Category: Patents

1
Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings
2
Innovation patents as strategic tools for clients (Business Bytes video)
3
Significant changes ahead for Australian patents
4
UK to introduce new Unjustified Threats Bill across IP law
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USPTO Issues Report on Public Views Regarding Subject Matter Eligibility
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PL: PROCESS OF DETERMINING A WIDER SCOPE OF AUTHORIZATION FOR LEGAL ADVISORS AND ADVOCATES IN PROCEEDINGS BEFORE THE POLISH PATENT OFFICE – CURRENT STATUS
7
Protecting Plant Innovations in the U.S., Australia and New Zealand
8
New Developments in Patent Eligibility of Diagnostic Methods
9
New Zealand joins the Global Patent Prosecution Highway
10
Supreme Court to Consider Constitutionality of PTAB Proceedings

Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings

On October 4, 2017, the Federal Circuit held en banc that the proper interpretation of 35 U.S.C. 316(d) and (e) requires the Petitioner in an inter partes review (IPR) to prove all propositions of unpatentability, including for amended claims.  Aqua Prods., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017).  The en banc Court further determined that the PTAB must consider the entirety of the record when assessing the patentability of amended claims under 318(a), not merely the face of a motion to amend.

The Aqua case resulted in five opinions totaling 148 pages, each presenting views on judgment and underlying rationale, ultimately leading to a narrowly tailored holding.  In the decision, the Federal Circuit made clear that the burden of persuasion of patentability does not rest with the Patent Owner; instead, it is left to the Petitioner to establish that any proposed amended claims are not patentable.

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Significant changes ahead for Australian patents

The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission.  These include:

  • Amending the inventive step threshold to reflect that of the European Patent Office
  • Phasing out innovation patents
  • Requiring applicants to identify an invention’s technical features in their claims, and
  • Adding an objects clause to the Patents Act.

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UK to introduce new Unjustified Threats Bill across IP law

The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.

Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.

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USPTO Issues Report on Public Views Regarding Subject Matter Eligibility

On July 25, 2017, the United States Patent and Trademark Office (USPTO) issued Patent Eligible Subject Matter: Report on Views and Recommendations From the Public (Report). The Report summarizes public comments on the state of subject matter eligibility law.  Comments came from varied sources including industry, private practice, academia, trade associations, inventors, and small business.

After beginning with an overview of eligibility law in the U.S. and abroad, the Report summarizes the comments supportive and critical of the Supreme Court’s Bilski, Mayo, Myriad, and Alice decisions regarding subject matter eligibility. It polls opinions from the two most-impacted technology sectors, and reviews recommendations on how to move forward.

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PL: PROCESS OF DETERMINING A WIDER SCOPE OF AUTHORIZATION FOR LEGAL ADVISORS AND ADVOCATES IN PROCEEDINGS BEFORE THE POLISH PATENT OFFICE – CURRENT STATUS

The 10 May 2017 draft act of the Ministry of Science and Higher Education, amending certain acts in order to improve the legal environment for innovative activities, provided for the introduction of changes in the scope within which authors can be represented before the Polish Patent Office (PPO). The draft stipulated that, in cases related to submitting and considering applications and maintaining protection over inventions, medicinal products, plant protection products, utility designs, industrial designs, geographic signs and integrated circuit topography, attorneys in Poland (adwokat and radca prawny, hereinafter “advocate” and “legal advisor”) would also be able to represent the parties involved – previously, in such cases only patent attorneys or persons providing cross-border services in the meaning of the Act on Patent Attorneys of 11 April 2001 had been able to represent parties.

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Protecting Plant Innovations in the U.S., Australia and New Zealand

The development of new plant varieties can be a costly and time-consuming process. To incentivise breeding endeavours, governments around the world have developed legal mechanisms which effectively provide breeders with a period of market exclusivity in which to commercialise their new variety. The mechanisms vary from country to country, and this article briefly reviews those available in the United States, Australia and New Zealand.

To read the full alert, click here.

By: Michael Christie and Margaux Nair

New Developments in Patent Eligibility of Diagnostic Methods

The U.S. Courts have repeatedly invalidated patents under 35 U.S.C. § 101 as lacking patentable subject matter in areas such as business methods and computer-based inventions. However, decisions addressing inventions in the life sciences are substantially less frequent.  In Cleveland Clinic Foundation v. True Health Diagnostics LLC (Fed. Cir. 2017), the Federal Circuit provided some additional guidance for patent eligibility of life sciences inventions.

Three of the patents at issue were directed to methods of detecting myeloperoxidase (MPO) (diagnostic patents), and the fourth patent was directed to methods of treating patients with heart disease based on the MPO detection methods of the other patents. The district court granted the defendant’s motion to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim because the diagnostic patents lacked patentable subject matter, and the Federal Circuit affirmed that decision.

According to the Federal Circuit, the diagnostic patents were directed to a law of nature: the correlation between MPO level and heart disease. Interestingly, the opinion notes that the correlation was known in the art prior to filing the patents, however, there was no way to directly detect the MPO or correlate the levels to a risk of heart disease. The Court found that the claims did not teach a new test or laboratory technique, nor did they alter the MPO levels. Rather, the levels existed in nature without human action. Thus, the Court concluded that the claims did “not result in an inventive concept that transforms the natural phenomena of MPO being associated with cardiovascular risk into a patentable invention.”

The Court left open the question of whether the method of treatment patent contained patent-eligible subject matter because the Court held that the pleadings for that patent were deficient (this patent was only alleged to be infringed through inducement or contributorily infringed).

Unlike other decisions on patentable subject matter in the life sciences area, the holding did not turn on whether the claims broadly preempted application of a law of nature. The Patent Owner argued that the claims should be patent eligible because they were narrow and did not preempt all uses of the alleged law of nature, but the Court stated that the preemption argument was fully addressed and made moot by its determination that the claims only disclosed patent-ineligible subject matter.

In view of this decision, care should be taken when drafting claims directed to diagnostic methods to be sure to clearly claim more than the diagnostic correlation.

By: Margaux Nair and Aaron Morrow

New Zealand joins the Global Patent Prosecution Highway

On 6 July 2017, New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot program, providing applicants for New Zealand patents with a means of expediting prosecution of their application.

The GPPH is an arrangement between the intellectual property offices of several jurisdictions including Australia, the United States, Japan, Canada and Korea.  Under the GPPH, an applicant who receives a ruling that at least one claim has been allowed by a participating patent office may request that another participating patent office expedite examination of their application.

To be eligible for examination under the GPPH, the following requirements must be met:

  • the patent application to be examined under the GPPH must have the same earliest priority or filing date as the associated application which has already been examined by the participating patent office
  • the associated application must include one claim which has been deemed allowable by the participating patent office, and
  • the claims to be examined under the GPPH must sufficiently correspond with the allowed claims.

With regard to the third requirement above, applicants have the option of amending their claims so that they sufficiently correspond with those that have been allowed by another participating patent office. However, before making such amendments, applicants should consider the possibility of obtaining broader claims in certain jurisdictions. Patent laws vary between jurisdictions and a claim that was allowed in, say, the U.S., might be narrower that what could be obtained in New Zealand.

Prior to New Zealand’s entry into the GPPH, the options available to applicants seeking expedited examination were limited and burdensome. The GPPH now provides patent applicants with a simple way of accelerating prosecution of their patent application in several jurisdictions, potentially reducing the costs and time required to obtain a granted patent.  However, allowance of a claim in one jurisdiction does not necessarily mean that a corresponding claim will be allowed in another jurisdiction.

By: Michael Christie

Supreme Court to Consider Constitutionality of PTAB Proceedings

On June 12, 2017, the U.S. Supreme Court granted Oil States Energy Services, LLC’s petition for a writ of certiorari to address the following question: “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” The Supreme Court declined to grant certiorari on Oil States’ remaining two questions presented, relating to amendment procedures and claim construction.

Oil States’ argument is that patents are private property rights that can only be revoked by an Article III court, not by an Article I agency. In particular, Oil States urges the Supreme Court to overturn the Federal Circuit’s decision in MCM Portfolio LLC v. Hewlett-Packard Co., which held that patents are public rights and that “Congress has the power to delegate disputes over public rights to non-Article III courts.”[1]  The Federal Circuit has already upheld the constitutionality of the PTO’s ex parte reexamination process in Patlex Corp. v. Mossinghoff.[2]  In doing so, consistent with MCM, the Federal Circuit affirmed the power of an Article I agency to adjudicate the validity of an issued patent in the first instance.[3]

The Supreme Court previously rejected three other petitions challenging the constitutionality of Patent Trial and Appeal Board (“PTAB”) proceedings. And, as recently as last month, the same issue was presented for en banc review to the Federal Circuit, which declined to review in a 10–2 vote.[4]  Accordingly, this case will present the first opportunity for the Supreme Court to consider the constitutionality of the immensely popular post-grant proceedings put in place by the America Invents Act.  The case also presents interesting issues regarding a patentee’s right to a jury trial under the Seventh Amendment.

Updates to this alert will be provided as they become available.

[1] 812 F.3d 1284, 1289 (Fed. Cir. 2015).

[2] 758 F.2d 594 (Fed. Cir. 1985).

[3] Id. at 604.

[4] Cascades Projection LLC v. Epson Am., Inc., No. 2017-1517, slip op. at 2 (Fed. Cir. May 10, 2017).

By: Jason Engel, Devon Beane and Erik Halverson

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