IP Law Bulletin

The U.S. Court of Appeals for the Federal Circuit recently decided Ohio Willow Wood Co. v. Alps South, LLC (Fed. Cir. 2013), which involved various legal issues, including collateral estoppel, obviousness, and inequitable conduct. The collateral estoppel aspects of the case are of particular interest because the issue preclusion finding was based on a different, related patent.

Both the legislature and the judiciary are currently engaged in attempts to curb so-called “patent trolling” – the use of patents solely for litigation instead of innovation, development, and protection of marketed products. Rising concerns over this behavior led to the recent passage of H.R. 3309 (the “Innovation Act”) with overwhelming bipartisan support, only about a month after the bill was introduced to the House. The Innovation Act aims to encourage innovation by creating a number of alleged procedural safeguards against frivolous patent infringement claims, including heightening pleading requirements, limiting discovery, and shifting fees to the prevailing party. It also contains provisions for making post-grant review procedures before the Patent Trial and Appeal Board a more attractive alternative to challenging patents in court. The Innovation Act has generated its own set of concerns, however, particularly among small corporate or individual patent owners, who worry that the bill may unfairly limit the rights of all patent owners, and among certain members of the judiciary, who feel that the bill is an improper legislative encroachment on judicial authority.

Important changes to Patent Prosecution Highway (PPH) practice at the U.S. Patent and Trademark Office (USPTO) and other intellectual property offices around the world took effect on January 6, 2014. The world’s five largest IP offices – the USPTO, the European Patent Office (EPO), the Korean Intellectual Property Office, the Japan Patent Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the “IP5”) – launched a new PPH pilot program (referred to as the “IP5 PPH”). Simultaneously, and with the inclusion of three IP5 members, thirteen intellectual property offices launched a similar pilot program titled the “Global PPH” pilot program. The Global PPH pilot program includes the national offices of the United States, Japan, South Korea, Australia, Canada, Denmark, Finland, Norway, Portugal, Russia, Spain, United Kingdom, and the Nordic Patent Institute.

After banging your head against the wall for weeks or even months, your team finally has come up with a name for your new product line. You can see it now—in big lights…on a billboard…in Times Square! Fire up the marketing team, call the printer, order t-shirts, fly banners.

In November 2013, a federal judge in the Southern District of New York dismissed a lawsuit against Google, Inc., finding that Google’s copying of print works in connection with its Google Books project represents fair use under 17 U.S.C. § 107. The Google Books project includes two main programs: a “partner” program, in which Google stores and displays material provided by book publishers or other rights holders, and a “library” project, in which Google digitizes the entire collection of a library to make its text available for search and other uses. Back in 2005, The Authors Guild, Inc., along with several individual authors, brought suit against Google for copyright infringement based on unauthorized copying that occurs in connection with the digitization of printed works. In the opinion, Circuit Judge Chin analyzed the alleged copyright infringement in view of several fair use factors laid out in § 107, including the purpose and character of the use of copyrighted material, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use on the potential market for the work. Judge Chin found that the Google Books project provides many previously-unavailable benefits to the public without superseding or supplanting the books themselves, and therefore held that any copyright infringement associated with the program represents fair use under the law. This decision highlights the ever-changing landscape of fair use—and copyright law in general—in the digital age. Practitioners dealing with fair use and other copyright issues should be mindful of the dynamic landscape surrounding copyright and digital media.

Six months ago, the United States Supreme Court shook up the biotechnology industry by ruling that genetic sequences are not patent eligible “simply because they have been isolated.” AMP v. Myriad Genetics, 569 U.S. 12-398 (June 13, 2013). While providing little practical guidance, the Court succeeded in raising many new questions at the core of biotechnology patenting. For example, what characteristics are required to make natural nucleic acids patent eligible? What about other natural products, such as stem cells, polypeptides, antibodies, purified enzymes, and hormones?

In our November issue, we highlighted some patent rule changes that have since taken effect as part of the Patent Law Treaties Implementation Act of 2012; the changes took effect on December 18, 2013. One effect of these rules not previously discussed in our earlier write-up is the additional amount of time now afforded to applicants to reply to: (1) Restriction Requirements; (2) Notices of Informal or Non-Responsive Amendments; (3) Notices of Informal or Non-Responsive RCE Amendment; (4) Notices of Required Fees Due; and (5) Letters Requiring Computer Readable Format because it was unreadable, non-compliant, or not submitted. Previously, applicants had one month to respond to the USPTO for these matters before extension fees began to accrue, but now applicants have two months to respond without paying a fee. This additional amount of allotted time harmonizes the United States laws with those set forth in the Patent Law Treaty adopted at Geneva, which require a time period for reply by applicants be at least two months. So, don’t be alarmed when your docketing department begins docketing restriction requirements for a response time of two months instead of one!