IP Law Bulletin

If you are a Marxist, you view the world in terms of class struggle; if you are an artist, you see the world as colors and forms; and if you are a trademark lawyer, you see the world in terms of, well, trademarks (and service marks).

While the America Invents Act (AIA) brought many significant changes to the U.S. patent laws, there is arguably no more impactful change than the shift from a “first to invent” system to a “first inventor to file” system that occurred on March 16, 2013. This shift has significant effects on patent applications having an effective filing date on or after March 16, 2013. Under prior U.S. law, a patent applicant could rely on the earliest documented date of the invention, and thus obtain a patent over another’s earlier-filed application. Now, under the AIA, the U.S. Patent and Trademark Office (USPTO) will award a patent to an applicant with the earliest effective filing date. The earliest effective filing date is the actual filing date of the application or the date of the earliest priority application.

On May 10, 2013, the Federal Circuit issued a decision in its en banc rehearing of CLS Bank International v. Alice Corp. In a 5-5 split, the Federal Circuit affirmed a district court decision that Alice Corp’s. computer method patent claims, as well as similar claims directed to systems and computer-readable media, are not directed to eligible subject matter under 35 U.S.C. § 101. A total of six opinions were written, showing a deep divide among the judges over the patentability of computer method claims. Certain judges called for Supreme Court guidance, and Chief Judge Randall Rader even included “additional reflections” on the Court’s struggle with this issue. The divided decision once more throws computer method patent claims into uncertainty, but the multitude of opinions from the various judges does provide insight into their thinking that may be valuable to litigants and applicants dealing with computer method patent claims. At this time, however, any consideration of computer method patent claims should occur on a case-by-case basis with the assistance of a patent attorney, as the various analyses from this decision will have to be compared with prior precedent and the particular claims at issue to determine subject matter eligibility.

The recent Supreme Court decision in Kirtsaeng v. John Wiley & Sons represents a significant victory for college students in their struggle with media companies over copyrighted media. In a 6-3 decision, the Supreme Court assented to college student Supap Kirtsaeng’s resale of textbooks in the United States that were bought in Thailand at low cost, reasoning that the Copyright Act does not create a right to divide foreign markets from domestic markets. Effectively, this decision establishes international copyright exhaustion, i.e., that the first sale of a copyrighted article, whether manufactured domestically or abroad, is sufficient to “exhaust” the copyright owner’s rights to that article.

On April 1, 2013, the U.S. Patent and Trademark Office (USPTO) published interim final rules that implemented changes to patent term adjustment (PTA) provisions mandated by the AIA Technical Corrections Act of January 14, 2013. In addition to streamlining USPTO administrative procedures and procedures by which patentees can challenge PTA calculations, the rules also level the PTA "playing field" for filers of U.S. national stage applications. The new rules apply retroactively to any patent granted on or after January 14, 2013. While the rules became effective as of their publication, the USPTO will accept public comments until May 31, 2013, after which a final rule will be published.

On May 19, 2013, the USPTO launched the After Final Consideration Pilot 2.0 (AFCP), thereby extending and revising the original After Final Consideration Pilot that was implemented in March, 2012. Designed to further the goal of compact prosecution, the AFCP 2.0 provides examiners with additional time to consider applicant responses after a final rejection. Under the new version of the program, examiners will utilize the additional time to interview and discuss their thinking with applicants even if a response does not place an application in condition for allowance. Applicants and practitioners can use this program to avoid filing a Request for Continued Examination to have amendments considered and allowed. To do so, applicants must submit a response under 37 C.F.R. § 1.116 that includes a non-broadening amendment to at least one independent claim, along with a request under the pilot program. The AFCP 2.0 will run until September 30, 2013, and further details are available at the links below.

Industry standards can lower costs and increase interoperability between related technologies. These standards are developed by standard setting organizations (SSOs), which are voluntary membership groups that often include leaders in the particular field. Given the individual development efforts that precede the establishment of an industry standard, individual SSO members often have patents covering one or more aspects of the standard. If an SSO member has a patent covering an essential aspect of an industry standard, the SSO will require either licensing assurance or a disclaimer that the claims of the so-called standard essential patent (SEP) will not be enforced. Such a licensing assurance must be on terms that are described as “reasonable and non-discriminatory,” or RAND. The equally non-enlightening term “fair” is often added to this description, making the acronym FRAND. The purpose of the RAND guarantee is to encourage widespread adoption of the standard because once a standard is adopted, patents covering the standard can have greatly increased market power.