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Still Receiving Alice Rejections? Time to Revisit USPTO Guidance

Alice Corp v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) sent rejections under 35 U.S.C. § 101 skyrocketing from under 10,000 per year prior to the Alice decision to nearly 35,000 the year the Supreme Court handed down its decision (2014). Peaking at just over 100,000 rejections in 2018, the USPTO’s January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) helped to stabilize and ultimately lower the number of rejections under Section 101 to just over 20,000 in 2021. Though this number may continue to drop – the data on Section 101 rejections for 2022 is not yet complete – one thing is for sure: The number of rejections under Section 101 post Alice still far outnumber the Section 101 rejections made prior to Alice by at least 10,000 per year. As illustrated in Fig. 1 (data gathered using juristat.com), the majority of rejections under Section 101 made since 2014 are still Alice rejections, which leaves room for this number to decrease further.

Implementing IP Management Software (Part II): Best Practices for an Improved Implementation

As discussed in Part I of this series, the process of implementing IP management software (IPMS) poses many complexities and dangers. To ensure as successful an IPMS implementation as possible, companies and law firms should apply best practices early on. The earlier they begin taking these steps, and the more deeply they dig into the issues, the greater their chances of avoiding the most common implementation pitfalls.

White Paper Proposes Solutions for Overhaul of Section 512

The International Center for Law and Economics (ICLE) released a white paper on Thursday arguing that Section 512 of Title 17 of the Copyright Act has been a failure, and it should be reevaluated and overhauled. Congress passed Section 512 as part of the Digital Millennium Copyright Act (DMCA), and authors Kristian Stout and Geoffrey Manne argue the federal courts have written out key provisions in the law. Stout and Manne write that Section 512 has succeeded in allowing online service providers (OSPs) such as social media companies to grow and thrive by providing a safe harbor provision as long as they take down infringement promptly. However, the authors argue that the law has failed to provide proper incentives and systems to prevent digital piracy

Other Barks & Bites for Friday, October 14: Russian Oil Patents Unenforceable in the Netherlands, FTC and DOJ Hold Digital Competition Policy Dialogues with EU and G7, and EUIPO-EPO Report Shows IP-Intensive Industries Support 82 Million EU Jobs

This week in Other Barks & Bites: the Third Circuit affirms a partial denial of preliminary injunctive relief in a trade secret case involving processors for cremation equipment; Netherlands’ patent office announces that oil and gas patents held by major Russian energy firms are unenforceable in that country; the Federal Circuit finds that patent claims covering methods of digital recording physical activity survive Alice/Mayo at step two on the pleadings over a dissent from Judge Hughes; a joint study by the European Patent Office and the European Union Intellectual Property Office shows that 82 million EU jobs are being supported by IP-intensive industries; the U.S. Patent and Trademark Office announces a webinar on its request for comments on initiatives for robust and reliable patent rights; and both the Federal Trade Commission and U.S. Department of Justice participate in policy dialogues on digital competition with counterparts in the European Union and the Group of Seven.

Is an Autonomous Vehicle Patent War Revving Up?

Autonomous vehicles are paving the way as the next big innovation in personal transportation. With new technology, first comes the excitement of breakthroughs in any industry. Then comes the patent litigation arguments over who owns the technology and who can profit off the patents related to the technology. We are seeing this pattern again and perhaps the beginning of the self-driving cars patent wars. Earlier this year, the U.S. Court of Appeals for the Federal Circuit upheld the patentability of all challenged claims in a patent held by Velodyne LiDAR, Inc., one of just a handful of companies that makes LiDAR (light detection and ranging) systems for self-driving cars.

IP Practice Vlogs: Responding to the USPTO’s Request for Public Comments

The United States Patent and Trademark Office (USPTO) would like public comments on how to update the 2019 Subject Matter Eligibility Guidance. The agency is also seeking comments on how to improve the robustness of the patent system overall. This article/video is in (unofficial) response to both of these requests for comments. The current mess surrounding subject matter eligibility in the United States is an offspring of a much deeper problem in patent law, which is that there is practically no standardization in patent practice. In medicine, U.S. doctors are trained by standardized practices through rotations and residency programs such that when they begin practicing, a doctor graduating in Florida will not practice medicine vastly different from a doctor graduating from medical school in California, for instance. Instead, the idea is that all the graduates will approach medical treatment in a standardized way so that the public has a lot more faith in the medical community.

Hughes Dissents in Partial Win for Inventor Against Google at CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision in part reversing and in part affirming a district court’s dismissal of an inventor’s patent infringement suit against Google under Federal Rule of Civil Procedure12(b)(6). Judge Hughes dissented in part from the majority’s opinion, which was authored by Judge Stoll, explaining that he would have found all of the challenged claims patent ineligible.

How Some Brands are Successfully – and Cost-Effectively – Combating Online Counterfeiters

Protecting brands and going after counterfeiters is like herding cats. There are hundreds, if not thousands, of ways that online counterfeiters illegally monetize brands. Companies have many ways to combat them, but it can traditionally take lots of time, cost, and resources to do it. Now there is a less publicized option in the United States which can deter counterfeiters, takes little time, and often even pays for itself. This ultimately can result in true deterrence of counterfeiters for a brand in online marketplaces. With online sales exploding, there has been a marked increase in sales of counterfeit products, despite various solutions available to combat it. Indeed, the industry as a whole will see over $1.7 trillion of sold counterfeit products on various online platforms each year—and that estimate, by the International Anti-Counterfeiting Coalition, was in 2015. Counterfeit sales result in the loss of millions of U.S. jobs and lost profits, and is by far the world’s largest criminal enterprise, with eCommerce counterfeit sales expected to grow to $6 trillion by 2024 in the United States alone. 

SCOTUS Justices Lob Tough Questions at Both Sides in Prince-Photo Fair Use Fight

The Supreme Court today heard oral arguments in The Andy Warhol Foundation v. Lynn Goldsmith, a case asking the nation’s highest court to determine whether Warhol’s unlicensed use of Goldsmith’s photographs of pop superstar Prince was a fair use of that copyright-protected photo. Many of the Supreme Court’s questions focused on the scope of the use at issue in the case, as well as the extent of the new meaning or message that a purportedly derivative work must take on before it is considered transformative under factor one of the four-factor fair use test.

The Pride in Patent Ownership Act is Big Tech Boondoggling

The Pride in Patent Ownership Act, S.2774, is currently being attached to the National Defense Authorization Act (NDAA). The NDAA is “must pass” legislation funding the military at a time when wars are brewing around the world, some with credible threats of nuclear war. Attaching the Pride in Patent Ownership Act to the NDAA means it will certainly become law.
The Pride in Patent Ownership Act requires those who acquire patents to publicly register their ownership assignments with the U.S. Patent and Trademark Office (USPTO) within 120 days. Thus, it serves to identify potential patent infringement plaintiffs. If the patent holder misses the 120-day deadline, an extremely harsh penalty of losing treble damages for willful infringement, the sole remaining deterrent to willful infringement, is applied.

Chinese Patent Office Plans to Crack Down on Abnormal Patent Applications

The China National Intellectual Property Administration (CNIPA) released a draft of new measures that would downgrade the ratings of Chinese patent agencies that approve abnormal or fraudulent patents. CNIPA released the draft on October 8, which expands on a trial started in January 2022 in four provinces. The draft sets out to “crack down on illegal and untrustworthy acts” carried out by Chinese patent agencies and promote a healthier development of Chinese intellectual property.

Presenting the Evidence for Patent Eligibility Reform: Part II – Harm to R&D Investment, Innovation and U.S. Interests

The muddled state of patent eligibility law has direct and significant negative consequences for U.S. R&D investment, and for innovation in key fields of medical, economic, and strategic importance to the United States and its citizens. Uncertainty reduces R&D investment, as has been well-documented, and reliable patent protection mitigates uncertainty and generates increased R&D investment. As we explained in Part I of this series, the experts overwhelmingly agree on these points.

Implementing IP Management Software (Part I): Identifying Complexities and Dangers During Implementation

Imagine that your family has decided to build a new home. You’ve got the vision, but you need to call in the pros—a well-established, highly expert homebuilder with a cadre of architects, designers, contractors, and tradespeople. You’re relying upon the builder’s expertise to thoughtfully scope the project and prepare you for what lies ahead. This includes (a) helping you understand what financial and other commitments will be required of you; (b) educating you on challenges you’ll face along the way; and (c) highlighting available offerings that align with your vision….. Now imagine that your company or law firm has decided to implement intellectual property management software (IPMS) with a vendor. In a worst-case implementation scenario, you may feel like you’re reliving the above homebuilding saga. Indeed, IP teams often embark on the IPMS journey with great optimism. Once in the thick of implementation, however, they may experience a turbulent journey.

This is No Time for Another TRIPS Blunder

With all of the problems besetting us, you might think that the last thing we need right now is another give-away of critical technologies, but that could be about to happen. Negotiations are underway in Geneva over a proposal from “developing countries” that negating patent protections for our COVID-19 vaccines wasn’t good enough. Now they want to extend that foolish concession we agreed to earlier this year to any COVID therapy. You’d think it would be well understood by now that appeasement doesn’t foster gratitude, it only encourages the other side to push for more. We’ll soon see if we roll over again or not.

Amgen Says Solicitor General’s ‘Disagreement With Everyone’ Further Supports SCOTUS Review of Legal Standard for Enablement

On October 5, American biopharmaceutical firm Amgen filed a supplemental brief at the U.S. Supreme Court, which comes about two weeks after the U.S. Solicitor General’s office filed a brief urging the Court to deny certiorari on Amgen’s petition for writ. Amgen’s petition seeks Supreme Court review of rulings in the lower courts invalidating Amgen’s patent claims for lack of enablement. Amgen’s latest brief argues that Solicitor General’s own arguments further support Supreme Court review to clarify the proper standard for reviewing questions of enablement under 35 U.S.C. § 112.