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IP Bulletin, November 2013

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11.18.2013 | Legal Update

The Nutter IP Bulletin provides periodic IP news updates and practical tips

24 Month Deadline Removed to File European Divisional Applications

Just three and a half years ago, the European Patent Office (EPO) changed its rules to limit the time period during which divisional applications could be filed. As explained in our March 2010 IP Bulletin, the rule change only allowed new divisional applications to be filed within 24 months of the first communication from the Examining Division issued in the family, absent a unity objection in a subsequent application. This change led to a rash of European divisional patent application filings prior to April 1, 2010. The EPO, however, has now reversed course. Last month the Administrative Council approved a rule change that permits divisional applications to be filed at the EPO based on any pending parent patent application, regardless of how long the application has been pending. Under this rule change, a divisional application could be filed up until the date that the application from which the divisional application is pending issues. While the details related to the changes have not yet been published, it is anticipated that there will be an additional fee to file a divisional application that claims priority to an earlier application that itself is a divisional application, in an effort to curb long sequences of divisional application filings. Importantly, the new rule will be retroactive for any pending application, even if the application was previously subject to the 24 month rule. Thus, applicants with applications pending at the EPO, particularly those having applications that are not currently eligible for further divisional applications, may want to consider delaying grant until after April 1, 2014, if feasible, to allow for the opportunity to file additional divisional applications. Stay tuned to the IP Bulletin for the particulars regarding the new EPO divisional rules.

To read the EPO’s announcement regarding this rule change, click here. 

Tips for Avoiding Appeal in Ex Parte Patent Reexamination

Defendants in patent litigation suits often seek reexamination of the asserted patents in hopes that the United States Patent and Trademark Office (USPTO) will find the patents to be invalid, and therefore unenforceable. As a patent owner seeking to assert a patent, it is often critical that the patent proceed through reexamination unscathed and that the patent remain enforceable. It can also be desirable for the reexamination to proceed quickly, as the related litigation is often stayed pending the outcome of the reexamination. A quick reexamination can only be achieved when appeals are avoided.

To read about strategies for expeditiously achieving allowance during an ex parte reexamination, click here. 

Nutter’s IP Bulletin How-To Series on Branding 

Trademark Strong (or Weak?)
Second in The Series

This second installment of Nutter’s continuing series on building a brand begins to address issues faced by businesses in selecting a trademark. In particular, the issue of trademark strength is examined, as it can be an important factor in a branding campaign’s success.

To read more about the impact of trademark strength on mark selection, click here.

The Supreme Court Continues to Take On IP Issues; Is Congress Picking Up the Patent Reform Torch Again Too?

The U.S. Supreme Court recently agreed to hear two patent-related cases, as well as a copyright case. The copyright case, Petrella v. Metro-Goldwyn-Mayer, Inc., involves the doctrine of laches, and in particular whether a copyright holder can sue for a new act of infringement, such as distributing another copy of a movie, when the copyright holder failed to assert infringement claims during previous distributions. The two patent-related cases, Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management Systems, involve challenges to the Federal Circuit’s high standard for awarding attorneys’ fees to the prevailing party in patent infringement cases. It is anticipated that the two patent cases may impact litigation by non-practicing entities (NPEs), sometimes referred to as “patent trolls,” because a decision that makes it easier to shift attorneys’ fees to the non-prevailing party may serve as a deterrent to NPEs suing established companies. Congress is also considering action that may negatively impact NPEs. Virginia Representative Bob Goodlatte has introduced a bipartisan bill, dubbed the Innovation Act, which aims to encourage innovation by creating a number of procedural safeguards against frivolous patent infringement lawsuits, including heightening the pleading requirement, limiting discovery, and shifting fees to the prevailing party. Of course, given that patent reform took center stage just two years ago in the form of the Leahy-Smith America Invents Act (AIA), it seems more likely that Congress will take-up other issues before it opens debate on the Innovation Act, if it does so at all. Stay tuned to the IP Bulletin for further developments on the Supreme Court cases and for pertinent legislative updates.

To read the writ of certiorari in Petrella v. Metro-Goldwyn-Mayer, Inc., click here. 

To read the writ of certiorari in Octane Fitness, LLC v. ICON Health & Fitness, click here. 

To read the writ of certiorari in Highmark Inc. v. Allcare Health Management Systems, click here. 

To read the text of Rep. Goodlatte’s Innovation Act, click here.  

PTAB Weighs In on Subject Matter Eligibility of Software Medium Claims in Rare Precedential Opinion

The Patent Trial and Appeal Board (PTAB) at the USPTO recently issued a rare precedential opinion in Ex Parte Mewherter that addresses subject matter eligibility of computer program product claims under 35 U.S.C. § 101. The PTAB affirmed the examiner’s rejection of a claim that recited a “machine readable storage medium” as being directed to non-statutory subject matter under 35 U.S.C. § 101. In particular, the PTAB held that the term “storage” in “machine readable storage medium” did not save the claim from encompassing non-statutory signals, carrier waves, and the like. In light of this decision, patent applicants should continue to include the modifier “non-transitory” in software medium claims to avoid § 101 issues. Explicit support for the term “non-transitory” can be provided in the specification at the application drafting stage. Claims to a “non-transitory” medium can also be properly supported even when the specification does not expressly include the term, per a USPTO Official Gazette Notice that offers guidance on this issue. Patent applicants should also continue to provide written description support for propagating signals per se, as other jurisdictions such as Europe consider such embodiments to be patent eligible.

To read the full text of the PTAB's opinion in Ex Parte Mewherter, click here.

What Is Claim Vitiation and How Does It Affect Me?

Claim vitiation—the idea that reading a claim element to encompass an accused product would so stretch the claim language as to “vitiate” (i.e., make ineffective) that claim element—is a non-infringement theory that is often poorly understood. Claim vitiation has been invoked to preclude the application of the doctrine of equivalents. Recently, however, the Federal Circuit has issued a series of opinions that attempt to rein in and clarify the use of claim vitiation as an argument against infringement. In particular, the Federal Circuit emphasizes that claim vitiation cannot be used to bypass an infringement analysis under the doctrine of equivalents. Because claim vitiation is merely “a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent,” arguments that claim language is “vitiated” must be supported by traditional arguments for finding non-equivalence.

To better understand claim vitiation, and its impact on patent applicants, practitioners, and owners, click here. 

New U.S. Patent Rules Effective in December – Will They Affect My Practice?

On December 18, 2013, a series of new U.S. patent rules will become effective. The rule changes update the U.S. patent rules in view of a 2012 U.S. law passed to harmonize certain U.S. laws with an international agreement and international treaty to which the United States is a party. The four most significant changes are:

(1) a reduction in the requirements for obtaining a filing date;

(2) elimination of “unavoidable” delay such that delays for responding to the USPTO can only be “unintentional;”

(3) an additional two months to claim priority benefits from a foreign or provisional application; and

(4) Patent Term Adjustment (PTA) reductions if an application is not in order within 8 months of its filing.

The first change allows a non-provisional, utility application to receive a filing date even if it does not include a claim, and further allows it to “incorporate by reference” a previously filed application, rather than requiring resubmission of a specification and drawings. Applicants that do not initially submit a claim, specification, or drawings, however, will subsequently be required to submit the portions not initially included in response to a Notice to File Missing Application Parts. Thus, except in the rare circumstance where it is not feasible to supply the previous specification and/or drawings, and/or draft claims, we recommend continuing to file applications without “taking advantage” of these reduced requirements. The potential added attorney expense for responding to the Notice to File Missing Application Parts, the potential loss of support for desired subject matter by not including claims in an initial application, and the potential loss of PTA if the Notice is not responded to in eight months are typically not worth the “convenience” of the quicker filing. The second change will be relevant only to those needing to explain why a deadline was missed, and the third change affords applicants an extra two months to make and double-check priority claims. Overall, we do not anticipate these changes will have a significant impact on practitioners, but practitioners should at least be aware of these changes in the event they need to rely on them.

To review the new rules in the Federal Register, 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 Derek P. Roller, and Michael P. Visconti, III. 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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