Patents – Page 7 – IP Law Watch

Don’t B Late; Federal Circuit Interprets the B Delay Calculation

Oct 09 2019

Mayo Foundation v. Iancu reads more like an arithmetic problem than a Federal Circuit decision. The reason is the case involves the Patent Term Adjustment Act (PTA) (see 35 U.S.C. § 154(b)). PTA determinations require calculating how many days of delay, from the effective filing date to the Notice of Allowance, are attributable to the applicant and how many to the PTO. Under one PTA scenario, the applicant is entitled to an adjusted term, recovering every day the application is pending beyond three years past the effective filing date for the balance of delay attributable to the PTO. This is called a “B Delay” (§154(b)1)(B)). However, the B Delay is subject to several exclusions. The disputed exclusion in Mayo concerned a Request for Continued Examination (RCE) of the application, which Mayo filed before the PTO declared an interference.

IPR of pre-AIA patent not an unconstitutional taking

Jul 31 2019

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

Towards a Uniform Theory of Patent Law: The Federal Circuit Declines to Create Design-Patent-Specific Rules for Exhaustion or Repair

Jul 26 2019

On Tuesday July 23, 2019, the Federal Circuit declined to fashion design-patent-specific doctrines of exhaustion or repair. Automotive Body Parts Ass’n v. Ford Global Techs., LLC, Case No. 2018-1613, slip op. at 2 (Fed. Cir. July 23, 2019).

Instead, the court reemphasized that the same rules apply to utility patents and to design patents unless otherwise provided by law. Id. Also concluding that “aesthetic appeal” is not functional, the court affirmed the district court’s grant of summary judgment in Ford’s favor. Id. The decision is notable for its widening of the gap between trade dress and design patents and for its reaffirmation of the principle that design patents and utility patents should, whenever possible, receive identical treatment under the law.

New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations

Jul 24 2019

On Tuesday July 2, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on Saturday August 3, 2019.

The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.

New Intellectual Property (Dispute Resolution) Bill In Singapore

Jul 18 2019

On 8 July 2019, the Intellectual Property (Dispute Resolution) Bill (Bill) was tabled in Parliament, after a public consultation on the draft Bill that was conducted in March 2019 by the Singapore Ministry of Law.

The Bill aims to ensure that the Singapore Intellectual Property (IP) regime continues to support innovative activities in Singapore and positions Singapore as a choice of venue for international IP dispute resolution.

St. Regis Mohawk Tribe petition for centiorari denied

Apr 16 2019

On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe.

US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR

Mar 03 2019

Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review.[1] Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.

Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay:
1) whether the stay will unduly prejudice the non-moving party;
2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and
3) whether the stay will likely result in simplifying the case before the court.

After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative[] to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.

USPTO Clarifies Alice/Mayo Step 2A with New Patent Subject Matter Eligibility Guidance

Jan 09 2019

For the last several years, a major part of prosecuting software-related patents at the U.S. Patent and Trademark Office (“USPTO”) has been dealing with theUSPTO’s inconsistent interpretation of patent subject-matter eligibility issues under 35 U.S.C. § 101 arising from the Supreme Court’s decisions in Alice Corporation Proprietary Ltd. v. CLS Bank International[1]and Mayo Collaborative Services. v.Prometheus Labs.[2] However, new guidance from the USPTO concerning the Alice/Mayo test regarding patent subject-matter eligibility was released for public comment on January 7, 2019. This guidance attempts to provide more examination consistency for entities prosecuting software-related patents. We describe the primary features of the new guidance below and offer insights into what this means for companies pursuing such patents at the USPTO going forward.

IP Exemptions to Competition Laws to be Removed: Restrictions in Licences to be Subject to Competition and Consumer Act 2010

Nov 27 2018

The Australian Federal Parliament has been debating the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill), which seeks to repeal section 51(3) of the Competition and Consumer Act 2010 (CCA).
The Bill is expected to pass during this session of Parliament (by 6 December 2018). Section 51(3) of the CCA presently provides an exemption from most of the competition law prohibitions for certain types of transactions involving intellectual property (IP). The current exemption covers conditions in licences or assignments of IP rights in patents, registered designs, copyright, trade marks and circuit layouts.

Once passed, commercial transactions involving IP rights will be subject to the same competition laws as all other transactions involving other types of property and assets. The repeal will apply retrospectively but IP owners will have six months to review existing licences and agreements. It is important for brand owners to consider their key licensing arrangements and the possible competitive implications of those arrangements.

K&L Gates releases 2017/18 Patents Year in Review – Second Edition

Nov 07 2018

2017/18 was an intriguing 12 months in the Australian patent landscape, with Courts being called upon to deliver decisions in relation to a number of issues that have not previously been judicially considered. The judgments delivered in this period have dealt with the patentability of methods claims deploying genetic information, patent term extensions for “Swiss-style” claims and whether applying to list a product on the Pharmaceutical Benefits Scheme constitutes an act of patent infringement.

Category:Patents