IP Law Bulletin

In a precedential decision, the Court of Appeals for the Federal Circuit (CAFC) recently interpreted means plus function claim construction under 35 U.S.C. §112 ¶ 6.  In Typhoon Touch Technologies v. Dell, Inc. and Lenovo, Inc. et al.¹, the CAFC reiterated that an algorithm may be disclosed in any form, including prose or visual form, in order to satisfy 35 U.S.C. §112.  As was the case in Typhoon Touch, it is not necessary to disclose a mathematical algorithm even in the computer software world.  Furthermore, the CAFC elected to reaffirm the requirements for infringement of functional language – holding that an accused device must actually perform, or be programmed to perform, any functional language in the claim.

The recording industry is already reeling from the effects of the Internet -- illegal downloading of new releases has contributed mightily to a drastic reduction in industry sales in these early years of the Third Millennium.

The USPTO recently announced that the Extended Missing Parts Pilot Program that was implemented last year will be extended for another year. Under conventional missing parts practice, applicants must pay filing fees and submit an oath or declaration within a two-month time period after receiving a Notice to File Missing Parts. Under the Pilot Program, applicants must still pay the basic filing fee and submit an oath or declaration but can, under certain conditions, request a twelve-month period to pay the search, examination, excess claims fees, and the surcharge for late submission of these fees. The Pilot Program can benefit applicants by providing an additional year to decide whether the nonprovisional application should be completed by paying the remaining fees.

As of January 23, 2012, all Appeals filed at the U.S. Patent and Trademark Office (USPTO) are subject to new rules of practice before the Board of Patent Appeals and Interferences (BPAI). The new rules are generally intended to simplify the Appeal process.

Pictures and drawings can be used as the basis of anticipation and obviousness rejections in U.S. patent prosecution.  Similarly, pictures and drawings can form the basis of patent invalidity claims in U.S. patent litigation.  However, pictures and drawings can only be properly applied to patent claims under limited circumstances.  Although text is more commonly relied upon than pictures and drawings to reject or invalidate patent claims, familiarity with the proper application of pictures and drawings to claims can help patent applicants and patent holders best evaluate their options when pictures and drawings are relevant to claims during prosecution or litigation.