In Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit affirmed PTAB's determination that the patent owner's substitute claims proposed in a motion to amend were patent ineligible under 35 U.S.C. § 101 in an inter partes review (IPR).
As a reminder, IPR only permits challenges of US patent claims based on prior literature under 35 U.S.C. § 102 and 35 U.S.C. § 103. However, the Federal Circuit is now making a distinction with issued and substitute claims proposed in an IPR and states that PTAB may review substitute claims proposed by the patent owner for patent eligibility.
The dissent stated: "the majority breathes life into a dead patent and uses
the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings.
Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 ("'960 patent")
and because, even if the Board could issue such claims, it
would be improper for it to consider 35 U.S.C. § 101."
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label 35 USC 102. Show all posts
Showing posts with label 35 USC 102. Show all posts
Friday, July 24, 2020
Tuesday, January 22, 2019
Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Secret Commercial Sales of Invention Can Bar Patent
In Helsinn Healthcare v. Teva Pharmaceutical, the United States Supreme Court held that a commercial sale to a third party who is required to keep the invention confidential may place the invention "on sale" under the American Invents Act.
Justice Thomas speaking for a unanimous Court stated that the "America Invents Act (AIA) bars a person from receiving a patent on an invention that was 'in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention 'on sale' within the meaning of §102(a)."
"More than 20 years ago, this Court determined that an invention was 'on sale' within the meaning of an earlier version of §102(a) when it was 'the subject of a commercial offer for sale' and 'ready for patenting.' Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the phrase 'on sale' in the AIA did not alter this meaning. Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention 'on sale' under the AIA."
For additional commentary see Professor Ronald Mann's Opinion analysis: Justices affirm ruling that secret sales of invention bar later patent and my post America Invents Act - On Sale Bar, 35 USC 102.
Copyright © 2019 Robert Moll. All rights reserved.
Justice Thomas speaking for a unanimous Court stated that the "America Invents Act (AIA) bars a person from receiving a patent on an invention that was 'in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention 'on sale' within the meaning of §102(a)."
"More than 20 years ago, this Court determined that an invention was 'on sale' within the meaning of an earlier version of §102(a) when it was 'the subject of a commercial offer for sale' and 'ready for patenting.' Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the phrase 'on sale' in the AIA did not alter this meaning. Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention 'on sale' under the AIA."
For additional commentary see Professor Ronald Mann's Opinion analysis: Justices affirm ruling that secret sales of invention bar later patent and my post America Invents Act - On Sale Bar, 35 USC 102.
Copyright © 2019 Robert Moll. All rights reserved.
Thursday, December 6, 2018
Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Hearing Transcript
The United States Supreme Court held a hearing in Helsinn Healthcare v. Teva Pharmaceutical this week.
The issue: "Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention."
For additional details see the hearing transcript and Professor Ronald Mann's argument analysis and America Invents Act - On Sale Bar, 35 USC 102
Copyright © 2018 Robert Moll. All rights reserved.
The issue: "Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention."
For additional details see the hearing transcript and Professor Ronald Mann's argument analysis and America Invents Act - On Sale Bar, 35 USC 102
Copyright © 2018 Robert Moll. All rights reserved.
Tuesday, July 12, 2016
Federal Circuit - The Medicines Company v. Hospira, Inc. - On Sale Bar of Product-By Process Claim Requires Commercial Sale or Offer for Sale
An inventor will lose US patent rights if an invention is held to be "on sale" more than one year before filing the patent application. Because inventors often engage in business activity before filing the application, attorneys often dispute in litigation if the activity placed the invention on sale. In The Medicines Company v. Hospira, Inc. the Federal Circuit revisited this issue en banc for pre-AIA cases. It concluded that to be on sale a product must be the subject of a commercial sale or offer for sale, and that a commercial sale is one that bears the general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial Code.
The product-by-process claims were held not invalid since the contract manufacturer was considered the inventor of manufacturing services where neither the title to the
embodiments nor the right to market them passed to the supplier.
Copyright © 2016 Robert Moll. All rights reserved.
Copyright © 2016 Robert Moll. All rights reserved.
Friday, November 20, 2015
Crouch - AIA Patents: 20% of New Patents - Brief Comment
Professor Dennis Crouch's post: AIA Patents: 20% of New Patents includes a chart that graphically shows a steep rise in US patents that have issued under the America Invents Act (AIA). As a reminder, an AIA patent is not entitled to a filing date earlier than March 16, 2013.
I expect a rise in litigation on how 35 USC 102 should be interpreted for AIA patents given the different language of Section 102 of the AIA and given the paucity of court or PTAB decisions to date. I am not certain if the rise in AIA patents will trigger a similar rise in litigation rather than settlement on Section 102 disputes, but it seems likely.
Also see Professor Crouch's First AIA Lawsuits and my article America Invents Act, On Sale Bar, 35 USC 102.
Copyright © 2015 Robert Moll. All rights reserved.
I expect a rise in litigation on how 35 USC 102 should be interpreted for AIA patents given the different language of Section 102 of the AIA and given the paucity of court or PTAB decisions to date. I am not certain if the rise in AIA patents will trigger a similar rise in litigation rather than settlement on Section 102 disputes, but it seems likely.
Also see Professor Crouch's First AIA Lawsuits and my article America Invents Act, On Sale Bar, 35 USC 102.
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, August 31, 2013
America Invents Act - On Sale Bar, 35 USC 102
Prior to the America Invents Act (AIA), the on sale bar has been a frequent way inventors lose U.S. patent rights. Basically, US patent law gave an inventor one year to file a US patent after the first offer for sale of an invention ready for patenting. Thus, it tackles inventors that are commercializing the invention too early before they file the patent application. See the U.S. Supreme Court's landmark decision Pfaff v. Wells Electronics, Inc. in 1998.
The AIA makes dramatic changes to 35 USC 102 that may increase loss of U.S. patent rights since the scope of the one year grace period is uncertain, a prior sale no longer needs to be "in this country" (USA), and in particular it is unclear how the grace period is narrowed with respect to non-public sales.
We don't have court decisions, however, the USPTO has published the Examination Guidelines For Implementing The First Inventor To File Provisions Of The Leahy-Smith America Invents Act (Examination Guidelines) and other USPTO educational materials that can guide our analysis of the new grace period.
The starting point for understanding the new grace period is the statutory language:
35 U.S.C. 102(a)(1) states "a person shall be entitled to a patent unless the claimed invention was ... on sale, or otherwise available to the public before the effective filing date of the claimed invention. Thus, 102(a)(1) tells us generally of activities that will result in denial of patent protection."
35 USC 102(b)(1) states, however, that "a disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if
The AIA makes dramatic changes to 35 USC 102 that may increase loss of U.S. patent rights since the scope of the one year grace period is uncertain, a prior sale no longer needs to be "in this country" (USA), and in particular it is unclear how the grace period is narrowed with respect to non-public sales.
We don't have court decisions, however, the USPTO has published the Examination Guidelines For Implementing The First Inventor To File Provisions Of The Leahy-Smith America Invents Act (Examination Guidelines) and other USPTO educational materials that can guide our analysis of the new grace period.
The starting point for understanding the new grace period is the statutory language:
35 U.S.C. 102(a)(1) states "a person shall be entitled to a patent unless the claimed invention was ... on sale, or otherwise available to the public before the effective filing date of the claimed invention. Thus, 102(a)(1) tells us generally of activities that will result in denial of patent protection."
35 USC 102(b)(1) states, however, that "a disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if
(A) the disclosure was made by the inventor or joint inventor
or by another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such
disclosure, been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor. Thus, 102(b)(1) tells us of the circumstances where the 102(a)(1) activities will be excused for one year."
The USPTO educational materials states to understand the exceptions of 35 USC 102(b), we must define three terms: disclosure, inventor, and one year or less. An inventor and one year or less are defined consistent with pre-AIA law. The term disclosure is defined in a new way to include evidence that the claimed invention was on sale.
Interpreting how the on sale bar requires (or doesn't) require "disclosure" is likely to be a litigation hot spot. The Examination Guidelines stated that "a number of comments suggested that public availability should be a requirement for “on sale” activities under AIA 35 U.S.C. 102(a)(1), and that non-public uses and non-public sales or offers for sale do not qualify as prior art under the AIA. The comments suggesting that public availability should be a requirement for 'on sale' activities under AIA 35 U.S.C. 102(a)(1) gave the following reasons: (1) The catch-all phrase 'otherwise available to the public' in AIA 35 U.S.C. 102(a)(1) and case law cited in the legislative history of the AIA supports the view that 'available to the public' should be read as informing the meaning of all of the listed categories of prior art in AIA 35 U.S.C. 102(a)(1); (2) the removal of derivation under pre-AIA 35 U.S.C. 102(f) and prior invention under pre-AIA 35 U.S.C. 102(g) as prior art indicates that the AIA intended to do away with 'secret' prior art; (3) public availability is the intent of AIA, and for the Office to construe the statute otherwise would erode the availability of patent protection in the United States, and weaken the economy; (4) interpreting the 'on sale' provision to require public availability is good public policy in that it would lower litigation costs by simplifying discovery, and would reduce unexpected prior art pitfalls for inventors who are not well-versed in the law."
Okay, that is one interpretation of the statute. But other comments "suggested that the legislative history of the AIA is insufficient to compel the conclusion that Congress intended to overturn pre-AIA case law holding that an inventor's non-public sale before the critical date is a patent-barring 'on sale' activity as to that inventor. One comment suggested that commercial uses that are not accessible to the public are nonetheless disqualifying prior art because Metallizing Engineering and other pre-AIA case law interpreting 'public use' and 'on sale' continue to apply under the AIA, and do not require public availability. The comment further suggested that commercial uses that are accessible to the public, even if such accessibility is not widespread, are disqualifying prior art to all parties. Another comment suggested that Metallizing Engineering and other forfeiture doctrines should be preserved because they serve important public policies. Another comment suggested that if the Office does adopt the position that Metallizing Engineering is overruled, and that any sale under AIA 35 U.S.C. 102(a)(1) must be public, the Office should promulgate a rule requiring that any secret commercial use of the claimed invention more than one year prior to the effective filing date be disclosed to the Office. Another comment indicated that sales between joint ventures and sales kept secret from the 'trade' should still be considered prior art under AIA 35 U.S.C. 102(a)(1)."
Here is how the USPTO responded: "A patent is precluded under AIA 35 U.S.C. 102(a)(1) if 'the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' AIA 35 U.S.C. 102(a)(1) contains the additional residual clause 'or otherwise available to the public.' Residual clauses such as 'or otherwise' or 'or other' are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the 'or otherwise available to the public' residual clause of the AIA's 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art."
This suggests a secret sale prior to filing an application needs no grace period because it is not prior art. However, this seems to allow for secret commercialization of the invention more than one year before filing the application, which is contrary to many decades of case law.
The USPTO says its "interpretation of AIA 35 U.S.C. 102(a)(1) also ensures that the AIA grace period can extend to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability. In addition, this interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention in secret one day before he filed an application could not obtain a patent."
If the goal is prompt disclosure to the public of the claimed invention I am not sure this is odd. Further, the USPTO's concern that a secret sale one day before the filing date bars a valid patent from issuing seems misplaced since the USPTO says a secret sale is not prior art requiring an exception to the general rule barring pre-filing activity.
Copyright © 2013 Robert Moll. All rights reserved.
The USPTO educational materials states to understand the exceptions of 35 USC 102(b), we must define three terms: disclosure, inventor, and one year or less. An inventor and one year or less are defined consistent with pre-AIA law. The term disclosure is defined in a new way to include evidence that the claimed invention was on sale.
Interpreting how the on sale bar requires (or doesn't) require "disclosure" is likely to be a litigation hot spot. The Examination Guidelines stated that "a number of comments suggested that public availability should be a requirement for “on sale” activities under AIA 35 U.S.C. 102(a)(1), and that non-public uses and non-public sales or offers for sale do not qualify as prior art under the AIA. The comments suggesting that public availability should be a requirement for 'on sale' activities under AIA 35 U.S.C. 102(a)(1) gave the following reasons: (1) The catch-all phrase 'otherwise available to the public' in AIA 35 U.S.C. 102(a)(1) and case law cited in the legislative history of the AIA supports the view that 'available to the public' should be read as informing the meaning of all of the listed categories of prior art in AIA 35 U.S.C. 102(a)(1); (2) the removal of derivation under pre-AIA 35 U.S.C. 102(f) and prior invention under pre-AIA 35 U.S.C. 102(g) as prior art indicates that the AIA intended to do away with 'secret' prior art; (3) public availability is the intent of AIA, and for the Office to construe the statute otherwise would erode the availability of patent protection in the United States, and weaken the economy; (4) interpreting the 'on sale' provision to require public availability is good public policy in that it would lower litigation costs by simplifying discovery, and would reduce unexpected prior art pitfalls for inventors who are not well-versed in the law."
Okay, that is one interpretation of the statute. But other comments "suggested that the legislative history of the AIA is insufficient to compel the conclusion that Congress intended to overturn pre-AIA case law holding that an inventor's non-public sale before the critical date is a patent-barring 'on sale' activity as to that inventor. One comment suggested that commercial uses that are not accessible to the public are nonetheless disqualifying prior art because Metallizing Engineering and other pre-AIA case law interpreting 'public use' and 'on sale' continue to apply under the AIA, and do not require public availability. The comment further suggested that commercial uses that are accessible to the public, even if such accessibility is not widespread, are disqualifying prior art to all parties. Another comment suggested that Metallizing Engineering and other forfeiture doctrines should be preserved because they serve important public policies. Another comment suggested that if the Office does adopt the position that Metallizing Engineering is overruled, and that any sale under AIA 35 U.S.C. 102(a)(1) must be public, the Office should promulgate a rule requiring that any secret commercial use of the claimed invention more than one year prior to the effective filing date be disclosed to the Office. Another comment indicated that sales between joint ventures and sales kept secret from the 'trade' should still be considered prior art under AIA 35 U.S.C. 102(a)(1)."
Here is how the USPTO responded: "A patent is precluded under AIA 35 U.S.C. 102(a)(1) if 'the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' AIA 35 U.S.C. 102(a)(1) contains the additional residual clause 'or otherwise available to the public.' Residual clauses such as 'or otherwise' or 'or other' are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the 'or otherwise available to the public' residual clause of the AIA's 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art."
This suggests a secret sale prior to filing an application needs no grace period because it is not prior art. However, this seems to allow for secret commercialization of the invention more than one year before filing the application, which is contrary to many decades of case law.
The USPTO says its "interpretation of AIA 35 U.S.C. 102(a)(1) also ensures that the AIA grace period can extend to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability. In addition, this interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention in secret one day before he filed an application could not obtain a patent."
If the goal is prompt disclosure to the public of the claimed invention I am not sure this is odd. Further, the USPTO's concern that a secret sale one day before the filing date bars a valid patent from issuing seems misplaced since the USPTO says a secret sale is not prior art requiring an exception to the general rule barring pre-filing activity.
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, April 30, 2013
America Invents Act - USPTO Guidance on First-Inventor-to-File - Videos & Slides
On March 15, 2013, the USPTO published videos and slides regarding the first-inventor-to-file system that help explain the extensive changes to 35 USC 102, especially with respect to the narrowing of the one-year grace period and the various activities that constitute prior art today. Understanding these topics is crucial in seeking a US patent. Here is the USPTO's guidance on the first-inventor-to-file system:
"The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system. The FITF provision includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a derived publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).
The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.
A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.
Prior public use or sale is no longer limited to the U.S.
For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.
Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.
In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.
The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications.
35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.
35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.
Examiner Training
"The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system. The FITF provision includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a derived publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).
The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.
A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.
Prior public use or sale is no longer limited to the U.S.
For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.
Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.
In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.
The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications.
35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.
35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.
Examiner Training
- First-Inventor-to-File Follow up Video (March 2103)
- First-Inventor-to-File Follow up Video Slides (March 2013)
- First-Inventor-to-File Live Overview Training Slides (March 2013)
- First-Inventor-to-File Introductory Video (March 2013)
- First-Inventor-to-File Introductory Video Slides (March 2013)
- First-Inventor-to-File Statutory Framework
- Public Forum (March 15, 2013)
- First-Inventor-to-File Rules Correction (78 Fed. Reg. 16182, March 14, 2013)(corrected pages)
- First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013)
- First-Inventor-to-File Final Guidance (78 Fed. Reg. 11059, February 14, 2013)
- Roundtable (September 6, 2012)
- First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)
- First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 26, 2012)
- 18 Months Implementation Timeline
Copyright © 2013 Robert Moll. All rights reserved.
Monday, March 4, 2013
America Invents Act - Uncertain Grace Period for Filing US Patent Application
Today, Hal Wegner blew the trumpet loud and clear. Beginning March 16, 2013, the new one-year grace period, which is currently unconditional, may only give narrow protection with respect to pre-filing disclosures based on a review of 35 USC 102, the recent PTO examination and final rules, certain statements made by principal draftsman Robert Armitage and Joe Matal, and Congressional legislative history. For example, the new one-year grace period may not protect against a third party's disclosure or publication prior to the filing date unless the third party disclosure is identical to the inventor's disclosure.
You may want to sign up for Hal Wegner's free email service for the details. But in a nutshell he advises: if anyone plans to file a U.S. patent application on or after March 16, 2013, they should file the application before disclosure of the invention. If anyone discloses the invention before filing a application, one should file the application as soon as possible to reduce the risk the grace period will be treated as not shielding a non-identical third party disclosure before the filing date. Because the scope of the grace period is uncertain after considerable commentary, this appears to be the safer approach to protect U.S. patent rights until the Federal Circuit gives further guidance.
Copyright © 2013 Robert Moll. All rights reserved.
You may want to sign up for Hal Wegner's free email service for the details. But in a nutshell he advises: if anyone plans to file a U.S. patent application on or after March 16, 2013, they should file the application before disclosure of the invention. If anyone discloses the invention before filing a application, one should file the application as soon as possible to reduce the risk the grace period will be treated as not shielding a non-identical third party disclosure before the filing date. Because the scope of the grace period is uncertain after considerable commentary, this appears to be the safer approach to protect U.S. patent rights until the Federal Circuit gives further guidance.
Copyright © 2013 Robert Moll. All rights reserved.
Wednesday, February 13, 2013
USPTO - Final Rules and Examination Guidelines to Implement the First-Inventor-to-File Provision of the America Invents Act
Today, the USPTO published the final Rules implementing the first-inventor-to-file provision of the America Invents Act (AIA) effective on March 16, 2013.
See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines
The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.
The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."
Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.
The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.
Copyright © 2013 Robert Moll. All rights reserved.
See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines
The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.
The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."
Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.
On the flip side, unpredictability may arise in the new derivation proceedings that are intended to ensure a person will not be able to obtain a patent even when filing first for an invention that he or she did not actually invent. The scope of the one-year grace period is another area to expect unpredictability. Sure patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures, but what happens when the third party disclosure is not identical to the "first" inventor's disclosure? Do we have a one-year grace period against the third party disclosure? Further, do we have a grace period for an third party offer for sale or public use? Thus, unpredictability exists on the grace period of the new law.
The migration to the first inventor to file system is another step toward harmonizing U.S. patent law with that of the rest of the world, but the US definition of prior art and scope of the grace period is different. And the steps proceed in parallel for better or worse. For example, the USPTO implemented a common classification system for the USPTO and the EPO to enhance examination on January 1, 2013. The so-called Tegernsee Group is another effort to harmonize patent law among the major offices.
The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, November 29, 2012
American Invents Act Driving More Provisional Application Filings
Professor Dennis Crouch's Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned contains a graph showing provisionals have steadily increased from 1995 to 2012. In FY 2012, we are up to 160,000 filings! In a smaller study he found that 35% of provisionals do not include a single claim. Claims aren't required so this is not surprising, but it is surprising that 15% of the provisionals are a stack of presentation materials (e.g., PowerPoint?) since a provisional must enable the claimed invention. See my articles for an explanation:
The Benefits of Provisional Applications: Slip, Sliding Away
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
Whether or not we love or hate provisionals, we should expect the annual filing rates to rise. The AIA first inventor to file provisions contained in 35 USC 102 and effective on March 16, 2013 retain a one year grace period for inventor (and inventor derived) disclosures, but do not expressly shield a pre-filing offer for sale, a public use, or a publication that cannot be traced back to one of the inventors.
Harold Wegner says the scope of the AIA grace period is an open question. See Wegner, The 2011 Patent Law: "Leahy-Smith maintains the concept of a one year grace period for inventor's pre-filing activities but defines the grace period as limited to the applicant's 'disclosures' of the invention, making it an open question whether a secret commercialization or other 'public use' or 'on sale' events fall under the grace period because they may not constitute 'disclosures' of the invention."
For now it's safer to take a narrow view of the grace period. Thus, a provisional or a nonprovisional satisfying 35 USC 112 must be filed before an offer for sale or public use of the invention. If an examiner assumes a nonprovisional is entitled to the provisional filing date, a sketchy provisional may as well have a flag: "litigators here is a promising date range for prior art to invalidate a patent-- between the provisional and the nonprovisional filing dates" (i.e., when the technology is most developed and time-wise qualified). Many provisionals do not satisfy 35 USC 112 and nonprovisionals depending on them for priority may find the effective filing date is the nonprovisional filing date.
The fact more than half of provisionals are abandoned without the filing of a nonprovisional is consistent with the PTO's stated purpose: to give inventors one year to explore whether the invention has commercial prospects before filing a more expensive nonprovisional. The AIPLA Report of the Economic Survey 2011 says a typical charge for a provisional is $3,500, while the typical charge for a nonprovisional is $7,000 - $12,000. I see the cost savings, but given the price difference note it isn't realistic to expect both are equal to the task of satisfying 35 USC 112.
Copyright © 2012 Robert Moll. All rights reserved.
The Benefits of Provisional Applications: Slip, Sliding Away
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
Whether or not we love or hate provisionals, we should expect the annual filing rates to rise. The AIA first inventor to file provisions contained in 35 USC 102 and effective on March 16, 2013 retain a one year grace period for inventor (and inventor derived) disclosures, but do not expressly shield a pre-filing offer for sale, a public use, or a publication that cannot be traced back to one of the inventors.
Harold Wegner says the scope of the AIA grace period is an open question. See Wegner, The 2011 Patent Law: "Leahy-Smith maintains the concept of a one year grace period for inventor's pre-filing activities but defines the grace period as limited to the applicant's 'disclosures' of the invention, making it an open question whether a secret commercialization or other 'public use' or 'on sale' events fall under the grace period because they may not constitute 'disclosures' of the invention."
For now it's safer to take a narrow view of the grace period. Thus, a provisional or a nonprovisional satisfying 35 USC 112 must be filed before an offer for sale or public use of the invention. If an examiner assumes a nonprovisional is entitled to the provisional filing date, a sketchy provisional may as well have a flag: "litigators here is a promising date range for prior art to invalidate a patent-- between the provisional and the nonprovisional filing dates" (i.e., when the technology is most developed and time-wise qualified). Many provisionals do not satisfy 35 USC 112 and nonprovisionals depending on them for priority may find the effective filing date is the nonprovisional filing date.
The fact more than half of provisionals are abandoned without the filing of a nonprovisional is consistent with the PTO's stated purpose: to give inventors one year to explore whether the invention has commercial prospects before filing a more expensive nonprovisional. The AIPLA Report of the Economic Survey 2011 says a typical charge for a provisional is $3,500, while the typical charge for a nonprovisional is $7,000 - $12,000. I see the cost savings, but given the price difference note it isn't realistic to expect both are equal to the task of satisfying 35 USC 112.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, July 29, 2012
Software Patent Eligibility - Ending 40 Years of Controversy?
Today, one of the most controversial topics in US patent law is whether and when software related inventions are patent eligible.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.
Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).
Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.
Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.
Copyright © 2012 Robert Moll. All rights reserved.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.
Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).
Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.
Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.
Copyright © 2012 Robert Moll. All rights reserved.
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Thursday, July 26, 2012
America Invents Act - Proposed Rules and Examination Guidelines for First Inventor to File
Today, the USPTO published the proposed rules and examination guidelines for the first-to-file provision of the America Invents Act (AIA). This was a much debated change in U.S. patent law from first to invent. PDF copies of the PTO's proposed rules and examination guidelines and discussion on how this will impact novelty and obviousness can be obtained by clicking on the following links:
First-Inventor-to-File Proposed Rules
First-Inventor-to-File Proposed Examination Guidelines
Public comment on the proposed rules and guidelines are due no later than October 5, 2012, and the final rules will become effective on March 16, 2013.
Copyright © 2012 Robert Moll. All rights reserved.
First-Inventor-to-File Proposed Rules
First-Inventor-to-File Proposed Examination Guidelines
Public comment on the proposed rules and guidelines are due no later than October 5, 2012, and the final rules will become effective on March 16, 2013.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, June 23, 2012
A Guide to the Legislative History of the America Invents Act (AIA)
If you are interested in the legislative history of the America Invents Act (AIA), I recommend reading Joe Matal's A Guide to the Legislative History of the America Invents Act: Part I of II and Part II of II. Here are links to download Part I and Part II of the Guide. This article should be helpful to applicants for US patents and parties seeking to challenge issued US patents in the PTO.
As a brief summary, Part I describes the legislative history and origins of the first-to-file system and the modifications to 35 USC 102 (novelty and statutory bars), 35 USC 103 (obviousness), 35 USC 115 (inventor's declaration), 35 USC 122 (confidential status and publication of applications), and 35 USC 135 (derivation).
Part II describes the legislative history and origins of the new laws that apply to US patents. Thus, it describes the post-grant procedures, inter partes proceedings, supplemental examination, business method patent review, the new defense of prior commercial use, partial repeal of the best mode, virtual and false marking, advice of counsel, court jurisdiction, PTO funding, and rules for patent term extensions.
Although the article should prove useful, legislative history can be misleading. Indeed, the Supreme Court has warned against relying on legislative statements not anchored in the text of the statute. First, the statements may not pertain to a law that passed. It is also difficult to identify who drafted the law. Given we don't know who drafts the laws, how do we assign weight to the statements of various members of Congress? Also the legislative history of the AIA is lengthy as it stretches from 2005 to 2011. Nonetheless, organizing the legislative history of the AIA is a major undertaking so the article is a welcome start.
Copyright © 2012 Robert Moll. All rights reserved.
As a brief summary, Part I describes the legislative history and origins of the first-to-file system and the modifications to 35 USC 102 (novelty and statutory bars), 35 USC 103 (obviousness), 35 USC 115 (inventor's declaration), 35 USC 122 (confidential status and publication of applications), and 35 USC 135 (derivation).
Part II describes the legislative history and origins of the new laws that apply to US patents. Thus, it describes the post-grant procedures, inter partes proceedings, supplemental examination, business method patent review, the new defense of prior commercial use, partial repeal of the best mode, virtual and false marking, advice of counsel, court jurisdiction, PTO funding, and rules for patent term extensions.
Although the article should prove useful, legislative history can be misleading. Indeed, the Supreme Court has warned against relying on legislative statements not anchored in the text of the statute. First, the statements may not pertain to a law that passed. It is also difficult to identify who drafted the law. Given we don't know who drafts the laws, how do we assign weight to the statements of various members of Congress? Also the legislative history of the AIA is lengthy as it stretches from 2005 to 2011. Nonetheless, organizing the legislative history of the AIA is a major undertaking so the article is a welcome start.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, May 28, 2012
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
In Leader Technologies v. Facebook the Federal Circuit held all of the asserted claims of U.S. Patent No. 7,139,761 (the '761 patent) were invalid under 35 U.S.C. § 102(b), because Leader had offered for sale and publicly demonstrated software that embodied the claims prior to the critical date.
The founder of Leader Technologies (Leader) Mr. McKibben and Jeffrey Lamb conceived the invention in 1999. Then they developed software to build a commercial product referred to as Leader2Leader®, which they completed around 2002. Around that time, Leader offered for sale Leader2Leader® and demonstrated it to a number of companies. For example, in January 2002, Leader presented a white paper to the Wright Patterson Air Force Base and offered 20,000 software licenses to Leader2Leader®.The white paper described the functionality of Leader2Leader®. Leader stated it was commercializing the product for the government, commerce and education and the platform was operational with low user volumes. In November 2002, Mr. McKibben demonstrated the Leader2Leader® software to Boston Scientific, a demonstration that he described as flawless. By December 8, 2002, Leader had demonstrated and offered Leader2Leader® to a number of other companies, including American Express and The Limited.
In seeking US patent protection, Leader initially filed a 60-page provisional application on December 11, 2002 (pages 1-7 are in the style of a patent application, but the detailed description section is sketchy and pages 8-60 have only pseudo code rather than source code for a number of claim limitations. Query how much should this matter?) and a non-provisional application on December 10, 2003.
The Federal Circuit said the central issue was whether the Leader2Leader® product admittedly in public use and on sale prior to December 10, 2002 fell within the scope of the asserted claims, rendering them invalid under 35 U.S.C. § 102(b). Given how much it would have helped it is curious the Federal Circuit did not explain why the critical date was not December 11, 2001 based on the provisional application. To understand why you have to review the trial court's opinion: Leader Techs., Inc. v. Facebook, Inc., 770 F. Supp. 2d 686 (D. Del. 2011). The trial court found that substantial evidence supported the jury's ruling that the '761 patent was not entitled to the priority date of the provisional application. The court noted claims are entitled to the earlier filing date of the provisional application only if the prior application describes the invention in sufficient detail so that one skilled in the art can conclude that the inventor invented the claimed invention as of the filing date sought.
As the court did not believe this was the case stating:
Leader contended that its expert, Dr. Herbsleb, demonstrated that each element of the asserted claims was supported by the provisional application. However, Dr. Herbsleb also admitted at trial that the source code in the provisional application on which he relied to support the presence of numerous claim elements was only a "pseudo code." According to Dr. Herbsleb, "pseudo code" is not a real programming language and cannot function if compiled into an executable program. Leader contends that one of Dr. Herbsleb's students, Dr. Cataldo, built an implementation of an embodiment of the '761 patent based on the provisional application; however, Dr. Herbsleb testified this embodiment did not actually work and, in any event, it did not rely on the code disclosed in the provisional application because that code, again, was incomplete pseudo code. Moreover, the co-inventor of the '761 patent, Jeff Lamb, testified that certain elements were missing from the provisional application, such as the tracking movement of users and the associating metadata with user created content elements. Accordingly, the Court concludes that the evidence was sufficient to support the jury's conclusion that the asserted claims of the '761 patent are not entitled to the priority date of the provisional application. Consequently, the appropriate critical date for purposes of applying the on sale bar and public use bar is December 10, 2002, which is one year prior to the filing date of the '761 patent.
It may sound like another typical case where someone lost its US patent because the invention was commercialized too early, but this is not why the Leader Technologies v. Facebook is so instructive. Instead, it tells us the specification of a provisional application must support each claim that is subsequently submitted with the nonprovisional application to maintain the provisional filing date. Finally, a provisional specification may not support the claims which may not be discovered until invalidating commercialization has occurred.
Copyright © 2012 Robert Moll. All rights reserved.
The founder of Leader Technologies (Leader) Mr. McKibben and Jeffrey Lamb conceived the invention in 1999. Then they developed software to build a commercial product referred to as Leader2Leader®, which they completed around 2002. Around that time, Leader offered for sale Leader2Leader® and demonstrated it to a number of companies. For example, in January 2002, Leader presented a white paper to the Wright Patterson Air Force Base and offered 20,000 software licenses to Leader2Leader®.The white paper described the functionality of Leader2Leader®. Leader stated it was commercializing the product for the government, commerce and education and the platform was operational with low user volumes. In November 2002, Mr. McKibben demonstrated the Leader2Leader® software to Boston Scientific, a demonstration that he described as flawless. By December 8, 2002, Leader had demonstrated and offered Leader2Leader® to a number of other companies, including American Express and The Limited.
In seeking US patent protection, Leader initially filed a 60-page provisional application on December 11, 2002 (pages 1-7 are in the style of a patent application, but the detailed description section is sketchy and pages 8-60 have only pseudo code rather than source code for a number of claim limitations. Query how much should this matter?) and a non-provisional application on December 10, 2003.
The Federal Circuit said the central issue was whether the Leader2Leader® product admittedly in public use and on sale prior to December 10, 2002 fell within the scope of the asserted claims, rendering them invalid under 35 U.S.C. § 102(b). Given how much it would have helped it is curious the Federal Circuit did not explain why the critical date was not December 11, 2001 based on the provisional application. To understand why you have to review the trial court's opinion: Leader Techs., Inc. v. Facebook, Inc., 770 F. Supp. 2d 686 (D. Del. 2011). The trial court found that substantial evidence supported the jury's ruling that the '761 patent was not entitled to the priority date of the provisional application. The court noted claims are entitled to the earlier filing date of the provisional application only if the prior application describes the invention in sufficient detail so that one skilled in the art can conclude that the inventor invented the claimed invention as of the filing date sought.
As the court did not believe this was the case stating:
Leader contended that its expert, Dr. Herbsleb, demonstrated that each element of the asserted claims was supported by the provisional application. However, Dr. Herbsleb also admitted at trial that the source code in the provisional application on which he relied to support the presence of numerous claim elements was only a "pseudo code." According to Dr. Herbsleb, "pseudo code" is not a real programming language and cannot function if compiled into an executable program. Leader contends that one of Dr. Herbsleb's students, Dr. Cataldo, built an implementation of an embodiment of the '761 patent based on the provisional application; however, Dr. Herbsleb testified this embodiment did not actually work and, in any event, it did not rely on the code disclosed in the provisional application because that code, again, was incomplete pseudo code. Moreover, the co-inventor of the '761 patent, Jeff Lamb, testified that certain elements were missing from the provisional application, such as the tracking movement of users and the associating metadata with user created content elements. Accordingly, the Court concludes that the evidence was sufficient to support the jury's conclusion that the asserted claims of the '761 patent are not entitled to the priority date of the provisional application. Consequently, the appropriate critical date for purposes of applying the on sale bar and public use bar is December 10, 2002, which is one year prior to the filing date of the '761 patent.
It may sound like another typical case where someone lost its US patent because the invention was commercialized too early, but this is not why the Leader Technologies v. Facebook is so instructive. Instead, it tells us the specification of a provisional application must support each claim that is subsequently submitted with the nonprovisional application to maintain the provisional filing date. Finally, a provisional specification may not support the claims which may not be discovered until invalidating commercialization has occurred.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, May 21, 2012
WIldTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
The Supreme Court is pushing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012)(Mayo) as the standard to use in assessing whether software/Internet related subject matter is eligible for patent protection.
In WildTangent v. Ultramercial, the Supreme Court recently wrote: The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo.
The question presented? Whether, or in what circumstances, a patent's general and indeterminate references to 'over the Internet' or at 'an Internet website' are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 USC 101? Supreme Court Rule 14 requires the questions presented for review should not be argumentative, but apparently it didn't matter.
In Mayo, the Supreme Court rejected a medical diagnostic patent as encompassing an unpatentable law of nature once you remove the conventional steps. Justice Breyer's analysis dissects the claim: (1) to determine what is conventional in the claim; (2) to subtract the conventional part from the claim; and (3) to determine if the remaining part of the claim sets forth a law of nature (i.e., scientific principle). If the answer is yes to (3), the claim is ineligible for a patent according to Justice Breyer, since judicial law says you can't patent a law of nature. However, this conflates the patent eligibility of 35 USC 101 with the rejected point of novelty test.
The Federal Circuit had held US Patent No. 7,346,545 (the '545 patent) patentable subject matter. It relates to a particular method of giving a copyrighted product to a consumer for watching an advertisement over the Internet.
Claim 1 is representative for this analysis:
1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:
first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;
a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;
a third step of providing the media product for sale at an Internet website;
a fourth step of restricting general public access to said media product;
a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;
a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;
an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;
a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;
a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
an eleventh step of receiving payment from the sponsor of the sponsor message displayed.
Frankly, Judge Rader understands 35 USC 101 and correctly held claim 1 patentable, since it requires a computer executing a software program with considerable complexity. This is not an abstract idea. It may have not been so great, however, to say the '545 patent discloses a practical application of an idea, because it sounds like State Street rather than In re Bilski. Anyway, now that the Federal Circuit has to deal with the GVR, it will be reconsidering whether or not claim 1 is patentable subject matter under 35 USC 101. At least the Federal Circuit refused the temptation to talk about the gist of the '545 patent being an idea that advertising can be used as a form of currency. Too often the press, the courts, and the patent community give a pithy summary of the claim that sticks to everyone's mind and never get back to the actual claim language, which impacts the legal analysis.
35 USC 101 does not support the Supreme Court's willingness to jump into the long standing software patent debate (Congress had an opportunity to legislate software patents out of existence in the recently passed America Invents Act, but remained silent), and require the Federal Circuit instead apply this new Mayo test that dissects a patent claim, discards whatever a court thinks is conventional then determines subject matter eligibility with whatever remains in the claim. Instead, Mayo's point of novelty patent eligibility test merely helps the Supreme Court implement its desire to rein in patents.
Copyright © 2012 Robert Moll. All rights reserved.
In WildTangent v. Ultramercial, the Supreme Court recently wrote: The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo.
The question presented? Whether, or in what circumstances, a patent's general and indeterminate references to 'over the Internet' or at 'an Internet website' are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 USC 101? Supreme Court Rule 14 requires the questions presented for review should not be argumentative, but apparently it didn't matter.
In Mayo, the Supreme Court rejected a medical diagnostic patent as encompassing an unpatentable law of nature once you remove the conventional steps. Justice Breyer's analysis dissects the claim: (1) to determine what is conventional in the claim; (2) to subtract the conventional part from the claim; and (3) to determine if the remaining part of the claim sets forth a law of nature (i.e., scientific principle). If the answer is yes to (3), the claim is ineligible for a patent according to Justice Breyer, since judicial law says you can't patent a law of nature. However, this conflates the patent eligibility of 35 USC 101 with the rejected point of novelty test.
The Federal Circuit had held US Patent No. 7,346,545 (the '545 patent) patentable subject matter. It relates to a particular method of giving a copyrighted product to a consumer for watching an advertisement over the Internet.
Claim 1 is representative for this analysis:
1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:
first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;
a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;
a third step of providing the media product for sale at an Internet website;
a fourth step of restricting general public access to said media product;
a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;
a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;
an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;
a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;
a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
an eleventh step of receiving payment from the sponsor of the sponsor message displayed.
Frankly, Judge Rader understands 35 USC 101 and correctly held claim 1 patentable, since it requires a computer executing a software program with considerable complexity. This is not an abstract idea. It may have not been so great, however, to say the '545 patent discloses a practical application of an idea, because it sounds like State Street rather than In re Bilski. Anyway, now that the Federal Circuit has to deal with the GVR, it will be reconsidering whether or not claim 1 is patentable subject matter under 35 USC 101. At least the Federal Circuit refused the temptation to talk about the gist of the '545 patent being an idea that advertising can be used as a form of currency. Too often the press, the courts, and the patent community give a pithy summary of the claim that sticks to everyone's mind and never get back to the actual claim language, which impacts the legal analysis.
35 USC 101 does not support the Supreme Court's willingness to jump into the long standing software patent debate (Congress had an opportunity to legislate software patents out of existence in the recently passed America Invents Act, but remained silent), and require the Federal Circuit instead apply this new Mayo test that dissects a patent claim, discards whatever a court thinks is conventional then determines subject matter eligibility with whatever remains in the claim. Instead, Mayo's point of novelty patent eligibility test merely helps the Supreme Court implement its desire to rein in patents.
Copyright © 2012 Robert Moll. All rights reserved.
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