The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”). The change would replace the current Broadest Reasonable Interpretation (“BRI”) standard with the standard articulated in Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This change would harmonize the claim construction standard applied in inter partes review, post-grant review, and covered business method patent proceedings before the PTAB with the one used by federal district courts and the International Trade Commission. The proposed amendment would also allow the PTAB to consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an AIA proceeding.
The United States Patent and Trademark Office (USPTO) anticipates issuing the 10 millionth utility patent at some point during the summer 2018. According to the USPTO, “[t]his milestone of human ingenuity perhaps exceeds even the Founding Fathers’ expectations when they called for a patent system in the Constitution to `promote the Progress of Science and useful Arts.’” (https://10millionpatents.uspto.gov/)
As part of the celebration, and for only the second time in 100 years, the USPTO has redesigned the cover of the U.S. patent (i.e., the seal-and-ribbon document issued with each patent granted). The new design, which according to the USPTO “pays homage to the classic elegance of its predecessors,” was unveiled March 11, 2018, at the South by Southwest (SXSW) festival in Austin, Texas. (https://10millionpatents.uspto.gov/media-kit.html)
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.
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.
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.
In its first en banc decision of 2018, the Federal Circuit held that “judicial review is available for a patent owner to challenge the U.S. Patent and Trademark Office’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.” Wi-Fi One v. Broadcom (Fed. Cir. 2018) (en banc). The 9-4 decision overruled a contrary conclusion in Achates Reference Publishing v. Apple.
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.
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, an expanded panel of the Patent Trial and Appeal Board (PTAB) ruled that the state of Minnesota waived its Eleventh Amendment immunity to challenges to patent validity by inter partes review (IPR) by filing suit in federal court alleging infringement of the same patent being challenged by IPR. In Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Regents of the University of Minnesota (IPR2017-01186; IPR2017-01197; IPR2017-01200; IPR2017-01213; IPR2017-01214; IPR2017-01219), Petitioner Ericsson Inc. filed IPR petitions against five University of Minnesota patents covering wireless communications technology. In response, the University filed a motion to dismiss, arguing its Eleventh Amendment sovereign immunity exempted the patents from IPR challenge.