The Supreme Court in Alice, Mayo, Myriad, and Bilski -- four cases in just four years -- dramatically redefined the issue of subject matter eligibility in patent law. That is, the initial threshold question of whether an invention is eligible for obtaining patent protection in the first place. The broad strokes of these cases left much to be desired, particularly and most recently in Alice, in which the Supreme Court created a vague 2-step analysis in determining when a (software or business method) invention is merely an "abstract idea", and therefore not patent eligible. Understandably, the US PTO has encountered difficulty in applying the Alice analysis following the case, but has strived to offer some additional clarity in its latest July 2015 update to its prior 2014 Interim Guidance on Patent Subject Matter Eligibility.
In a 6-2 decision handed down in Commil v. Cisco, the Supreme Court has held that a defendant's good faith belief that a patent is invalid does not serve as a defense to charges of inducing infringement of that patent, overturning the previous U.S. Court of Appeals for the Federal Circuit (CAFC) decision.
The Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs (Hague Agreement) will go into effect for the United States next Wednesday, May 13, 2015. Under the Geneva Act, it will be possible for U.S. applicants to file a single international design application either with the World Intellectual Property Organization (WIPO) or through the USPTO as an office of indirect filing to obtain protection in a number of countries that are party to the Hague Agreement. In addition, applicants filing international design applications on or after May 13, 2015 will be able to designate the United States for design protection. U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term from issuance. Learn more at http://www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs
This past Monday the Senate officially confirmed Michelle Lee as the new director of the US PTO. Director Lee is the first woman director of the agency, and previously served as Google's chief patent counsel. Since beginning her tenure at the US PTO, Director Lee has set her primary focus on improving patent quality in the US patent system. In line with this patent quality initiative, the US PTO has set forth six (6) proposals to serve as the focal points for the upcoming Patent Quality Summit on March 25-26, 2015.
The USPTO today issued an updated and comprehensive guideline regarding patent subject matter eligibility in view of the recent Supreme Court decisions in Alice Corp, Myriad, and Mayo. This "2014 Interim Guidance on Patent Subject Matter Eligibility" was published today, December 16, 2014.
The Supreme Court today granted certiorari in a case asking whether its prior decision in Brulotte v. Thys Co., 379 U.S. 29 (1964) should be overruled, which previously held that a licensee's obligations are absolved after the expiration of a patent, and that royalty payments for a patent cannot continue beyond the life of that patent.
China's rise in patent dominance, eclipsing filings of Japan and the U.S. has long been predicted. According to a recent report published by Thomson Reuters, by 2011, China had passed the patent output of both countries, and by 2013, China's annual application filings nearly doubled those of of both countries. This recent push is driven by a five-year government plan in which the country has set out to reach two million applications for patents for inventions, utility models, and designs by 2015.
In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case's more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of "abstract ideas".
The Supreme Court today ruled unanimously that the burden of proving patent infringement rests with the patent holder, even in cases where the parties had agreed upon a licensing deal in the past. The case at issue, Medtronic, Inc. v. Mirowski Family Ventures, involved implantable heart stimulation devices (pacemakers) which were licensed by Mirowski to Medtronic in 1991. In late 2007, Medtronic filed an action with the U.S. District Court of Delaware seeking declaratory relief that its new line of devices did not infringe upon the Mirowski patents. The trial court entered a judgment of non-infringement in Medtronic's favor, which was reversed in 2012 by the Federal Circuit, based on a holding that the trial court did not properly allocate the burden of proof in the initial proceedings.
The Supreme Court has granted cert on several new cases today including four relating to intellectual property issues, including a copyright case, a trademark case, as well as two patent cases. Lyle Denniston of the Scotus Blog reports that the new cases will probably be argued in April, the last sitting of the term.
The Supreme Court has granted cert on two patent cases related to fee shifting under 35 U.S.C. § 285, including Highmark Inc. and Octane Fitness. A recently issued Federal Circuit decision, in Kilopass v. Sidense Corp., may shed some light in how the Supremes might rule on the issue later this year, in which both Judge O'Malley and Chief Judge Rader issued opinions calling for the expansion of exceptional-case attorney fees.
The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No. 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under 35 USC § 101. This case will provide a new test for the most basic provision of U.S. patent laws -- whether an invention is patent eligibile -- a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.
A number of patent fee changes will go in effect January 1, 2014. Notably, the issue fees of all applications will decrease dramatically. Small and micro entity fees will now be available for a number of PCT fees. The assignment recordation fee has also been eliminated if filing electronically.
Four months after the CLS Bank v. Alice opinion, the Federal Circuit continues to struggle with subject matter eligibility of computer-related inventions under § 101 of the U.S. patent laws. In Accenture Global Services, GMBH v. Guidewire Software, Inc. (Fed Cir. 2013), Chief Judge Rader and Judge Lourie continue their disparate dialog that began in CLS Bank Int'l v. Alice Corp, and continued in Ultramercial Inc. v. Hulu LLC. However, contrary to the result in Ultramercial, here the party arguing against eligibility of computer programs won out.