Chisum on Supreme Court’s Recent Alice Patent Decision

I’ve just gotten around to reading Professor supreme courtChisum’s  take on the Supreme Court’s recent Alice v. CLS Bank decision on patent subject matter eligibility, and I heartily recommend it for those interested in looking for some small clarity in an area of law that the Supreme Court has muddied well over the past several years.

Of course, the easiest conclusion to reach from the decision is that yes, software is still patentable.  However, many have largely given a shrug to the decision – as we have become accustomed to doing when the Supreme Court weighs in on patent law.  Robert Merges likens the decision to the Hitchhiker’s Guide computer’s answer of “42″ to the ultimate question of life, the universe, and everything.  One of my old professors John Duffy finds another media analogy:  “Towards the end of the [classic 1965 movie The Battle of the Bulge], the German panzer colonel believes he has succeeded in breaking through the Allied lines, and he exalts: ‘We have done it!’  His attendant asks whether ‘we have won the war.’  The colonel’s answer: ‘no.’  The attendant then whether ‘you mean we have lost.’  Again, the colonel replies, ‘no.’  The confused attendant asks, ‘What is happening?’ The happy answer from the militaristic colonel:  ‘The best thing possible is happening – the war will go on.’”

Patent practitioners are still left with more questions than answers after decision, but Professor Chisum does pull some portions of the decision that may let us better advise clients and converse with the Patent Office. Read Professor Chisum’s post here.

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Section 15 Trademark Declarations

A §15 Declaration is an optional trademarktrademark filing that can be made in a trademark registration. If chosen to be made, it can only be filed after 5 continuous years of use of the registered mark. This means that the mark has to have been used for 5 consecutive years, all of which fall after the date of registration, and that the mark is still in use. A §15 Declaration asserts that the mark is incontestable. For a mark which is found to be incontestable (which is a determination made in court), the registration becomes conclusive evidence of the validity of the mark, the registration, the ownership of the mark, and the owner’s exclusive right to use the mark in commerce. This means that these issues cannot be attacked, subject to some limited exceptions.

The §15 Declaration is made with a filing at the USPTO. When a §15 Declaration complies with statutory and rule-based requirements, the USPTO will update its records to acknowledge receipt of the declaration, and will also send a notice of acknowledgment to the owner of the trademark registration. The notice is recorded in the registration’s files, which are open and provide notice to the public that the declaration has been made. This notice is somewhat limited, though: acknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration of incontestability has been filed, but it is not actually a determination by the USPTO that the registration is in fact incontestable. The question of whether the registration is incontestable is one that is made by a court should a proceeding involving the mark arise.

The §15 Declaration requires affirming that, not only has the mark been in use for 5 consecutive years, all of which fall after the registration, but that the mark is still in use. Further, the declarant must aver that there has been no final decision adverse to the owner’s claim of ownership, or to the owner’s right to register the mark or to keep the mark on the register. Finally, the declarant must state that there is no pending proceeding involving the mark, either before the USPTO or a court.

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Patent Office Launches Glossary Pilot Program

Today, the United States Patent and Trademark Office announced the launch of a new Glossary Pilot Program as part of a White House Executive Action designed to enhance claim clarity in the specification of software-related patent applications.  The pilot program will run for six months from the start date of June 2, 2014.  The program is limited in scope: only computer-related inventions are eligible.

Participation in the pilot program requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claim.  The goal is to increase the clarity of the terms in the claims, which, while they are required to be definite, can still sometimes be vague, or at least, confusing.  Applications accepted into the pilot will get expedited processing, be placed on an examiner’s special docket prior to the first office action and have special status up to issuance of a first office action.

It is my opinion that this program will not likely be used by many applicants, or at least, not by many applicants represented by an attorney.  Providing a crisp definition of a claim element is too likely to result in prior art complications during examination of the application or in a claim being narrowly construed in litigation, while providing a vague definition will run afoul of the rules and subvert the purpose of the program.



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Application Data Sheets in Patent Applications

An Application Data Sheet is a sheet or sheets that may be voluntarily submitted in either a provisional or a nonprovisional application, which contains bibliographic data, arranged in a format specified by the Patent Office. The Patent Office provides a pre-formatted form that can be filled in, and the Office has recently begun allowing applicants to enter bibliographic information electronically and directly on the portal used to upload a patent application.

An application data sheet must be titled “Application Data Sheet” and must contain all required section headings. If an application data sheet is provided, the application data sheet becomes part of the provisional or nonprovisional application for which it has been submitted, and thus part of the file history.

The ADS must include applicant information, correspondent information, application information, representative information. It can include domestic and foreign priority information, as well as assignee information. It can also include a non-publication request. A non-publication is a request to keep an application secret, and it can only be made once, at the time of filing. If it isn’t made at the time of filing, it cannot be made later.

The ADS must be properly signed. The Patent Office will accept a handwritten signature. For electronically produced documents, however, the PTO accepts a very precise type of signature, in the form of “/Name/”. Failure to sign the ADS properly can cause a number of administrative problems. If the ADS isn’t signed properly – and that can include forgetting the leading or trailing “/” – then the requests and information provided in the application data sheet will be largely ignored. The Office will not recognize the inventor and applicants’ addresses, the priority claim, the request for non-publication (if made), an authorization for a foreign patent office to access the application, and a few other things. Fortunately, most of these can be remedied fairly easily by filing a corrected ADS and pointing out what information was previously “missing.” However, the non-publication request cannot be re-made, so the application will be published according to the normal publication schedule at 18 months. The only way to recapture the non-publication request is to expressly abandon the application and file it anew. That should only be done after serious consideration of financial, co-pendency, prior art issues, because those issues may affect the validity of the application or patent issuing from it.

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Rare Federal Circuit Case Upholds Rejection of Trademark as Disparaging

Trademark applications, when rejected, are most frequently rejected because the are directed to marks which are confusingly similar to marks already registered. Consequently, many people believe that as long as there isn’t an earlier-registered similar mark, their trademark can be registered. However, there are a whole host of formal, procedural, and substantive requirements in a trademark application, any of which can trip the application up and cause it to be abandoned.

One such requirement is that the application not be disparaging. “No trademark … shall be refused registration … unless it (a) [c]onsists of or comprises … matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 USC 1052(a). This provision is rarely argued, but a recent case brought it into focus, perhaps in anticipation of the WASHINGTON REDSKINS disparagement decision from the Trademark Trial and Appeal Board. Applicants Geller and Spencer attempted to register the mark STOP THE ISLAMISATION OF AMERICA in connection with “providing information regarding understanding and preventing terrorism.” The TTAB held, and the Federal Circuit agreed, that the mark was disparaging to Muslims, primarily because of the association it perpetuates of Muslims with both violence and terrorism. Notably, Geller and Spencer have very publicly opposed the construction of a mosque near Ground Zero. And while the US has merely refused registration of their trademark, England actually prohibited the two from entering the country to speak at an English Defence League rally in London last year.

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Non-Enablement Responses to Prior Art Rejections

Rejections of patent applications are common. Inventors sometimes do not realize this. There are many reasons that rejections may be issued, the most frequent of which is usually some form of prior art rejection. A prior art rejection is either a rejection for lack of novelty or a rejection due to obviousness in light of prior art.

Just as there many types of rejections, there are many ways to respond to rejections. When a prior art rejection is made, one argument that can be made is that the prior art reference does not enable the invention. It must “enable one of ordinary skill in the art to make the invention without undue experimentation.” This requirement must be met for a rejection to be proper. It usually is, but sometimes, it may present potent ground to base on rejection. If a response is going to be made arguing that the prior art reference is non enabling, it is worth checking into the file history of that reference when the reference is merely a publication. It may be that the Patent Office rejected that application because it wasn’t properly enabled. Of course, the enablement standard for an application processing through the Patent Office is different than the one for a prior art reference; while a prior art reference must enable a skilled artisan to make the invention, an application must enable one to both make and use the invention. The disparity in the requirements does not mean that a rejection of the prior art rejection will necessarily provide you with a clean argument of non-enablement. But, it could, and so it is worth checking the file history.

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Patent Office Issues New Internal Guidance on Subject Matter Eligibility

On March 4, 2014, the Patent Office published a guidance memorandum titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (Guidance). The Guidance implements a new procedure to address changes in the law relating to subject matter eligibility under 35 U.S.C. § 101 in view of recent court decisions including Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012).

Examiners are being trained – and indeed some have completed training – with regard to these new guiding rules. You can expect some bumps and disagreements as practitioners and examiners debate the role of the Guidance and how it shapes examination of particular claims, but continued efforts towards clarity in patent examination are always appreciated.

You can view the new Guidance document here.

You can view a Quick Reference Sheet here.

You can view Training Slides used to train the patent examiners here.


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Marty Stoneman Passes Away

Phoenix patent attorney Martin Stoneman passed away on February 5, 2014. Marty had a large presence in the Phoenix patent market; he worked on over 250 issued patents and many more patent applications. Cases continue to issue posthumously and likely will for some time. I knew him only a little, but had colleagues who had worked with him at length. I’d taken over several cases from Marty as well, and clients spoke fondly of him. His death will be felt in the Phoenix community for quite a long time.

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Is a Comprehensive Clearance Search for Your Trademark Worth the Money?

This post written by guest author, attorney Gianni Pattas.

Everything is perfect. You paid a graphic designer to design your brand new logo for your business. You paid the radio to run ads advertising the grand opening of your business. You paid a small fortune to have that brand new sign outside your business that makes you stand out from your competitors. There’s no turning back now, and why would you? You have spent thousands and thousands of dollars and are now ready to start your brand new business. Everything is perfect.

Suddenly, things do not seem so perfect. You get a letter after your first day of opening from an attorney telling you to cease and desist the use of your new businesses name because you are infringing the trademark rights of their client.

This is a harsh reality that many small business owners have faced. In order to save money in the short term, they did not adequately plan ahead for the long term.

Many times trademark applicants will be presented with the option of a comprehensive trademark clearance search to make sure their proposed mark is clear for use. And often, in order to save money, people will forego this option and proceed with filing of their trademark application, “blind” to what else is out there. They believe that they can scour the Internet and the federal trademark database for potential problems that they might face when using their own mark. Many businesses believe it is an important step to take. But it may not be sufficient, and in some cases, a self-guided search can even be dangerous.

A trademark attorney who deals with this subject matter on a daily basis has the resources and knowledge to do a thorough search and ensure that future problems do not arise with the use of your proposed trademark. A trademark attorney can advise you whether there are identical or similar marks already registered that may present problems downstream in the trademark application process, or whether there is use in particular geographic locations that may be specially problematic for your business, or whether there are filing strategies you can adopt when writing a trademark application based on the presence – or lack of presence – of other marks on the federal trademark registry.

So is a comprehensive clearance search for your trademark worth the money? As the common saying goes, “An ounce of prevention is worth a pound of cure.”

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Secret Prior Use after the AIA Patent Reform

We’re closing in on the one-year anniversary of the AIA’s full implementation on March 16, 2013. Though some portions of the law have been in place for more than a year, there is still a great deal of debate about how the new law will be interpreted. A few months ago, I wrote about the disagreement about how a secret offer for sale should be treated under the new rules. Now, I’ll discuss the disagreement in how a secret use of a process is treated for prior art purposes.

As a review picking up from the last discussion, the AIA changed the way prior art and potentially patent-barring disclosures are defined. One provision states that, with exceptions, the invention is not patentable if it “was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The “otherwise available to the public” phrase seems to indicate Congressional intent that the disclosure must be a public one, and thus secret uses behind company walls would not jeopardize the novelty of the invention.

The Patent Office has adopted this position, noting that “The legislative history of the [law] indicates that [the prior art provision] does not cover non-public uses or nonpublic offers for sale.” Many practitioners and professional associations agree, including the American Intellectual Property Law Association and the Intellectual Property Law Section of the ABA.

Others disagree, however, because there is a long line of case law that lays out the tremendous public policy reason for recognizing secret uses as prior art. Specifically, a patent applicant should be prevented from commercializing a product under a patent for 20 years and then, patenting the process for making that process as well, effectively extending the patent protection beyond the statutory period and denying the public from using and building from the invention.

Unfortunately, it will be many years until this ambiguity is resolved, because it will likely require a court – an appeals court – to decide the issue. That requires that a case be tried in a district court, which requires there to be an infringement claim based on a patent, which requires a patent application to have been filed after March 16, 2013. With the delays at the Patent Office in issuing patents, and the delays through court, it could be some time before we know how secret prior uses will be handled.

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