HRFM Today

Does the First Inventor Get the Patent?

Maybe. Kind of.  Not so much... could be the answer to this question after recent changes in the Patent Law.  The US has moved from a first to invent system (which is almost like it sounds) to a first inventor to file system.   Under the old first to invent system, in the event of an applicant encountering a problem getting a patent through the patent office, or another trying to allege that a real inventor committed patent infringement,  an inventor could always pull out his inventor notebooks and prove that he invented his widget or process before another, assuming he was also diligent about filing a patent application.  By proving he was the first to invent, all the inventor's problems (or at least those relating to inventorship) would melt away.  With the new law, the US has edged closer to how the rest of the world treats its inventors and has moved to a system where the first to file (almost) gets the patent.  

Intellectual Property Owners Association Asks Court to Correct Course on Patent Eligibility

Since the Supreme Court began its recent foray into the issue of patent eligibility over the past few years, lower courts and the PTO have been struggling to adapt, all too often to the unjustified detriment of patentees.  So said the Intellectual Property Owners Association (IPO) in a recent filing with the Court of Appeals for the Federal Circuit, asking the full court to rehear a recent decision and assess patent eligibility more appropriately by regarding claims in their entirety, not as fragmented elements.

Unlike questions of whether an invention warrants a patent because it is sufficiently new or non-obvious, the question of patent eligibility asks whether an invention is even of a type intended for patenting in the first place.  The Supreme Court has said that some inventions are excluded from patenting, or ineligible, because patenting them unduly “preempts” or “ties up” such things as abstract ideas, natural phenomena, or laws of nature that should remain free for all people’s use.  Some of its more recent rulings have been applied expansively by lower courts to exclude from patenting previously eligible inventions that apply natural phenomena, natural laws, etc., that were previously considered patent eligible.  One example is Ariosa v. Sequenom, a case currently on appeal to the Federal Circuit (consolidated Case Nos. 14-1139, -1144), where a three-member panel of the court found the patent at issue invalid for ineligibility.  The patentee has asked the full court to rehear the case on the grounds that the panel, as have the PTO and many other courts in recent years, over-extended the Supreme Court’s exclusions from patenting and the patent regime would be further damaged if the panel’s decision stands.  In a brief written by HRFM attorney Teige Sheehan, Ph.D., IPO supports the patentee’s request for rehearing and urges the full Federal Circuit to correct this over-extension and provide guidance for a more limited application of the patent-ineligibility doctrine the better comports with the Supreme Court’s guidance.

The inventors here discovered that the blood of a pregnant woman contains genetic material from the fetus she is carrying.  Building on this discovery, they patented a method for prenatal screening using a blood test, significantly safer than previous methods, like amniocentesis, which pose health risks to the fetus.  Although the Federal Circuit panel agreed that the new test “revolutionized prenatal care,” it held that it was ineligible for patenting because the presence of fetal genes in pregnant women’s blood was a natural phenomenon and the patent claims did not include sufficiently more than this ineligible subject matter to be valid.  IPO argues that the panel erred in its eligibility assessment by inappropriately breaking the claimed method down into its individual parts, rather than analyze the claims as a whole as the Supreme Court requires, thereby “miss[ing] the forest for the trees.”  It also argued that the panel inappropriately disregarded evidence submitted by the patentee that other groups had made use of the existence of fetal genes in pregnant women’s blood with methods that did not infringe the patent, meaning the claims did not “unduly preempt” the natural phenomenon.  If the Federal Circuit grants the request that the full bench rehear the appeal, it may invite further briefing to advise it on how to more appropriately apply Supreme Court precedent in assessing patent eligibility.

By Teige Sheehan, Ph.D.

PTAB Trial Update: USPTO Releases Proposed Improvements to Rules Governing PTAB Trial Practice and Key PTAB Statistics

Today the United States Patent and Trademark Office (USPTO) issued proposed improvements to the rules governing trial practice in post-patent issuance proceedings before the Patent Trial and Appeal Board (PTAB).  With the proposed improvements (which are set forth in the Federal Register Notice), the USPTO shared key statistics summarizing the activity before the PTAB in the three years since the America Invents Act (AIA) created three new post-issuance review proceedings: inter partes review (IPR), post-grant review (PGR) and transitional post-grant review for covered business method patents (CBM).

The proposed rules address public comments directed to the several trial issues, including the claim construction standard for AIA trials, a new option to submit testimonial/expert evidence with a patent owner’s preliminary opposition to a petition to institute a new proceeding, and a Rule 11 type certification for all PTAB filings to police misconduct.

The Director of the USPTO, Michelle K. Lee, highlighted the following PTAB statistics on her blog:

• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed directed to electrical/computer technology, 23 percent to mechanical/business methods subject matter, 9 percent in bio/pharma, and 5 percent in the chemical field.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.  Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.

Director Lee noted that the total number of petitions filed to date is approximately three times more than what was anticipated.  Despite the unexpected volume, the PTAB has rendered final decisions within the required one year time period in all of the cases.

A more thorough and in-depth review will follow once the proposed rules are finalized.

By Shanna K. Sanders, Esq.

PTO's AFP Extended - Useful or Another Acronym to Remember?

The US patent office has extended its After Final Pilot (AFP)  program for another year. This program is designed to facilitate communication between patent applicants and Patent Office Examiners.  Among the veritable alphabet soup of programs the Patent Office has implemented over the past few years in an attempt to overcome a backlog of patent applications, this program serves a useful purpose even if not quite yet living up to its promise.

Going Over a PTO Examiner's Head: What Happens if You Don't Like a Decision by a Patent Office Examiner?

In some cases, mostly those relating to the interpretation of substantive law, a Patent Office Examiner's decision may be appealed - first to an administrative panel and later to the Federal Courts.  These appeals typically relate to whether an invention is present in the prior art, whether  the patent application adequately describes the invention, and could even relate to whether the subject matter of a patent application is patent eligible.

What about when an issue relates to a ministerial or administrative type determination?  One option is to Petition to the Examiner's boss, that is, the Director of the Patent Office.  What does this petition involve?

Foreign Patent Applicants Beware!

Many changes have come to the patent system recently, particularly since September 2012 and even more so since March of this year. One of the most overlooked aspects relates to the claiming of priority to a foreign patent application.

For patent applications filed prior to March 16, 2013, an applicant pretty much has the ability to file a priority document up until the issue date of his patent application.  

Should Software be Patentable? Supreme Court Takes Another Look

Patent law allows patents to be granted only for specific subject matter. This was rarely an issue until the late 20th century since a patent applicant rarely seeks a patent for an atomic device or something illegal (a few of the subject areas specifically excluded from patent protection).

However, the digital world we live in has presented problems as to where to draw a line between products of manufacture (e.g. widgets) and abstract ideas and scientific principles. There have also been questions at to what a natural product is and the Patent Office has issued guidelines to help examiners determine whether a product is significantly different from that a natural product or process such that it is patentable in view of recent US Supreme Court decisions in MayoCollaborative Services v. Prometheus Laboratories, Inc. in 2012 and Ass’n for Molecular Pathology v. Myriad Genetics, Inc. in 2013.

Section 101 of the Patent law allows patents for "...any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof....." Other things specifically can't be patented including: laws of nature, abstract ideas (e.g., mathematical solutions), scientific principles, atomic weapons, illegal devices, and purely mental processes.

A particularly thorny area for patent law continues to be whether or not computer software or business methods should be patentable. The new PTO guidelines aren't any help relative to patents for software which one is unlikely to be determined a natural product or process. The US Supreme Court along with the lower appellate courts, such as the Fedaral Circuit, have issued various decisions over the years attempting to provide guidance to inventors and patent attorneys relative to patents for software without much success except to muddle things up...The most recent of these cases was the 2010 Bilski decision which provoked further debate on what an "abstract idea" is such that it an invention would be ineligible for patent protection.

The eligibility of computer software for patent protection has again reared its ugly head at the nation's highest court. Arguments were heard last week and a decision is expected in June in Alice Corp v. CLS Bank. The particular issue in the CLS case revolves around computer software which manipulates data by generating instructions, comparing values and sending and receiving data between devices. The software patents owned by Alice Corp relate to risk management in a computerized trading platform and CLS Bank had filed for a Declaratory Judgement that CLS was not infringing these patents.

An interesting point was raised by Justice Scalia during oral arguments when he asked if a cotton gin should be patentable subject matter when it was just doing what was formerly done by hand. One could analogize the calculations done by a computer driven by software to work done by a cotton gin in that both could be done by hand but are more efficiently done by a machine. If a patent can be obtained for a machine doing work formerly done by hand then why not for computer software which helps us find a good Italian restaurant near the exact spot we happen to be standing without looking through three guidebooks and the local phone directory? After all, we could do this by hand too.

As indicated in the article, one of the issues with software and business method patents (and the reason they are often the subject of controversy) is the prevalence of these patents in infringement suits and threats of such suits by so called patent trolls. Such trolls or patent assertion entities are often accused of asserting patents that are overly broad or vague and then coercing potential defendants to pay licensing fees to the troll to avoid litigation.

We should expect to hear from the Supreme Court a test further defining when a potential invention comprises an abstract idea such that it cannot be the subject of patent protection. It seems highly unlikely that the Court will throw out the possibility of patent protection for software entirely.

It should be noted that whether or not a particular invention is subject matter eligible is only part of the hurdle that a patent applicant faces. An innovation must also be new, meaning that the identical product or process was not previously existing, and that it not be obvious to one of ordinary skill in the art based on available knowledge. In some sense the focus on subject matter eligibility for software seems a waste of time given these other hurdles and given previous Supreme Court precedent that Congress intended patentable subject matter to be "...anything under the sun that is made by man." Given the prominence that software has in our daily lives, the idea that a new and not obvious software product, or the portions of such software that gives it an advantage over its competitors, would not be eligible for a patent doesn't make any sense.....particularly if it would be considered new and not obvious, an more importantly if it could help me find that restaurant preparing a perfetto vial milanese when I am in a strange city...

By Victor Cardona

U.S.P.T.O. to Patent Examiners: Gunpowder “Is Not Markedly Different” From a Product of Nature

The U.S.P.T.O. recently issued guidelines on how its examiners should analyze inventions’ patent-eligibility under 35 U.S.C. § 101 in accordance with developing Supreme Court jurisprudence, as reported here.  Subsequently, the Office provided further training to its examiners in a powder keg of a slideshow instructing them how to apply the guidelines.  The slideshow states that the “Supreme Court has made it clear that ‘natural products’ include a wide variety of things.”  Because an invention that is not “significantly different” from a natural product is not eligible for patenting under the guidelines, the U.S.P.T.O.’s broad conception of what constitutes a “natural product” may lead to rejections for failure to satisfy § 101 for man-made inventions heretofore considered patent-eligible.

IP101: I know that I should get moving on protecting my invention. What am I losing out on by waiting?

If you have invented a new product, process or composition of matter, waiting could allow someone else to jump you in line at the patent office and with the new first to file rules at the patent office such a line jumper could get a patent ahead of you . . . and prevent you from receiving a patent for your invention even if you could prove you invented before the line jumper.  Even if no one jumps ahead at the patent office, waiting to pursue protection until after you have sold, offered to sell or otherwise publicly disclosed your invention could foreclose your patent rights in all countries outside the US except for Canada and Australia, which - like the U.S. - have a one year grace period in which to file a patent application after a public disclosure.  Once such a disclosure is made, a one year clock starts ticking in the US and the other grace period countries after which you would be out of luck relative to obtaining patent protection.

New U.S.P.T.O. Guidelines: Is Your Claimed Invention “Significantly Different” From Natural Phenomena or Products?

On March 4, 2014, the U.S.P.T.O. issued guidelines to its Patent Examining Corps for determining whether inventions are eligible for patenting under 35 U.S.C. § 101 or ineligible under the judicially created exceptions from eligibility for laws of nature, natural phenomena, or natural products.  (Previously established guidelines will continue to be followed for analyzing whether the “abstract ideas” exclusion from eligibility applies.)  The new guidelines, which may be applied across a broad spectrum of technologies, address the Supreme Court’s interpretation of § 101 in Mayo Collaborative Services v. Prometheus Laboratories, Inc. in 2012 and Ass’n for Molecular Pathology v. Myriad Genetics, Inc. in 2013.  In Mayo (previously reviewed here) the Court held that a method for dosing a medication based on a patient’s metabolite levels after drug administration was an ineligible application of a “law of nature” and in Myriad (previously reviewed here) it held that an isolated molecule of DNA whose nucleotide sequence matches that of naturally occurring genes is an ineligible “product of nature.”  The new guidelines, effective immediately, supersede preliminary guidance the U.S.P.T.O had issued in June 2013 soon after Myriad was handed down.  They may provide some predictability for patent applicants in the wake of uncertainty created by Mayo and Mriad.  But they also signify a broad application of these holdings and greater scrutiny during examination.  Applicants and practitioners should adjust their strategies and expectations accordingly.