IP Law Bulletin

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In particular, Article 72 of the European Patent Convention (EPC) requires assignments to bear “the signature of the parties to the contract,” while contract law in the U.S. considers a contract signed only by the conveying party to be valid for this type of one-way conveyance.

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to infringement contentions following the abrogation of Rule 84 of the Federal Rules of Civil Procedure and Form 18.

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the “teaching, suggestion, motivation” test and loosened the standards that both courts and the USPTO use to assess validity under 35 U.S.C. § 103. In particular, the Court expressly rejected the application of any inflexible obviousness rule that excluded consideration of, among other things, common sense.

The Federal Circuit, however, recently confirmed that common sense alone cannot suffice to establish obviousness. In Arendi S.A.R.L. v. Apple, Inc., the court held that the Patent Trial and Appeal Board (the PTAB) erred when it used common sense to supply a missing limitation in the prior art to arrive at the claimed invention. Not only is this case surprising in that factual findings of the PTAB are rarely overturned on appeal, but it also marks some constraints on the broad obviousness standard articulated in KSR.

The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the opportunity to orally present proposed amendments or arguments to a panel of examiners after a final rejection has been issued but before filing a notice of appeal. As the USPTO’s latest rollout under the Enhanced Patent Quality Initiative, P3 incorporates effective features of the existing Pre-Appeal Brief Conference Pilot program (Pre-Appeal) and the After Final Consideration Pilot 2.0 program (AFCP). Applicants should consider taking advantage of this no-fee program to make their case for allowance, propose non-broadening amendments, and receive feedback from a larger pool of examiners prior to filling a notice of appeal or Request for Continued Examination (RCE).

An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to create prior art. All Prior Art uses the existing U.S. patent database as source materials to create new “prior art.” The web site then publishes these new ideas under the Create Commons License, meaning the ideas are effectively dedicated to the public. While the algorithm is able to generate approximately 36,000 ideas a minute, the overwhelming majority are pure gibberish.

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 Subject Matter Eligibility Update” (88 Fed. Reg. 27381), announced the newest in this series of guidance, including new life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections, an index of eligibility examples, and an appendix of subject matter eligibility court decisions.

Earlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger to meet. In doing so, the Federal Circuit affirmed the district court holding that the challenge to correct inventorship of two issued patents was not supported by evidence that rose to the “clear and convincing” standard required to prevail on a 35 U.S.C. § 256 claim.

A website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving allowance before a particular examiner. The website, known as Examiner Ninja, allows a user to look-up data about any examiner at the United States Patent and Trademark Office (USPTO). The website presents data about allowance rates when various prosecution strategies are utilized, and also provides data about how quickly an examiner takes particular types of action during prosecution. The data is provided for each examiner, and each individual examiner’s data is compared to the same data for all examiners in that particular examiner’s art unit, and to all examiners at the USPTO.

Foreign filing licenses do not typically require much attention in daily practice since the license is routinely applied for and granted as a matter of course in new application filings. However, in certain situations ignoring the license may cause severe damage. 35 U.S.C. § 184 states that a person shall not file or cause or authorize to be filed a patent application (among other things) in any foreign country unless six months have passed since the United States application was filed unless otherwise authorized by a license obtained from the Commissioner of Patents, i.e., unless a foreign filing license is received from the United States Patent and Trademark Office (USPTO). A purpose for this rule is that it allows the U.S. government to protect national security by approving or disapproving the export of sensitive technologies, such as technology associated with warfare, nuclear, or security-related measures.

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally directed towards “a method and system for entering data relating to an insurance claim for a damaged vehicle.” In each case, the PTAB sided with the Petitioner, finding that the claims were directed towards the abstract idea of valuing a damaged vehicle based on information about that vehicle and therefore not patent eligible.