The indefiniteness standard has, until recently, been very high—only an “insolubly ambiguous claim” was considered indefinite (see, e.g., Honeywell Intern., Inc. v. International Trade, 341 F. 3d 1332, 1338–9 (Fed. Cir. 2003))—but recent events have made it easier to invalidate a claim as being indefinite. In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court instituted potentially drastic changes to the jurisprudence of indefiniteness by eliminating the “insolubly ambiguous standard” and instead requiring that claims must inform a person of skill in the art as to their scope “with reasonable certainty.” 134 S. Ct. 2120, 2129 (2014). Questions immediately arose as to how courts were going to apply this new test, as the Supreme Court provided no substantive discussion when laying it out. The Federal Circuit has given insight into its interpretation of this new standard with its first post-Nautilus indefiniteness decision, Interval Licensing LLC v. AOL. 2014 U.S. App. LEXIS 17459 (Fed. Cir. Sept. 10, 2014). An examination of these two cases reveals important lessons for the wary patent prosecutor. Continue Reading
Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. The rules for filing an appeal brief are provided in 37 C.F.R. § 41.37, including the brief’s required content. Adhering to these rules is the first step in writing an appeal brief and will ensure that you avoid a notice of non-compliance requiring resubmission of the brief. As a second step, making your appeal brief as clear and persuasive as possible will move you toward PTAB victory. To this end, the U.S. Patent and Trademark Office (USPTO) provides “Practice Tips for Writing Effective Appeal Briefs” at their website. We elaborate on some of these tips – and more – below to help make your brief effective. Continue Reading
Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect. Rule 164 as amended offers applicants more flexibility because the European Patent Office (EPO) will now search multiple inventions regardless of the International Searching Authority (ISA) chosen for a Patent Cooperation Treaty (PCT) application having entered the regional phase in Europe. A brief overview of the practical effects of new Rule 164 follows.
Under old Rule 164, when the EPO was not the ISA for a PCT application having entered the European national phase, the EPO would only search the first invention in the claims. This practice would typically result in only claim 1 (and any claims united therewith) being examined in Europe, with any additional inventions identified by the EPO requiring pursuit in one or more divisional applications. When the EPO was the ISA for the PCT application, no search would be conducted by the EPO during the European regional phase, thereby limiting applicants to the invention previously searched by the EPO. Applicants were thus required to file divisional application(s) to pursue any inventions lacking unity with the searched invention.
Under new Rule 164, when the EPO is not the ISA for the PCT application and a unity of invention issue is identified, the EPO will issue a partial supplementary European search report based on the first invention in the claims. Applicants will be given two months from the issuance of the partial supplementary European search report to pay a fee to have additional claimed invention(s) searched. The supplementary search report will cover parts of the application relating to inventions for which search fees have been paid. When the EPO is the ISA for the PCT application, applicants will be invited to pay search fees for any claimed inventions not searched by the EPO in the international phase. The results of the search(es) will accompany the first communication from the EPO’s Examining Division, which is usually the first examination report. Regardless of whether or not the EPO is the ISA, if the fee is paid, a supplementary European search report is issued covering all paid-for inventions. Applicants can then select any one of the searched inventions to pursue in the European application.
Accordingly, under new Rule 164, rather than being required to file divisional application(s) because of a unity of invention issue, applicants are offered the opportunity (with an increased fee, of course) to pursue any one of multiple inventions.
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.