IP Bulletin, July 2014Print PDF
The Nutter IP Bulletin provides periodic IP news updates and practical tips
Supreme Court Issues Opinion on Software Patents and USPTO Reacts with Preliminary Examination Guidelines
In late June, the United States Supreme Court issued a long-awaited decision in Alice Corporation Pty. Ltd. v. CLS Bank International that may have broad-reaching implications on patenting software. In particular, the Court held that claims to a computer-implemented system and method for mitigating “settlement risk” in financial transactions were directed to an abstract idea and, although implemented on a computer, were not patentable. Following closely on the heels of the Court’s decision, the United States Patent and Trademark Office (USPTO) issued guidelines for the examination of patent applications claiming abstract ideas. CLS Bank is expected to have long-term ramifications in the software and computer industries.
Claim Drafting in View of Limelight and Nautilus
On the same day in early June, the United States Supreme Court issued two opinions addressing patent law issues related to inducement and indefiniteness —Limelight Networks, Inc. v. Akamai Technologies, Inc. and Nautilus, Inc. v. Biosig Instruments, Inc., respectively. In both cases, the nation’s highest court unanimously reversed the Federal Circuit. In doing so, the Court simultaneously raised the bar for patentees with respect to patent infringement and lowered the bar for alleged infringers with respect to invalidity. The decision provides a salient reminder of some important claim drafting strategies for current and future patent applicants.
Nutter’s IP Bulletin How-To Series on Branding
How to File a Trademark Application: The Guts of a U.S. Trademark Application (Part 2 of 2)
The article in our May edition of the IP Bulletin addressed four of the eight most commonly asked questions that arise when completing a U.S. trademark application filing. More particularly, we considered the trademark application form that should be used, the classes of goods or services to include in the application, the items included in the description of goods and services, and appropriate and acceptable specimen of use to be included as part of the application. The other four most commonly asked questions are tackled in this article, including: (5) should I include color or design features as part of my trademark application; (6) what is my filing basis; (7) what is my date of first use; and (8) what other considerations should I be making when preparing my U.S. trademark application?
Consumer Watchdog Puts a Leash on Appealing USPTO Decisions to Federal Court
Despite being dismissed by the Federal Circuit before reaching its highly anticipated substantive issues regarding patent eligibility, the ruling in Consumer Watchdog v. Wisconsin Alumni Research Foundation nonetheless significantly alters the patent litigation landscape. Consumer Watchdog, a nonprofit waging a seven-year campaign to invalidate the Wisconsin Alumni Research Foundation (also known as WARF) stem cell patent, saw its battle come to an abrupt end when the Federal Circuit held that it did not have an injury in fact sufficient to confer Article III standing to appeal a USPTO decision in federal court. The ruling limits the reach of the statute permitting appeals of USPTO rulings to the constitutional boundaries set by Article III, leaving some third-party challengers stuck with the USPTO as their only available forum.
Avoiding a Change in AIA Status When Filing Continuation Applications
The Leahy-Smith America Invents Act (AIA) introduced a number of important changes to U.S. patent law. Many of the provisions in the AIA do not apply to patent applications that have an effective filing date prior to March 16, 2013 (pre-AIA applications). For a number of reasons that have been well documented, it can be desirable to preserve an application’s status as a pre-AIA application. When filing a continuation that claims priority to a pre-AIA application, there is a decision to be made as to whether to file new claims with the application, or to submit them one or more days later in a preliminary amendment. There may be some advantage to doing the latter.
The Significance of Copyright Registration
Prior to March 2, 2010, the law was well settled that in order to enforce a copyright in court, the party bringing the claim must have a registration. On March 2, 2010, however, Justice Thomas issued an opinion in Reed Elsevier, Inc. v. Muchnick clarifying that federal courts do have jurisdiction to hear copyright infringement suits in the absence of a registration. Many copyright owners and litigants interpreted this case to mean that copyright registration is no longer necessary for enforcement in court. However, this is not necessarily true.
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.
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