Posts in Guest Contributors

Software: The Heart and Soul of Many Innovative Advances

Broadly construing and applying the abstract ideas exception would jeopardize countless patents and patent-fostered innovations that are providing real, tangible benefits to all levels of society, and that are helping to fuel the domestic and global economies. Indeed, it is impossible to overstate the economic importance of software and other computer- implemented inventions. Virtually all industries now use computer-implemented inventions in some way… Notably, and notwithstanding the alarmist complaints of some interested parties that are most dependent upon computer-implemented technologies, high-tech industries are neither stagnating nor suffering from a dearth of innovation. To the contrary, these industries are highly competitive, vibrant fonts of innovation and economic vitality. The availability of patent protection for computer-implemented inventions has been a spur, not a bane, to their growth and development.

When USPTO Classifies an Application Incorrectly

This case had been made Special on the Patent Prosecution Highway in October of 2013 because of a favorable Written Opinion from a PCT Searching Authority. For a Special case, USPTO’s case management system normally starts ringing an alarm on the Examiner’s desk after a couple of months. So we should have seen an Office Action at least a month ago, maybe two months ago. But that only works if the case has been assigned to an Examiner. Often the USPTO first assigns the case to a SPE and then it is left to the SPE to figure out which Examiner in the SPE’s art unit should actually examine the case. This case got assigned to the SPE in a particular art unit. Let’s call him “SPE V”. It seems that SPE V decided that this case had been misclassified and should not have gone to his art unit. So he tried to get rid of it.

USPTO Patent Eligibility Guidelines: A Topsy Turvy Approach for Natural Products

The view of the USPTO now is that a claim to purified amazonic acid is not patent-eligible because there is no structural difference between the purified acid in the claim and the acid in the leaves, and the claim does not include features that demonstrate that the recited product is markedly different from what exists in nature. … It is, to say the least, unclear why the USPTO, without public consultation seeks to remove the patent-eligibility of isolated or purified natural products of new medical or other utility, which has been taken as a given in the US for 100 years and is consistent with practice in Europe and other major industrialised countries.

Will the Supreme Court Weigh in on Claim Construction Appeals?

While the Lighting Ballast majority upheld the Cybor standard, even Judge Newman, who penned the opinion, seemed to recognize that the decision was on shaky legal footing, relying heavily on stare decisis and the fact that Cybor has been the law for over a decade in sustaining the rule. The majority stated, “the court is not now deciding whether to adopt a de novo standard in 1998. Today we decide whether to cast aside the standard that has been in place for fifteen years.” Opponents of the de novo standard of review in claim construction cases, as set forth in Cybor, might still have another day in court. The Federal Circuit’s ruling could be taken up by the United States Supreme Court next term, especially if the Solicitor General recommends granting the petition for certiorari that is sure to arrive at the Court in the next few months. In a prior case, Retractable Technologies v. Becton, Dickinson, and Co., the Solicitor General recommended to the Supreme Court that “in an appropriate case, this Court’s intervention might be warranted to determine the proper standard of appellate review of district court factual determinations that bear on the interpretation of disputed patent claims.” Here’s a look at the three basic arguments made to the Federal Circuit, and that would likely be made again before the Supreme Court, should it decide to hear the case.

It’s Not Paranoia – They Really Are After You

First of all, congratulations! You made The Washington Post and they even spelled your name correctly. Unfortunately, AUTM was specifically called out in an article titled Patent Trolls Have a Surprising Ally: Universities… For a profession that keeps a low profile and goes out of its way not to antagonize people, you may wonder what in the world’s going on that you are gaining such notoriety. The answer is that you are in the sights of several groups who do not wish you well. Some want to weaken the patent system for their short term benefit, some believe society would be better off if inventions were freely available without patents; some don’t think it’s moral for universities to work with industry, and others believe they should determine who reaps the rewards of innovation. While operating on diverse belief systems, they all have one thing in common: they don’t like you.

Design Patent Infringement: How to decide if you should sue

First, look at the merits of the infringement claim. They may be stronger than you think, and you can thank a 2008 ruling for that. That year, the United States Court of Appeals for the Federal Circuit unanimously ruled en banc in Egyptian Goddess, Inc. v. Swisa, Inc. that a design patent is infringed if an ordinary observer would think that the accused design is substantially the same as the patented design when the two designs are compared in the context of the prior art. The court removed the “point of novelty” and “non-trivial advance” standards that previously seemed to constitute a second set of criteria to prove design patent infringement. That ruling has made life much easier for plaintiff attorneys and it helped Apple in its lawsuit against Samsung.

India’s IPR Policies Jeopardize its U.S. Trade Benefits

Over the past few months, a groundswell of voices in the U.S. business community and U.S. Government has arisen to express frustration with India’s IPR policies. In May, USTR’s annual Special 301 Report highlighted India for the 24th consecutive year, citing growing challenges to IPR protection which raise “serious questions regarding the future condition of the innovation climate in India across multiple sectors and disciplines.” In June, the Alliance for Fair Trade with India was launched by over a dozen leading U.S. business associations, including the National Association of Manufacturers and the U.S. Chamber of Commerce’s Global Intellectual Property Center, to bring attention to India’s discriminatory trade practices, including the erosion of IPR in India. In July, Vice President Joe Biden cited IPR protection as an obstacle to expanded U.S.-India trade. Following a hearing on how India’s industrial policies are hurting U.S. companies, House Energy & Commerce Trade Subcommittee Chair Lee Terry (R-NE) introduced legislation in September to block duty-free access to U.S. markets for countries without adequate protection for intellectual property.

Survey of Life-Science Patent Practitioners

A team of law students, who are members of the Intellectual Property Law Fellowship at the Thomas Jefferson School of Law in San Diego, California, are working on a Research Project directed toward aiding patent practitioners in developing international patent filing strategies for biotechnology and pharmaceutical companies. The team is working to amass statistically significant survey data on the countries…

Nanotechnology Innovation Trends

These innovative technologies bring new economic opportunities. According to a recent GAO report, many experts in industry, government, and academia anticipate that nanotech innovations could match or exceed the economic and societal impacts of the digital revolution. The nanomedicine market, which has been estimated at about 20 percent to about 40 percent of the overall nanotechnology market, was valued at 78.54 billion USD in 2012 and is expected to grow to 117.60 billion USD by 2019… the U.S. maintains its dominance observed in previous years with about 54 percent of the nanotechnology patent literature published in 2013 being assigned to U.S.-based entities, followed by South Korea at 8.3 percent, Japan at 8.0 percent, and Germany at 5.8 percent.

Why NPEs Lose Less Often in Court Than Operating Companies

I propose that if any comparison is made at all, we should look at patentee loss statistics. Patentee loss statistics are much more likely to allow a comparison between monetizing companies and operating companies, and the cases they bring. Why is this? Two reasons. First, imminent patentee merits victories will get vacuumed into the settlement category… And second, trial and patentee-initiated summary judgment proceedings are a tiny statistical blip. It turns out that in terms of quantity, there are about ten times more defense merits wins than patentee merits wins among all cases that get litigated and do not settle. The explanation for this is simple – a patentee does not have to “win” to succeed – it only has to settle on monetary terms that it can convince an opponent to give.

Sued by a Patent Troll? How to Respond to Demand Letters

Also rising at an alarming rate are the number of infringement assertions, which can often take the form of a threatening letter that goes over the top and even crosses the line into open misrepresentation… There is no more alarming moment for an accused infringer than the moment the demand letter arrives. While large entities are sued frequently and it is part of doing business in America, a small business receiving a demand letter that alleges patent infringement may be the first time it has faced this reality. An understandable initial reaction is to get in touch with the party sending the demand letter and just explain that you are not infringing. However, if you have been sued by a company legitimately characterized as a patent troll, a lack of infringement may be of no consequence, as the patent troll may continue to require a choice between a license and a more-costly lawsuit defense.

Federal Circuit Review – Issue 8 – 02-21-2014

This week in the Federal Circuit Review: (1) Federal Circuit Rules that Reexamination Decision Misapplied Facts From an Incorrect Claim Construction and Mistakenly Imposed a Requirement for a Cross-Appeal and (2) Process Invented Abroad and “Authorized” to be Reduced to Practice in the U.S. is Prior Art under § 102(g)(2)

The Future of Global Health Depends on Strong IPRs

At first blush Dr. David Taylor’s claim that “continuing progress in the pharmaceutical and other health sciences will eliminate disease related mortality and disability in people aged under 75 by 2050” seems a bit unbelievable… The core of the analysis focuses on the extent to which intellectual property rights serve to foster innovation and improve global public health, both today and tomorrow. Taylor et al. recognize that without intellectual property rights private investment in expensive, risky and uncertain biopharmaceutical research and development projects would not take place. Acknowledging that the debate is more nuanced that a choice between firm profits or patient access, the authors argue that alternatives to the existing IPR regime would be unlikely to deliver the therapeutic advances that we enjoy under the current system.

The Legacy of George Washington Carver, Tuskegee Educator, Innovator and Renaissance Man

This experience in helping Southern farmers improve the soil in their fields soon led to what was to become a passion for Carver: peanuts. While peanuts were very useful in enriching the soil with nutrients, a new problem then arose: what to do with this plentiful crop of peanuts? And having now encouraged farmers to plant more peanuts to enrich the soil, Carver felt it was his obligation to find more uses for what was now becoming an overabundant commodity. So in 1903, Carver began working in earnest on peanut science, and especially on the potential uses of peanuts. This research by Carver on peanuts made him the innovator of what eventually became a highly marketable and profitable industry now worth well in excess of $500 million.

God’s Scientist: George Washington Carver

George Washington Carver was not only a talented innovator, but was also an extremely gifted educator and scientist.