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IP Bulletin, November 2010

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11.16.2010 | Legal Update

USPTO’s Recently Updated Guidelines Pertaining to Obviousness Provide Useful Tools for Practitioners
The United States Patent and Trademark Office (USPTO) recently published updated guidelines for the evaluation of obviousness in light of Federal Circuit decisions issued since the Supreme Court’s 2007 landmark decision in KSR Int'l Co. v. Teleflex Inc. Unlike the 2007 KSR Guidelines, which substantially increased the examiners’ arsenal by supplementing the prior teaching-suggestion-motivation (TSM) test with six additional rationales for rejecting claims as obvious, the 2010 KSR Guidelines Update provides a more balanced picture of the obviousness inquiry that will assist both practitioners and examiners in arguing obviousness. More particularly, the 2010 KSR Guidelines Update provides a number of examples from actual cases—cases that found claims obvious and cases that found claims nonobvious—that examiners and practitioners can use to help support their positions. Although arguing nonobviousness remains more challenging than under the previous TSM test, the 2010 KSR Guidelines Update provides practitioners new tools to wield in navigating the post-KSR obviousness landscape.

For further discussion about the 2010 KSR Guidelines Update, and related practical tips, click here.

Supreme Court Grants Cert on Two IP Cases
The Supreme Court recently granted writs of certiorari to two intellectual property cases that could have a lasting impact on patent applicants, practitioners, and universities. In a case related to induced infringement, Global-Tech Appliances Inc. and Pentalpha Enters. Ltd. v. SEB SA, the Supreme Court will determine whether to overturn the ruling of the Federal Circuit that a potential infringer can have the necessary intent to commit induced infringement by acting with “deliberate indifference of a known risk.” As detailed in our March 15, 2010 issue, the Federal Circuit found Pentalpha knew of and disregarded an overt risk by copying everything but the cosmetics of the SEB deep fryer, and thus it had the necessary intent to induce infringement even though Pentalpha was not aware of the patent itself. In a case related to patent ownership stemming from the Bayh-Dole Act, Bd. of Trustees of Leland Stanford Jr. Univ. v. Roche Molecular Sys., the Supreme Court will determine the ownership rights of universities in inventions derived from federally sponsored research. Due to the lack of a proper assignment between Stanford and its faculty member, the faculty member assigned the rights in his invention to a third party company. The Federal Circuit ruled that Stanford did not have superior ownership rights over the third party company merely because the related research was federally funded. We will be keeping our eye on both of these cases and anticipate discussing the ramifications of the Supreme Court rulings in both cases on your business and practices. Stay tuned.

For Nutter’s analysis of the Federal Circuit decision in Global-Tech Appliances Inc. and Pentalpha Enters. Ltd. v. SEB SA from its March 15, 2010 issue of the IP Bulletin, click here.

To read the Federal Circuit decision in Global-Tech Appliances Inc. and Pentalpha Enters. Ltd. v. SEB SA, click here.

To read the Federal Circuit decision in Bd. of Trustees of Leland Stanford Jr. Univ. v. Roche Molecular Sys., click here.

Does the Evolution of a Design Mark Affect Your Trademark Rights?
Beware trademark creep! “Trademark creep” is a catchy term for one of the dangers that stalks any trademark (or service mark) that consists of only a design (as opposed to words) or of both words(s) and design elements. For some immutable reason, the design elements of a trademark tend to evolve over time, and “creep” refers to the situation where such change is unintentional or unnoticed or both. But do these changes cause a trademark registrant to lose his or her rights in the registered mark?

To learn the answer to this question, and to learn practical tips about ways trademark owners can protect their rights in instances of “trademark creep,” click here.

The USPTO and Peer-to-Patent Announce Expanded Peer Review Program
The USPTO recently announced that it will be cooperating with New York Law School to expand its Peer-to-Patent review program. The Peer-to-Patent program seeks to improve the quality of issued patents by providing an opportunity for volunteer experts in the applicable field to review new applications, suggest prior art, and provide comments on points of novelty in view of the art. The review process occurs online using social media software that allows and encourages discussion among the volunteers. Once the review process is complete, Peer-to-Patent applications are moved to the head of an examiner’s queue, along with the ten highest rated prior art submissions from the Peer-to-Patent volunteers. The written comments and discussion provided by the volunteers during the review process are not sent to the examiner, but he or she is able to read the comments on the Peer-to-Patent website during examination of the application. The expanded program will accept an additional 1000 new applications for peer review and will include additional art units.

Additional information about the Peer-to-Patent program can be found at the following link.

WIPO World Intellectual Property Indicators Report Indicates a Global Rebound in IP Activity and Continued Growth in China
The World Intellectual Property Organization (WIPO) recently published its second annual World Intellectual Property Indicators report, providing an in-depth look at trends in IP activity through an analysis of worldwide filings for patents, utility models, trademarks, and industrial designs. Though the report principally focuses on the impact of the 2008 worldwide economic crisis on R&D investment, innovation, and the acquisition of IP rights, preliminary data from 2009 and 2010 indicates a global rebound in IP activity. The report also provides valuable information related to the emergence of new innovation centers, particularly in Asia and middle-income countries. Notably, the continued growth of IP activity in China throughout the worldwide economic downturn indicates that China is becoming a major player in the intellectual property market.

For further discussion about the 2010 World Intellectual Property Indicators Report, and related practical tips, click here.

USPTO Extends Green Technology Pilot Program
In our January 22, 2010 issue, we reported on the USPTO’s new Green Technology Pilot Program, which allows an applicant to petition for his or her application to be examined more quickly if the application pertains to the development of a renewable energy source or energy conservation, or the reduction of green house gas emissions. On November 10, 2010, the USPTO announced that the program is being extended through December 31, 2011. Further, the requirement that an application have a filing date earlier than December 8, 2009, has been removed. The application can now have any filing date, and in fact, a petition can be filed simultaneously with a new patent application. Since the pilot program began in December 2009, a total of 790 petitions have been granted and already 94 patents have been issued. The average time between the approval of a petition and the first action on the merits is a mere 49 days! There is no fee required for participating in the program, but the USPTO is maintaining a cap of 3000 grantable petitions. Applicants should review their portfolios and determine if any applications awaiting a first Office Action, or any future filings, are ripe for this expedited process.

For more details on the extension of the Green Technology Pilot Program, click here.

For additional information on the Green Technology Pilot Program, click here.

The Federal Circuit Weighs in on Redefining Claim Terms, Prior Inventorship, Standing as it Relates to ANDA Filings, and Shortcuts for Proving Infringement
In recent weeks, the Court of Appeals for the Federal Circuit has decided a number of noteworthy patent cases. AstraZeneca LP v. Apotex, Inc. reaffirmed that claim terms can be redefined in the specification implicitly, and held that printed pharmaceutical labels are of no patentable significance. Solvay S.A. v. Honeywell International, Inc. clarified the meaning of “prior inventor” under §102(g) and Teva Pharmaceuticals USA, Inc. v. Eisai Co., Ltd., established that subsequent paragraph IV ANDA filers have standing to initiate a suit that could trigger the exclusivity period of the first-filer. Lastly, Fujitsu Limited v. Netgear Inc. established a shortcut to proving infringement when there is no dispute as to an accused product’s compliance with an industry standard.

For more analysis of these decisions, and practical tips to improve your practice in light of the same, click here.

USPTO Adopts a New Procedure for Measuring the Quality of Patent Examination
The USPTO recently adopted a new procedure for measuring the quality of patent examination. At the heart of the new procedure is a composite seven-feature quality metric aimed to reveal quality issues during examination and to identify their sources so that effective quality procedures may be identified and encouraged. After data is compiled for the first year to set a base score, the composite quality metric will be published monthly and conveniently visualized via a graphical dashboard widget.

For further information about this new procedure, and related practical tips, click here.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. This edition of the bulletin was edited by Rory P. Pheiffer. Assistance in the preparation of this issue was provided by Michael P. Visconti. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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