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Indianapolis Bar Association: 2008 Year in Review Patent Law and Practice Chuck Schmal Sponsored by the Intellectual Property Law Section.

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Presentation on theme: "Indianapolis Bar Association: 2008 Year in Review Patent Law and Practice Chuck Schmal Sponsored by the Intellectual Property Law Section."— Presentation transcript:

1 Indianapolis Bar Association: 2008 Year in Review Patent Law and Practice Chuck Schmal Sponsored by the Intellectual Property Law Section

2 Overview Will not spend a large amount of time on famous cases that are covered in usual articles. Will not spend a large amount of time on famous cases that are covered in usual articles. Will not tend to focus on the more fact specific cases, such as claim construction and obviousness. Will not tend to focus on the more fact specific cases, such as claim construction and obviousness. Instead, this presentation will (hopefully) focus on some more practical cases and topics. Instead, this presentation will (hopefully) focus on some more practical cases and topics.

3 Ownership and Licensing

4 Topics: Topics: Employment Agreements Employment Agreements Corporate Ownership and Structure Corporate Ownership and Structure Licensing 3 rd Parties Licensing 3 rd Parties

5 Ownership and Licensing Employment Agreements (Assignments from Inventors to a Company)

6 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Barstow was an employee of Schlumberger and signed an employment agreement. Barstow was an employee of Schlumberger and signed an employment agreement. While at Schlumberger, he worked on several software projects that resulted in the four patents in suit which concerned three Computer Simulation Patents and one Pattern-Matching Patent (aka, baseball simulator project). While at Schlumberger, he worked on several software projects that resulted in the four patents in suit which concerned three Computer Simulation Patents and one Pattern-Matching Patent (aka, baseball simulator project).

7 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Schlumbergers general counsel for software matters and the director of the lab did not believe at the time that the project belonged to Schlumberger. Schlumbergers general counsel for software matters and the director of the lab did not believe at the time that the project belonged to Schlumberger. Barstow and his brother form DDB and assign the patents to DDB. Barstow and his brother form DDB and assign the patents to DDB. DDB sues MLB Advanced Media over the patents. DDB sues MLB Advanced Media over the patents.

8 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Before discovery closes, Schlumberger and MLB Advanced Media entered into an agreement that assigned to MLB Advanced Media all of Schlumbergers rights and interest in the patents in suit and granted MLB Advanced Media a retroactive license to practice under those patents. Before discovery closes, Schlumberger and MLB Advanced Media entered into an agreement that assigned to MLB Advanced Media all of Schlumbergers rights and interest in the patents in suit and granted MLB Advanced Media a retroactive license to practice under those patents.

9 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Question 1: Whether Bastow's employment agreement is: Question 1: Whether Bastow's employment agreement is: An automatic assignment- requiring no further act on the part of Schlumberger is required to transfer title, or An automatic assignment- requiring no further act on the part of Schlumberger is required to transfer title, or A promise to assign- which only vests Schlumberger equitable rights and not legal title. A promise to assign- which only vests Schlumberger equitable rights and not legal title. This is a Federal Law question. This is a Federal Law question.

10 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Employment agreement states that Barstow: Employment agreement states that Barstow: agrees to and does hereby grant and assign all rights in future inventions falling within the scope of the agreement to Schlumberger. agrees to and does hereby grant and assign all rights in future inventions falling within the scope of the agreement to Schlumberger. Federal Circuit- This language clearly creates an automatic assignment. Federal Circuit- This language clearly creates an automatic assignment.

11 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Question 2: Whether the employment agreement covered the patents in suit because they relate in any way to the business or activities of Schlumberger, or are suggested by or result from Barstows work for Schlumberger. Question 2: Whether the employment agreement covered the patents in suit because they relate in any way to the business or activities of Schlumberger, or are suggested by or result from Barstows work for Schlumberger. The is a State Law (Texas) question. The is a State Law (Texas) question. Lower court abused discretion in not granting discovery on whether Barstow's baseball simulator project was under the scope of employment (remand). Lower court abused discretion in not granting discovery on whether Barstow's baseball simulator project was under the scope of employment (remand).

12 DBB Tech. LLC v. MLB (Fed. Cir. 2008) If the patents in suit were within the scope of the employment agreement, they would have been automatically assigned to Schlumberger by operation of law with no further act required on the part of the company. If the patents in suit were within the scope of the employment agreement, they would have been automatically assigned to Schlumberger by operation of law with no further act required on the part of the company. If this occurred, DDBs statute of limitations, waiver, and estoppel defenses would have no merit. If this occurred, DDBs statute of limitations, waiver, and estoppel defenses would have no merit.

13 DBB Tech. LLC v. MLB (Fed. Cir. 2008) Take Home Points for Employers: Take Home Points for Employers: Make sure the language in your employment agreements create an automatic assignment so that legal title vests automatically. Make sure the language in your employment agreements create an automatic assignment so that legal title vests automatically. Take Home Points for Employees: Take Home Points for Employees: Obtain written waiver from employer that projects is not within the scope of your employment. Obtain written waiver from employer that projects is not within the scope of your employment.

14 Ownership and Licensing Corporate Structure and Ownership (Ownership and Licensing Between Related Companies)

15 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Mars is a candy company. Mars is a candy company. In 1990, Mars owns two patents that generally concern techniques for authenticating coins in vending machines In 1990, Mars owns two patents that generally concern techniques for authenticating coins in vending machines

16 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Mars does not make and has never made vending machine coin changers. Mars does not make and has never made vending machine coin changers. But, Mars had a wholly owned subsidiary, Mars Electronics International, Inc. (MEI), that manufactures and sells vending machine coin changers. But, Mars had a wholly owned subsidiary, Mars Electronics International, Inc. (MEI), that manufactures and sells vending machine coin changers.

17 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors In the United Kingdom, Mars has another subsidiary, MEI UK, that is separate from MEI. In the United Kingdom, Mars has another subsidiary, MEI UK, that is separate from MEI. Mars MEI MEI-UK

18 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Mars maintained consolidated financial statements that reflected the profits, losses, assets, and liabilities of all of its subsidiaries, including MEI. Mars maintained consolidated financial statements that reflected the profits, losses, assets, and liabilities of all of its subsidiaries, including MEI.

19 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Mars licenses the patents to MEI Mars licenses the patents to MEI. License MarsMEI

20 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors MEI made payments to Mars [b]ased on gross sales value of coin changers using Marss patented technology. MEI made payments to Mars [b]ased on gross sales value of coin changers using Marss patented technology. MEI was required to make those royalty payments whether or not it made any profit. MEI was required to make those royalty payments whether or not it made any profit. License LicenseMarsMEI

21 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors In 1990, Mars sues Coin Acceptors, Inc. for infringement of both patents In 1990, Mars sues Coin Acceptors, Inc. for infringement of both patents Mars

22 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors In 1996, Mars assigns patents to MEI to settle a tax dispute with the UK concerning the tax treatment of royalty payments from MEI- UK to its parent Mars. In 1996, Mars assigns patents to MEI to settle a tax dispute with the UK concerning the tax treatment of royalty payments from MEI- UK to its parent Mars. AssignsMarsMEI

23 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors District Court finds MEIbut not Mars had standing to pursue claims after (Mars did not own the patents.) District Court finds MEIbut not Mars had standing to pursue claims after (Mars did not own the patents.)MarsMEI

24 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors In 2006, Mars and MEI - COINCO CONFIRMATION AGREEMENT, stated that Mars and [MEI] do hereby acknowledge that Mars owns and retains the right to sue for past infringement of the Litigation Patents In 2006, Mars and MEI - COINCO CONFIRMATION AGREEMENT, stated that Mars and [MEI] do hereby acknowledge that Mars owns and retains the right to sue for past infringement of the Litigation PatentsMarsMEI Confirmation Agreement

25 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Questions of interest (opinion had more questions): Questions of interest (opinion had more questions): (1) whether Mars was entitled to lost profits; (1) whether Mars was entitled to lost profits; (2) whether MEI had standing to recover damages incurred prior to 1996; and (2) whether MEI had standing to recover damages incurred prior to 1996; and (3) whether Mars had standing to recover damages incurred from 1996 to (3) whether Mars had standing to recover damages incurred from 1996 to 2003.

26 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Question (1) whether Mars was entitled to lost profits. Question (1) whether Mars was entitled to lost profits. Mars claimed that, by virtue of the parent- subsidiary relationship and its consolidated financial statements, all MEIs lost profits were inherently lost profits of Mars. Mars claimed that, by virtue of the parent- subsidiary relationship and its consolidated financial statements, all MEIs lost profits were inherently lost profits of Mars.

27 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Answer: No Lost Profits for Mars. Answer: No Lost Profits for Mars. Federal Circuit: Federal Circuit: Mars and MEI had a traditional royalty- bearing license agreement. MEI paid Mars a royalty [b]ased on gross sales value of MEIs products that use Marss patented technology, and Mars and MEI had a traditional royalty- bearing license agreement. MEI paid Mars a royalty [b]ased on gross sales value of MEIs products that use Marss patented technology, and MEI was required to make those royalty payments whether or not it made any profit. MEI was required to make those royalty payments whether or not it made any profit.

28 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Question (2) whether MEI had standing to recover damages incurred prior to Question (2) whether MEI had standing to recover damages incurred prior to Answer: No. Answer: No. Federal Circuit Federal Circuit MEI did not own the patents prior to MEI did not own the patents prior to Mars and MEI had a non-exclusive license because 1996 agreement indicated that MEI-UK was also licensed under the same patents as MEI- no geographical limits. Mars and MEI had a non-exclusive license because 1996 agreement indicated that MEI-UK was also licensed under the same patents as MEI- no geographical limits.

29 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Question (3) whether Mars had standing to recover damages incurred from 1996 to Question (3) whether Mars had standing to recover damages incurred from 1996 to Real Questions: Real Questions: (a) Whether the 1996 Agreements transferred title of the patent from Mars to MEI, and (a) Whether the 1996 Agreements transferred title of the patent from Mars to MEI, and (b) If so, whether the 2006 Confirmation Agreement transferred title back from MEI to Mars. (b) If so, whether the 2006 Confirmation Agreement transferred title back from MEI to Mars.

30 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Question (a) Whether the 1996 Agreements transferred title of the patent from Mars to MEI. Question (a) Whether the 1996 Agreements transferred title of the patent from Mars to MEI. Answer: Yes. Answer: Yes. Federal Circuit- language is a clear assignment to MEI: Federal Circuit- language is a clear assignment to MEI: [Mars] Incorporated hereby transfers to MEI- US its entire interest in the Covered Intellectual Property that relates to the business of the Parties. [Mars] Incorporated hereby transfers to MEI- US its entire interest in the Covered Intellectual Property that relates to the business of the Parties.

31 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Question (b) Whether the 2006 Confirmation Agreement transferred title back from MEI to Mars. Question (b) Whether the 2006 Confirmation Agreement transferred title back from MEI to Mars. Answer: No. Answer: No.

32 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Federal Circuit- the following language was a transfer of a right to sue for past damages and not an assignment (acknowledges patent ownership but does not actively transfer): Federal Circuit- the following language was a transfer of a right to sue for past damages and not an assignment (acknowledges patent ownership but does not actively transfer): Mars and the Buyer [MEI] do hereby acknowledge that Mars owns and retains the right to sue for past infringement of the Litigation Patents. To the extent that MEI may have or claim any rights in or to any past infringement of the Litigation Patents or any recovery therefor, upon the terms and subject to the conditions of the Purchase Agreement, MEI hereby does irrevocably assign all such rights to Mars. Mars and the Buyer [MEI] do hereby acknowledge that Mars owns and retains the right to sue for past infringement of the Litigation Patents. To the extent that MEI may have or claim any rights in or to any past infringement of the Litigation Patents or any recovery therefor, upon the terms and subject to the conditions of the Purchase Agreement, MEI hereby does irrevocably assign all such rights to Mars.

33 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Question (3) whether Mars had standing to recover damages incurred from 1996 to Question (3) whether Mars had standing to recover damages incurred from 1996 to Answer: No. Answer: No.

34 Mars v. Coin Acceptors Mars v. Coin Acceptors (Fed. Cir. 2008) Mars v. Coin Acceptors Watch out who owns the patents. Watch out who owns the patents. Corporate structure and ownership can affect: Corporate structure and ownership can affect: Standing to sue and Standing to sue and Damages (lost profits). Damages (lost profits). Be very clear with the language you use when assigning a patent (don't play games). Be very clear with the language you use when assigning a patent (don't play games).

35 Ownership and Licensing Licensing Others

36 Quanta v. LG Electronics Quanta v. LG Electronics (U.S. 2008) Quanta v. LG Electronics US 4,939,641 US 5,379,379 US 5,077,733 Bought Cross-License Computer Memory Management Methods 3 rd Party Supplier of Memory/Bus License does not extend to products that combine Intel with Non-Intel Components

37 Quanta v. LG Electronics Quanta v. LG Electronics (U.S. 2008) Quanta v. LG Electronics Sales of products that do not fully practice the invention can still trigger patent exhaustion when the product includes essential features and the reasonable and intended use of the product is to practice the patent. Sales of products that do not fully practice the invention can still trigger patent exhaustion when the product includes essential features and the reasonable and intended use of the product is to practice the patent. Method claims are subject to exhaustion. Method claims are subject to exhaustion. The court left open the possibility of using specific licensing terms to limit the scope of patent exhaustion. The court left open the possibility of using specific licensing terms to limit the scope of patent exhaustion. For example, a License could prohibit types of third party sales as a breach. For example, a License could prohibit types of third party sales as a breach.

38 Quanta v. LG Electronics Quanta v. LG Electronics (U.S. 2008) Quanta v. LG Electronics Take Home #1: Take Home #1: Try to have the agreement create a breach if downstream parties violate the agreement (Good Luck on getting that in an agreement). Try to have the agreement create a breach if downstream parties violate the agreement (Good Luck on getting that in an agreement). Take Home #2: Take Home #2: Recoup all of your licensing revenue from the original sale/license. (Make sure your royalty rate reflects royalties for downstream use). Recoup all of your licensing revenue from the original sale/license. (Make sure your royalty rate reflects royalties for downstream use).

39 Continuation, Divisional and CIP Applications

40 Themes Following a long line of cases- CIPs might not be that useful Following a long line of cases- CIPs might not be that useful What is gained by filing a CIP in comparison to a new utility application for the new matter and a continuation? What is gained by filing a CIP in comparison to a new utility application for the new matter and a continuation? Answer: Not much Answer: Not much

41 Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc. Safe Harbor of 35 U.S.C. § 121 Safe Harbor of 35 U.S.C. § 121 Safe Harbor: Protection afforded by 35 U.S.C. 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications and does not apply to CIPs filed as a result of a restriction requirement. Safe Harbor: Protection afforded by 35 U.S.C. 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications and does not apply to CIPs filed as a result of a restriction requirement.

42 PowerOasis v. T-Mobile (Fed. Cir. 2008) Priority & Presumption of Validity Priority & Presumption of Validity Patentee normally bears burden of proving priority Patentee normally bears burden of proving priority exception: priority claim considered by PTO = presumption of validityexception: priority claim considered by PTO = presumption of validity PTO did NOT consider priority = NO presumption of validity PTO did NOT consider priority = NO presumption of validity CIP did not receive benefit of parents filing date CIP did not receive benefit of parents filing date

43 Patentable Subject Matter- Business Methods and Software

44 Business Methods and Software Themes: Themes: This area of the law is a work in progress. This area of the law is a work in progress. Focus of the analysis seems to be that the claims are being overly broad. Focus of the analysis seems to be that the claims are being overly broad. Right now, the Patent Office is taking an expansive view of what is not patentable. Right now, the Patent Office is taking an expansive view of what is not patentable. Watch out, other types of inventions might not be patentable. Watch out, other types of inventions might not be patentable.

45 Patentable Subject Matter- Business Methods and Software The Federal Circuit

46 In re Bilski, (Fed. Cir. 2008)(en banc) The claim is for a method of hedging risk in the field of commodities trading. The claim is for a method of hedging risk in the field of commodities trading. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter- risk position to said consumers; and (b) identifying market participants for said commodity having a counter- risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions

47 In re Bilski, (Fed. Cir. 2008)(en banc) Bilski holds that a claimed process either Bilski holds that a claimed process either – (1) be tied to a particular machine or apparatus or – (2) transform a particular article into a different state or thing. Bilski's claim fails this test Bilski's claim fails this test

48 In re Bilski, (Fed. Cir. 2008)(en banc) Federal Circuit: Federal Circuit: [W]e recognize that the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies. And we certainly do not rule out the possibility that this court may in the future refine or augment the test or how it is applied. [W]e recognize that the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies. And we certainly do not rule out the possibility that this court may in the future refine or augment the test or how it is applied. Bilski v. Doll (on petition for certiorari) Bilski v. Doll (on petition for certiorari)

49 In re Comiskey (Fed. Cir. 2009)- Revised Panel Opinion Original- claim features directed to nonstatutory subject matter would be de facto obvious. Rejects under 103. Original- claim features directed to nonstatutory subject matter would be de facto obvious. Rejects under 103. Comiskeys patent application claims a method of arbitrating that does not necessarily require the use of any technology. Comiskeys patent application claims a method of arbitrating that does not necessarily require the use of any technology. Revised opinion- finds the claims just directed to non-statutory subject matter. Rejects under 101. Revised opinion- finds the claims just directed to non-statutory subject matter. Rejects under 101.

50 In re Comiskey (Fed. Cir. 2009)- Revised Panel Opinion Dissent- Moore and Newman- the revised opinion violated "well established precedent that this court will not consider new grounds of rejecting patent claims on appeal." Dissent- Moore and Newman- the revised opinion violated "well established precedent that this court will not consider new grounds of rejecting patent claims on appeal."

51 Business Methods and Software Not yet many follow on cases from the Federal Circuit, but the Patent Office has been busy lining up cases for the Federal Circuit. Not yet many follow on cases from the Federal Circuit, but the Patent Office has been busy lining up cases for the Federal Circuit. The Board of Patent Appeals and Interferences (BPAI) was at first a little tentative in expanding In re Bilski, but the BPAI seems to have lost some inhibition (being tricky). The Board of Patent Appeals and Interferences (BPAI) was at first a little tentative in expanding In re Bilski, but the BPAI seems to have lost some inhibition (being tricky). While it is likely some of these cases will be overturned, BPAI cases might provide a clue of things to come for the Federal Circuit. While it is likely some of these cases will be overturned, BPAI cases might provide a clue of things to come for the Federal Circuit.

52 Patentable Subject Matter- Business Methods and Software Bilski- tied to a particular machine or apparatus prong

53 Business Methods and Software Question: How much of an apparatus or machine do I need to recite in my method claim in order to satisfy the be tied to a particular machine or apparatus prong of the test? Question: How much of an apparatus or machine do I need to recite in my method claim in order to satisfy the be tied to a particular machine or apparatus prong of the test?

54 Business Methods and Software Bilski admitted that the claim was not limited to any specific machine, so not at issue in Bilski. Bilski admitted that the claim was not limited to any specific machine, so not at issue in Bilski. We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine. We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.

55 Ex parte Halligan Ex parte Halligan (BPAI 2008) Ex parte Halligan 119. A programmed computer method based upon the six factors of a trade secret from the First Restatement of Torts for identifying trade secrets within a plurality of potential trade secrets of a business, where each of the plurality of potential trade secrets comprise information, said method implemented by the programmed computer to effect the following steps: 119. A programmed computer method based upon the six factors of a trade secret from the First Restatement of Torts for identifying trade secrets within a plurality of potential trade secrets of a business, where each of the plurality of potential trade secrets comprise information, said method implemented by the programmed computer to effect the following steps: a) the programmed computer providing a predetermined criteria for evaluating a potential trade secret... a) the programmed computer providing a predetermined criteria for evaluating a potential trade secret...

56 Ex parte Halligan Ex parte Halligan (BPAI 2008) Ex parte Halligan Machine Prong- The issue presented by these claims is whether recitation of a programmed computer suffices to tie the process claims to a particular machine. This is the exact issue that the court in Bilski declined to decide. Machine Prong- The issue presented by these claims is whether recitation of a programmed computer suffices to tie the process claims to a particular machine. This is the exact issue that the court in Bilski declined to decide.

57 Ex parte Halligan Ex parte Halligan (BPAI 2008) Ex parte Halligan Machine Prong- Fails. Machine Prong- Fails. Were the recitation of a 'programmed computer' in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a 'programmed computer.' Were the recitation of a 'programmed computer' in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a 'programmed computer.'

58 Ex parte Halligan Ex parte Halligan (BPAI 2008) Ex parte Halligan Transformation Prong- Failed because the transformation involves legal rights (Trade Secrets) and "does not represent physical and tangible objects." Transformation Prong- Failed because the transformation involves legal rights (Trade Secrets) and "does not represent physical and tangible objects."

59 Ex parte Halligan Ex parte Halligan (BPAI 2008) Ex parte Halligan Practice Tip: Practice Tip: Right now, it appears that just reciting a computer or a programmed computer without more in a method claim will not overcome the machine prong of Bilski's machine-or-transformation test at the Patent Office. Right now, it appears that just reciting a computer or a programmed computer without more in a method claim will not overcome the machine prong of Bilski's machine-or-transformation test at the Patent Office. Note: Other non-method claims directed to a programmed computer were held invalid under § 112 (did not reach § 101 issue) Note: Other non-method claims directed to a programmed computer were held invalid under § 112 (did not reach § 101 issue)

60 Ex parte Cornea-Hasegan (BPAI 2009)(non-precedential) BPAI 2009BPAI A method, comprising: 1. A method, comprising: normalizing by a processor operands a, b, and c for a floating- point operation; normalizing by a processor operands a, b, and c for a floating- point operation; predicting by the processor whether result d of said floating- point operation on said a, b, c might be tiny; predicting by the processor whether result d of said floating- point operation on said a, b, c might be tiny; if so, then scaling by the processor said a, b, c to form a', b', c'; calculating by the processor result d' of said floating-point operation on said a', b', c'; if so, then scaling by the processor said a, b, c to form a', b', c'; calculating by the processor result d' of said floating-point operation on said a', b', c'; determining by the processor whether said d is tiny based upon said result d'; determining by the processor whether said d is tiny based upon said result d'; if so, then calculating by the processor said d using software; and if so, then calculating by the processor said d using software; and if not, then calculating by the processor said d using floating- point hardware. if not, then calculating by the processor said d using floating- point hardware.

61 Ex parte Cornea-Hasegan (BPAI 2009)(non-precedential) BPAI 2009BPAI 2009 Machine Prong: Machine Prong: The recitation of a processor in itself, however, does not tie the process steps to a particular machine. In other words, the recitation of a processor does not limit the process steps to any specific machine or apparatus. The recitation of a processor in itself, however, does not tie the process steps to a particular machine. In other words, the recitation of a processor does not limit the process steps to any specific machine or apparatus. Transformation Prong: Transformation Prong: Appellants claim 1also fails the second prong of the machine- or-transformation test because the data acted on by the method does not represent physical and tangible objects. Rather, the data represents information about an abstract floating-point number, which is intangible. Appellants claim 1also fails the second prong of the machine- or-transformation test because the data acted on by the method does not represent physical and tangible objects. Rather, the data represents information about an abstract floating-point number, which is intangible. Result: Result: Thus, claim 1 fails the machine-or-transformation test and is not patent-eligible under 35 U.S.C. § 101 Thus, claim 1 fails the machine-or-transformation test and is not patent-eligible under 35 U.S.C. § 101

62 Ex parte Cornea-Hasegan (BPAI 2009)(non-precedential) BPAI 2009BPAI 2009 Practice Tip: Practice Tip: Similar to programmed computer in Halligan, it appears that just reciting a processor without more in a method claim will not overcome the machine prong of Bilski's machine-or-transformation test at the Patent Office. Similar to programmed computer in Halligan, it appears that just reciting a processor without more in a method claim will not overcome the machine prong of Bilski's machine-or-transformation test at the Patent Office.

63 Patentable Subject Matter- Business Methods and Software How Bilski Affects Other Types of Claims

64 Business Methods and Software Question: Can I get around this problem by using apparatus claims instead of method claims? Question: Can I get around this problem by using apparatus claims instead of method claims? Clue: In re Bilski (which did not outright overturn State Street) stated in footnote 18: Clue: In re Bilski (which did not outright overturn State Street) stated in footnote 18: In State Street, as is often forgotten, we addressed a claim drawn not a process but to a machine. In State Street, as is often forgotten, we addressed a claim drawn not a process but to a machine.

65 Ex parte Bo Li Ex parte Bo Li (BPAI 2008) Ex parte Bo Li One of first BPAI cases to interpret Bilski (somewhat). One of first BPAI cases to interpret Bilski (somewhat). The application describes a system and method for generating Web based reports that can be easily updated. The application describes a system and method for generating Web based reports that can be easily updated.

66 Ex parte Bo Li Ex parte Bo Li (BPAI 2008) Ex parte Bo Li 42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising: 42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising: providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module; providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module; parsing a configuration file into definition data that specifies: a data organization of the report... parsing a configuration file into definition data that specifies: a data organization of the report...

67 Ex parte Bo Li Ex parte Bo Li (BPAI 2008) Ex parte Bo Li Claim 42 is a Beauregard claim directed to a computer program product stored on a computer readable memory. Claim 42 is a Beauregard claim directed to a computer program product stored on a computer readable memory. Held that though not finally adjudicated, such claimed products, even when written as Beauregard claims, are still valid under § 101. Held that though not finally adjudicated, such claimed products, even when written as Beauregard claims, are still valid under § 101. However, claim still held unpatentable as obvious. However, claim still held unpatentable as obvious.

68 Ex parte Atkin (BPAI 2009) Issued after Ex parte Cornea-Hasegan Issued after Ex parte Cornea-Hasegan The application concerns human interfaces for the World Wide Web addresses in languages which require bidirectional display and presentation (can read right to left or vice versa). The application concerns human interfaces for the World Wide Web addresses in languages which require bidirectional display and presentation (can read right to left or vice versa).

69 Ex parte Atkin (BPAI 2009) Method Claim Method Claim 1. A method for converting a unidirectional domain name to a bidirectional domain name, said method comprising the steps of: 1. A method for converting a unidirectional domain name to a bidirectional domain name, said method comprising the steps of: establishing a plurality of labels within a unidirectional domain name by using a pre-determined full stop punctuation mark as a delimiter between said labels, said labels having an original label display order as encountered from left to right; establishing a plurality of labels within a unidirectional domain name by using a pre-determined full stop punctuation mark as a delimiter between said labels, said labels having an original label display order as encountered from left to right; within each said label, performing inferencing through... within each said label, performing inferencing through...

70 Ex parte Atkin (BPAI 2009) System Claim System Claim 9. A system for converting a unidirectional domain name to a bidirectional domain name comprising: 9. A system for converting a unidirectional domain name to a bidirectional domain name comprising: a label definer adapted to establish a plurality of labels within a unidirectional domain name by using a pre-determined full stop punctuation mark as a delimiter between said labels, said labels having an original label display order as encountered from left to right; a label definer adapted to establish a plurality of labels within a unidirectional domain name by using a pre-determined full stop punctuation mark as a delimiter between said labels, said labels having an original label display order as encountered from left to right; an inferencer adapted to, within each said label, resolve... an inferencer adapted to, within each said label, resolve...

71 Ex parte Atkin (BPAI 2009) Atkin did not separately argue: Atkin did not separately argue: Independent claim 5, which recited a computer readable medium encoded with computer software for accomplishing method steps like those recited in claim 1 (Beauregard claim), and Independent claim 5, which recited a computer readable medium encoded with computer software for accomplishing method steps like those recited in claim 1 (Beauregard claim), and Independent claim 9, which recited a system that comprises elements for performing the functions represented by those steps. Independent claim 9, which recited a system that comprises elements for performing the functions represented by those steps.

72 Ex parte Atkin (BPAI 2009) BPAI rejected under 35 U.S.C. § 101 as not being directed to patent-eligible subject matter as defined in Bilski: BPAI rejected under 35 U.S.C. § 101 as not being directed to patent-eligible subject matter as defined in Bilski: Independent claim 1- Method Claim. Independent claim 1- Method Claim. Independent claim 9- System Claim. Independent claim 9- System Claim. Notably, claim 5, which was the Beauregard claim, was not rejected under 35 U.S.C. § 101. Notably, claim 5, which was the Beauregard claim, was not rejected under 35 U.S.C. § 101.

73 Ex parte Atkin (BPAI 2009) BPAI noted that claim 1 does not: BPAI noted that claim 1 does not: – "recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web. All of the steps are data manipulation steps."

74 Ex parte Atkin (BPAI 2009) System claim 9 for converting the domain name rejected: System claim 9 for converting the domain name rejected: – The term system in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus. – Language inferencer and label definer used in the body does not help (not really an apparatus). – BPAI treated claim 9 as encompassing any and all means for performing the recited functions and rejected claim 9 under § 112, first paragraph, as based on a nonenabling disclosure in accordance with Miyazaki (BPAI). (too broad a claim- the disclosure fails to provide a scope of enablement commensurate with the scope of the claims).

75 Ex parte Atkin (BPAI 2009) System claim 9 for converting the domain name rejected: System claim 9 for converting the domain name rejected: – when construed in accordance with Miyazaki in the manner explained above in the discussion of the new rejection of those claims under § 112, first paragraph, for nonenablement, those claims encompass any and all structures for performing the recited [claim 9 is] at least as broad as method claims which we have determined recite patent. ineligible subject matter under Bilski.

76 Ex parte Atkin (BPAI 2009) Practice Points: Practice Points: Include Beauregard claims in your application to cover the methods for your invention Include Beauregard claims in your application to cover the methods for your invention (Might improve your chance of avoiding a 101 rejection at the Patent Office) (Might improve your chance of avoiding a 101 rejection at the Patent Office)

77 Ex parte Atkin (BPAI 2009) However, note in an earlier non-precedenital decision, Ex parte Cornea-Hasegan (BPAI 2009) (discussed before), the BPAI rejected the following claim as being directed to unpatentable subject matter: However, note in an earlier non-precedenital decision, Ex parte Cornea-Hasegan (BPAI 2009) (discussed before), the BPAI rejected the following claim as being directed to unpatentable subject matter: 18. A computer readable media including program instructions which when executed by a processor cause the processor to perform the following: 18. A computer readable media including program instructions which when executed by a processor cause the processor to perform the following: normalizing operands a, b, and c for a floating-point operation;... normalizing operands a, b, and c for a floating-point operation;... BPAI- Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent eligible. BPAI- Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent eligible.

78 Ex parte Atkin (BPAI 2009) Practice Points: Practice Points: System claims can be rejected under 101 System claims can be rejected under 101 Recite An apparatus... Recite An apparatus... Avoid Miyazaki Enablement Trap- if claiming structure, try to Include structure specifically tailored to the invention's environment (e.g., x- ray machine) … and not uncommon/means-like terms inferencer, label definer Avoid Miyazaki Enablement Trap- if claiming structure, try to Include structure specifically tailored to the invention's environment (e.g., x- ray machine) … and not uncommon/means-like terms inferencer, label definer Might Avoid Miyazaki Enablement Trap- use means plus function language 35 U.S.C. 112, paragraph 6. Might Avoid Miyazaki Enablement Trap- use means plus function language 35 U.S.C. 112, paragraph 6.

79 Business Methods and Software Question: I do not deal with business method and software patents, so what is the big deal? Question: I do not deal with business method and software patents, so what is the big deal? Answer: Claims in other types of fields may fail Bilski's machine-or-transformation test. Answer: Claims in other types of fields may fail Bilski's machine-or-transformation test. Medical diagnostic or treatment claims. Medical diagnostic or treatment claims.

80 Business Methods and Software Federal Circuit in Bilski discussed several medical treatment cases. Federal Circuit in Bilski discussed several medical treatment cases. Discussing machine prong, it looked favorably to Grams – rejecting a claim directed to a process of diagnosing an 'abnormal condition' in a person by identifying and noticing discrepancies in results of unspecified clinical tests of different parts of the body. Discussing machine prong, it looked favorably to Grams – rejecting a claim directed to a process of diagnosing an 'abnormal condition' in a person by identifying and noticing discrepancies in results of unspecified clinical tests of different parts of the body. Footnote 27 mentions dissenters view of dismissal of writ certiorari in Metabolite case. Footnote 27 mentions dissenters view of dismissal of writ certiorari in Metabolite case.

81 Business Methods and Software In Bilski, Abele case was discussed with respect to the transformation prong of the test. In Bilski, Abele case was discussed with respect to the transformation prong of the test. In Abele, the (broad) independent claim to a process of graphically displaying variances of data from average values was unpatentable because it did not specify any particular type or nature of data; nor did it specify how or from where the data was obtained o what the data represented. In Abele, the (broad) independent claim to a process of graphically displaying variances of data from average values was unpatentable because it did not specify any particular type or nature of data; nor did it specify how or from where the data was obtained o what the data represented. However, its dependent claim, which recites said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner, was patentable. However, its dependent claim, which recites said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner, was patentable. the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible. the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible.

82 Classen v. Biogen IDEC (Fed. Cir. 2008)(Nonprecedential) Fed. Cir. 2008Fed. Cir US 5,723,283 US 5,723,283 The claims focus on several methods for evaluating vaccine immunization schedules. The claims focus on several methods for evaluating vaccine immunization schedules.

83 Classen v. Biogen IDEC (Fed. Cir. 2008)(Nonprecedential) Fed. Cir. 2008Fed. Cir Claim 1 of patent 5,723,283: Claim 1 of patent 5,723,283: 1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises: 1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises: – immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and – comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

84 Classen v. Biogen IDEC (Fed. Cir. 2008)(Nonprecedential) Fed. Cir. 2008Fed. Cir The whole decision (Judge Moore with Judge Newman concurring) : The whole decision (Judge Moore with Judge Newman concurring) : – "In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we affirm the district court's grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. Dr. Classen's claims are neither 'tied to a particular machine or apparatus' nor do they 'transform[] a particular article into a different state or thing.' Bilski, 545 F.3d at 954. Therefore we affirm.

85 Classen v. Biogen IDEC (Fed. Cir. 2008)(Nonprecedential) Fed. Cir. 2008Fed. Cir Practice Tip: Practice Tip: Even if your invention is neither a business method type invention nor a software type invention, check your claims to make sure that they satisfy Bilski's machine-or-transformation test. Even if your invention is neither a business method type invention nor a software type invention, check your claims to make sure that they satisfy Bilski's machine-or-transformation test.

86 Practice Before the Patent Office

87 USPTO Practice Topics: Topics: Current Rules on Hold. Current Rules on Hold. Future Rules- Deferred Examination? Future Rules- Deferred Examination? More Requirements for Practitioners. More Requirements for Practitioners. Improvements to PCT/Outside US filing and prosecution. Improvements to PCT/Outside US filing and prosecution.

88 Practice Before the Patent Office Patent Office Rules

89 USPTO New Rules on Hold President Obama has ordered that new federal rulemaking cease until the White House Office of Information and Regulatory Affairs (OIRA) can review the rules. President Obama has ordered that new federal rulemaking cease until the White House Office of Information and Regulatory Affairs (OIRA) can review the rules.

90 USPTO Proposed Rule-Changes to Practice for Documents Submitted USPTO Proposed Rule-Changes to Practice for Documents Submitted Eliminating the Fax Machine (Almost) Eliminating the Fax Machine (Almost) – Prohibits faxing any correspondence that can be submitted via EFS–Web – Prohibits faxing any patent or TM correspondence that can be submitted via the Electronic Patent Assignment System (EPAS) – Allows faxing correspondence not intended to become part of the official file record – Limits fax submissions to one application or matter (except those involving maintenance fee payments or refunds) – Requires use of fax number identified by the PTO for the particular type of correspondence, or else transmission is ineffective! Proposing an increased minimum font size for papers submitted in patent application, patent and reexamination proceedings Proposing an increased minimum font size for papers submitted in patent application, patent and reexamination proceedings – Capital letters no smaller than 0.28 cm high (e.g., Times New Roman 12 point font)

91 FINAL PTO RULE: Patent Appeals Patent Appeals Patent Appeals ON HOLD ON HOLD New format requirements, i.e., 30-page limit, 14-point font. New format requirements, i.e., 30-page limit, 14-point font. Extensions-of-time for Reply Briefs and Requests for Rehearing are no longer a matter of right. Extensions-of-time for Reply Briefs and Requests for Rehearing are no longer a matter of right. New required sections: Statement of Facts and Claims Support and Drawing Analysis. New required sections: Statement of Facts and Claims Support and Drawing Analysis.

92 FINAL PTO RULE: Patent Appeals Patent Appeals Patent Appeals OMB requested public comments on the costs and paperwork burdens with a November 7, 2008 deadline. OMB requested public comments on the costs and paperwork burdens with a November 7, 2008 deadline. Effective date of new appeals rules would have been December 10, 2008 Effective date of new appeals rules would have been December 10, 2008 BUT the new rules have been indefinitely delayed because the review by OMB has not been completed. BUT the new rules have been indefinitely delayed because the review by OMB has not been completed. Applicants are free to submit appeals following the old or new rules. Applicants are free to submit appeals following the old or new rules. Dec. 10 entry in Federal Register with announcement: Dec. 10 entry in Federal Register with announcement:

93 Practice Before the Patent Office Future Rules- Deferred Examination?

94 Current Deferred Examination Requirements- Rule 103(d) Allows a deferral up to 3 years from the earliest priority date claimed Allows a deferral up to 3 years from the earliest priority date claimed Requirements for Request Requirements for Request – Fees- $430 Publication Fee under Rule 1.18(d)- $300 Publication Fee under Rule 1.18(d)- $300 Processing Fee under Rule 1.17(i)- $130 Processing Fee under Rule 1.17(i)- $130 – Originally Filed Utility (or Plant) application or Nationalized PCT – Allowed to be Published (no non-publication request or rescinded request) – Application in condition to publish No Office Action or Notice of Allowance No Office Action or Notice of Allowance

95 Future of Deferred Examination Select comments from the roundtable discussion held on February 12, Select comments from the roundtable discussion held on February 12, – Deferred Examination would harmonize U.S. with the rest of the world. – Question of whether the PTO has the authority to make the change. – It appears that Deferred Examination likely will be back on the table this year. Written comment deadline was February 26, 2009, but now has been extend to May 29, Written comment deadline was February 26, 2009, but now has been extend to May 29, 2009.

96 Practice Before the Patent Office New Requirements for Patent Practitioners

97 Patent Practitioners Annual Patent Practitioner Maintenance Fees Annual Patent Practitioner Maintenance Fees Starting Spring $118 Starting Spring $118 Reminder to make sure your contact info is correct with PTO, notices will be sent in advance Reminder to make sure your contact info is correct with PTO, notices will be sent in advance Info on how to update contact: 8dec11.htm Info on how to update contact: 8dec11.htm 8dec11.htm 8dec11.htm

98 Continuing Education for Practitioners (CEP) System Pilot launched late August 2008 Pilot launched late August 2008 Materials to cover recent PTO rule changes, revised patent examination guidelines, etc. Materials to cover recent PTO rule changes, revised patent examination guidelines, etc. If implemented, practitioners will be required to complete one CEP program per year. If implemented, practitioners will be required to complete one CEP program per year.

99 Practitioners Withdrawing from Representation Eliminates requirement of 30 days between approval of Request to withdraw and expiration of time period for reply. Instead, practitioners must certify (SB/83): Eliminates requirement of 30 days between approval of Request to withdraw and expiration of time period for reply. Instead, practitioners must certify (SB/83): i. Notice to client, before expiration of reply period, that practitioner wants to withdraw; i. Notice to client, before expiration of reply period, that practitioner wants to withdraw; ii. Returned to client all papers and property (including funds); and ii. Returned to client all papers and property (including funds); and iii. Notified client of any replies due and time frame for response. iii. Notified client of any replies due and time frame for response.

100 Final Rules on Redefining Practice before the Office Effective September 15, 2008 Registration Authorizes: – – Preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, and drafting the specification or claims of a patent application; – – Drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; – – Drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to the Board of Patent Appeals and Interferences, or other proceeding; and – – Drafting patent assignments "if the practitioner is filing or prosecuting the patent application, and assignment does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party. Registration Does Not Authorize: – – Offering an "opinion of validity of another party's patent when the client is contemplating litigation and not seeking reexamination PTO expects the new ethics rules to be the subject of a later, separate notice

101 July 23, 2008 PTO Notice – Scope of Foreign Filing Licenses Beware Outsourcing Beware Outsourcing – Exporting subject matter for preparation of patent applications to be filed in the US Requires clearance from the Bureau of Industry and Security (BIS) Requires clearance from the Bureau of Industry and Security (BIS) Not authorized by foreign filing license Not authorized by foreign filing license Exporting subject matter for purposes related to filing of foreign patent applications Exporting subject matter for purposes related to filing of foreign patent applications – Foreign Filing License – Export Administration Regulations (EAR) Governs use of dual-use commodities, software and technology (including technical data) Governs use of dual-use commodities, software and technology (including technical data) If invention made in US, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate PTO foreign filing license procedure If invention made in US, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate PTO foreign filing license procedure Reminder – Foreign filing licenses do not authorize the export of any technology that is not specifically submitted to the PTO as part of a U.S. patent application or a petition for a foreign filing license Reminder – Foreign filing licenses do not authorize the export of any technology that is not specifically submitted to the PTO as part of a U.S. patent application or a petition for a foreign filing license

102 Practice Before the Patent Office Improvements to PCT/Outside US Filing and Prosecution

103 PCT- Options to Save Money Australia now available as a PCT searching authority Australia now available as a PCT searching authority Effective: November 1, 2008 Effective: November 1, 2008 Press release: applications with claims relating to particular mechanical engineering or analogous fields of technology may be excluded Press release: applications with claims relating to particular mechanical engineering or analogous fields of technology may be excluded

104 PCT- Options to Save Money For PCT applications, consider a non-U.S. International Searching Authority (ISA), such as Korea or Australia. For PCT applications, consider a non-U.S. International Searching Authority (ISA), such as Korea or Australia. – Korea is the least expensive option. As of December 1, 2008, the search fee for Korea will be $220 (as compared to the U.S. $2080 search fee in January). Korea will not search certain types of technology, such as selected biotechnology inventions. – Australia now can act as an International Search Authority (ISA) for U.S. originated PCT applications. The search fee for Australia is currently $1302, which is less than the $2,080 current U.S. search fee. However, the technology that can be searched by the Australian Patent Office is extremely limited. For example, Australia excludes searches of mechanical engineering type inventions.

105 PCT- Options to Save Money Below is a chart summarizing the options. Please note that the search fees are based on March 2009 figures. Below is a chart summarizing the options. Please note that the search fees are based on March 2009 figures. ISA Office Search Fee BenefitsIssues Australia$1091 Less expensive Only searches applications in very limited technology fields. For example, it does not search all mechanical engineering and some biotechnology type inventions. Europe$2164 Perceived high quality search Expensive, and it will not conduct searches for applications that concern some types of technologies. Korea$609 Inexpensive and receive results relatively quickly. Limits the technology of applications that can be searched. United States of America $2080 Perceived high quality search Expensive and does not supply the search report in a timely fashion (e.g., before Chapter II deadline).

106 Outside US Prosecution Expansion of members in Patent Prosecution Highway Program. Expansion of members in Patent Prosecution Highway Program. Full Implementation with Japan Full Implementation with Japan Added- Australia, China, Europe, Korea Added- Australia, China, Europe, Korea Common Application Format between EPO, JPO and USPTO. Common Application Format between EPO, JPO and USPTO. Triway Pilot Program- Worksharing between the USPTO, EPO and JPO with Paris Convention Applications Triway Pilot Program- Worksharing between the USPTO, EPO and JPO with Paris Convention Applications

107 Enforcement and Term

108 Topics: Topics: Patent Term Adjustment Patent Term Adjustment Patent Marking Patent Marking Infringement Infringement Patent Litigation Defenses Patent Litigation Defenses

109 Enforcement and Term Patent Term Adjustments

110 Wyeth v. Dudas Wyeth v. Dudas (District of Columbia 2008) Wyeth v. Dudas Overturned the PTOs interpretation of Patent Term Adjustment Overturned the PTOs interpretation of Patent Term Adjustment Might be entitled to additional PTA, review PTA determinations within 2 months of issue Might be entitled to additional PTA, review PTA determinations within 2 months of issue At least three other cases filed. At least three other cases filed.

111 Enforcement and Term Patent Marking

112 Pequignot v. Solo Cup Co. (ED VA no. 1:07cv00897) Marking Marking – False marking case allowed to proceed since lids marked with expired patent nos. – Still have to prove intent to deceive public, but case made it past summary judgment Note Washington DC patent attorney, Matthew Pequignot, filed another complaint against Gillette. Pequignot v. Gillette and P&G. Note Washington DC patent attorney, Matthew Pequignot, filed another complaint against Gillette. Pequignot v. Gillette and P&G.

113 Enforcement and Term Infringement

114 Egyptian Goddess v. Swisa, Inc. (Fed. Cir. 2008) Egyptian Goddess v. Swisa, Inc. (Fed. Cir. 2008)Egyptian Goddess v. Swisa, Inc.Egyptian Goddess v. Swisa, Inc. Loosened the standard for design patent infringement Loosened the standard for design patent infringement Previous test = ordinary observer + point of novelty Previous test = ordinary observer + point of novelty New test = ordinary observer, in light of the prior art New test = ordinary observer, in light of the prior art Eliminated point of novelty requirement for infringement Eliminated point of novelty requirement for infringement

115 Enforcement and Term Patent Litigation Defenses

116 Aristocrat Tech. v. Int'l Game Tech.(Fed. Cir. 2008) Patent concerns a system to improve the jackpot for slot machines. Patent concerns a system to improve the jackpot for slot machines.

117 Aristocrat Tech. v. Int'l Game Tech. (Fed. Cir. 2008) Prosecution Timeline: July 8, 1997 & September 9, 1997 Australian Provisional Applications filed July 8, 1998 PCT/AU98/00525 filed claiming priority to Australian apps January 10, 2000 (Monday) 30 month nationalization deadline § 371 national stage paperwork apparently submitted by this date January 11, 2000 filing fee submitted one day late June 13, 2000 Notice of Abandonment mailed w/note that Applicants may consider filing petition to revive under Rule 137 September 15, 2000 Petition to Correct Date-In submitted June 5, 2001 PTO mailed denial of Petition to Correct Date-In July 18, 2002 Aristocrat filed Petition to Revive under Rule 137(b) note: > 6 mo after PTO denial of Petition to Correct Date-In September 2, 2002 Petition to Revive granted

118 Aristocrat Tech. v. Int'l Game Tech.(Fed. Cir. 2008) Filed a petition to revive as unintentional, but Filed a petition to revive as unintentional, but § 371: Title: National stage: Commencement (d)...Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. (Emphasis added). § 371: Title: National stage: Commencement (d)...Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. (Emphasis added).

119 Aristocrat Tech. v. Int'l Game Tech.(Fed. Cir. 2008) Federal Circuit: Federal Circuit: Statute spells out the defenses for patent infringement and this is not one of them. Statute spells out the defenses for patent infringement and this is not one of them. Cites Magnivision [p]rocedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiners or the applicants absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued. Cites Magnivision [p]rocedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiners or the applicants absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.

120 Aristocrat Tech. v. Int'l Game Tech.(Fed. Cir. 2008) Federal Circuit's Reason: Federal Circuit's Reason: If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. This deluge would only detract focus from the important legal issues to be resolvedprimarily, infringement and invalidity. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. This deluge would only detract focus from the important legal issues to be resolvedprimarily, infringement and invalidity.

121 Indianapolis Bar Association: 2008 Year in Review Patent Law and Practice Chuck Schmal (317) Sponsored by the Intellectual Property Law Section


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