IP Law Bulletin

Written opinions of counsel are gaining renewed interest as a valuable tool for avoiding enhanced damages for willful patent infringement following the Halo decision. A written opinion may set forth the factual and legal basis for finding a third party patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the opinion may be critical.

September 2017 marks the planned release of the first iteration of the eCommerce Modernization (eMod) Patent Center (“the Alpha Release”), as well as the introduction of new EFS-Web and PAIR features by the USPTO. Effective September 10, features of the recently concluded eMod Text Pilot Program will be rolled out to the public. EFS-Web and Private PAIR users will be able to file structured text via EFS-Web and access structured text submissions and Office Actions via Private PAIR. Additionally, the Alpha Release, which is the next phase of the USPTO’s eMod Project that seeks to improve “the electronic patent application process by modernizing USPTO’s application filing and viewing systems,” will be made available to Pilot Program enrollees. The Alpha Release will include a new user interface and introduce new functionality that the USPTO aims to roll into future iterations of the Patent Center.

For declaratory judgment (DJ) actions concerning patents, whether a patent owner’s conduct is sufficient for there to be a real and immediate controversy is the usual jurisdictional hurdle. In BASF Plant Science, LP v. Nuseed Americas Inc., a District of Delaware court recently examined a different issue–who must be named as a defendant to support DJ jurisdiction when there is an exclusive patent licensee.

In a recent decision denying defendants’ motion for Rule 11 sanctions, the District of Massachusetts interpreted its local rule regarding the district’s filing deadline. The decision gives guidance to litigators regarding the use of the court’s electronic filing system.

Key Takeaway

• Despite the fact that no Local Rule for the District of Massachusetts expressly addresses the question of after-hours electronic service, the 6:00 p.m. filing deadline provides a “useful—and sensible—analogy for timeliness of electronic service.” Service on opposing parties should generally be filed by 6:00 p.m. of the due date.

Since 1995, the United States has allowed patent applicants to file provisional applications as an alternative to filing non-provisional utility patent applications (often referred to as “regular” or “conventional” applications). Provisional applications, which are typically less formal and therefore less expensive to prepare, have become a popular initial filing option for applicants seeking patent protection.¹ Yet, despite their popularity, deciding whether to first file a provisional versus a regular, non-provisional application remains a dilemma for many companies and inventors. There is, indeed, more than just initial cost to consider in making that decision.

The following are several advantages you should keep in mind when developing your filing strategy and deciding the role to be played by provisional applications. Disadvantages of provisional applications will be covered in a separate, forthcoming post.

On May 22, the U.S. Supreme Court issued an important and long-awaited Opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, a case that centered on where a patent infringement suit can be filed. In a resounding 8-0 decision, the Supreme Court put an abrupt end to the decades-old practice of forum shopping in patent cases.

For almost 30 years, patent venue law allowed patent owners to file infringement suits in federal judicial districts in which the accused infringer is subject to the district court’s personal jurisdiction. This flexibility opened the doors to a patent owner’s home court and to distant courts that are perceived to be friendly to patent owners. Observers believe that this flexibility was being abused, especially by non-practicing entities or “patent trolls.” Non-practicing entities generate revenue by licensing and enforcing their patents as opposed to making or selling their own products.

If you have ever gone apple picking in late season, you may recall seeing more apples on the ground than on trees. As you begin picking apples, you realize why. You haphazardly grab and yank an apple off a branch and the branch sways, sending many ripe apples to the ground. What a waste!

Harvesting innovation is no different. Without a proper strategy, potentially valuable fruits of R&D may never make it into your IP basket. Today, we explore various strategies your organization can implement to better foster and capture innovation.

If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent and Trademark Office (USPTO). In simple terms, a “continuation” application is a new patent application allowing one to pursue additional claims based upon the same description and priority date(s) as a pending “parent” application. Continuation applications are a flexible tool, useful for furthering numerous business objectives.

The Hon. F. Dennis Saylor, IV of the U.S. District Court for the District of Massachusetts recently denied a petitioner’s request under 28 USC § 1782 to take discovery related to patent inventorship in connection with an Opposition proceeding pending before the European Patent Office (EPO). The court, in exercising its discretion under the U.S. Supreme Court’s so-called Intel factors set forth in Intel Corp. v. Advanced Micro Devices, Inc., 542 US 241, 264 (2004), denied the petitioner’s request for discovery because the EPO generally does not allow the type of discovery requested by the petitioner in an Opposition proceeding, thus the petitioner’s requested discovery would have no place in an EPO Opposition.

Key Takeaways

• This case illustrates the need for inventors to be familiar with patent laws, procedures, and proceedings in foreign jurisdictions.
• The District of Massachusetts will focus on Intel’s discretionary factors when making decisions about whether to allow discovery for use in foreign tribunals under 28 USC § 1782.

Changes may be coming to Patent Trial and Appeal Board (PTAB) proceedings. The United States Patent and Trademark Office (USPTO) announced recently that it is launching an initiative to reform PTAB proceeding rules. The announcement stated that the USPTO will use nearly five years of historical data and user experiences to improve PTAB trials. In addition to input already received, the USPTO is seeking feedback from the public (ideas for reforming PTAB proceedings can be submitted via email to PTABProceduralReformInitiative@uspto.gov).