Ten years ago, on September 21, 2004, the USPTO implemented the portion of the 21st Century Strategic Plan permitting the use of electronic or mechanical signatures, called “S-signatures,” on papers filed at the USPTO. Now a largely routine practice, the rule at 37 C.F.R. 1.4 governing the use of S-signatures deserves a revisit a decade later, even for seasoned patent professionals. For instance, do you know who must insert an S-signature on a paper? Or whether a random string of numbers can constitute an S-signature?
S-signatures are defined by 37 C.F.R. 1.4(d)(2) as “any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section.” The statute, which is also discussed in MPEP § 502.02, provides five main requirements of S-signatures. Continue Reading
Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization. See AstraZeneca AB v. Hanmi USA Inc. (non-precedential) and Hill-Rom Services, Inc. et al. v. Stryker Corp. et al. However, another recent Federal Circuit case demonstrates that U.S. patent applicants can nevertheless write specifications about the “invention” that are less likely to unduly limit claims. See ScriptPro, LLC v. Innovation Associates, Inc.
The Invention “Broadly Includes” or “Broadly Comprises” Continue Reading
On October 1, 2014, the United States Patent and Trademark Office (“USPTO”) announced the After Final Consideration Pilot 2.0 (“AFCP 2.0”) – a program intended to provide new features that will enhance communication between the USPTO and the applicant, as compared with the original After Final Consideration Pilot (“AFCP”). AFCP 2.0 is free and will remain in effect until September 30, 2015.
There are two significant differences between the original AFCP program and AFCP 2.0:
1. Requirement for Amendment to At Least One Independent Claim
A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. The purpose of this requirement, which was not required in the original AFCP program, is to focus the program on applications that are more likely to benefit from the program.
2. Availability for an Interview
If the examiner’s review of the response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response. Form PTO/SB/434 includes a statement that the applicant is willing to participate in an interview initiated by the examiner.
While the requirement for an amendment to at least one independent claim may very well increase the effectiveness of the program due to a focus on applications that are more likely to benefit from the program, this change does not appear to provide any additional advantages to applicants. Under current practice, examiners have sufficient basis not to consider many responses filed after a final rejection, often because the examiner determines that further search and/or consideration is required. While AFCP 2.0 allots a limited amount of time for examiners to consider after-final amendments and to conduct a further search, examiners still have discretion to determine that the amount of time allotted under AFCP 2.0 is insufficient. In particular, prior to considering the amendments and conducting any additional searches, the examiner must first determine whether additional searching and/or consideration is required and whether such search and/or consideration can be completed within the time allotted under AFCP 2.0. Only after this determination will the examiner consider the amendment, conduct additional searching, and, if required, request an interview.
Accordingly, while the USPTO statistics may show an increased percentage of applications allowed after final through the program, this increased percentage could simply be a result of reduced participation in the program. Applicants can continue to expect examiners to issue an advisory action indicating that further search and/or consideration is required.
The Federal Circuit recently denied en banc review of its prior decision dismissing a patent infringement suit where a co-owner of the patent-in-suit refused to join the case voluntarily and the court held that it could not force the co-owner to join the suit involuntarily. See STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. June 6, 2014), en banc denied, No. 2013-1241 (Fed. Cir. Sept. 17, 2014).
The patent at issue involved lithographic patterning techniques for use in the manufacture of semiconductor devices. In granting the defendant’s motion for summary judgment, the district court held that the patent was unenforceable for most of its existence for failure to comply with a terminal disclaimer, and the court dismissed the remainder of the case for lack of standing because the plaintiff did not join the patent’s current co-owner. The Federal Circuit affirmed the district court’s decision, rejecting the plaintiff’s argument that it was entitled to join the co-owner against its will under Rule 19(a) of the Federal Rules of Civil Procedure. In a 6-4 decision, the Federal Circuit refused to conduct an en banc review of its prior decision.
In reaching its decision, the Federal Circuit applied the well-settled rule that in order to establish standing in an infringement suit, a patent co-owner must join all other co-owners in the suit. The Court recognized two exceptions to this rule: (1) where the patent owner has granted an exclusive license and refuses to join a suit brought by its licensee; and (2) where a co-owner agrees to waive his right to refuse to join suit, his co-owners may subsequently force him to join in a suit against infringers. But the Court found that neither exception applied in this case.
In her dissent from the panel’s decision, Judge Newman argued that the co-owner was a necessary party to the suit and must be joined as a matter of procedural law under Rule 19(a). But the majority held “that the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a).”
The first parts of the new UK Intellectual Property Act 2014 come into force today. The act will introduce a range of new measures, one of which is that it expands the options available to patent proprietors for marking patented products. The benefit of marking a patented product is that it prevents an infringer from relying on a defence of innocent infringement and avoiding paying damages. From today, this benefit can be obtained by marking products with the address of a web page that is accessible free of charge and clearly associates the product with the relevant patent number(s).
Marking a product with the address of a web page alleviates the practical problem of marking products that are covered by several patents with all of the associated patent numbers, which can be difficult to achieve and unsightly. It should also make it easier and cheaper to keep the marking updated as relevant patents expire or are allowed to lapse. This is particularly important as marking a product falsely is a criminal offence in the UK.
US law changed some time ago to introduce the option of marking patented products by reference to a web page. A carefully crafted web page might be able to cover marking of a product patented in both the UK and the USA, something on which we are well placed to advise with our transatlantic patent practice.
On September 16, 2014, United States Patent and Trademark Office Chief of Staff Andrew Byrnes presented to the Boston Patent Law Association an update on new quality initiatives and the implementation of White House patent policies. Mr. Byrne outlined high-level policy objectives and how they are supported by the USPTO, remarking that support of such policies are more important than ever as intellectual property now permeates all phase of law and life. Mr. Byrnes stated that the USPTO is dedicated to ensuring that its Constitutional duty of promoting the arts and sciences is met, intellectual property law is balanced and fair, and that it keeps pace with our evolving world. Continue Reading
Administrative Law Judge Essex of the International Trade Commission (“ITC”) recently issued the public version of his decision in ITC investigation No. 337-TA-868. In it, he holds that the respondents should be precluded from relying on the FRAND defense—the defense that the patents-in-suit are subject to being licensed on fair, reasonable, and non-discriminatory (“FRAND”) terms, and therefore that an exclusion order should not issue—because they failed to see a license to practice the patents before implementing the standard to which they now claim the patents are essential. In so holding, Judge Essex responds to a number of influential bodies, including the Justice Department, the U.S. Patent Office, and the Federal Trade Commission, who have taken the position that injunctive relief should not be available to holders of standards-essential patents.
Our attorneys present a comprehensive discussion of the decision in this client alert.
On June 19, the Supreme Court of the United States (SCOTUS) handed down another unanimous opinion in a closely watched patent case. Alice Corporation v. CLS Bank International addresses patent eligibility of computer-implemented inventions. This is the third patent case issued by the Court in as many weeks. (See Mintz Levin’s recent alert on the Limelight and Nautilus decisions.)
In Alice, the Court affirmed the Federal Circuit’s holding that all the patent claims at issue, which include method, system, and media claims, are invalid under 35 U.S.C. §101. In reaching its decision, the Court applied a two-step framework: first, determining whether the claims at issue are directed to one of the patent-ineligible categories (laws of nature, natural phenomena, or abstract ideas); and second, if so, determining whether the elements of each claim contain an “inventive concept” sufficient to transform the unpatentable category into a patent-eligible application.
Our attorneys present a comprehensive discussion of the decision and its impact on you in this client alert.
In Actavis Group HF v. Eli Lilly & Co. the UK High Court has granted a declaration of non-infringement in the UK, France, Italy and Spain. A jurisdictional challenge in relation to the French, Italian and Spanish jurisdictions was rejected. In granting the declaration, the judge considered and applied the law of four different countries. Whilst in separate national proceedings in Germany the German Court came to the opposite view, and found that the claims were infringed, the German reasoning was criticized by Justice Arnold. In coming to the finding of non-infringement, the UK High Court took into account the prosecution history leading to the grant of the patent, and held that the granted claims could not be considered to cover subject matter which had been excluded from the claims by amendments made during examination.
Eli Lilly’s patent, EP 1313508 covers the cancer drug permetrexed disodium in combination with vitamin B12 or pharmaceutical derivatives thereof. Actavis intend to launch a generic pemetrexed product, the active ingredient of which will be pemetrexed diacid, pemetrexed dipotassium or pemetrexed ditromethamine, and sought a declaration of non-infringement prior to launch.
The key question was whether the claims to permetrexed disodium extend to pemetrexed diacid, dipotassium and ditromethamine. Both sides accepted that there was no literal infringement of the claims, however Lilly argued that in addition to pemetrexed disodium, other forms (alternative salts) of pemetrexed may fall within the scope of the claims. Considering the Protocol on Article 69 EPC and applying the Improver questions, Justice Arnold concluded that these other forms of pemetrexed were outside the scope of the claims and that therefore there would be no infringement.
Taking into consideration amendments made during prosecution of the Patent, Arnold found that Lilly had deliberately limited the claims to pemetrexed disodium and that other pharmaceutically acceptable and sufficiently soluble salts were not covered. Justice Arnold considered this to be a “clear example” of the “patentee regretting a decision taken during the course of prosecution … and … trying to avoid the consequences of that decision”. Justice Arnold stated that in such a case “there is no reason why the law should be sympathetic to the patentee”, particularly where decisions as to claim scope made by the applicant during prosecution would be effectively reversed by decisions on claim construction. He stated that where prosecution history is “short, simple and shows clearly why the claims are expressed in the manner in which they are to be found in the granted patent and not in some broader manner” then there is “no good reason why the court should shut its eyes” to the prosecution history.
Arnold commented specifically on the judgment of the German Court: “in finding infringement by reason of equivalence alone, … the Dusseldorf Regional Court has not given proper effect to the Protocol but rather has treated the claims as a mere guideline”. In relation to France, Italy and Spain, based on reports by foreign law experts for each country, Arnold found, as for the UK, that dealings in pemetrexed diacid, dipotassium and ditromethamine by Actavis will not constitute direct infringement. Arnold also concluded that there will be no indirect infringement in the UK and that – based on reports by experts in French, Spanish and Italian national law – as the law on indirect infringement is broadly similar to the UK in France, Italy and Spain, there will be no infringement of the French, Italian or Spanish designations either. This judgment therefore confirms that the UK courts will hear non-infringement actions in relation to multiple European jurisdictions in a single court Action.
The Justices of the Supreme Court of the United States have rarely reached consensus on any issues this term. However, they achieved unanimity in two patents cases recently, which may have a significant impact on you and your patent portfolio.
By deciding to hear several patent cases this term, the Court has sent a clear message that it has a continued interest in clarifying the law governing critical patent doctrines. In Limelight Networks v. Akamai Technologies, the Court ruled on matters of induced infringement and in Nautilus v. Biosig Instruments, the primary issue at hand was indefiniteness.
The Limelight decision reduces the scope of protection afforded to patented methods when different steps of those methods are performed by different parties.
The Nautilus decision rejected the Federal Circuit’s standard for indefiniteness, namely that a claim is indefinite only when it is “not amenable to construction” or is “insolubly ambiguous,” in favor of requiring “that a patent’s claims viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” The Court then remanded the case back to the Federal Circuit to determine whether the claims are sufficiently definite under this new standard.
Our attorneys provide more discussion and insight into how these cases may impact you in this alert.