HRFM Today

Pros and Cons of Filing a Provisional Patent Application

Written by: Stephen P. Scuderi for the Daily Record

Provisional patent applications (PPAs) were authorized in the United States in 1995. PPAs have a one year life span whereupon they will expire if they are not converted into a non-provisional patent application (a regular application). For a variety of reasons, PPAs are often used as an alternative to initially filing a regular application by such organizations and/or persons as individual inventors, start-up companies, small businesses and multinational corporations. However, there are many advantages (pros) and disadvantages (cons) that should be considered before making the decision to begin the patenting process with a PPA. This paper will provide an overview of some of those pros and cons, as well as the minimum filing requirements of a PPA.

Pros of Filing a PPA

A PPA can be used to secure an early filing date. Establishing a file date has always been important, but has become even more significant since the U.S. patent system was changed from a “first to invent” system to a “first to file” system when the America Invents Act (AIA) was enacted in 2011. This is because under the AIA, if multiple parties are filing for patent protection on the same invention, it is the party that first files (not the party that first invents) that can claim ownership to the invention.

Assignments: Best Practice Tips

Written by: Stephen P. Scuderi for the Daily Record

The timing and sufficiency of an assignment document can become critical for protecting the rights of the assignee. These rights include the assignee’s right to sue for infringement, ownership right and right to claim priority.

Right to Sue for Infringement

In the recent case of Diamond Coating v. Hyundai, 823 F. 3d 615 (Fed. Cir. 2016), the court made it clear that anything less than a transfer of the “entire exclusive patent right” runs the risk of the assignee not obtaining “patentee status” and therefore not having standing to sue for infringement under 35 U.S. Code § 281. If less than the entire exclusive right is transferred, than the courts must analyze the agreement to determine if the assignee has obtained all “substantial” rights. If significant restrictions are placed on those rights, than the agreement will be deemed a license and the assignee will not have standing to sue for infringement.

Right of Ownership

Under U.S. law, a patent or patent application “shall be assignable in law by an instrument in writing” (35 U.S. Code § 261). In the U.S., an assignment that is signed by only the assignor is considered a valid assignment.

This is in contrast to Europe, wherein an assignment of a patent must be in writing and “shall require the signature of the parties to the contract” (Article 72 European Patent Convention (EPC)). “Parties” in this case means the assignor and the assignee. Therefore an assignment signed only by the inventor may not be considered valid in some European countries.

Fortunately, validity of an assignment is governed by the laws of the country where the assignment is executed. Therefore, if an assignment is executed and valid in the U.S., it will also be accepted by the European Patent Office. However, for companies with inventors in multiple countries, care must be taken as to the legal requirements for a valid transfer of ownership in the country where the assignment is executed.

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.

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])

European Trademark Bureaucracy Changes its Name ... and Confuses Everyone ...

As if there isn't enough confusion in the trademark world, the home of the European trademark Bureaucracy has changed its own name.   The admittedly confusing Office for the Harmonization of the Internal Markets or OHIM  (… so what does it harmonize and which markets exactly?) will now become the European Union Intellectual Property Office (EUIPO).  Sounds simple right?  Except that not all Intellectual Property is governed by the Office and a mark may not actually be enforceable inside all of the European Union ...

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.  

Industry Focus: Cleantech: Apple e-Car?

Rumors about Apple competing in the Electric vehicle space appear to multiply by the day.  The latest evidence of a coming Apple Car is the registration of  the domain names  apple.cars, apple.car and apple.auto.   However, a review of pending trademark applications and registrations owned by the Cupertino electronics company doesn't reveal anything yet filed for anything auto related.  Similarly, a quick search for pending patent applications with the words vehicle, battery, auto or car reveal patent applications that relate to Apple's in car entertainment system "CarPlay", but nothing that appears to relate to an actual electric Apple Car.

That being said, patent applications are not made public for at least 18 months after filing and Apple has a reputation for secrecy that would make it unlikely to reveal its hand before absolutely necessary.  Apple also has a reputation for not worrying too much about others' trademarks when it does not suit them so it could be that Apple is just not that worried about trademark protection at this point. 

Others including the Chairman of Daimler and Elon Musk of Tesla  believe that Apple is moving ahead on this vehicle with Musk indicating it being obvious due to Apple hiring 1000 engineers to work  on it.   Given that Apple has not been afraid to enforce its intellectual property, particularly in multiple lawsuits versus Samsung over the look of the iPHONE, the lack of actual IP protection being pursued (i.e., no real patent or trademark applications filed) other than a few domain names that may be just as easily utilized for CARPLAY, is curious but  this may just be keeping the world guessing....which going back to the days of Steve Jobs is exactly what Apple likes to do...

By Victor Cardona

District Court Decision Expands Gilead and Wipes Out Patentee’s Patent Term Adjustment

The U.S. District Court for the Western District of Michigan issued an obviousness-type double patenting (ODP)-related decision in Magna Electronics v. TRW. 

The term of a patent is usually based on the filing date of a patent application- usually a patent is good for 20 years after it is filed.  However, undue delays by the U.S. Patent and Trademark Office may result in accrual of patent term adjustment (PTA), which extends the normal life of a patent.  PTA can be reduced by any undue delay on an applicant’s part (for example, taking extensions of time when responding to an Office Action). 

An invention in a patent application must be new and non-obvious for it to be granted as a patent.  Obviousness-type double patenting (ODP)- is a Court created doctrine intended to prevent the unjustified or improper timewise extension of patent rights.  Claims are subject to an ODP rejection when claimed subject matter is not patentably distinct from, e.g., subject matter claimed in a commonly owned application or patent when the issuance of a second patent would provide unjustified extension of patent term.  To date, ODP rejections have typically been seen in later-filed applications, and can be overcome by terminally disclaiming the terminal portion of a patent that would extend beyond the expiration date of an earlier-filed application.

In this Magna Electronics v. TRW, however, citing Gilead, the Court issued an opinion and order granting partial summary judgment, invalidating an asserted patent (US 7,339,149) and wiping away its Patent Term Adjustment (PTA), saying the patent was invalid under the doctrine of obviousness-type double patenting in view of US 7,402,786.  Both patents claimed a common filing date, but the ‘786 patent was later filed and later issued, as compared to the ‘149 patent:

Although citing to Gilead, the opinion significantly expands the scope of the ODP doctrine, since an earlier-filed patent’s PTA (rightfully earned from undue USPTO delay), was eviscerated based on a later-filed application in the same family.  The decision may well  be appealed and possibly reversed, but in the meantime, it is representative of a worst-case-scenario come to pass.  If upheld, it will force patentees to seriously weigh the costs/benefits of filing (and put significant consideration into desired claim scope of) a continuation in a family that already has a PTA-carrying member. 

By Erica Hines.  

Patent Office Holds That New Method for Diagnosing Alzheimer’s Disease Patent Ineligible

In a sign of the continuing difficulty of obtaining patent protection for medical diagnostic methods since the Supreme Court’s 2012 decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc. (see summary here and here), the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO) recently affirmed a patent examiner’s rejection of a patent claiming a method for diagnosing Alzheimer’s disease.  The patent application is owned by Eisai R&D Management Co., Ltd., a subsidiary of the Japanese pharmaceutical company Eisai Co., Ltd. (“Eisai”).  The application claims administering lidocaine, a local anesthetic, to a patient suspected of having Alzheimer’s disease then measuring levels of lidocaine or a metabolite thereof in the patent’s cerebrospinal fluid.  Levels of lidocaine or its metabolite below levels seen in healthy control subjects indicates that the patient has Alzheimer’s disease.

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.