Category:Patents

1
Designing aftermarket auto parts: exhausting design patent rights
2
USPTO publishes updated Subject Matter Eligibility in a new revision of the Manual of Patent Examining Procedure (MPEP)
3
Methods of genetic testing still patentable (Meat & Livestock Australia v Cargill decision)
4
Pushing the limits of Australia’s grace period
5
Recycling or Remaking – Exhaustion of Patent Rights
6
Australian Patent Office considers plausibility in a test for sufficiency
7
Jury awards profits for infringing sales in post-Samsung design patent case
8
Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings
9
Innovation patents as strategic tools for clients (Business Bytes video)
10
Significant changes ahead for Australian patents

Designing aftermarket auto parts: exhausting design patent rights

The Automotive Body Parts Association (ABPA) brought a declaratory judgement action against Ford Global Technologies (Ford), the holding company for much of Ford Motor Company’s patent portfolio.  ABPA argued that design patents are inappropriate for auto-body parts and, in the alternative, that Ford’s design patents were unenforceable against the members of ABPA because the patent rights had exhausted upon the first sale of the vehicle. (Automotive Body Parts Association v. Ford Global Technologies, LLC, Case No. 2:15-cv-10137 (E.D. MI Feb. 20, 2018).)  The Court held that Ford’s designs for their vehicle components were indeed eligible for patent protection and further that the design patent rights were not exhausted when the vehicle was first sold.  Id. at 2.

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USPTO publishes updated Subject Matter Eligibility in a new revision of the Manual of Patent Examining Procedure (MPEP)

On January 30, 2018, the USPTO quietly published a new revision (Revision 08.2017)[1] to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP).  The revision includes amendments to a number of chapters, including notably the guidance regarding subject matter eligibility under 35 U.S.C. § 101.  This includes changes in Chapter 2105 for living subject matter eligibility and Chapter 2106 for products of nature and software eligibility.  The revision incorporates the contents of previous subject matter eligibility guidance documents that were provided on the “Subject Matter Eligibility” webpage[2] of the USPTO.  Although the MPEP does not have the force of law, unlike the CFR, patent examiners generally tend to follow the guidance provided in the MPEP.  Accordingly, patent applicants dealing with Section 101 rejections should generally be starting with these revised MPEP chambers as a basis when crafting arguments to overcome such rejections.

Revised Chapter 2106 discusses the two-part Alice test[3] including guidance regarding whether an invention falls under one of the statutory categories and whether an invention is directed to a judicial exception for an abstract idea.  Of particular note, chapter 2106.05 provides expansive guidance for determining whether a claim amounts to something “significantly more” than an abstract idea.  These “significantly more” arguments are often the best avenue for overcoming Section 101 rejections.

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Methods of genetic testing still patentable (Meat & Livestock Australia v Cargill decision)

On Friday 9 February, the Federal Court handed down its highly anticipated decision in Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51. The matter has attracted substantial media attention in Australia and generated debate about whether patents claiming methods which use genetic information should be allowed.

The principal claims of the application in suit involve method claims for identifying a trait of a bovine subject from a nucleic acid sample. In particular, the invention made use of single nucleotide polymorphisms (SNPs).

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Pushing the limits of Australia’s grace period

Australia’s “grace period” provisions allow a patent applicant to disclose or use their invention within 12 months before filing a complete patent application in Australia.  In an interesting interpretation of those provisions, the Australian Patent Office has found that the grace period applies to whole of contents citations published after a patent application has been filed.

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Recycling or Remaking – Exhaustion of Patent Rights

In the case Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 (29 November 2017), Seiko sold various Epson inkjet printer cartridges for use with its printers.  Ninestar collected used cartridges in Malaysia, made modifications to facilitate their reuse, and refilled them with ink.  Calidad purchased the cartridges in Malaysia from Ninestar, then imported and sold them in Australia.

Seiko sued Calidad for infringement of two patents for printer cartridges.  Calidad defended the claim on the basis that an implied licence ran with the cartridges, alternatively Seiko’s patent rights had been exhausted when Seiko first put the cartridges on the market.

Ninestar modified some cartridges more than others in order to make them suitable for re-use.  Justice Burley found that the defence was available in some cases but not others.  It was a question of degree, but the Judge considered that in some cases Ninestar so materially altered the cartridges that “the licence implied by a sale without restriction of the original Epson cartridge does not apply”.

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Australian Patent Office considers plausibility in a test for sufficiency

The emergence of “plausibility” as a test for inventive step, sufficiency and industrial applicability represents a significant legal development in Europe in recent years.  Now the concept of plausibility has reached Australian shores, with the Australian Patent Office applying it in a test for sufficiency.

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Jury awards profits for infringing sales in post-Samsung design patent case

On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear.  Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.

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Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings

On October 4, 2017, the Federal Circuit held en banc that the proper interpretation of 35 U.S.C. 316(d) and (e) requires the Petitioner in an inter partes review (IPR) to prove all propositions of unpatentability, including for amended claims.  Aqua Prods., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017).  The en banc Court further determined that the PTAB must consider the entirety of the record when assessing the patentability of amended claims under 318(a), not merely the face of a motion to amend.

The Aqua case resulted in five opinions totaling 148 pages, each presenting views on judgment and underlying rationale, ultimately leading to a narrowly tailored holding.  In the decision, the Federal Circuit made clear that the burden of persuasion of patentability does not rest with the Patent Owner; instead, it is left to the Petitioner to establish that any proposed amended claims are not patentable.

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Significant changes ahead for Australian patents

The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission.  These include:

  • Amending the inventive step threshold to reflect that of the European Patent Office
  • Phasing out innovation patents
  • Requiring applicants to identify an invention’s technical features in their claims, and
  • Adding an objects clause to the Patents Act.

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