Transcript Slide 1

Imminent and recent changes in
USPTO policy and US patent practice:
A proposed response for inventors
and investors
Daniel M. Goldstein, Ph.D.
Sanford T. Colb & Co.
[email protected]
This presentation includes many general thoughts about the
topics discussed, and is not intended to be legal advice.
Source: USPTO.gov
US Patent Allowance Rate Increase
Chart From: PatentlyO May 11, 2010
Weakening of KSR Holding
• KSR v. Teleflex(2007) invalidated the TeachingSuggestion-Motivation test as the sole test for nonobviousness.
• Recent case-law still using motivation as a standard for
determining obviousness in the unpredictable arts.
• Example: Procter & Gamble Co. v. Teva Pharmaceuticals
USA, May 2009 (Court of Appeals for the Federal Circuit)
“A party seeking to invalidate a patent based on obviousness must
demonstrate by clear and convincing evidence that a skilled artisan
would have been motivated to combine the teachings of the prior
art references to achieve the claimed invention …“ Emphasis Added.
USPTO ACCELERATION PROGRAMS:
GREEN TECHNOLOGY AND PATENT PROSECUTION HIGHWAY
Green Technology
Categories of technology that can receive accelerated
examination:
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3.
4.
Energy Conservation
Development of Renewable Resources
Greenhouse Gas Emission Reduction
Materially Enhances Quality of the Environment
Patent Prosecution Highway
• National patent offices share information relating
to the examination process with each other
• Office of Second Filing advances out of turn an
application that has been allowed in an Office of
First Filing.
• To encourage use, USPTO eliminated fee for use
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Patent Prosecution Highway tidbits
Substantive examination of second
application must not have begun yet
National phases of PCT’s not currently eligible
US: average number of office actions before
allowance drops from 2.7 to 1.7 for
“Highway” cases.
US: 93% allowance rate, versus 44 percent for
non-PPH cases.
US1EP2 due to (1) US allows claims faster
and (2) US allows claims of broader scope
Other “Special Status” Application
Areas Include:
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Superconductivity Technologies
Inventions Relation to HIV/AIDS and Cancer
Inventions for Countering Terrorism
Biotechnology Applications from Small Entities
Inventions Relating to Recombinant DNA
Infringement
Applicant’s Health or Age
Software and Business Methods
In Re: Bilski (Oral Argument heard November, 2009)
In re Bilski:
• Machine or
Transformation Test
versus
• Useful, Concrete, and
Tangible Result
DNA Patentability
Association for Molecular Pathology v. USPTO, Myriad Genetics, et al. (April, 2010).
District Court for the Southern District Of New York
• Myriad Genetics patents on
BRCA1 and BRCA2 invalidated by
District Court
• Standard court used: Is there a
transformation? Does the
isolated DNA possess markedly
different characteristics from the
same DNA in vivo?
• Result: DNA claims without
transformative step are invalid
• Stay tuned for appeal...
False Marking… An Expensive Proposition
“Whoever marks upon… or uses in advertising in
connection with any unpatented article the word
"patent" or any word or number importing the same
is patented, for the purpose of deceiving the public…
Shall be fined not more than $500 for every such
offense.” 35 U.S.C. § 292.
• $500 is per item marked , not per decision to
mark (Forest Group vs. Bon Tool, December 2009 )
• Anyone may bring a suit on behalf of the
federal government, and receive half of the
award.
• Result: Many opportunistic suits.
Patent Term Adjustments (PTA)
Wyeth v. Kappos, January 2010
• PTO has been incorrectly
calculating patent term
adjustments. The PTA for a large
number of issued patents is
therefore incorrect.
• Wyeth court standard often yields more
PTA days.
• Consider requesting a recalculation of your
patent term adjustment in view of Wyeth,
if your patent issued between December,
2009 and March 2, 2010.
INFRINGEMENT
• Different types of
infringement:
– Direct
– Indirect
(Contributory and
Induced)
• To prove induced
infringement, must
show party had
knowledge of the
patent. (DSU Med Corp v.
JMS, 2006)
What constitutes knowledge?
SEB S.A. v. Montgomery Ward & Co, February 2010
– Defendant copied the “cool touch” features of
plaintiff’s deep fryer. Did not check for a patent.
– Hired an attorney to do a right-to-use study. Did
not tell him they had copied the design.
– Jury found Defendant liable for infringement and
inducement to infringe.
– Defendant appealed inducement finding on basis
it had no knowledge of SEB’s patent.
United States Court of Appeals:
Deliberate Indifference = Induced Infringement
• A showing of deliberate indifference to whether
one is infringing a patent satisfies the DSU
knowledge requirement. (SEB S.A. v. Montgomery Ward & Co,
February 2010)
Numbers in Claims are (sometimes) OK
• Numbers are limiting and therefore usually
avoided
• Numbers could be helpful to narrow claim
to avoid prior art
Divisional Applications
• NEW: 2 year filing deadline in Europe
• NO SECOND CHANCES: No right to
amend claims of a divisional application
between filing and searching
Thanks to Elana Krupka
Daniel M. Goldstein, PhD
Sanford T. Colb & Co.
[email protected]
Tel: (050) 827 4677