The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings. The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”). The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.
On January 30, 2018, the USPTO quietly published a new revision (Revision 08.2017) to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). The revision includes amendments to a number of chapters, including notably the guidance regarding subject matter eligibility under 35 U.S.C. § 101. This includes changes in Chapter 2105 for living subject matter eligibility and Chapter 2106 for products of nature and software eligibility. The revision incorporates the contents of previous subject matter eligibility guidance documents that were provided on the “Subject Matter Eligibility” webpage of the USPTO. Although the MPEP does not have the force of law, unlike the CFR, patent examiners generally tend to follow the guidance provided in the MPEP. Accordingly, patent applicants dealing with Section 101 rejections should generally be starting with these revised MPEP chambers as a basis when crafting arguments to overcome such rejections.
Revised Chapter 2106 discusses the two-part Alice test including guidance regarding whether an invention falls under one of the statutory categories and whether an invention is directed to a judicial exception for an abstract idea. Of particular note, chapter 2106.05 provides expansive guidance for determining whether a claim amounts to something “significantly more” than an abstract idea. These “significantly more” arguments are often the best avenue for overcoming Section 101 rejections.
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.
Under section 2(a) of the Lanham Act, the Patent and Trademark Office (USPTO) may refuse to register any trademark that “[c]onsists of . . . matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” This spring, the U.S. Supreme Court will decide in Lee v. Tam whether this provision of the Lanham Act is facially invalid under the First Amendment. Here’s what you need to know about this important case.
United States Intellectual Property Alert
On May 4, 2016, the United States Patent Office published a subject matter eligibility update for determining patent eligibility under 35 U.S.C. § 101. The Update supplements the previous guidelines and includes additional life science claim examples to assist patent examiners (“Examiners”) in making eligibility determinations. The Update indicates that Examiners should use the additional claim examples in conjunction with the prior guidelines which were published by the Patent Office on December 16, 2014. The additional examples include illustrative claim sets directed to vaccines, methods of diagnosing and treating a disorder, dietary sweeteners, gene screening, a paper-making machine, and a method of hydrolyzing fat.
To read the full alert, click here.
On March 24, 2015, in a case covered here in a previous posting (On Tap at the U.S. Supreme Court: An Important Trademark Case, September 3, 2014), the United States Supreme Court (Supreme Court) held that a determination of likelihood of confusion by the Trademark Trial and Appeal Board (TTAB), in an administrative tribunal which determines registerability, may preclude further litigation of the issue in a subsequent infringement case. In B&B Hardware, Inc. v. Hargis Industries, Inc., the Supreme Court reversed a decision by the Eighth Circuit Court of Appeals, which had determined that a TTAB finding would not bind an infringement court because, among other reasons, the factors considered by the TTAB were not identical to those considered by the trial court. The Supreme Court, though, by a 7-2 vote, held that when the ordinary elements of issue preclusion are met and where the issues in the two cases are identical, the ruling by the agency tribunal controls. The Supreme Court also found that even though the specific factors considered in a likelihood of confusion analysis may vary somewhat, they are not ‘fundamentally different’ and that the ‘likelihood of confusion’ standard is the same for registration and infringement purposes.
On December 16, 2014, the United States Patent and Trademark Office published new guidelines for determining patent eligibility under 35 U.S.C. § 101. These guidelines do not have the force of law, but nevertheless establish the specific procedures that the Examiners apply during examination of patent applications. These guidelines are effective immediately, supersede previous guidelines regarding nature-based products, and supplement previous guidelines regarding abstract ideas. Based on Supreme Court decisions, the new guidelines set forth an analytical framework that is designed to “promote examination efficiency and consistency across all technologies” and is particularly relevant for patents directed to natural products, software, and business methods.
To read the full alert, click here.
On September 30, 2014, in Nationstar Mortgage LLC v. Mujahid Ahmad, the U.S. Trademark Trial and Appeal Board (Board) sustained a claim of fraud on the U.S. Patent and Trademark Office (USPTO) for the first time since the Federal Circuit issued its 2009 decision in In re Bose, upholding an opposition to the mark NATIONSTAR for various real estate brokerage, mortgage and management services.
In response to fraud allegations, Ahmad needed to show that he was using the NATIONSTAR mark with each of the services prior to the filing date of his in-use application. Read More
The deadline for submission of applications for the U.S. Patent & Trademark Office (USPTO) competition, PATENTS FOR HUMANITY, has been extended to October 31, 2014. The purpose of the program is to incentivize patent owners, applicants and licensees to use their technologies to address humanitarian issues in any of the following categories:
- household energy
- living standards. Read More
At the same time that it announced an almost 50% reduction in its backlog of request for continued examinations over the past year, the U.S. Patent and Trademark Office (USPTO) announced a new initiative to improve patent quality. During the quarterly Patent Public Advisory Committee (PPAC) meeting in August, USPTO Commissioner for Patents, Peggy Focarino, said the new focus on quality was a result of the PTO approaching optimal steady state application pendency and the AIA creating a sustainable fee reserve to fund such initiatives. Read More