USPTO - Updated Interim Guidance on Patent Eligibility

The USPTO updated and provided new material to assist applicants seeking patents in technologies being rejected as seeking to patent "abstract ideas." See the 2014 Interim Guidance on Subject Matter Eligibility in July 2015.

As stated: "the USPTO has issued the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for USPTO personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad.

The USPTO has produced another update pertaining to subject matter eligibility "July 2015 Update: Subject Matter Eligibility in response to the public comment on the 2014 Interim Patent Eligibility Guidance.  The July 2015 Update includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update."

Copyright © 2015 Robert Moll. All rights reserved.

USPTO & AIPLA - Co-host Roadshows on Patent Quality and AIA Trials August 24, 26, and 28, 2015

The USPTO notified of the following events:

"The USPTO is pleased to co-host with AIPLA a series of cross-country roadshows in August with stops in Santa Clara, California; Dallas, Texas; and Alexandria, Virginia. The full-day program will focus on enhancing patent quality (morning session) and conducting AIA trials (afternoon session) with numerous speakers from the USPTO as well as private practice.

CLE is available, and lunch is included. To register to attend, please visit: http://www.aipla.org/learningcenter/AIARoadShows/Pages/default.aspx

Hope to see you there for a full day of learning from the experts

Schedule:

Monday, August 24, 2015

• Santa Clara University, Locatelli Center
• Co-sponsored by the High Tech Law Institute of Santa Clara Law

Wednesday, August 26, 2015

• Belo Mansion, Dallas
• Co-sponsored by the IP Section of the Dallas Bar Association

Friday, August 28, 2015

• USPTO headquarters, Madison Auditorium

Agenda:

9:00 - 9:10 am: Opening Remarks

9:10 to 9:45 am: Track 1: Patent Quality Initiative Overview

9:45 to 10:45 am: Track 2: Clarity of the Record and Drafting High Quality Applications

10:45 to 11 am: Break

11:00 to Noon: Track 3: Interviews and Measuring Quality

Noon to 1:30 pm: Lunch - Luncheon Speaker: Russell Slifer, Deputy Director of the USPTO

1:30 to 1:50 pm: Track 4: PTAB State of the Board

1:50 to 2:45 pm: Track 5: Proposed AIA Trial Rule Changes

2:45 to 3:30 pm: Track 6: Hot Issues in AIA Trials

3:30 to 4 pm: Break

4 to 5 pm: Track 7: Actual AIA Trial Hearing

Speakers Include:

USPTO:

• Valencia Martin Wallace, Deputy Commissioner of Patent Quality
• Sandie Spyrou, Senior Quality Assurance Specialist in the Office of Patent Quality Management
• Bob Bahr, Senior Patent Counsel in the Office of the Deputy Commissioner for Patent Examination Policy
• Tim Callahan, Director of Technology Center 2400
• Marty Rater, Chief Statistician in the Office of Patent Quality Assurance
• Vice Chief Judge Scott Boalick
• Lead Judge Susan Mitchell
• Judge Peter Chen
• Judge Miriam Quinn
• Judge Linda Horner
• Lead Judge Matt Clements
• Judge Tina Hulse
• Judge Stacey White
• Judge Georgianna Braden
• Lead Judge Mike Tierney
• Judge Sally Medley

Practitioners

• Tom Irving, Finnegan Henderson
• Courtenay Brinckerhoff, Foley Lardner
• Ken Nigon, RatnerPrestia
• Professor Collen Chien, Santa Clara Law School
• Brad Pederson, Patterson Thuente
• Erika Arner, Finnegan Henderson
• Sharon Israel, Mayer Brown
• David McCombs, Haynes and Boone
• Todd Baker, Oblon
• Dorothy Whelan, Fish & Richardson
• William Noon, Illumina"

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Electronic Filing System (EFS-Web) FAQs - Each PDF File Limited to 25 MB

The EFS-Web has made life slightly easier, but it strikes me as quirky. Let me give a few examples. Recently, I received larger files (e.g., over 30 MB) to submit in an information disclosure statement. Even if my email server didn't return them as undeliverable it made me consider if they could be uploaded to the USPTO. Google search pulled up the USPTO EFS-Web FAQs web page that says each PDF copy must not exceed 25 MB. I can't think of too many web sites that would tolerate the hours of downtime each weekend to perform maintenance. I don't want to be sound like a curmudgeon, but even the lingo is a bit confusing. As stated in the FAQs a person cannot file in EFS-Web Contingency during scheduled EFS-Web outages" because "EFS-Web and EFS-Web Contingency share a common backend system." Wait why is it called contingency? Oh yeah weekend maintenance trumps contingency. Don't make me think!

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Trial Statistics 1998-2015

The Patent Trial and Appeal Board (PTAB) trials have become a major factor in resolving patent disputes. To see what is going on, you may want to check out the USPTO statistics: PTAB recent statistics and graphical AIA trial statistics and PTAB/BPAI statistics 1998-2013. If you have questions on the statistics, the USPTO recommends calling 571-272-7822.

Copyright © 2015 Robert Moll. All rights reserved.

Amazon Web Services Agreement's Intellectual Property Non-Assert Clause

Reading a cloud service provider contract is no fun. It is typically written in hyper-technical legalese, tiny font, and long convoluted sentences. And this style helps cloud service providers structure customer relationships to their advantage in surprising ways. How many of us are willing to slug through the fine print? Maybe this is the point since the service provider can remind a customer to not forget "our agreement" when a dispute arises leading to the customer read the "agreement" for the first time too late.

Amazon Web Services is a popular service for software startups, but the customer agreement appears to have some IP issues. In Beware the IP non-assert clause in AWS cloud service agreement, warns ex-Microsoft patent chief, Joff Wild flags a problematic non-assert clause in the standard Amazon Web Services (AWS) customer agreement. It states "during and after the Term, you will not assert, nor will you authorize, assist, or encourage any third party to assert, against us or any of our affiliates, customers, vendors, business partners, or licensors, any patent infringement or other intellectual property infringement claim regarding any Service Offerings you have used" (Section 8.5). Aren't many of us customers of Amazon? If so are we shielded from patent infringement for any AWS service used?

As noted by Joff Wild, the non-assert clause appears to be way too broad. And now we will see how it is interpreted by a court, because Amazon seeks to dismiss a patent infringement suit based on the AWS customer agreement. For details see Todd Bishop of GeekWire's article Amazon fights patent suit using little-noticed clause in standard AWS customer agreement.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - MasterImage 3D, Inc. v. RealD Inc. - Patent Owner Must Prove Patentability in Motion to Amend Claims

In MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015), the Patent Trial and Appeal Board (PTAB) discusses requirements for a patent owner seeking to establish the patentability of substitute claims in a motion to amend.

This is intended to clarify the patent owner's burden to set forth a prima facie case of patentability of narrower substitute claims in a motion to amend as described in Idle Free Systems, Inc. v Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013)(informative).

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Multiple Systems Down for Maintenance on July 18 - 19, 2015

The USPTO announced it will "perform maintenance affecting multiple systems beginning at 8 p.m., Saturday, July 18 and ending at 5 p.m., Sunday, July 19 ET." This will affect public and private PAIR. For further details see USPTO Systems Status Page.

Copyright © 2015 Robert Moll. All rights reserved.

Google’s Patentability Search Improvements - Extending CPC codes to NPL

The initial step in assessing whether or not an invention qualifies for patent protection is to find the closest prior art in a pre-filing patentability search. For search I like using a variety of sites including www.freepatentsonline.com, www.uspto.gov and Google for patents and non-patent literature (NPL).

Today, Google announced some improvements to its prior art search engine. I think the most important is it has associated the USPTO's new classification codes CPC to NPL. This might be viewed as "obvious to do" but should prove helpful since free online patent databases do not relate NPL to the USPTO classification codes such as CPC, which is now used by both the USPTO and the EPO. Kudos to Google on this as long as they don't retain your search queries.

For further details see Tech Crunch's article Google’s New, Simplified Patent Search Now Integrates Prior Art And Google Scholar and Google's Public Policy Blog Improving Patent Quality One Search at a Time.

Copyright © 2015 Robert Moll. All rights reserved.