In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018) the US Patent and Trademark Office (USPTO) has issued two memos to the examining corps which provide increased clarity and predictability in the determination of patent eligibility which is more good news for the eligibility of claims relating to diagnostic or similar tests utilized in treating patients. If you’re not familiar with the Vanda Pharma decision, and want more detail, see my previous post HERE.
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.
If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result, one-click purchasing might become the new norm.
In 1997, Amazon filed for a business method patent to one-click purchasing, which allows return shoppers to purchase items with just a single click of a button instead of having to proceed through a prolonged checkout process. The patent issued in 1999, at which point Amazon sued Barnes & Noble for patent infringement based on a similar technology used during Barnes & Noble’s checkout process. After extended litigation, the two companies settled in 2002. Not wanting to face similar litigation, Apple licensed the patent in 2000 to simplify ordering from the Apple Store.
On September 21, 2017, the Comprehensive Economic and Trade Agreement (CETA) signed between the European Union (EU) and Canada provisionally entered into force in Canada. Among other things, this agreement seeks to harmonize laws relating to protection of intellectual property in the EU and Canada, thereby bringing about a number of changes in Canadian patent law, particularly with respect to laws relating to the issuance of patents covering pharmaceutical products. One of the biggest changes is the implementation of a Certificate of Supplementary Protection (CSP) Regime in Canada for pharmaceutical products that have been granted regulatory approval.
This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful launch. Consideration of intellectual property (IP) protection early in the development of a health app is important. Otherwise you could lose the opportunity to do so in the future or be forced to change the name or other details of your app after you have already invested time and money in the app.
Does your health app have a name? A logo? A tagline or slogan? Will it be marketed anywhere? If the answer to any of these questions is “yes,” you should think about applying for trademark protection. Words, names, slogans, sounds, symbols, and more can be protected by trademark if used to indicate a source of the goods/services (i.e., the health app) and to identify and distinguish the health app from those offered or sold by others.
To read the rest of the post on our Health Law & Policy Matters blog, please click here.
Part II: The standard for inventorship is more stringent than for authorship – and matters.
Authorship is the currency of academia, and principle investigators are often generous with technicians and collaborators when listing authors on a paper. However, the identification of an “inventor” has legal significance in the U.S. and cannot be applied to those who have not made an inventive contribution. Inaccurately granting or denying inventorship can result in the invalidation of a patent.
While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection. This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.
There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.” While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).
In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.
To read our full advisory on software patent eligibility, please click here.
The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution. The U.S. Patent and Trademark Office (USPTO) wants to increase the quality of examiner searches using non-patent literature and foreign patents generally. To achieve this goal, STIC provides examiners with access to foreign patents, foreign applications, journals, books, commercial databases, translations, and a specialized collection of resources in the biological and chemical fields. STIC also has search strategy experts that can assist examiners in search activities and understanding certain technology areas.
The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI). This is all part of a larger push by the USPTO to document on the record everything that happens during prosecution of an application, which can affect any issued patent and any patent family members in later legal proceedings.
The initial pilot is over, and the results of the pilot are now being reviewed as part of the ongoing program. The pilot ran through August 20, 2016, and worked to identify best examiner practices for enhancing the clarity of the prosecution record and, in particular, greater clarity in claim interpretation, interview summaries, and reasons for allowance. The pilot consisted of about 130 utility patent examiners, and the participants participated in a variety of different activities, such as ongoing training activities and Quality Enhancement Meetings (QEMs). The USPTO has provided public access to training slides presented to the participants regarding Documenting Claim Interpretation, Interview Summaries and Pre-search Interview Option, and Reasons for Allowance.