Posts in Guest Contributors

Clearly, one does not get a patent on software or a computer program. Software, just like electronic circuits, or steam, or solar energy, or gears, or rubber bands — to name a few — is only a means to an end. Under the USPTO long time guidelines one receives a patent only if a) there is an invention b) if there is a proper Specification (an adequate disclosure to one skilled-in-the-art) and c) the so-called invention in the patent application is not abstract and not obvious.

Business method patents are still being granted after Alice, but are being granted at lower rates than before, and some assignees are better at obtaining them than others. The top assignees in the business methods art units have a wide range of allowance rates, from Oracle at 83.3% to Siemens at 35.3%, resulting in a difference of 48 percentage points. Even among the most successful assignees, only three have allowance rates of over 50%.

The controversy swirling around the Trans-Pacific Partnership (TPP) Trade Agreement sheds light on two critically important but divisive issues: international trade and intellectual property protection for pharmaceuticals. One of the most significant sticking points in the negotiations is the issue of intellectual property protection for pharmaceuticals, specifically data exclusivity. Data exclusivity is a means of correcting a free-riding market failure, providing the innovative firms with a limited period of time in which data from clinical trials and other required testing cannot be used by competing firms to secure market access.

Starting in November 2000, the USPTO started publishing patent applications 18 months after their earliest filing date. So the simple assumption is that you file a patent and 18 months later it get publicized, right? However, since the US has moved to a first-to-file System, the “earliest filing date” is really 18 months after the earliest priority date or an application can take advantage of the 12-month grace period could be published as early as 6 months after filing.

Google is giving away patents to small-ish tech firms who apply and agree to join the License or Transfer (LOT) Network. Google retains a license to the patents, which can only be asserted defensively and asks the participant stay in the LOT Network for 2 years or the patents revert back to Google. Also, Google gives the participant access to browse Google’s “inorganic patent portfolio” (i.e., acquired from third parties) with an eye towards selling and licensing more patents to the participant.

Leading organizations of the Conservative Movement have stepped up their game informing Congress on the philosophical reasons for opposing the Innovation Act and its Senate companion, the PATENT Act. This increased patent bill opposition is directed at Republican lawmakers, the political majority party in both houses of Congress. With House leadership deciding to postpone H.R. 9’s floor debate until at least September, the expanded conservative opposition seems to be effective.

For as much as Comic-Con is about comics, TV, and upcoming movies, it’s not hard to see that a large portion of its allure for fans is cosplay. Cosplay consists of fans who create and wear costumes and outfits based on their favorite characters in media, spanning all forms of entertainment but most notably, video games, comics, movies, and TV shows. Even though cosplay is about the characters, there are still normal people behind the armor (for a given value of normal), and these people all have their own right of publicity.

Amgen filed a biologics license application (“BLA”) and obtained FDA approval for its filgrastim product, Neupogen. Sandoz subsequently filed an abbreviated BLA (“aBLA”) under 42 U.S.C. § 262(k), seeking approval for a biosimilar (generic) version of Neupogen. Amgen sued Sandoz, asserting claims of (1) unfair competition under state law based on violations of the Biologics Price Competition and Innovation Act (“BPCIA”); (2) wrongful use of Amgen’s approved BLA; and (3) infringement of U.S. Patent No. 6,162,427, which claims a method of using filgrastim. Amgen alleged that Sandoz violated the BPCIA by failing to disclose its aBLA and manufacturing information as required by 42 U.S.C. § 262(l)(2)(A) and by prematurely giving a notice of commercial marketing under 42 U.S.C.§ 262(l)(8)(A), i.e. giving notice before the FDA approved its biosimilar product.

In Williamson v. Citrix, the Federal Circuit overruled its own precedent that there is a “strong” presumption that claim limitations that do not use the term “means” are not means-plus-function limitations. This change has been decried by practitioners who purposefully avoid the word “means” in order to avoid means-plus-function treatment of their functionally claimed elements. Means-plus-function claiming is an opportunity to be embraced, not a trap to be avoided. Invoking §112(f) and the associated scope of a means-plus-function limitation is largely in the control of the patent drafter.

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).

In general, the courts distinguish between functions and algorithms, and they require patent applicants to disclose algorithms to cure perceived deficiencies in functions. The problem with this line of reasoning is that both algorithms and functions under 35 U.S.C. § 112(f) are composed of the same things: steps. So the result of the algorithm requirement is to simply make patent applicants “fix” one step by specifying more steps. Accordingly, if the algorithm requirement is taken to its logical conclusion, then each step would be fixed with more steps, and each of those steps would be fixed with even more steps, like Russian dolls. Instead, the courts do not take the algorithm to its logical conclusion and, instead, only require a single layer: the original step and the further steps (i.e., algorithm) for it. This is arbitrary, confusing for patent applicants and examiners, and a poorly calibrated solution to concerns about software patents.

For 61% of the non-defective requests, the panel decided that there was an actual issue for appeal, such that the applicant would either need to file an Appeal Brief, reengage the Examiner or abandon the application. For 33% of the non-defective requests, the panel decided that prosecution was to be reopened. For only 6% of requests were the panel decisions that an application was to be allowed.

Confiscating other people’s property is hardly the way to stimulate prosperity or creativity. If it were, Venezuela would be one of the richest, most innovative countries in the world instead of a place where you can’t buy toilet paper. It’s not a coincidence that the handful of countries developing new drugs and the wonders of biotechnology are also those with strong patent systems. Patents and licenses are the life blood of many start-up companies that drive our economy. Rather than being a “tax on innovation,” a strong patent system is even more important today than when the Founding Fathers gave the protection of intellectual property a prominent place in our Constitution, preceding the Bill of Rights.

A North American fondue restaurant franchise found out just how essential terminology management can be when it expanded into Mexico in 2010. A translation service provider previously translated its kitchen training materials into Spanish, specifically for the restaurant’s Spanish-speaking employees in the United States who originally came from various Latin American countries. Company executives thought the Spanish they were currently using would be sufficient for the menu and other materials to be used in Mexico. When the Mexican franchise owners visited the company’s U.S. headquarters, it quickly became clear that one dialect of Spanish is not always the same as another. Different countries have their own dialect with words and phrases unique to each culture.

Very few thought that the IPR procedure would be used by creative hedge fund managers to reap benefits for the price drop of pharmaceutical companies’ stock that have had their important drugs challenged in an IPR. Most would not have thought that small patent owners would be swamped by serial petitions to invalidate their patents. Others were very surprised at the limited manner in which the USPTO permitted the patent owner to amend her claims during the process. And many did not expect the USPTO to interpret statutory language of the AIA to include so much subject matter in what was intended to be a limited-scope CBM program.