HRFM Today

State of Computer-Related Patents Under §101 After Alice

Written by: Wayne F. Reinke for the Daily Record

35 U.S.C. §101 states that:  “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

In the first part of the two-part test set out by the Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347, the claims are reviewed to determine if they are directed to a judicial exception, i.e., a law of nature, natural phenomena or abstract idea.

With regard to an abstract idea, the cases seem to be more conclusory, lacking a thorough explanation.  Many times, it seems as if the test was whether the claims are computer-related and, if so, there must be an abstract idea.  Nonetheless, in the second part of the test, an inquiry is made as to whether the claim includes additional inventive elements that transform the claim into patentable subject matter.  Although there is no definition of what those additional elements need to be, it is clear that it needs to be more than merely applying the abstract idea to a particular technological environment (e.g., a general-purpose computer).  Related inquiries include whether a particular claim preempts a field of activity, i.e., does it usurp all other ways to achieve the same outcome.

The United States Patent and Trademark Office Finalizes a Revised Patent Fee Schedule

On November 14th 2017 the United States Patent and Trademark Office (USPTO) released a revised patent fee schedule.  Please see the Press Release Here:

WASHINGTON - The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017” to set or adjust certain patent fees, as authorized by the Leahy-Smith America Invents Act (AIA). The revised fee schedule is projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board (PTAB) operations, and administrative services. The additional fee collections will support the USPTO’s progress toward its strategic goals like pendency and backlog reduction, patent quality enhancements, technology modernization, staffing optimization, and financial sustainability.  

“Monkey Selfie” Copyright Case Settles

Written by: Kristian E. Ziegler for the Daily Record

Last month, David Slater and the People for the Ethical Treatment of Animals (PETA) finally settled their two-year legal battle over the intellectual property rights of a rare Indonesian crested macaque monkey named Naruto, who took pictures of himself in the wild with Slater’s camera.

The story began in 2011, when Slater traveled to the Tangkoko reserve on the Indonesian island of Sulawesi, and spent several days following and photographing a troop of macaque monkeys.  Slater has maintained that he coaxed the monkeys into pressing the shutter while looking into the lens, after he struggled to get them to keep their eyes open for a wide-angle close-up.  Slater compiled Naruto’s famous toothy grin selfie shown here, which went viral back in 2011, and several other selfies in a book called Wildlife Personalities. 

Allergan and New York Native American Tribe Partner to Protect Drug Patents

Written by: Kristian E. Ziegler for the Daily Record

The St. Regis Mohawk Tribe, whose Akwesasne territory straddles the U.S.-Canadian border in Franklin County, New York, and the provincial boarder between Ontario and Quebec, recently parlayed its sovereign immunity into several valuable pharmaceutical patents and a significant revenue stream.  

Allergan PLC, a leading global pharmaceutical company headquartered in Dublin, Ireland, transferred six patents covering its top-selling dry eye drug Restasis to the St. Regis Mohawk Tribe.  Under their agreement with Allergan, the St. Regis Mohawk Tribe receives a $13.75 million initial payment and $15 million in annual royalties, starting next year, until the Restasis patents expire in 2024 or are no longer valid (yes, you read that correctly - Allergan paid the St. Regis Mohawk Tribe millions of dollars to take ownership of the Restasis patents).  Allergan retains the rest of the revenue from the sales of Restasis, the company's second-biggest seller after Botox, which had $1.4 billion in sales last year.  In a unified statement about the agreement with Allergan, the Saint Regis Mohawk Tribal Council stated, "This is a viable and sound opportunity for the Saint Regis Mohawk Tribe to enter into the patent, technology and research sector as part of our overall economic diversification strategy. We realize that we cannot depend solely on casino revenues and, in order for us to be self-reliant, we must enter into diverse business sectors to address the chronically unmet needs of the Akwesasne community; such as housing, employment, education, healthcare, cultural and language preservation."  Before the Allergan deal, the St. Regis Mohawk Tribe’s annual budget was reportedly about $50 million.

Risks Associated with User-Generated Content and Design on Ecommerce Sites: A Trap for the Unwary- Part I

Written for the Daily Record by: Alana M. Fuierer and Shanna K. Sanders

The surge of user-generated e-commerce and social media platforms has provided individuals, regardless of location, experience or financial status, the power to become a commercial artist, author, designer, musician or photographer.  For emerging entrepreneurs, traditional barriers to entry have been removed by e-commerce websites such as Zazzle, CafePress, Threadless and Etsy.  For many of these sites, all the individual needs is a computer and an Internet connection; everything else (e.g. manufacturing, printing, packaging, inventory, shipping, invoicing, etc.) is handled by a third party e-commerce website.  Similarly, Facebook, Instagram, YouTube and Twitter provide a platform for inspiring authors, photographers and musicians to post and spread their creative content worldwide, and the opportunity to generate income.

Given the access and ease with which one can generate and distribute products and/or creative content, many are drawn to these websites with aspirations of earning money and/or being discovered.  These platforms provide a sense of empowerment, opportunity and endless possibilities for success. 

Want to Talk About Your Invention? Follow These Five Rules

Written by: John W. Boger  for BoneZone

The second most frequent question I get from people (after “How much does it cost to get a patent?”) is, “I am going to talk to So-and-so; what should I do beforehand?” In response, I have come up with five easy rules to follow. The purpose of this article is to review these rules in detail so that when you're asked to show your invention or discuss your idea, you take the appropriate steps to protect yourself and your creation.

Rule #1 – Make Sure Your Invention is Described in Detail in a Lab Book, and the Lab Book is Signed and Dated.

Rule #1 forces an inventor to sit down and think through what comprises his or her invention. Many times an inventor only has an idea—not an invention. The difference between the two is significant. An idea is just that. It is theoretical in nature and needs to be proven or built to morph into something more. Some people describe an idea as a “formulated thought.” An invention is an extension of an idea that is further developed, resulting in a prototype or an actual proven solution to the problem. The invention may be a new type of device, method, composition of matter or process. The key difference is that an idea is not patentable, while an invention is.

To comply with Rule #1, the inventor should contemporaneously document his idea and the development path of the idea to the invention, by some means. Contemporaneous means simultaneous to the process. This documentation step may encompass the use of a “traditional” lab book or alternatively, a computerized record. Either way, it is critical for the inventor to fully describe in sufficient detail the invention she plans on discussing with the third party before any discussions occur.

The Oft-Forgotten Importance of Design Rights

Written by: Alana M. Fuierer for the Daily Record

Whether it’s a creative new accessory, trendy footwear, an elegant lamp, sleek coffee machine, or the appearance of a new phone, innovative design surrounds us.  Given the significant time and money invested in innovative design, the potential economic and marketplace benefit, and the variety of laws available in the United States for protecting designs, design rights should not be ignored.  And yet, for the most part, they are.  Many innovative companies remain ambivalent towards design rights or, perhaps even worse, are deterred from adequately protecting their designs by frequent misperceptions that perpetuate the devaluation of design protection.

Design rights in the US give protection against those who would copy the appearance of a successful product.  More specifically, design protection gives the design owner exclusive rights in the aesthetic, visual design features of a product (i.e. shape, configuration, pattern or ornamentation).  When appearance, in whole or in part, gives value to a product and/or is a source identifier, design rights are crucial to prevent misappropriation of the design of the product. This is particularly true given the ever growing online marketplace, which has made it easier for individuals, anywhere in the world, to source and sell imitation products without significant investment.

IP 101: Submarine Patents Ready to Torpedo You?

New patents (resulting from patent applications filed after 1995) are enforceable from the date they are granted by the US Patent Office PTO until 20 years from the date they were filed.  Old patents were enforceable for 17 years from the date they were granted.  So in short, new-based on filing date; old - based on grant date.  Sometimes patent applications can languish in the PTO system based on PTO inaction, the need for extended analysis of prior art references, and/or stall tactics by applicants.  Prior to 1995 these stall tactics did not punish the applicant because patents were enforceable for 17 years from the grant date of the patent.  In contrast, such stall tactics are not rewarded because new patents run from the application date and not the grant date; thus any stalling results in less patent term.  So, old, but not granted, patent applications are often referred to as submarine patent applications because they could surface at any time and torpedo your business strategy and patenting plans due to their secrecy until granting.  Because these submarines could lurk for a long time, new technologies could be introduced and gain acceptance before these submarines could surface - and devastate unsuspecting ships . . . or industries . . .Due to the passage of time since 1995 there are very few of these submarines left to surface. Here is hoping no submarines surface in your backyard.  

Victor Cardona ([email protected])

Supreme Court Makes an Impression on Patent Holders

Written by: Matt Hulihan for the Daily Record

A common feeling shared by what I would venture to guess is most readers of this article is a special frustration with printer manufacturers. Specifically, it’s the negative feeling we experience when it comes time to replenish the ink or toner in our printer (after a suspiciously short amount of time – was the cartridge full to begin with?), only to find that the replenishment costs more than the printer itself.  Good news: the U.S. Supreme Court is looking out for you in its recent decision Impression Products, Inc. v. Lexmark International, Inc., 581 U.S. ___ (2017).

To be fair, companies across many different industries follow this approach of pairing a non-consumable good with a complimentary consumable good. This model has existed for years, the most famous example of its use being in the shaving industry where manufacturers sell the razor (non-consumable) for a low price, perhaps lower than the cost to produce, and sell the razors (complimentary consumable) at a substantial markup over cost. The model is widely known across all industries as the “razor and blade model”.  Obviously, the benefit to the original manufacturers comes when customers recurrently purchase the consumable item after the initial purchase. The revenues from such follow-on sales are potentially very large.  Because others might enter the market and either sell their own version of the consumable or refresh the original consumable (e.g. refill with toner/ink), original manufactures sometimes take creative steps to keep their customers loyal to them.

Is it OK to make a copy of a work to submit to the Patent Office to satisfy a patent applicant's duty of disclosure?

A copyright owner has the right to prevent others from making copies of his work.  In certain situations one may make copies without the copyright owner's permission.  There are various situations in which such a "Fair Use" applies including in an educational context. 

The Patent Office requires that a patent applicant submit relevant prior art (e.g., patents, technical articles, technical journals, etc.) to the Patent Office to help the Office perform its examination of patent applications.  Does this requirement conflict with a copyright owner's right to control reproduction of a copyrighted work?

17 U.S.C. §107 provides a fair use exception for a copyrighted work.  Four factors are considered when deciding if a fair use exception exists: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”  17 U.S.C. §107.  In 2012, the United States Patent & Trademark Office (USPTO) discussed fair use with regards to non-patent literature (NPL) in the patent examination process in a memo to the patent community.  Through the memo, the USPTO addressed fair use issues such as making copies of copyrighted NPL and providing it to an applicant during patent examination and making a copy of a copyrighted NPL and submitting it to the USPTO.