Kevin Rieffel

On November 20, 2024, the U.S. Patent and Trademark Office (USPTO) published a final rule introducing a significant new fee structure for continuing patent applications. This rule, set to take effect on January 19, 2025, establishes additional fees for any continuing application filed at least six years after its earliest benefit date (EBD). The final rule identifies EBD as the earliest filing date for which benefit is claimed under 35 U.S.C. §§ 120, 121, 365(c), or 386(c) and § 1.78(d) and, therefore, cannot be the filing date of a foreign application or the filing date of a provisional application to which benefit is claimed under 35 U.S.C. § 119(e).

Director of the U.S. Patent and Trademark Office Andrei Iancu made some interesting remarks yesterday at the Intellectual Property Owners Association Annual Meeting in Chicago on September 24, 2018 regarding a proposal for new guidance on how the USPTO would approach determination of subject matter eligibility under §101. In the IPO meeting’s (written) remarks, Dir. Iancu speaks at length about the current confusion in the Mayo/Alice framework and how “significantly more work needs to be done, especially on the ‘abstract idea’ exception.” Director Iancu asserted that “Currently, we’re actively looking for ways to simplify the eligibility determination for our examiners through forward-looking guidance. Through our administration of the patent laws, which we are charged to execute, the USPTO can lead, not just react to, every new case the courts issue.”

The MPEP requires that “[i]n particular, the initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.” MPEP § 2106.07. In examining under Step 2A, “the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception.” Id. Specifically, “if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.” MPEP § 2106.07(a) (emphasis added). USPTO policy instructs that “[c]iting to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution.”

On Tuesday, June 28, Apple was granted a new patent, U.S. Patent No. 9,380,225, entitled “Systems and methods for receiving infrared data with a camera designed to detect images based on visible light.” The patent essentially discloses a method for a smartphone’s camera to receive data over infrared waves—data that could alter functionality of the phone. Since the grant of the patent there has been a viral outpouring of articles on using this technology to disable photography and video capture, particularly at live concerts and theater events. While this apparently invasive tech may be something to keep an eye on, it’s important to consider if this can be implemented tomorrow, in a future iPhone, or in an Apple device further down the road. How soon should we start to worry?

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.