Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent can be granted for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Though this text has changed very little since it was first written in 1793, the courts have established a number of judicially created exceptions, and exceptions to those exceptions. This has created a growing difficulty and uncertainty in applying §101 to modern technologies, especially those implemented by computer systems.
Bob Dylan famously sang that “[y]ou don’t need a weatherman to know which way the wind blows,” and we don’t need a weatherman to tell us that the wind now blows differently at the United States Patent and Trademark Office (USPTO). On January 7, 2019, the USPTO released revised subject matter eligibility examination guidance (“Guidance”), foreshadowed by USPTO Director Iancu last fall. The Guidance is noteworthy both for raising the bar in examination procedure and, we think, for signaling the Office’s intent to rein-in the application of subject matter ineligibility analysis (“lest it swallow all of patent law” – Alice). We anticipate a reduction in subject matter eligibility rejections because the Guidance makes it more difficult for examiners to reject claims as being directed to unpatentable subject matter under 35 U.S.C. §101.
Akin to the hype that surrounded the Internet during its early years in the 1990s, blockchain technologies and their associated cryptocurrencies have dominated the news cycle recently. Cryptocurrencies are a form of digital currency that use cryptography to enable financial transfers between two parties without an intermediary. By touting a new technology that could reshape the way transactions are performed, cryptocurrencies grew exponentially, attracting investors searching for “the next big thing.” The demand for cryptocurrencies has reached such a fever pitch in the past two years that cryptocurrency trading platforms have struggled to keep up with the demand for new accounts and trading services. Driven by media coverage of extravagant returns for investors in cryptocurrencies such as Bitcoin, Ethereum, and Ripple, among others, some of which have exhibited 100,000 percent or more annual growth in the last year alone, the cryptocurrency market, and the blockchain technologies by association, have received a tremendous amount of exposure for an industry that is still in its infancy. While the prevalence of the Internet and social media have greatly contributed to the explosive growth and popularity of blockchain technologies and cryptocurrencies, such growth so early in the lifecycle of a fledgling technology can have negative consequences, such as significantly impairing development despite an overwhelming number of new adopters entering the space daily.
Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign practitioners in proceedings before the Patent Trial and Appeal Board. The rule, which largely codifies the Federal Circuit’s 2016 decision in In re Queen’s University at Kingston, will go into effect on December 7, 2017.
If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent and Trademark Office (USPTO). In simple terms, a “continuation” application is a new patent application allowing one to pursue additional claims based upon the same description and priority date(s) as a pending “parent” application. Continuation applications are a flexible tool, useful for furthering numerous business objectives.
Changes may be coming to Patent Trial and Appeal Board (PTAB) proceedings. The United States Patent and Trademark Office (USPTO) announced recently that it is launching an initiative to reform PTAB proceeding rules. The announcement stated that the USPTO will use nearly five years of historical data and user experiences to improve PTAB trials. In addition to input already received, the USPTO is seeking feedback from the public (ideas for reforming PTAB proceedings can be submitted via email to PTABProceduralReformInitiative@uspto.gov).
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.