Tag:  “USPTO”  | (11) 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

Important judgement on business method patent in the United States

On 20 June 2014, the U.S. Supreme Court handed down an important decision, Alice v. CLS Bank, clarifying the extent to which business methods can be patented. The earlier stages of the proceedings have been well covered in the media as this is one of relatively few times the Supreme Court has interpreted 35 U.S.C. § 101, with a potential to shape the future of computer-implemented inventions in general. Some of the claims at issue were actually not explicitly drawn to computer implementations or software, but the Court alleges it has considered the claims with an understanding that they “require generic computer implementation.”

One of Alice’s claims is found here, and the full judgement here. From the explosion of analyses by local practitioners, we were particularly impressed by 1, 2 and 3 and recommend them to you.

The judgement affirms the lower-instance judgment, which in turn is in keeping with current practice in the USPTO. In brief, the Court decided to revoke Alice’s patent because the method claims were allegedly directed to an “abstract idea” whose implementation was too generic to transform the idea into a patentable invention. The computer system and storage media claims were refused for the same reason; possibly the decision would have been different had the claims recited more implementation details. The language may be problematic to practitioners: just how abstract is an “abstract idea”? and is a programmable computer too “generic”? The challenging task of steering clear of “abstract ideas” and “generic implementation” is illustrated by the allowed and rejected claims from previous Supreme Court judgements: compare, in the same claim tableFlook and Diehr.

The present case highlights the limited usefulness of the concept “software patents.” While patents covering software typically cause little or no public debate when granted for inventions in conventional technology, software realizing business methods is more controversial. As shown by an overwhelming majority of the submitted amicus curiae briefs in Alice, the IT industry has a keen desire to dissociate itself from the “plague of abstract computer-related patents”, as the brief by Amazon, Google and others puts it. The brief cites Bill Gates in 1991 (in another court case), where he claims the software industry would have been at a “complete standstill” if the early inventors had applied for all the patents they could. The statement illustrates not only that the USPTO has become more stringent, but also reminds us of the much higher IP awareness in Mr Gates’ industry today, which has had to get used to – and benefit from – the existence of patents just like in other technical fields.

As European practitioners, we regularly ask American patent attorneys to prosecute our applications before the USPTO, making it essential for us to keep our drafting practices up-to-date, to be able to present the invention from the right angle and in all required detail. Unlike judgements like Bilski (2010), the Alice case represents no sudden change but will probably be received as a sign that the practice has stabilized. With its insistence on technical improvement, the Alice judgement in fact lands its conclusions rather close to the current European examination practice, despite its very different legal starting point.

The judgement should be reassuring also to Japanese applicants, whose applications are normally drafted to convince the JPO examiner that “information processing by software is concretely realized by using hardware resources” (JPO Guidelines, part VII), sometimes rephrased to mean that the implementation is “particularly suitable for a use purpose”. This intention should also limit abstraction and genericness.

Anders Hansson and Joacim Lydén, European Patent Attorneys

 

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

DK-US Patent Prosecution Highway agreement version 2.0

Patent Prosecution Highway agreement version 2.0 between the DKPTO and the USPTO

Effective from today, 3 June 2103, the PPH agreement between The Danish Patent and Trademark Office (DKPTO) and The US Patent and Trademark Office (USPTO) has been upgraded to what the DKPTO aptly calls a “PPH-agrement version 2.0”.

With the PPH agreement version 2.0 – to this blogger’s knowledge the first of its kind – a significant simplification is introduced. Now, it no longer matters which office is the Office of First Filing and Office of Second Filing, respectively.

In more detail it is now possible to proceed as follows:

  1. File a first patent application with the USPTO.
  2. File a second patent application claiming the priority of the first application with the DKPTO, and
  3. File a request for examination under the PPH in the US patent application with the USPTO using the result of the examination made by the DKPTO.

Hence, in contrast to the original and now superseded agreement, it is now also possible to use the examination result of the Office of Second Filing to request examination under the PPH at the Office of First Filing. In the original agreement it was only possible to use the examination result of the Office of First Filing to request examination under the PPH at the Office of Second Filing.

Furthermore, it is worth mentioning that with the arrival of June the Indonesian patent office has entered the PPH network by signing a PPH agreement with the Japanese Patent Office.

As always, we shall endeavour to keep our readers updated on further developments.

Link to the DKPTO-USPTO PPH-agreement version 2.0:

At DKPTO: http://www.dkpto.dk/media/20511122/pph2.0_us_filers_03062013.pdf

At USPTO: http://www.uspto.gov/web/offices/com/sol/og/2013/week22/TOC.htm#ref15

 

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

New DK Patent Prosecution Highway-agreement

 New Patent Prosecution Highway agreement between the DKPTO and China’s SIPO

Since the beginning of 2013 a new PPH agreement enables Danish patent applicants to obtain a patent in China in a faster and more cost-effective way.

On 1 January 2013 a PPH agreement on a pilot project basis came into effect between the Danish Patent and Trademark Office and the Chinese State Intellectual Property Office, enabling patent applicants who have obtained a decision to grant from the DKPTO to request accelerated proceedings at the SIPO.

The number of PPH agreements in which the DKPTO takes part now totals 7, the other PPH agreements being with the patent offices of Canada, USA, Russia, Japan, South Korea and Israel.

Furthermore, it is worth mentioning that the final months of 2012 also saw the Czech and Colombian patent offices entering the PPH network, both signing agreements with the USPTO.

As always, we shall endeavour to keep our readers updated on further developments. 

Link to the DKPTO-SIPO PPH-agreement

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

 

Cooperative Patent Classification – Time to prepare for the launch

Almost a year ago I wrote on the Awapatent IP Blog about the efforts of the EPO and USPTO to harmonize their patent classification systems to form the Cooperative Patent Classification (in short CPC). The work is progressing, and it has now become time for an update.

The CPC is now taking shape, and it has become possible for users to familiarize themselves with the new classification scheme as the results this far have been made available by the EPO and the USPTO in what they have named a “CPC launch package”. The launch package includes the complete CPC scheme, the presently finalised CPC definitions and an ECLA-to-CPC-to-IPC concordance table. The launch package is available here.

The EPO and the USPTO explain that the CPC scheme for classifying patent documents according to the technological field of the invention is based on the latest version of the International Patent Classification (IPC) system. The CPC scheme will have sections A through H similar to the IPC as well as an additional brand new section Y including new technological developments and cross-sectional technologies.

There will be CPC definitions available for every CPC subclass and each definition will contain a description of the technical subject-matter covered in the subclass. The CPC definitions will be continuously maintained. Also, a CPC-to-IPC concordance table has been published to help users find the relevant part of the IPC on which the CPC is based.

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

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

Patent Prosecution Highway – Sweden and NPI entering the PPH-network

As I mentioned in my blog entry of 19 september, the number of PPH-agreements has increased, introducing new possibilities for accelerated prosecution.

Sweden’s Patent- och Registreringsverket and Nordic Patent Institute entering the PPH-network

Three new patent offices have entered the PPH-network. The three new offices are PRV (Sweden, PCT-PPH with JPO and USPTO), The Nordic Patent Institute (PCT PPH with USPTO) and ILPO (Israel, national PPH with USPTO). Also, a number of new PPH agreements between existing PPH participators have been launched, particularly relating to the use of PCT work products for requesting accelerated prosecution under the PPH (so called PCT-PPH agreements).

The complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

PPH map

Link to the PPH-web page: http://www.jpo.go.jp/ppph-portal/index.htm

Troels Peter Rørdam, European Patent Attorney, Awapatent

The USPTO decides to abolish the US patent classification system

The USPTO decides to abolish the US patent classification system

 

A very important development of the IP5 initiative has now emerged. The US Patent and trademark Office has agreed to phase out its US patent classification system and adapt to the ECLA system used by the European Patent Office examiners. In this process it is envisaged that the ECLA system will be developed further in cooperation with the USPTO to include the best practices from the US system.

One of the ten foundation projects of the IP5 cooperation between the patent offices of EPO, USA, Japan (JPO), China (SIPO) and South Korea (KIPO), is the formation of a common hybrid classification system. With this major step forward such a global patent classification system is within reach, as the Japanese Patent Office seems to be the only office adhering to their national classification system.

The advantages and disadvantages of having several patent classification systems in parallel may be argued. On the positive side parallel systems, if skillfully used, may give different access points to the patent documentation thereby enhancing what information specialists call recall. On the negative side, concordance between the systems often being poor, they may generate a lot of noise thereby reducing the precision of your search. A hybrid classification is a welcomed compromise.

Also, patent classification systems need frequent revisions in order to adapt to rapid developments in some areas of technology and duplication of cumbersome work in this area will hopefully be avoided, thanks to the cooperation between the patent offices.

It is thus good news for patent applicants and all who use patent classification in their daily work that the IP5 offices are moving towards a truly global system. It should result in more efficient patent searching, more consistency in search results from the different patent authorities and thus cost savings for the users.

The International Patent Classification (IPC) in its current 8th reformed version, is the responsibility of the World Intellectual Property Organization (WIPO) and will remain the official classification system for all patent offices of the member states of this organization, including the IP5. Let us hope that harmonization between the new USPTO/EPO hybrid classification and the IPC will also be endeavored.

Link to EPO news flash

Marjolaine Thulin, Patent Information Specialist, Awapatent

China to drive on to the Patent Prosecution Highway

According to a USPTO press release, the intellectual property offices of China (SIPO) and USA (USPTO) have signed a Memorandum of Understanding on 19 May 2010, which includes establishing a bilateral Patent Prosecution Highway (PPH) agreement between the two offices.

The PPH agreement will be SIPO’s first, thus driving China onto the Patent Prosecution Highway and opening up for the SIPO and the USPTO taking advantage of each other’s examination results to achieve a faster prosecution of patent applications.

Further new PPH-agreements
Furthermore, four new PPH-agreements have been established in 2010 so far, namely between Finland (NBPR) and South Korea (KIPO), NBPR and Hungary (HPO), Germany (DPMA) and KIPO (to take effect on 1 July 2010) and, most notably, between the EPO and Japan (JPO).

Thus, the complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:


PPH-web page 

USPTO press release


Troels Peter Rørdam, Associate Patent Attorney

The Bilski decision is here! State Street Bank is out.

Yesterday (October 30, 2008), United States Court of Appeals for the Federal Circuit (CAFC) closed the door on the State Street Bank decision from 1998, a decision stating that it would be enough in regards to patentability under 35 U.S.C. § 101 if an invention produces “useful, concrete, and tangible result”.

In the decision from yesterday, the CAFC instead made use of the so called machine-or-transformation test, where either a specific machine with specific ties to the claimed process or the specific transformation of a physical entity to another must be present for the invention to be patentable. Thus, an invention, such as the Bernie Bilski invention, which is not tied to any specific machine or apparatus for any of its process steps nor is limited to any particular transformation, is not patentable.

The machine-or-transformation test has been applied before, for example in relation to Gottschalk v. Benson (1972). However, in the Gottschalk v. Benson case, the claimed process was still held to be ineligible subject matter, even though it operated on a machine such as a digital computer, since the claim’s tie to the machine were not specific enough. Accordingly, an algorithm implemented on a general purpose computer, such as a PC, was in this case not enough for reaching patentability.

On the other hand, a case where the court ruled the machine to be specific enough when applying the machine-or-transformation test, was in relation to Diamond v. Diehr (1981), where the Arrhenius equation was used for deciding when a process for curing rubber in a mould was completed. In this case, the machine had means for both the curing of the rubber as well as the computation of the Arrhenius equation (i.e. means for installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the Arrhenius equation and a digital computer, and automatically opening the press at the proper time).

Accordingly, for not failing the machine-or-transformation test it seems that one has to be very specific when drafting an application in this area, such that the ties between a claimed process implemented on a machine are made obvious.

On the positive side the CAFC noted that there will be no implementation of the so-called “business method exception” (as well as in relation to software), which they rather state would be unlawful. Accordingly, business method and software claims are still in as long as they fulfil the machine-or-transformation test.

If you would like to read the whole decision it can be found here: http://www.cafc.uscourts.gov/opinions/07-1130.pdf.
Magnus Nilsson, European Patent Attorney