IP Bulletin, March 2012Print PDF
Supreme Court Decision Restores Copyright to Works Previously in the Public Domain
In Golan v. Holder (No. 10-545, January 18, 2012), the U.S. Supreme Court upheld § 514 of the Uruguay Round Agreements Act which restored copyright protection to certain works of foreign authors that had previously been in the public domain. Users of foreign copyrighted works first published abroad between 1923 and 1989 will need to continue to assess their liability and decide whether they need to attempt to locate the owners of the restored copyrights. Because users of foreign copyrighted works can continue to use the work until they receive notice of an intent to enforce from the owner of the restored copyright, whether users should attempt to locate the owners of the restored copyrights may depend on the likelihood the owner will indeed enforce, and if so, the cost to the user of actions they would need to take in light of the same.
New Way to Expedite Consideration of RCEs at the Patent Office, But Should You Use It?
The United States Patent and Trademark Office (USPTO) recently implemented a new program that allows applicants to have Requests for Continued Examination (RCE) prioritized, thereby insuring their applications will be considered more quickly following the filing of a RCE. The new program for RCEs was implemented as a corollary to Track I prioritized examination for newly filed utility applications. While this program will place applications on a faster track to further examination, and thus hopefully allowance, applicants should consider this new program as another tool in their toolbox for efficient and effective patent prosecution. In fact, because patent prosecution should be a collaborative effort between applicants and examiners, there are other tools applicants should consider using before paying the $4800 fee ($2400 for small entities) to essentially “force” examiners to pick-up their applications as prioritized RCE filings.
Determining the Patentability of Ranges
The Federal Circuit recently addressed the patentability of ranges in ClearValue, Inc. v. Pearl River Polymers, Inc. In contrast to Atofina v. Great Lakes Chem. Corp., in which the Federal Circuit held that a narrower range was found not to be anticipated by a more broadly disclosed range in the prior art, the court in ClearValue found a claim anticipated by a broad prior art range. The court’s decision highlights the need for patent applicants to carefully tailor their applications and their arguments regarding ranges cited in claims to address criticalities or any new and unexpected results in the cited ranges, to address enablement issues in the prior art, and to offer the most appropriate arguments based on whether a claim is rejected as being anticipated or as being obvious.
Strategies for Coping with Patent Exhaustion and Post-Sale Restrictions
Last month in Ninestar Technology Co. v. International Trade Commission, the Federal Circuit limited the doctrine to sales first occurring in the United States. Furthermore, as discussed in several recent cases, patent owners may be free to establish contractual limits on the resale of patented products. These developments highlight that in global industries where reprocessing is common, such as printer cartridges and medical devices, patent owners can protect against international reselling of reprocessed goods and may find contractual language to protect their goods using the patent as a potential justification and defense against antitrust claims.
Cost Analysis of Post-Grant Review Proceedings Versus European Opposition Proceedings
A previous edition of Nutter’s IP Bulletin included an article analyzing U.S. post-grant review proceedings established by the Leahy-Smith America Invents Act (AIA) in view of European opposition proceedings. As a follow up, our readers may be interested in a cost comparison of the AIA’s post-grant review and European opposition proceedings recently presented by Director David Kappos on the USPTO’s website. Director Kappos indicates that the AIA’s post-grant review procedures are more costly than European opposition proceedings primarily because the AIA’s post-grant review procedures are more akin to litigation (e.g., conducted by patent judges, allow substantial discovery, and create estoppel) while European oppositions proceedings are akin to patent examination (e.g., conducted by examiners, no discovery, and no estoppel).
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