Struggling to keep case law relating to subject matter eligibility organized? In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.
Christina Sperry is a Member based in the firm’s Boston office. She is an experienced patent attorney whose clients, from start-ups to large corporations and academic institutions, are focused in the medical technology space. Christina advises on patent preparation and prosecution, and provides infringement, validity, and right-to-use opinions for clients in the United States and internationally. She is particularly focused on mechanical, electrical, and electromechanical technical fields; printer and imaging technology; wireless technology; semiconductors; computer hardware; computer network technology; software; financial services; cell sorting technology; and radar technology.
In an application of 2017 U.S. Supreme Court precedent in Impressions Products, Inc. v. Lexmark Intern., Inc., the Northern District California in International Fruit Genetics LLC v. Orcharddepot.com, No. 4:17-cv-02905-JSW, recently denied a motion to dismiss a claim of patent infringement by holding that the patent exhaustion doctrine did not apply to a sale of a patented product that was outside the scope of the license granted by the patent owner. This decision helps inform how licenses may be interpreted post-Impression Products.
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a USPTO Patent Quality Chat webinar on February 13, 2018 (click here for the webinar slides). Highlighted features of the eMod project are described in a May 2017 Global IP Matters article. This article provides an overview of the eMod project and focuses on updates to the eMod project as explained in the February webinar.
In general, the eMod project will provide a new interface, Patent Center, that combines EFS-Web and PAIR into a single interface for filing and managing patent applications. Benefits of Patent Center include an improved interface and improved processes for submitting, reviewing, and managing patent applications and increased application processing and publication accuracy. Continue Reading Updates to USPTO eMod Project to Improve E-Filing/Managing Patent Applications
We can take two valuable lessons from a recent decision of the Federal Circuit:
- Review all check boxes on forms when filing a U.S. patent application; and
- The United States Patent and Trademark Office is not to blame for deadlines falling on federal holidays.
On February 6, 2018, in Actelion v. Matal, the Federal Circuit affirmed the decision of the district court granting summary judgment in favor of the United States Patent and Trademark Office (PTO). The dispute centered on the 40-day “A delay” patent term adjustment (PTA) awarded by the PTO to Actelion for U.S. Patent 8,658,675 (“the ‘675 patent”), entitled “Pyridin-4-yl Derivatives.” Actelion asserted that it was entitled to 45 days of PTA, or alternatively, at least 41 days.
When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used. For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.” However, it can be difficult to overcome obviousness rejections using this argument, which is highlighted in a recent Federal Circuit decision in University of Maryland v. Presens. In this case, the court affirmed an inter partes reexamination (IPR) decision of the Patent Trial and Appeal Board (PTAB) that affirmed the examiner’s rejection of claims in U.S. Patent 6,673,532 (“’532 patent) as obvious despite the plaintiff’s “changes the principle of operation” argument. Although the decision is non-precedential, it provides helpful information to patent practitioners and litigators for arguing obviousness based on changes to a reference’s fundamental principle of operation.
The ’532 patent discloses an optical method of monitoring various cell culture parameters. Claim 1 of the ’532 patent, deemed as representative, reads as follows: Continue Reading Overcoming Obviousness Rejections: Arguing Changes to Fundamental Principle of Operation
Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all known prior art or other information that may be “material” in determining patentability. In U.S. patent practice, this duty is deemed satisfied when “material” information is submitted to the USPTO in an information disclosure statement (IDS). The duty continues until a patent has issued, and importantly, if one fails to live up to this duty, the resulting patent may be deemed unenforceable.
While there is no hard and fast rule as to what information is “material,” a good rule of thumb is to disclose all information that is relevant to the claimed subject matter. Such information can include other related U.S. patent applications and patents of the applicant or references cited in a PCT or foreign counterpart application. This article explores when and how to file IDSs in satisfying the duty to disclose “material” information, as well as common mistakes to avoid in IDS filings.
As 2018 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2017. According to the many readers of Global IP Matters, hot topics included navigating the waters of U.S. patent prosecution, evaluating obviousness, and ITC treatment of standard-essential patents (SEPs).
On December 19, 2017 the Patent Trial and Appeal Board (the “Board”) held a “Chat with the Chief” webinar in which Chief Judge David Ruschke presented very recent developments on a variety of topics related to practice before the Board, including Aqua Products guidance for motions to amend, new procedures for handling remands, and the expanded panel process.
In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality issued patent. However, this work product represents only half of the overall patent prosecution effort, since the patent prosecutor works with a patent examiner sitting on the other side at the U.S. Patent and Trademark Office (USPTO). Given that, have you ever wondered how a patent examiner’s work product is reviewed to help improve patent quality? In its most recent Patent Quality Chat on November 14, 2017, a panel of USPTO quality experts provided insight on this topic in a presentation entitled “How is an Examiner’s Work Product Reviewed?”, highlights of which are provided in this article. The USPTO has provided the presentation slides and webinar video at their website.
On November 1, 2017 the U.S. Patent and Trademark Office (USPTO) implemented an expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and ended earlier in 2017, to expedite prosecution of related applications at the USPTO and the Japanese Patent Office (JPO) or Korean Intellectual Property Office (KIPO). The original CSP is discussed in the Global IP Matters article Expediting Patent Prosecution with the New Collaborative Search Pilot Program. The new expanded CSP eases some requirements for participation in the program and increases the number of grantable CSP petitions per year, which should make the free CSP more attractive to applicants having patent applications co-pending at the USPTO and the JPO or KIPO.