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IP Bulletin, September 2009

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Inapplicability Of 35 U.S.C. §271(f) To Method Patent Claims
On August 19, 2009, the U.S. Court of Appeals for the Federal Circuit held in Cardiac Pacemakers Inc. v. St. Jude Medical Inc. (Nos. 07-1296 and 07-1347) that 35 U.S.C. §271(f), which concerns enforcement of patent rights against components originating in the U.S. and combined into the potentially infringing product outside the U.S., does not apply to method claims. Thus, U.S. patent applicants should carefully consider claim drafting strategies for method-base inventions to most effectively encompass infringing activity that may not occur entirely within the U.S. Businesses should also be cognizant of current and future business activities that may fall under §271(f) but may nevertheless be non-directly iinfringing of competitors’ method patent claims.

USPTO Examiner Interview Submissions On The Record
Although as of the date of this newsletter, the United States Patent and Trademark Office (USPTO) has not issued a public notice, it is our understanding that the USPTO has informed examiners in at least certain art units that submissions made to examiners by applicants during the course of prosecution are to be entered into the record. This includes, for example, proposed amendments sent to examiners for discussion prior to an interview. For further discussion and practical tips, click here.

Obviousness After KSR:  The BPAI’s Interpretation
As familiar to all patent practitioners, obviousness after the Supreme Court’s ruling in KSR Int’l Co. v. Teleflex, 127 S.Ct. 1727 (2007), has required a change in thinking and strategy in everyday practice before the USPTO and in litigation. In KSR, the Court rejected rigid application of the more traditional “teaching, suggestion, or motivation” (TSM) test and instituted a seemingly broader approach to obviousness analysis.  For a time after KSR, the Board of Patent Appeals and Interference (BPAI) refused to even consider using the TSM test in its opinions. The BPAI’s more recent precedential opinions, however, seem to indicate that the TSM test may be working its way back into the USPTO’s consideration. For example, the BPAI acknowledged in Ex parte Whalen II, No. 2007-4423 (Bd. Pat. App. & Int. July 23, 2008), that even in light of KSR, there still must be an “apparent reason to combine” prior art elements and that this reason must be made explicit by the Examiner. This and other BPAI cases may provide assurance to patent practitioners and signal that the USPTO is beginning to recognize the unpredictability that has so often plagued obviousness rejections after KSR. For further discussion and practical tips, click here.

Successful Use Of The Patent Prosecution Highway
The Patent Prosecution Highway (PPH) is a series of bilateral alliances between various international patent offices, including the USPTO, that allows examination conducted in one office to be used to speed up and lower costs of patent prosecution in other offices. Under the PPH program, an applicant whose claims are determined to be allowable in a one patent office can request accelerated examination in a PPH-cooperating patent office, or vice versa. However, applicants should be sure to review PPH eligibility requirements and be aware of some important caveats before considering a trip on the Patent Prosecution Highway. For further discussion and practical tips, click here.

Massachusetts Attorneys’ Lien Statute Applicable To Patents
In the recent case of Ropes & Gray v. Jalbert, No. SJC-10333 (July 28, 2009), the Supreme Judicial Court of Massachusetts held that attorneys’ liens for services rendered but not paid for in connection with the prosecution of patent applications can attach to the applications, letters patent issuing thereon, and their proceeds. This is not to say that patent applicants or patentees must pay their lawyers, but it is to point out that failure to do so can complicate their patent lives.

Infringement Of Product-By-Process Claims
The U.S. Court of Appeals for the Federal Circuit held en banc on May 18, 2009 in Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, that infringement of a product-by-process claim requires showing that an equivalent process was used in making the alleged infringer’s product.  Accordingly, the Court rectified a 17 year conflict between its decisions in Atlantic Thermoplastics Co. (970 F.2d 834 (Fed. Cir. 1992) and Scripps Clinic & Research Foundation (927 F.2d 1565 (Fed. Cir. 1991). Writing for the majority, Judge Rader stated that process terms in product-by-process claims serve as limitations in determining infringement, expressly overruling Scripps.  With respect to situations where a product whose structure is not fully known or too complex to analyze, the decision explained that “the inventor is absolutely free to use process steps to define this product . . . [and] will not be denied protection. Because the inventor chose to claim the product in terms of the process, however, that definition also governs enforcement of the bounds of the patent right. This court cannot simply ignore as verbiage the only definition supplied by the inventor.”  Judge Newman’s dissent noted that “[f]or the first time, claims are construed differently for validity and for infringement,” i.e., product-by-process claims are product claims for validity interpretations but process claims for infringement interpretations.

USPTO Issues Instructions for 35 U.S.C. §101 Rejections
On August 24, 2009 the USPTO issued interim instructions to examiners for handling 35 U.S.C. §101 rejections. These instructions provide guidance to examiners while awaiting the U.S. Supreme Court’s 2009 / 2010 decision in In re Bilski, which, as patent practitioners are surely aware, concerns patentable subject matter under §101. In the meantime, these instructions can also provide practical guidance to applicants and patentees in claim drafting, amendments to and arguments regarding pending claims, and evaluation of issued patent claims.  A copy of the interim guidelines can be found here at the USPTO’s website.

Beware Unsolicited Trademark Emails
Trademark owners are reminded to be cautious in sending money and / or confidential information in response to unsolicited communications regarding registered trademarks. It is our understanding that a current scam involves an email asking registered trademark owners to register corresponding domain names or buy corresponding keywords in China using the sender’s services, when in fact such registration or purchase does not occur – and in some cases may not even need to occur - even after payment. For further discussion and 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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