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4/6/2011
“Track One”: 12-month Examination to begin May 4, 2011
Last summer, the USPTO recognized “that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants,” and that “by allowing applicants greater control over the timing of examination, the USPTO will be able to deploy its resources to better meet the needs of innovators.” In this regard, a “Three-Track” initiative is being put in place for applications filed first in the United States, in which an applicant may request:
Track I: prioritized examination;
Track II: traditional examination under the current procedures; or
Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.
The USPTO has now announced that “Track One” will begin May 4, 2011. For a $4,000 fee, the USPTO will prioritize the handling of your patent application by placing it on the “examiner’s special docket throughout its entire course of prosecution.” The goal: reaching a final disposition within 12 months. “Final disposition” means that the application is either allowed, abandoned, or is subject to a “final rejection” (which can then be appealed). “Track One” will be limited to 10,000 applications for the remainder of fiscal year 2011 (ending September 30).
Qualification criteria:
- Application must be filed on or after May 4, 2011, using the USPTO’s electronic filing system;
- Application must be “complete”;
- The request for prioritized application must be filed with the application itself;
- Application may contain no more than four independent and thirty total claims; and
- The $4,000 fee must be paid in addition to the normal filing fees (no small-entity discount).
Further information regarding Track Three will be sent in due course.
Open PDF: A patent in 12 months? But it will cost you! 3/25/2011
Even though the U.S. Court of Appeals for the Federal Circuit has yet to hear oral argument in Association for Molecular Pathology v. U.S. Patent & Trademark Office, (commonly known as Myriad) which claims that patents on human genes and their uses are not eligible for patent protection because they do not come within 35 U.S.C. 101, on March 17, 2011, Mayo Collaborative Services (Mayo) filed its brief for writ of certiorari to the U.S. Supreme Court asking it to review the U.S. Court of Appeals for the Federal Circuit’s decision in Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347 (Fed. Cir. 2010) (“Prometheus 2”). In Prometheus 2, the Federal Circuit reaffirmed its prior decision that Prometheus Labs’ medical diagnostic claims were patentable under 35 U.S.C. § 101 Although “genes” are not involved in the Prometheus patent, a significant number of the patents involved in Myriad use BRAC genes as part of medical diagnostic patents. The first time Mayo requested certiorari from the Supreme Court in Prometheus 1, it took almost one year before the Court acted upon the request so there may not be a quick decision by the Court with respect to hearing the case. Nevertheless, whatever the Supreme Court does with Mayo’s petition will likely influence what it does in the ACLU’s fight with Myriads.
For a more detailed discussion of the Section 101 issues at stake in both Prometheus 2 and Myriad and how they affect the broader biotech market, go to our link to Personalized Medicine World Conference in Silicon Valley where Ronald Eisenstein, co-practice group leader of Nixon Peabody’s Patent group presented on the subject. 10/14/2009
In its Brief as respondent in Bilski v. Kappos, the Government has taken the position before the Supreme Court that the patentable subject matter must be tethered to technology, and that the Federal Circuit’s test, namely that a patent-eligible process must involve a machine or a transformation of matter. Activities such as means of performing “economic, social, or legal” tasks, are not, in the Government’s estimation, patentable subject matter unless they qualify under the “machine-or-transformation” test. Thus, the Government’s position is that Bilski’s claims are not patentable subject matter under this test.
However, an important position that the Government supports is that software when tied to a general-purpose computer should be in most cases patentable subject matter, basing this position off of the Federal Circuit case In re Alappat from 1994, which developed the legal theory that the installation of software itself onto a general-purpose computer transformed the computer into a specialized machine, thereby satisfying the requirements of the “machine-or-transformation” test.
Thus, as expected, the Government has argued against so-called “pure” business methods (and has generally supported the Federal Circuit’s test), and it will remain to be seen if Bilski’s attorneys and the amicus briefs can persuade the Court otherwise. However, it is extremely important to software companies who wish to patent their inventions that given neither side in the litigation seems to want to prevent software inventions which are patented in association with a general-purpose computer, even if patentable subject matter is restricted to exclude “methods of organizing human activity” (as the Government would prefer), Bilski v. Kappos will almost certainly leave a significant safe harbor for software inventions and most likely business methods which can be reduced to software as well. Thus, the decisions made by the government in the brief may make some inventors considerably more confident about concerns about successfully overcoming 35 U.S.C. § 101 challenges when submitting applications to the USPTO. 9/1/2009
In order to determine how to respond to relevant Supreme Court precedent and In re Bilski’s approaches to 35 U.S.C. § 101, the USPTO has developed a series of instructions for its Examiners. Of course, these instructions have been released with the realization that more stable guidelines will be established once the Supreme Court rules on Bilski v. Kappos. In addition, these are guidelines, since they are only based off of rules and laws, so they are "neither appealable nor petitionable." Overall, they condense the 35 U.S.C. § 101 issues into manageable flowcharts which reflect the current state of the law, but next spring the Supreme Court is very likely to reject the Federal Circuit's “Machine-or-Transformation” test. Therefore, Examiner time will have been wasted which could have been spent on more meaningful prior art issues.
A link to the guidelines is:
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_instructions.pdf
The guidelines consist of a series of steps represented by flowcharts. The first step is to determine if the invention is directed to a statutory class (process, machine, manufacture, or composition of matter), excluding things like a signal or a computer program per se. Next, inventions which encompass a judicial exception, such pre-empting a law of nature or a natural phenomenon, or which consist of a mental process or abstract idea are excluded.
Third, machines, manufactures and compositions of matter must have a practical application. If the invention is a process, it must pass the “machine-or-transformation” test prescribed by the Federal Circuit. Also, it must be a particular machine or a particular article to be transformed, and field-of-use and extra-solution activities are insufficient.
The USPTO’s press release about the guidelines may be found at:
http://www.uspto.gov/web/offices/com/speeches/09-14.htm
The USPTO has requested comments, which may be submitted via e-mail at: AB98.Comments@uspto.gov on or before September 28, 2009.
These guidelines do provide some helpful guidance for the interim, but the ultimate fate of this issue remains to be settled. 8/7/2009
Background on the client--AIPPI
The initials "AIPPI" are taken from the French name of the International Association for the Protection of Intellectual Property (Association Internationale pour la Protection de la Propriété Intellectuelle).
The International Organization
AIPPI is an international organization comprised of business firms, executives, lawyers, educators, patent and trademark agents, intellectual property owners, and other persons interested in the worldwide protection of patents, designs, trademarks, trade names, know how, goodwill, copyright, and other intellectual property rights and the elimination of unfair trade practices.
The international organization is domiciled in Switzerland. AIPPI currently has over 8,000 members. It operates mainly through National Groups, of which the United States group, AIPPI-US, is one. In addition, AIPPI has two regional (multi-national) groups, as well as individual members in countries where no National Groups have yet been formed. The members of AIPPI represent more than 100 countries. The website for the international organization is www.aippi.org.
The US group has a separate website at www.aippi-us.org Nixon Peabody Partner R. Mark Halligan serves on the Executive Committee for the AIPPI-US group.
Team Effort to Obtain AIPPI and AIPPI-US as a Client
On June 1st, the United States Supreme Court granted Bilski's petition for a writ of certiorari in the In Re Bilski case decided by the Federal Circuit. This case involves the so-called "machine-or-transformation" test and the issue is whether the Federal Circuit erred by holding that that a "process" must be tied to a particular machine or apparatus, or transform a particular condition into a different state to be patent-eligible subject matter. The officers and Executive Committee of the AIPPI recognized the importance of filing an amicus brief in the United States Supreme Court before the upcoming deadline for filing of July 23.
Nixon Peabody LLP accepted the challenge and stepped forward in a team effort to prepare the amicus brief utilizing the resources of its stellar IP practice group. Nixon Peabody LLP was approved as counsel on June 26 and the Nixon Peabody team prepared the first draft for further discussions and review by July 3. Since that time the team---Mark Kaufman in Washington DC and Bill Pegg, David McKone and Mark Halligan in Chicago---have worked for weeks completing the amicus brief and obtaining the necessary approvals and sign-offs from both AIPPI-US and AIPPI. Finally, the AIPPI-US/AIPPI brief was filed in the United States Supreme Court.
7/30/2009
In a recent Federal Circuit decision, Blackboard v. Desire2Learn (Fed. Cir. 2009), the Federal Circuit provided some insights about how means-plus-function claiming (as governed by the 6th paragraph of 35 U.S.C. § 112) would be adjudicated. Desire2Learn, who was accused of infringing a patent for educational software, based their argument around the idea that Blackboard’s claims did not include the single login feature that Blackboard claimed they had. However, that depended upon the feature, “means for assigning a level of access in control” which was part of the claim. Because the limitation was written in “means-plus-function” form, it only covered “the corresponding structure…described in the specification and equivalents thereof” 35 U.S.C. § 112 ¶ 6.
The Federal Circuit found that the specification only minimally discussed an “access control manager” (ACM) which managed an “access control list”, and that this description in the specification was an insufficient disclosure. Thus, they ruled under 35 U.S.C. § 112 ¶ 2 that the limitation was indefinite.
As part of their opinion, the Federal Circuit added that even though an person having ordinary skill in the art might have been able to create an access control list which would have yielded the claimed embodiment, that goes to enablement. The issue in this case was whether the means-plus-function claim feature was rendered definite by the specification, which in this case it was held not to be.
The result of the ruling that the claims were indefinite was that Desire2Learn received a judgment in its favor and Blackboard was unable to gain an advantage from its patent. The moral, perhaps, of this story for a patent practitioner is to be reminded of the important relationship between claims and their support in the specification, especially for means-plus-function claims, taking note to drafting applications to ensure that support is there and being aware of the issue in litigation situations. 7/28/2009
According to In re Bilski, the Federal Circuit from decision which was handed down in an en banc decision in 2008, the appropriate test to decide whether a given claim in a patent is patent-eligible subject matter is the machine-or-transformation test, wherein the claim must be tied to a particular machine or apparatus or transform an article into a different state or thing.
Ex parte Dickerson, a decision handed down by the Board this month, has complicated the interpretation of the test. In the Bilski decision, the court said that insignificant post-solution activity was insufficient to allow a claim to pass the test. It based this position on Parker v. Flook. However, Dickerson presents a computerized method claim which generates a solution to a performance metrics problem whose final step is outputting the solution. On the basis of the outputting the solution feature, the Board decided that the claim was statutory subject matter.
Thus, Dickerson suggests that the Board may perhaps now be more lenient about allowing claims that involve an outputting step as a way of tying the rest of the claim language to a machine or apparatus. However, given the risk of having an outputting step dismissed as extrasolution activity, it may still be a good idea to reinforce the role of the machine or apparatus elsewhere in the claim. 6/29/2009
On June 25, Rep. Lofgren reintroduced legislation in the House that except manufacturers and sellers of parts used to repair automobiles from patent infringement liability. H.R. 3059, introduced in the prior Congress as H.R. 5638, is directed primarily at supporting consumers and the insurance industry by allowing the use of "aftermarket" generic parts--as opposed to vehicle manufacturer patented parts--in auto repair. The original bill came in the wake of the International Trade Court's decision in Ford Global Technologies, LLC v. Keystone Automotive Industries, Inc., which held that a U.S. automaker could assert its patents on the ornamental features of vehicles to prevent the importation of foreign-made, generic copies. See ITC Investigation No. 337-TA-557.
Both the IPO and AIPLA strongly opposed the measure last year, arguing, inter alia, that the bill would devalue patent protection by allowing free use of a patented product for some purposes. For current patent holders, implementation of the bill could also run afoul of the Fifth Amendment, which prohibits the taking of private property for public use without just compensation. Further, despite its apparent focus on protecting consumers from pricey automobile repair, the bill uses broad language (applying the provision to "any article of manufacture that itself constitutes a component part of another article of manufacture") that could affect patent holders across multiple industries.
H.R. 3059 has been referred to the House's Committee on the Judiciary for further consideration. 6/24/2009
In January, 2007, Every Penny Counts (EPC), a Florida company, sued Bank of America (BofA) over the bank's "Keep the Change" savings program. Under the "Keep the Change" program, BofA rounds up debit card purchases to the nearest dollar and deposits the extra amount into customers' savings accounts.
EPC argued that the BofA program infringed on a patent, US 6,112,191, obtained in 2000 by EPC. The Patent, titled, "Method and system to create and distribute excess funds from consumer spending transaction" is commonly known as the "rounder patent." Every Penny Counts stated that it spoke with Bank of America in 2004 and 2005 about licensing its "rounder patent." However, Bank of America launched "Keep the Change" on its own.
BofA argued that the patent claim at the heart of EPC's suit over BofA's “Keep the Change” program is invalid in light of the U.S. Court of Appeals for the Federal Circuit's (CAFC) ruling in In re Bilski.
In an order signed Wednesday in the U.S. District Court for the Middle District of Florida, Judge Paul A. Magnuson granted Bank of America's motion for summary judgment, and denied EPC's motion, concluding that the patent claim at issue refers to a process, not a machine, and would therefore be an unpatentable method claim under the Bilski standard.
The EPC rounder patent claim at the heart of the lawsuit reads as:
15. A system, comprising:
a network;
entry means coupled to said network for entering into the network an amount being paid in a transaction by a payor;
identification entering means in said entry means and coupled to said network for entering an identification of the payor;
said network including computing means having data concerning the payor including an excess determinant established by the payor for the accounts;
said computing means in said network being responsive to said data and said identification entering means for determining an excess payment to the basis of the determinant established by the payor, and
said computing means in said network being responsive to the excess payment
for apportioning at least a part of the excess payment among said accounts on the basis of the excess determined and established by the payor and on the basis of commands established by the payor and controlled by other than the payee.
EPC said that the “computing means” was not “simply an off-the-shelf computer,” but a specific machine that must be combined and configured with the other components of the claim to practice the invention.
The company argued that even if its patent could be considered a process rather than a machine claim, the patent meets the “machine-or-transformation test” for patentability under Bilski.
But Judge Magnuson sided with BofA, ruling that simply because the process at issue requires machines or computers to work does not mean that the process or system is a machine.
“Because it is beyond question that the patented process is not tied to a particular computer or other devices, the process embodied by the 191 patent is invalid,” the court wrote.
For details, see "Bilski Kills Patent In 'Keep The Change' Suit V. BofA," by Morgan Bettex, at IPLaw360, May 29, 2009
6/22/2009
On Thursday, June 18, 2009, the White House announced its intent to nominate David Kappos as the next Director of the USPTO. Kappos, whose official title will be Under Secretary of Commerce for Intellectual Property, has over 20 years of patent experience and is currently serving as the Vice President and Assistant General Counsel for Intellectual Property Law and Strategy at the IBM Corporation. He is also on the Board of Directors of the Intellectual Property Owners Association, and is active within AIPLA.
Kappos has been a strong proponent of patent reform efforts and has most recently testified before the Senate Committee on the Judiciary to voice his support of S. 515, the Patent Reform Act of 2009. Specifically, Kappos advocated for post-grant review, enhanced inter partes reexamination proceedings, and pre-issuance submission of information. He also proposed a balanced approach to damages valuation provisions that would incorporate Quanta's "essential features" standard and provide for strengthened judicial gatekeeping. | Check Effective Permissions | | /patents/_layouts/SecurityReportAccount.aspx?id={ItemId}&List={ListId}&Type=ListItem | 0x40000000 | 0x0 | ContentType | 0x01 | 10 |
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