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IP Bulletin, July 2010

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July 2010 | Legal Update

USPTO Proposes Three Processing Tracks for Patent Applications
The United States Patent and Trademark Office (“USPTO”) recently proposed a “Three-Track” patent application processing system to provide a choice of examination timelines and to reduce application pendency times generally. The proposed three tracks are: (I) Prioritized Examination; (II) Traditional Examination; and (III) Delayed Examination. The prioritized examination would allow applicants to pay a fee to expedite the examination of the application, with a goal of issuing a first Office action on the merits within four months and a final disposition within one year of prioritized status being granted. The traditional examination would continue to follow current timelines and procedures. The delayed examination would allow for an applicant-controlled delay of up to 30 months prior to docketing the application for examination, at which point it would be treated like a traditional examination. The delayed examination would be for non-continuing applications that were first filed in the United States. Applications based on a prior foreign-filed application would receive no action until the USPTO receives a copy of any international search report, a copy of the first office action from the foreign office, and a copy of an appropriate reply to the foreign office action. Written comments related to this proposal must be submitted to the USPTO by August 20, 2010, and a public meeting regarding the same will be held at the USPTO on July 20, 2010 (registration closes on July 16, 2010 at 5 PM).  

For additional information about the proposed “Three-Track system, click here.

Supreme Court Addresses Patent Eligibility of Business Methods in Bilski Case
Last month the Supreme Court handed down its long-awaited decision on “business method” patents in the case of Bilski v. Kappos (No. 08-964, June 28, 2010) and, in a rare instance of unanimity, the justices agreed that Bilski’s method of hedging risks in commodity trading was not eligible for patent protection. The Court reached this determination by taking a simple approach—relying on long-standing precedent that one cannot patent an abstract idea. The Court refused to endorse the so-called “machine-or-transformation” standard as the standard to determine patent-eligible subject matter, the Court did indicate that the standard can provide a “useful and important clue” for such determinations. While a number of questions about the patentability of methods remains, applicants desiring method claims should draft claims that do not portray the inventive methods as abstract ideas, and may consider drafting claims that do pass the “machine-or-transformation” test as a possible safe harbor.  

For additional details and discussion, click here.

Forum Shopping in the Eastern District of Texas
Over the past ten years, the small Texas city of Marshall (population under 24,000) has been the capital of patent litigation. The combination of a fast docket, rigid local patent rules that expedite discovery and slow claim construction, plaintiff-favorable juries, and a disdain for transferring cases to other districts has made the Eastern District and Marshall, Texas a favorite forum in which to bring patent infringement actions. Recent challenges to some of these perceptions, however, raise doubts as to whether the Eastern District is still the patent-friendly district it once was and whether the Eastern District’s popularity may now be waning.  

For additional details and discussion, click here.

All Applicants Now Eligible to “Bump And Dump” Applications at the USPTO
In the January and March issues of the IP Bulletin, we reported about the initiative implemented by the USPTO to reduce the backlog of patent applications by permitting small entity applicants to expressly abandon one application and file a petition seeking special status for a second application. We are pleased to announce that this program been extended through the end of the year, or until the receipt of 10,000 qualifying petitions, whichever comes first. More significantly, this program is no longer limited to small entity applicants. Now all applicants are eligible to “dump” one patent application to “bump” a second application up in the queue. Each entity seeking to take advantage of this program is limited to 15 applications. An entity is based on ownership, and thus applications assigned to an entity, or subject to an obligation to assign to an entity, are included as being owned by that entity.

In order for an application to qualify to be “bumped,” both applications must be unexamined, must have been filed earlier than October 1, 2009, and must either be owned by the same party or have at least one common inventor. Further, the abandoned application cannot be revived, but a refund of an applicant’s search fee and excess claims fee can be recovered. All patent application owners are encouraged to evaluate their current patent portfolio to determine if they have applications they are willing to abandon in order to pursue another application in a quicker time frame.  

Additional details and requirements are available from the USPTO website via this link.

Federal Circuit Clarifies the Broadest Reasonable Interpretation Standard
On April 14, 2010 a three judge panel at the Federal Circuit clarified the boundaries of the Broadest Reasonable Interpretation Standard (“BRI”). The unanimous panel in In Re Suitco Surface Inc. found that the Board of Patent Appeals and Interferences’ (the “Board”) claim construction was unreasonable and not properly construed in light of the specification. This opinion should prove useful for patent applicants facing rejections from the USPTO based on excessively broad claim interpretations.  

For additional details and discussion, click here.

Evaluating the Limited Applicability of Product-by-Process Claims in the U.S.
The Federal Circuit's decision last year in Abbott Labs. v. Sandoz, Inc. clarified conflicting precedent regarding product-by-process claims. The court held that infringement of a product-by-process claim requires showing that an equivalent process was used in making the alleged infringer’s product. In light of this decision, it would be prudent for patent applicants to carefully evaluate their inventions to determine if their inventions implicate the specialized circumstances in which the product-by-process claim format is useful. If their inventions warrant this format, applicants should consider the impact such claims may have during the different stages of patent procurement and patent enforcement.  

For more analysis 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. 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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