Prosecution LunchAugust 2010

All Ohio Annual Institute on IP

• Patent, Trademark and Copyright Updates• Cincinnati – Tuesday, Sept. 21• 8:30am - 4:45 pm• 6.25 Hours CLE

U.S. crackdown on piracy, counterfeit goods

• The Obama administration unveiled a strategy to crack down on piracy and counterfeit goods, adding more than 50 FBI agents to tackle intellectual property abuses.

• The Intellectual Property Enforcement agency, an arm of the Office of Management and Budget, will review current efforts to curb intellectual property infringement of U.S. goods abroad, especially in China

Foreign TM Searching- tmview.europa.eu

Marks & Clerk – CTM app. sale

• Marks & Clerk we understand the need for you to obtain value for money and are therefore always looking for ways to make your IP work smarter.

• As we greatly value our relationship, we would like to offer you a special fixed fee deal this Summer. Whilst we have always offered competitively low rates for Community Trade Mark applications, throughout August and September, we are pleased to offer you a fixed fee of just US$2700 from application to registration - so long as no objections arise.

Visa International Service Association v. JSL Corp.

• SJ aff’d that “eVisa” mark is likely to dilute “Visa” mark. Defendant uses “eVisa” in connection with multilingual education and information business, marks at issue are effectively identical,

• “Eikaiwa” is Japanese for English conversation, and the “e” in eVisa is short for Eikaiwa. The use of the word “visa” in both eVisa and Eikaiwa Visa is meant to suggest “the ability to travel, both linguistically and physically, through the English-speaking world.”

• “Visa” is strong trademark for plaintiff's credit cards and plays only weakly off of travel meaning of term,

• Defendant s not using “Visa” for its literal definition - JSL has created a novel meaning for the word: to identify a “multilingual education and information business.” “This multiplication of meanings is the essence of dilution by blurring.”

Bilski v. Kappos - USPTO Interim Guidelines

• Guidelines now provide additional factors to aid in the determination of whether a method which fails the MOT test is patentable or vice versa.

• §101 outcomes are “not likely to change in most cases.”

• §101 should not be relied upon to avoid a §101 should not be relied upon to avoid a full examination under §§ 101, 102, and full examination under §§ 101, 102, and 112.112.

Bilski v. Kappos - USPTO Interim Guidelines

Bilski v. Kappos - USPTO Interim Guidelines

Bilski v. Kappos - USPTO Interim Guidelines

• If patent-eligibility not easily seen, consider:

– Recitation of machine or transformation Particularity vs. indefiniteness; whether machine

performs steps or is operated on– Application of “law of nature”

Practical application, “meaningful” limits to performance of steps vs. monopolization of law, use in subjective determination

– Statement of concept Particular solution or implementation of concept vs.

statement only of problem or “disembodied” use

Section 101 Update

Prometheus Labs., Inc. v. Mayo Collab. Svcs.

• District court: pre-empts all uses of a natural phenomenon, ergo invalid under 101

• FC reversal—treatment is transformative, so it cannot pre-empt

• S.Ct. vacated and remanded– Post-Bilski, “machine-or-transformation” is generally

indicative– Is Prometheus the exception that proves the rule, where

claims satisfy “machine-or-transformation,” but fail because of their preemptive nature?

Section 101 Update

European counterparts (per Marks & Clerk)

• Business (methods) as usual

• Where inventive features are limited to the business method itself, likely to be rejected

• Where the invention is in how the method is implemented (e.g. resolving technical problems in prior methods), likely to be eligible

PTO Notes

• Pilot Program for Re-examination

– PTO will contact Owner to request waiver of right to file Owner’s statement

– If waived, then FAOM can be sent with order for re-examination

– Expected to eliminate several months from overall proceeding

• Control of $129M of fees returned to PTO– Hiring examiners and funding overtime– Examination process reengineering– Funding PCT contract work– IT projects

What’s Your Function?

Baran v. Medical Device Tech. (FC 2010)• Limitation: “release means for retaining the guide in

the charged position” • Fed. Cir. upheld trial court: function includes both

releasing and retaining

– Claim language recites both release function and retention function, ties both to the means element

– In context, “release” is not an idle description but a vital function; instrument retains for the express purpose of release on demand

• Expect terms to be limiting, and eliminate unnecessary terms; avoid adjectives tied directly to “means”

Patentability of Genes Questioned

• Ass’n for Molecular Pathology v. USPTO (on appeal)– Trial court invalidated patent under Section 101

because claimed isolated DNA is not “markedly different from “native” DNA

• Intervet Inc. v. Merial Limited (FC 2010)– Reverses claim construction, remands– In dissent: (1) opinion does not decide whether

claims are eligible subject matter, (2) sets out case that genes should not be patentable

APPEAL PRACTICE IN THE USPTO

• Marta Paul