”) has announced a prioritized examination pilot program (“the Pilot Program”) directed specifically to patent applications claiming products or processes related to COVID-19.[1]  Under the Pilot Program, the USPTO will advance out of turn certain patent applications relating to COVID-19.[2]  Additionally, certain fees normally associated with prioritized examination, will be waived.[3]  Table 1 provides a summary of the requirements to participate in the Pilot Program.

Continue Reading USPTO Introduces Prioritized Examination Pilot Program for Patent Applications Related to COVID-19

European and UK patents are not impacted by Brexit. The European Patent Office (EPO) is established under the European Patent Convention (EPC). The EPC is separate from the European Union and the UK is, now, one of several non-EU contracting states. The EPO will continue to validate “European” patents in the UK and the UK

An institution’s trade secrets generally include confidential information with commercial value.  Trade secret protection may be available by common law, under state laws, or under federal law.  In addition, there may be both civil and criminal causes of action for the misappropriation and theft of trade secrets.

For instance, the Defend Trade Secrets Act of 2016 (DTSA) is a United States federal law that allows an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated through “improper means.”[1]  Such “improper means” can include “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.”[2]

Trade secrets can be used by institutions to protect numerous types of information.  For instance, under the DTSA, protectable trade secrets include information that “derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.”[3]  Furthermore, such information can include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing.”[4]

Moreover, trade secrets can have an indefinite life, so long as they are kept secret and confidential.  For instance, under the DTSA, trade secret protection requires the owner of the trade secret to take “reasonable measures to keep such information secret.”[5]

An institution’s trade secrets can be its most valuable and prolonged assets.   However, institutions must take numerous steps in order to maintain the enforceability of their trade secrets.  Such steps include: (1) identifying the trade secrets; and (2) taking “reasonable measures” to maintain the secrecy of the trade secrets.
Continue Reading Protecting Your Most Valuable Assets: How to Identify and Maintain Your Institution’s Trade Secrets

By Frank Amini, Ph.D. and Lekha Gopalakrishnan, Ph.D.

Under the U.S. 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 recent years, the U.S. Supreme Court has expanded the scope of the common exceptions to what can be patented.  For instance, in Mayo v. Prometheus (Mayo), the U.S. Supreme Court held that methods of administering a drug to a patient, measuring metabolites of that drug, and deciding whether to increase or decrease the dosage of the drug are not eligible for patenting because the methods pertain to natural phenomena[3].  Likewise, the U.S. Supreme Court later held in Alice Corp. v. CLS Bank International (Alice) that a computer-implemented electronic escrow service for facilitating financial transactions was not eligible for patenting because it pertained to an abstract idea[4].

The lower courts have been relying on Alice and Mayo to invalidate many patents related to diagnostic methods and computer-implemented processes.  As result, the United States Patent and Trademark Office (USPTO) has issued numerous patent examination guidelines and supporting examples for evaluating the patent eligibility of inventions in view of the aforementioned rulings[5].

However, the previously issued USPTO guidelines were found to lack clarity, consistency and predictability in determining patent eligibility.  In fact, the USPTO has admitted that “it has become difficult in some cases for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible.”[6]  The USPTO has also admitted that “concerns have been raised that different examiners within and between technology centers may reach inconsistent results” in their patent eligibility analyses[7].

In an effort to address the aforementioned concerns, the USPTO published its “2019 Revised Patent Subject Matter Eligibility Guidance” on January 7, 2019 (“New Guidelines”)[8].  The New Guidelines modify the prior guidelines by directing the Examiners to perform a more detailed and systematic patent eligibility analysis.

The steps involved in determining the patent eligibility of inventions when one combines the prior guidelines with the New Guidelines are illustrated in Figure 1.  The steps are also described herein as Steps 1-4.
Continue Reading Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Outer space exploration has been expanding.  For instance, since 1998, the International Space Station has served as a platform for scientific research and discoveries in space within modules that are operated by the space agencies of the United States, Russia, Europe, Japan, and Canada[1].  Moreover, efforts are underway to build spacecraft that can

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 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

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

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

An industrial design generally constitutes the ornamental or aesthetic aspects of various articles, such as the three dimensional features (e.g., shapes) or two dimensional features (e.g., patterns, lines or colors) of packages, containers, furniture, household goods, lighting equipment, jewelry, electronic devices, and textiles. Industrial designs can be protected in many countries by a design patent.