IP Law Bulletin

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!

Just three and a half years ago, the European Patent Office (EPO) changed its rules to limit the time period during which divisional applications could be filed. As explained in our March 2010 IP Bulletin, the rule change only allowed new divisional applications to be filed within 24 months of the first communication from the Examining Division issued in the family, absent a unity objection in a subsequent application. This change led to a rash of European divisional patent application filings prior to April 1, 2010. The EPO, however, has now reversed course. Last month the Administrative Council approved a rule change that permits divisional applications to be filed at the EPO based on any pending parent patent application, regardless of how long the application has been pending. Under this rule change, a divisional application could be filed up until the date that the application from which the divisional application is pending issues. While the details related to the changes have not yet been published, it is anticipated that there will be an additional fee to file a divisional application that claims priority to an earlier application that itself is a divisional application, in an effort to curb long sequences of divisional application filings. Importantly, the new rule will be retroactive for any pending application, even if the application was previously subject to the 24 month rule. Thus, applicants with applications pending at the EPO, particularly those having applications that are not currently eligible for further divisional applications, may want to consider delaying grant until after April 1, 2014, if feasible, to allow for the opportunity to file additional divisional applications. Stay tuned to the IP Bulletin for the particulars regarding the new EPO divisional rules.

On December 18, 2013, a series of new U.S. patent rules will become effective. The rule changes update the U.S. patent rules in view of a 2012 U.S. law passed to harmonize certain U.S. laws with an international agreement and international treaty to which the United States is a party. The four most significant changes are:

In our first installment, we considered what a trademark is and its relation to a brand. To recap, a trademark is a source-identifier: (in the drugstore) “Ooooh, there’s my CREST toothpaste! I don’t know who makes it, but I do know it will always come from the same place and will always make my mouth feel minty-fresh!”

The Patent Trial and Appeal Board (PTAB) at the USPTO recently issued a rare precedential opinion in Ex Parte Mewherter that addresses subject matter eligibility of computer program product claims under 35 U.S.C. § 101. The PTAB affirmed the examiner’s rejection of a claim that recited a “machine readable storage medium” as being directed to non-statutory subject matter under 35 U.S.C. § 101. In particular, the PTAB held that the term “storage” in “machine readable storage medium” did not save the claim from encompassing non-statutory signals, carrier waves, and the like. In light of this decision, patent applicants should continue to include the modifier “non-transitory” in software medium claims to avoid § 101 issues. Explicit support for the term “non-transitory” can be provided in the specification at the application drafting stage. Claims to a “non-transitory” medium can also be properly supported even when the specification does not expressly include the term, per a USPTO Official Gazette Notice that offers guidance on this issue. Patent applicants should also continue to provide written description support for propagating signals per se, as other jurisdictions such as Europe consider such embodiments to be patent eligible.

The U.S. Supreme Court recently agreed to hear two patent-related cases, as well as a copyright case. The copyright case, Petrella v. Metro-Goldwyn-Mayer, Inc., involves the doctrine of laches, and in particular whether a copyright holder can sue for a new act of infringement, such as distributing another copy of a movie, when the copyright holder failed to assert infringement claims during previous distributions. The two patent-related cases, Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management Systems, involve challenges to the Federal Circuit’s high standard for awarding attorneys’ fees to the prevailing party in patent infringement cases. It is anticipated that the two patent cases may impact litigation by non-practicing entities (NPEs), sometimes referred to as “patent trolls,” because a decision that makes it easier to shift attorneys’ fees to the non-prevailing party may serve as a deterrent to NPEs suing established companies. Congress is also considering action that may negatively impact NPEs. Virginia Representative Bob Goodlatte has introduced a bipartisan bill, dubbed the Innovation Act, which aims to encourage innovation by creating a number of procedural safeguards against frivolous patent infringement lawsuits, including heightening the pleading requirement, limiting discovery, and shifting fees to the prevailing party. Of course, given that patent reform took center stage just two years ago in the form of the Leahy-Smith America Invents Act (AIA), it seems more likely that Congress will take-up other issues before it opens debate on the Innovation Act, if it does so at all. Stay tuned to the IP Bulletin for further developments on the Supreme Court cases and for pertinent legislative updates.

Defendants in patent litigation suits often seek reexamination of the asserted patents in hopes that the United States Patent and Trademark Office (USPTO) will find the patents to be invalid, and therefore unenforceable. As a patent owner seeking to assert a patent, it is often critical that the patent proceed through reexamination unscathed and that the patent remain enforceable. It can also be desirable for the reexamination to proceed quickly, as the related litigation is often stayed pending the outcome of the reexamination. A quick reexamination can only be achieved when appeals are avoided.