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Posts in Rules and Regulations.

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to infringement contentions following the abrogation of Rule 84 of the Federal Rules of Civil Procedure and Form 18.

The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date or subsequently filed.

The Federal Circuit last week handed down the latest in a series of decisions finding computer-implemented inventions to be patent-eligible under 35 U.S.C. § 101. In McRO, Inc. v. Bandai Namco Games America, Inc. et al. (Fed. Cir. Sept. 13, 2016), the Federal Circuit held that claims directed to software for automatically animating lip synchronization and facial expressions of animated characters were not directed to an abstract idea under the first prong of the Alice test, and therefore recited patent-eligible subject matter. McRO joins a growing list of Federal Circuit cases that find computer-implemented inventions to be non-abstract, including DDR Holdings, Enfish, and BASCOM.

There is a September 23, 2016 deadline for clarifying product or service specification wording within European trademark registrations in certain situations where that is necessary.

Trademark registration products and services are categorized by almost all commercially relevant national trademark registries around the world, including the U.S. and the E.U., into 45 International Classes (Classes). These Classes are used for administrative (particularly fee-charging) purposes. Also, to varying degrees depending upon the jurisdiction, Classes play a role in defining the parameters of trademark rights. For years there had been an understanding under E.U. trademark law that where an E.U. trademark registration covers so-called “Class heading” language, i.e., brief language that roughly summarizes the subject matter of a given Class, the registration is deemed to cover all of the more specific subject matter of the Class.

The United States Patent Office (USPTO) is implementing a new program that provides prioritized examination of patent applications relating to cancer immunotherapy (Cancer Immunotherapy Pilot Program or Program). The new patent examination program, which will run June 29, 2016-2017, reinforces the White House’s $1 billion “National Cancer Moonshot” initiative and follows on the heels of recent significant advances in cancer treatment with a new class of drugs known as immune check point inhibitors, such as Keytruda® and Opdivo®.

Enhanced Patent Quality Initiative

The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the opportunity to orally present proposed amendments or arguments to a panel of examiners after a final rejection has been issued but before filing a notice of appeal. As the USPTO’s latest rollout under the Enhanced Patent Quality Initiative, P3 incorporates effective features of the existing Pre-Appeal Brief Conference Pilot program (Pre-Appeal) and the After Final Consideration Pilot 2.0 program (AFCP). Applicants should consider taking advantage of this no-fee program to make their case for allowance, propose non-broadening amendments, and receive feedback from a larger pool of examiners prior to filling a notice of appeal or Request for Continued Examination (RCE).

Yesterday, the U.S. Supreme Court issued a decision in the case of Halo Electronics, Inc. v. Pulse Electronics, Inc., once again changing patent law by loosening the standard by which district courts may award enhanced damages under 35 U.S.C. § 284. In so doing, the Court discarded the two-part test set forth by the Court of Appeals for the Federal Circuit in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). The so-called Seagate test first requires that the patentee show by clear and convincing evidence that an infringer’s actions were objectively unreasonable. If this burden is met, the patentee must then prove that the infringer subjectively knew or should have known that its actions risked infringing a valid patent. If a patent holder is able to meet both prongs of the test, any enhancement of damages is subject to the discretion of the district court. Appellate review of such determinations involves a tripartite standard, in which the determination of objective recklessness is reviewed de novo, the determination of subjective knowledge is reviewed for substantial evidence, and any award of enhanced damages is reviewed for abuse of discretion.

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 Subject Matter Eligibility Update” (88 Fed. Reg. 27381), announced the newest in this series of guidance, including new life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections, an index of eligibility examples, and an appendix of subject matter eligibility court decisions.

The Defend Trade Secret Act of 2016 (DTSA) was passed on April 4, 2016 by the Senate, and on April 27, 2016 by the House of Representatives. There is no change between the House (H.R. 3326) and the Senate (S. 1890) versions. President Obama is expected to sign the DTSA very soon.

Exchange of ideas between InventorsEarlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger to meet. In doing so, the Federal Circuit affirmed the district court holding that the challenge to correct inventorship of two issued patents was not supported by evidence that rose to the “clear and convincing” standard required to prevail on a 35 U.S.C. § 256 claim.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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