Tag:  “USA”  | (13) posts

Decision by the USPTO puts the spotlight on the “real party in interest”

One of the ways that companies in patent dense industries, such as consumer electronics, try to fend off claims from patent holders is by requesting assistance from patent risk management firms. Patent risk management firms generally assist their clients by acquiring patents, tracking litigation outcome, or by acting to remove questionable patents from the landscape.

Inter partes review* has been introduced in the US as a way of challenging the validity of an issued patent in administrative proceedings before the US Patent and Trademark Office (USPTO). In an effort to find additional means to invalidate patents under dispute, defendants have begun using inter partes review as a tool in patent infringement disputes. A defendant may however only file a petition for inter partes review during a time window of one year after the defendant has been served with a complaint alleging infringement of the patent. This time limitation is one reason why defendants have been turning to the patent risk management firms for assistance, another being the circumvention of the potential estoppel in future disputes that material from the inter partes proceedings may generate.

Consumer electronics corporation Apple has an ongoing patent dispute with the patent assertion entity Virntex concerning security solutions in the communication application FaceTime™. RPX Corporation is a patent risk management firm, with Apple among its clients. In a recent decision**, the USPTO denied RPX Corporation an inter partes review of some of Virntex patents which are part of the dispute with Apple. The denial was based on the ground that Apple is a client of RPX Corporation and, according to the decision, provided funds and instructions to RPX. The USPTO contends that the relationship between Apple and RPX Corporation makes Apple the “real party in interest”, even though RPX argues that it is operating entirely on its own.

The decision makes it clear that one of the requirements for inter parties review, that the petition must list all “real parties in interest”, will be scrutinized by the USPTO and that the use of patent risk management firms or the formation of consortia does not provide sufficient distance for the clients or members to remain anonymous.

One could argue that transparency in patent disputes always is of benefit to the credibility of the system, however, I would argue that sometimes the possibility or remaining anonymous makes it possible to separate the question of whether or not a patent is valid, from sensitive business relations. Ultimately, the quality of issued patents must be the fundamental idea behind systems like inter partes review.

Joacim Lydén, European Patent Attorney

* As of September 16, 2012, with the implementation of the Leahy-Smith America Invents Act, any third party may file a petition for inter partes review provided that the reason for the petition is that the claimed matter is anticipated or obvious in light of prior art in the form of patents or printed publications 35 USC §§ 311 – 319.

** RPX CORPORATION v. VIRNETX Before the patent trial and appeal board, Paper 49, June 5, 2014

Patenting software in the US

On June 11, 2014 Awapatent hosted a seminar about software patenting in the US. The seminar was arranged by Danish-American Business Forum (DABF). US patent Attorney Eric S. Barr from Sughrue Mion PLLC was invited to give a talk about recent developments within this field. Eric gave a very informative and inspiring talk where he among other things provided valuable information about the two US Supreme Court Decisions: Limelight v. Akamai and Nautilus v. Biosig both of which have been decided within the last two weeks.

I provided a talk about patentability of software in Europe with a focus on the difference between EP and US practice. The seminar was concluded by a very interesting case presented by Peter Wilmar Christensen. Peter is GM for Europe and Co-founder of Greenwave systems. Peter talked about the value software patents provides for Greenwave systems and also shared the experiences he has obtained from in his earlier career. There were a lot of questions and a good atmosphere.

Some video presentations from the seminar have been made available here.

Lasse Henze, European Patent Attorney

The life sciences patent maze – USA

ON MARCH 4, 2014, the US Patent Office issued new guidelines on how to evaluate the patentability of inventions reciting or involving “laws of nature/natural principles, natural phenomena, and/or natural products”. Considering the fact that the first federal patent statute of the United States was established in 1790, one might be inclined to believe that the boundaries for what can be patented has long since been settled, but this is far from true. The explosive growth within the life sciences field in the last few decades has really put pressure on the patent system to adapt to the technologies “of our time”. Of course, the legislators in the late 18th century had no idea of concepts like gene therapy and cloning.

Under the current US patent law, the four statutory categories qualifying for patent protection are: process, machine, manufacture or composition of matter. Over the years the courts have interpreted the categories as excluding laws of nature/natural principles, natural phenomena and/or natural products.

Generally speaking, inventions in the following fields are at risk of being classified as ineligible for patent protection:

  • chemicals derived from natural sources (e.g. antibiotics, fats, oils, petroleum derivatives, resins, toxins, etc.);
  • foods (e.g. fruits, grains, meats and vegetables);
  • metals and metallic compounds that exist in nature; minerals; natural materials (e.g. rocks, sands, soils);
  • nucleic acids;
  • organisms (e.g. bacteria, plants and multicellular animals);
  • proteins and peptides; and
  • other substances found in or derived from nature.

The key factor in determining whether or not an invention qualifies for patent protection lies in the level of difference from what exists in nature; a claim reflecting a significant difference from what exists in nature is eligible, while a claim effectively drawn to something that is naturally occurring is not.

The new guidelines are intended to assist in making this determination, by establishing six factors weighing towards eligibility and six factors weighing against eligibility. On balance, if the totality of the relevant factors weighs towards eligibility, the claim qualifies for patent protection, while if the totality of the relevant factors weighs against eligibility, the claim should be rejected. Crystal clear, right? Well, the new guidelines also provide some specific examples to illustrate how the guidelines are to be implemented in practice. More information can be found here.

Initially, the new US guidelines appeared to be well-received within the patent community. However, as the practical consequences of the new guidelines sank in, an uproar of
protests have arisen. It also remains to be seen whether the courts’ view of the law is consistent with the USPTO’s guidance. Somehow, it seems unlikely that these guidelines will be the end of the story, so the evolvement of US patent law can be expected to continue for some centuries yet.

Inga-Lill Andersson, European Patent Attorney, Partner

Design just as important as technical issues in Apple vs. Samsung verdict

The dispute between Apple and Samsung on smartphones and tablets has received much public attention. Recently, a landmark verdict was reached when a California based court decided in Apple’s favour. Samsung now has to pay at least one billion US dollars to Apple, who also has sought a sales ban in the USA on a number of the Samsung products involved.  A preliminary injunction hearing is scheduled on September 20, 2012.

The court held that Samsung had infringed several of Apple’s utility patents for user interface related functions in both smartphones and tablets, including one utility patent relating to the now well known “bounce-back feature”. However, what is more interesting; the court considered that Samsung had infringed a number of design patents, for example relating to the appearance of the physical device as well as the design of its graphical user interface. This kind of intellectual property dispute normally tends to be dominated by technical patent issues, thus it’s an interesting and exciting development to see that protection of design has had such a great impact on the court’s decision.

Evidence in the court proceedings included an email from Google to Samsung, pointing towards that Samsung’s “P1” and “P3” tablets (Galaxy Tab and Galaxy Tab 10.1) were “too similar” to the iPad and demanding “distinguishable design vis-à-vis the iPad for the P3”. Additionally, Apple presented an internal Samsung technical development report where Samsung’s team of engineers compared the Samsung prototype with an iPhone.

So, is this the end for Samsung’s Android based smartphones? Most likely not. It should be fairly easy for Samsung’s engineers to design around Apple’s patents and design protection, however at the cost of losing some of the features nowadays generally expected when buying a Samsung smartphone. In any case, we may see a shift from Android based smartphones towards the use of the Windows Phone operating system. This is most likely well received by Microsoft, having a planned release of Windows Phone 8 later this year.

Magnus Nilsson, European Patent Attorney

Breast cancer gene patents once again found valid by US appeals court

In the “Myriad case” an ongoing legal battle with many twists and turns, the Court of Appeals for the Federal Circuit, CAFC, has decided to once again uphold patent claims covering isolated human genes BRCA1 and BRCA2, owned at least partly by Myriad Genetics Inc in Utah, USA. The patent claims were initially invalidated in March 2010 by a federal district court in New York, after a complaint had been filed by a group of parties including the American Civil Liberties Union and the Association for Molecular Pathology. After appeal, the CAFC overturned this decision in a first judgment in July 2011. The plaintiffs then sought leave to appeal to the US Supreme Court.

Here is where the story gets a little complicated. One of the claims at issue in the Myriad patents related to genetic diagnosis of breast cancer predisposition. As such, the claim is analogous to claims that were at issue in another Supreme Court case, a patent dispute between Mayo and Prometheus. Because of the analogy between the claims at issue, and because the Supreme Court came to its decision the “Prometheus case” while still considering the Myriad case, the Supreme Court wanted the CAFC to take a new look at the Myriad case in the light of their judgment in the Prometheus case. So, the Supreme Court granted the request to appeal, vacated the July 2011 judgment by the CAFC, and ordered the case back to the CAFC for a new determination.

After an oral hearing in July, the second decision from the CAFC issued on 16 August 2012. In the new decision, available here, the CAFC concludes that the Prometheus decision does not alter their previous outcome, and has now stated twice that isolated genes are, per se, considered eligible for patent protection if all other requirements are met.

Perhaps this is not so surprising – after all, the CAFC decisions follow the established legal practice and reasoning that has been valid for at least twenty years, and maintain the status quo in the biotech industry. The really interesting question in this case has still not received an answer: What will happen if and when the question is brought up for final judgment by the Supreme Court?

Niklas Mattsson, European Patent Attorney

The Patent Prosecution Highway expands

I have previously written about the PPH MOTTAINAI agreement, which aims at easing the requirements for requesting patent examinations. The latest news is that the EPO (European Patent Office) entered the PPH MOTTAINAI agreement at the beginning of the year (29 January) and thus the PPH MOTTAINAI agreement has now been signed by a total of nine countries.

With the PPH MOTTAINAI program, two previously strict requirements have been removed: Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

The Intellectual Property Office of the Philippines entering the PPH-network
Furthermore, a number of new PPH agreements with the JPO as one participant have been launched, namely with the Intellectual Property Offices of Taiwan, Portugal and the Philippines; the latter two relating both to the use of national and PCT work products for requesting accelerated prosecution under the PPH.

With these agreements, the PPH-system can be said to have reached a small landmark, as the Intellectual Property Office of the Philippines is the 25th office to join the PPH-system.

Read more about the Patent Prosecution Highway.

Troels Peter Rørdam, European Patent Attorney

At the time, it seemed like a really good idea…

The subject of our latest annual trademark and marketing conference, Årets Mærkedag, was Brand Grooming. The skill of maintaining your brand and still be able to evolve it without losing your customers or built-up goodwill.

We heard how especially established brands have to tread carefully when keeping a brand and its identity up-to-date and how newly established brands have to get things right from the beginning.

One thing is theory, another practice.

NetFlix is probably fairly unknown here in Europe. In North America it has been a fast rising star. Netflix’ product is the rental of DVD by post. You would also receive personalized recommendations. The business has developed into on-demand streaming too. The idea is that you pay a monthly flat fee as a subscription. You then receive the rental DVDs by mail and return them to Netflix or download the films. Netflix became hugely successful and beat out Blockbuster because it rode the technological wave of the Internet and DVDs successfully. It did this by building a business model around web-based browsing of selections, prompt delivery, on-line recommendation systems and exploitation of “the tail of the distribution” by stocking DVDs that appeal to a small percentage of the viewing population.

In last autumn NetFlix decided to split the business in two: the streaming service would continue as NetFlix and the rental service would be called Qwikster. It would still be the same company but customers would now have to subscribe to two different kinds of service. Probably nothing uncommon or even strange when we are talking business development, actually it seems quite a reasonable move. Netflix even had substantive research showing that the change made sense.

Before this, Netflix had raised the prices from $9.99 per month to $15.99. There was an outcry from the consumers and a mass exodus.

Within two months NetFlix lost almost a million customers and its shares plummeted. NetFlix quickly killed off Qwikster and went back to the good old ways, trying to reassure the market and their customers. To this day Netflix has regained neither costumers nor share value.

So, apart from the significant price hike, what went wrong? Consumers form strong bonds with brands and expect consistency from them.  Brands are promises built on a trusting relationship and if they abruptly veer in another direction you will risk goodwill and to lose you loyal customers.

For guidance, they could have looked to Coca-Cola who once made a monumental branding blunder that still haunts the company.  It is the case study of trying to change what works. In 1985, Coca-Cola announced the launch of New Coke. It flopped massively, evidenced by the company being flooded by calls and letters disapproving of the decision. The known Coca-Cola was then reintroduced as “Classic.” 

Last year, Gap attempted to refresh their logo doing away with the old blue box. In this case, the consumer outcry was not over price or distribution but over something as simple as the typeface of the new logo. After only one week of brand disparagement, the company rescinded the new and went back to the previous blue.

Maybe this shows that the predilections of your customers are not something you can measure or assess; you need to know it intuitively. This also emphasizes that the changes you make to your business and/or brand have to be made carefully; the more iconic your brand and the more loyal your customers, the more carefully you may have to tread. And not the least: be aware that decisions that were made under one set of circumstances may not be good under another – even if you have customer surveys to back things up.

Thorbjørn Swanstrøm, Attorney at Law at Awapatent

Cooperative Patent Classification – a new patent classification system

Everybody who ever conducted patent litterature searches knows the problems arising from the very different criteria for classifying patents in the respective patent classification systems used in Europe by the EPO, ECLA (European CLAssification), and in the USA by the USPTO, USPC (US Patent Classification. Fortunately the solution is nearby!

The EPO and the USPTO have very recently announced a cooperation to harmonize their patent classification systems. Cooperative Patent Classification (in short CPC) is the name, and the game is an effort of harmonization to bring the best practices from the EPO and the USPTO together to form a common classification scheme.

According to the CPC website, http://www.cooperativepatentclassification.org/index.html, the CPC will be developed based for a large part on the ECLA and will be modified to ensure compliance with the International Patent Classification system (IPC) standards administered by the World Intellectual Property Organization (WIPO).

The CPC is intended launched on 1 January 2013, and the Awapatent IP Blog will monitor the development with interest to keep our readers updated.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Patent Prosecution Highway – MOTTAINAI: Ease of requirements

During the summer of 2011 the first steps in the process of simplifying requesting accelerated prosecution of patent applications using the Patent Prosecution Highway (PPH) have been taken. Likewise, the number of PPH-agreements has increased, introducing new possibilities for accelerated prosecution, some of which are particularly relevant to our Scandinavian clients.

 New Patent Prosecution Highway MOTTAINAI-agreement

 Effective 15 July 2011 eight of the countries participating in the PPH concept agreed on easing the requirements for prosecution under the PPH when using any one of their mutual agreements. The new, simpler PPH-agreement is called the PPH MOTTAINAI, and has been signed by JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain).

 With the PPH MOTTAINAI program, two previously strict requirements have been removed. Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other one of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

Troels Peter Rørdam, European Patent Attorney, Awapatent

Most comprehensive patent reform in almost 60 years approved by US senate

Most comprehensive patent reform in almost 60 years approved by US senate

Historic breakthrough as USA gets to grips with “first-to-invent”, the enormous backlog of patent applications and simplifying procedures for filing patents in the USA.

On Tuesday 8 March 2011, the US Senate voted to approve the nation’s most comprehensive patent reform since 1952, entitled the “America Invents Act of 2011”. Among many other changes, the reform adopts a “first-to-file” patent system that is more in line with patent practice throughout the rest of the world. The next step in the legislative process is a vote by the House of Representatives.

According to long-held principles of the existing patent law, patents in the US have been awarded according to the “first-to-invent” principle. One consequence of this regime has been that researchers and developers have been forced to keep careful logs of their inventions to be able to prove that they were the first to develop a particular product or technology. In Europe and in most of the rest of the world, there is instead the “first-to-file” principle, which simply means that a patent is awarded to the first of multiple independent inventors to apply for a patent.

Among many proposals in the new legislation package, the most significant change, at least as far as us Europeans are concerned, is the endorsement of the “first-to-file” system. Intended or not, this signals that the US patent laws are becoming more like the European model (or, more correctly, the model used by the rest of the world). Another important change is the introduction of more ways to question the validity of a pending or granted patent without having to engage in a full-blown court trial. Other measures are directed to dealing with the nation’s massive backlog of patent applications (more than 700 000 at the latest count).

In my opinion, the new law (if passed) will eliminate some of the difficulties that small European companies and individual inventors have when filing for patent protection in the US, because of the differences in our respective systems. The shift to a first-to-file system will also, in time, make it easier to ascertain who is the rightful owner of a third-party patent. This should make life somewhat easier for small research companies and individual inventors. For example, the change removes one of the main reasons for having to write up detailed lab journals, and it will also make it cheaper and simpler to question the validity of blocking patents.

There are also minor amendments that aim to make the process as a whole less bureaucratic, such as a relaxation of the requirements for inventor signatures on filing. In my mind, foreign and US firms alike will benefit from the increased harmonisation and simplified rules, and the changes will make a big difference for everyone who applies for, prosecutes, trades in or litigates patents in the US.

Various efforts have been made over a number of years to push through this major overhaul of US patent law. As recently as in 2009 the proposal reached the House of Representatives without being enacted into law on that occasion. Now that the Senate has said yes to the proposal, the next stage is for the House of Representatives to vote on the issue. Spokespersons for the Senate Judiciary Committee say that a proposed bill is just around the corner.

In a comment from the White House, President Barack Obama says that he is pleased that the proposal has been approved, describing it as “the most significant patent reform in over half a century”, according to Reuters.

Niklas Mattsson, European Patent Attorney, Partner