Patent Application for Jokes

April 1, 2017

101USSN 2006/0259,306 titled “Business method protecting jokes” has 25 claims and lists Timothy Roberts as the inventor.

Section 35 U.S.C. 101 is the part of US Patent Law that considers patentable subject matter. The Law states:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Over time, the US Supreme Court has interpreted this statement to determine practical borders of what can and cannot be patented have changed.

For Example, in Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Supreme Court Ruled that microbes for breaking down crude oil were patentable.

Chief Justice Warren E. Burger who wrote the decision, and had the support of the majority of the Supreme Court, including Justices Stewart, Blackmun, Rehnquist, and Stevens, wrote:

We have cautioned that courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.” United States v. Dubilier Condenser Corp, 289 U.S. 178 (1933).

Regarding the scope of the original legislation, he wrote:

In choosing such expansive terms as “manufacture” and “composition of matter” modified by the comprehensive “any”, Congress plainly contemplated that the patent laws would be given wide scope.

Plagiarizing Ecclesiastes 1:9, Burger found that Congress had intended patentable subject matter to “include anything under the sun that is made by man,” he concluded:

Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is … to a non-naturally occurring manufacture or composition of matter—a product of human ingenuity.

In State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the principle was established that any “useful, concrete, and tangible result” was patentable, opening the door to business method patents.

Since then, the pendulum has swung back and in 2008, in In re Bilski, the Federal Circuit decided to reconsider State Street en banc and jettisoned the “useful-concrete-tangible result” (UCTR) test stated in State Street, but it did not explicitly overrule State Street in its entirety. The court said that the UCTR test “is insufficient to determine whether a claim is patent-eligible under § 101,” and “is inadequate,” and it reaffirmed that “the machine-or-transformation test outlined by the Supreme Court is the proper test to apply” instead. As to State Street, the court said, “those portions of our opinions in State Street, relying on a ‘useful, concrete and tangible result’ analysis should not longer be relied on.

However, the Federal Circuit’s majority opinion did not hold that business methods are categorically patent ineligible.

The Supreme Court affirmed the judgment of patent ineligibility in Bilski v. Kappos. It did not endorse the use of the machine-or-transformation test as the sole test, but said it was only a “useful clue” to making the determination.

The Court’s majority also declined to hold business methods categorically patent ineligible. Four Justices, however—Justice Stevens, concurring, joined by Justices Breyer, Ginsburg, and Sotomayor—would have held all business methods patent ineligible, on the basis of the historical background of the patent clause of the Constitution. In a separate concurring opinion by Justice Breyer, he listed points on which the Court unanimously agreed. One point was that the State Street Bank case was not a correct statement of the law.

The Supreme Court’s subsequent decisions in Mayo v. Prometheus and Alice v. CLS Bank further expanded on Bilski and substantially obliterated State Street. These decisions established a two-step inquiry in which, first, the court is to look to whether the claimed invention is directed to an abstract idea or natural principle; if it is, a second step follows in which the court must determine whether the claimed invention implements the abstract idea inventively or instead in a merely routine or conventional manner. Unless the implementation or application of the abstract idea embodies an “inventive concept,” the claimed invention is patent ineligible. (These concepts are explained further in the articles on the Mayo and Alice cases.) Under this test the State Street patent would be invalid.

Alice specifically holds that a generic computer implementation of an abstract idea is patent ineligible. In Alice, the Supreme Court held that a software-related invention on an existing business procedure could not be saved from patent ineligibility and be made patent eligible simply by saying, “Do it with a computer.” Instead, it would be necessary to implement the procedure in an inventive manner. This decision appears to have overruled State Street as called for in the eBay dissent.

Inventor’ Andrew Knight has several United States published patent applications for the storylines of movie plots. So far his portfolio includes four patent applications that variously published in November and December of last year. They are all entitled “Process of relaying a story having a unique plot”. The main claim of United States Patent Application Number US2005/0282140 reads as follows:

“A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating that a first character experiences de-ja-vu to mask an actual event.

United States Patent Application Number US2005/0272013 claims:

“A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating that a first character voluntarily enters a virtual reality; indicating a belief by said first character that said first character is not in virtual reality; and indicating that an interaction in virtual reality between said first character and a second character, while said first character has said belief, causes said first character to labor for, at most, a compensation substantially lower than a market value of said first character’s labor.”

So is USSN 2006/0259,306 titled “Business Method Protecting Jokes” patentable? Well it depends on the constitution of the Supreme Court and on guidelines provided by President Trump who seems determined to reverse the American Invents Act championed by O’bama.


Is claim construction a matter of Law or is it related to the Art claimed?

January 6, 2017

Elad Barkan owns Israel Patent No. 133671 titled “CRYPTANALYSIS METHOD AND SYSTEM” and Rontal Engineering Applications 2001 (LTD) is attempting to have this patent canceled.

There are corresponding US patents US9038192 (B2)  and  US8295477 (B2), however there are some claim differences.

One question that arose in the cancellation proceedings is how the claimed invention differs from that of the corresponding US patent.

Rontal Engineering’s representatives engaged veteran Israel Patent Attorney Sanford T Colb to explain this, which he did in an Affidavit. Barkan’s attorneys requested permission to submit an expert opinion of their own and this was duly allowed.

Elad Barkan wrote the expert opinion himself, challenging Colb’s competence in cryptoanalysis. Rontal Engineering’s lawyers then submitted to have Barkan’s affidavit thrown out as it raised new issues, and, according to them, despite his competence regarding the technical subject matter, the correct reading of claims is a matter of law that was outside his competence. They also noted that as a party to the proceedings he could hardly be considered an impartial expert witness.

After referring to different sections of the affidavit that showed that Barkan was indeed ignorant of claim construction, the Deputy Commissioner Ms Bracha had his Affidavit struck from the record, and announced that costs for this skirmish would be taken into account at the end of the main proceedings.

 

COMMENT

In Israel we do not have specialist IP courts and any District Judge or Supreme Court judge may be called upon to rule on IP cases. Sometimes, the judge has no scientific background and has never studied IP law and occasionally the decisions are plane wrong. See here  for an example of a very wrong decision. The Commissioner and Deputy Commissioner are specialist IP judges. They have a team of Examiners that they can call on. they should therefore be able to construe the scope of protection of claims granted in Israel without the help of a practitioner in private practice, however experienced and competent.

I think that Luthi et al who represented Barkan should have understood or at least clarified what Ms Bracha wanted in a counter-opinion, and should know that clients are not impartial and generally make lousy witnesses.


Applicant Successfully Has Allowance of Patent Application Cancelled, Following Initiation of Opposition Proceedings

September 12, 2016

reexaminationUsually an Opposition results in an allowed patent being either cancelled, upheld or having its claim-set narrowed. Apparently, not always!

Israel Patent Application No. 240684 titled “GLYCOPYRROLATE SALTS” was filed by Dermira Inc on 19 August 2015. It is the national phase entry of PCT/US2014/19552 and so the effective filing date is 28 February 2014. It claims priority from two provisional applications and from two regular US applications, but the earliest priority claimed was 28 February 2013.

On 18 October 2015, the Applicants petitioned to make special under Section 19(a)(a)(2) of the Patent Law 1967 and requested allowance under Section 17c based on US 9,004,462.

After the application was allowed and published for Opposition purposes, S0l-gel Technologies ltd. opposed the patent issuing. They noted that the case had been allowed under Section 17c, but this was incorrect since the two regular US applications from which priority was claimed were continuations-in-part of US 13/781,390 which published on 15 August 2013.

In the US, the earlier patent application to which material is added in a Continuation-in-Part cannot be cited against the Continuation-in-Part. It is a little like a Patent-of-Addition in Israel.

Since priority is NOT claimed from US 13/781,390 which published 15 August 2013, it is prior art to IL 240684 since its publication precedes the filing of PCT/US2014/19552 on 28 February 2014. Consequently, as far as Israel is concerned, US 13/781,390 could be cited as prior art against IL 240684 and so allowance under Section 17c was wrong, as there is presumption of validity since US 13/781,390 (now US 8,558,008) was not prior art in the US, but is prior art against the Israel application.

Here’s the odd thing. US 13/781,390 was itself filed on 28 February 2013, so the PCT could have claimed priority from it!

In their statement fo case, the Opposer requested that the allowance be cancelled and the case returned to the Examiner for examination on its merits in light of the prior art (including US 13/781,390). The Applicant (represented by Pearl Cohen) agreed with this suggestion.

In his ruling, the Commissioner, Asa Kling, noted that only rarely can an allowed patent be returned to the Examiner. Patent prosecution is a one way street, and after allowance, the Examiner is no longer part of the process. Generally, opposed patents are either invalidated as lacking novelty and inventiveness, or the scope of their claims is narrowed, or, the opposition is overcome or withdrawn and the patent as allowed, is granted.

In this instance, both sides agree to the allowance being withdrawn and to the claims being (re)considered on their merits by the examiner in light of the prior art, including  US 13/781,390, thereby avoiding costly opposition proceedings.

The commissioner noted that agreement of the parties is not generally enough for odd solutions, due to their being a public interest. Generally one does not return an allowed patent application to the Examiners since the public is always third-party to such proceedings. See the ruling on request to cancel allowance of IL 219586 Fritz Collischan GMBH vs. Data Detection Technologies Inc., 9 March 2015, paragraphs 9 and 10 of the ruling.

However, it is clear that the Section 17c assumptions detailed in the Albermarle ruling do not apply here as inventiveness over US 13/781,390 was not considered by the US Examiner as it was not an issue in the States, and so the IPO cannot rely on the US Examiner’s ability, professionalism and integrity in this instance. In the circumstances, for the sake of efficiency, it was deemed appropriate to reexamine rather than to conduct an opposition. The Commissioner allowed the Section 17c allowance to be withdrawn and the case to be returned to the examiners for substantive examination on the merits.

The cancellation of the allowance now publishes for opposition purposes. Costs of 2500 Shekels are awarded to the Opposers; the low sum reflecting the early stage reached.

COMMENT

In this instance, the PCT application could and should have claimed priority from US 13/781,390. The  Opposers could have claimed both invalidity over US 13/781,390 and / or inequitable behaviour in requesting allowance under Section 17c from a continuation in part. There is a public interest in technologies remaining in the public domain. Thus I think this decision could be challenged in an opposition. Still, doing so takes resources and would incur costs. For the same reason that S0l-gel Technologies ltd seem happy with reexamination, I suspect that noone else will file an opposition to this ruling.


Copaxone patents invalidated by the US Patent Trial and Appeal Board (PTAB)

August 27, 2016
copaxone 2

Following an inter-partes review brought by Mylan against two patents protecting Teva Pharmaceutical Industries’ Copaxone, a drug for treating multiple sclerosis, the US Patent Trial and Appeal Board (PTAB) has invalidated all claims of the ‘250 and ‘413 patents for double-dose 40 mg Copaxone (glatiramer acetate injection) multiple sclerosis treatment. However, on 24 August 2016, TEVA announced that it plans to appeal to the US Court of Appeals for the Federal Circuit.

Erez Vigodman, president and CEO of Teva, said: “We remain confident in the strength of our intellectual property surrounding Copaxone.”

“We are prepared to defend the full suite of our intellectual property through the PTAB and US courts regardless of the time required.”

copaxone 3“We believe patients, physicians and payers will continue to value the efficacy, safety and tolerability of Copaxone and that it will remain a proprietary, global market-leading product for the reduction of relapses in RRMS patients.”

Teva have also announced that the PTAB had declined a request for a post-grant review on an additional Copaxone patent.

Copaxone represents 20% of TEVA’s income and the invalidation sent shares plummeting by 3%.


David Kappos

May 10, 2016

200px-David_Kappos_official_photo

Kim Lindy has managed to persuade David Kappos to speak at the IPR’s Fourth Annual Best Practices in Intellectual Property conference.

David, who I have met, is a pleasant fellow who, as can be seen from this photograph, bears an uncanny resemblance to Howard Poliner, the IP Law draftsman at the Israel Ministry of Justice.

With no disrespect to Howard or to the Israel Patent Office, I think that David Kappos, who served as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) from 2009 to 2013 is possibly even more eminent.  Prior to being confirmed to this post by the U.S. Senate on August 7, 2009, Kappos was the vice president and assistant general counsel, intellectual property law, for IBM Corporation. Nowadays David who works for the law firm of Cravath, Swaine & Moore, handles corporate mergers and acquisitions and litigation in the private section.

There was the rather erroneously called American Invents Act and there has been a series of important Supreme Court rulings that have resulted in the  US Patent Law and the USPTO undergoing major changes, particularly with regard to statutory patentable matter, with patents directed to genes, business method methods and software patents becoming more difficult to obtain and enforce. To my mind, the Supreme Court has clipped the wings of the Federal Circle Court of Appeal and I am not sure that their eminences necessarily knew what they were doing.  In other respects, US patent Law has become closer to that of the rest of the world.

I have no doubt that David Kappos will have a lot of insights into what is happening and where it might end and I applaud Kim for bringing him over. The conference is at an international level but is held here in Israel, and though I hate coommuting to Tel Aviv, it is much more convenient than Orlando or even Milan, and this conference is directed to practical issues.  For reports of previous Best Practices in IP Conferences see here, here andhere. For more details of this conference and to register, contact Kim Lindy.


PCT Filing Fees to Drop in January 2016

December 17, 2015

wipo_pct_logo270

Israel applicants of the PCT can select the USPTO, the EPO or the ILPO for conducting International Searches and preliminary examinations, i.e. for generating the ISR and IPER and chapter 2.

As of January 1, 2016, most of the PCT prices will drop. For example, the International filing fee will drop from $1384 to $1363. That price is good for applications of up to 30 pages including forms and Figures. Additional pages currently cost a further $16, but this will drop $1 a page to $15 a page.

The International Search fees via the EPO will drop from the current $2125 to $2097. Preliminary Examination fees (for the IPER) will drop from $208 to $205 if the USPTO is used. The IPER fee via EPO will drop from 191 Euros to a mere 183 Euros.Backing the trend however, the Israel Patent Office (ILPO) will now charge 794 Shekels instead of 766 Shekels.

Users of PCT Safe save $205 per application, and if they file electronically, the discount is $307.

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Extraordinary value for money is our PCTea bags which take away the stress of international filing. These are a blend of organic green tea and organic spearmint (nana) and are worth about $10 a box. Clients using our stress free PCT services are welcome to a free box.


US Patent Law for European Patent Professionals

November 26, 2015

nemeth

I was given a copy of US Patent Law for European Patent Professionals, by Audrey Nemeth to review, read it quite quickly and forgot to publish something. Now that the IPKAT has published a review, it has spurred be to get around to this myself.

The IPKAT’s review is here.

The book was written by a European patent attorney whilst preparing for the US patent agent license. It looks at US Patent Law from a European perspective.

Bibliographic data: hardback, xxviii + 215 pages. ISBN 9789041160447. Book’s web page hereAudrey Nemeth’s blogpost introducing this book on the Kluwer Patent Blog is here.

One of the most interesting points that it raised is the different histories behind the patent laws and the different basic philosophies that affect terminology, prosecution and patentable subject matter.

In Europe, for a patent claim to be valid it must describe an invention having novelty, utility and inventive step. In the US one requires novelty, utility and non-obviousness. I expect that most practitioners are aware of this, but haven’t necessarily thought about the difference in any depth.

As a result of this book showing the two systems side by side I realized that in Europe there is a basic philosophy employed by the Examiners during examination, that to deserve a patent, one needs to actively improve on the existing, by having an inventive step, whereas in the US, one is entitled to a patent for anything new under the sun made by man, unless it is obvious in light of the prior art.

Though similar, these concepts are not the same. In Europe, having dismissed the main claims as lacking novelty or inventive step, the Examiner may state that the dependent claims do not provide anything sufficiently significant to be considered as being an inventive step. In the US, however, the Examiner starts from the assumption that the invention is patentable and feels obliged to show how each and every claim is anticipated or obvious in light of prior art and established doctrine.

It is this fundamental difference in approaches which explains why the USPTO traditionally awarded the patent to the first to invent and even after the American Invents Act which further closes the gap between the two systems, will consider prior disclosure by the inventor as not necessarily preventing him from obtaining a patent.

Veteran Israel Practitioner David Gilat has said on many occasions that the Israel Patent Office’s job is to issue patents and there is an assumption of patentability that has to be overcome for an application to be refused. I was never convinced by that argument and on balance think that in this issue as in many others, Israel is closer to Europe and this is why during opposition proceedings, although the onus is on the opposer to show that the Examiner was wrong to allow the patent, nevertheless there is no assumption of validity. Putting aside the philosophical aspects, the book is helpful in understanding the procedural differences in both jurisdictions.

Audrey Nemeth suggests that it is sometimes justified having different parallel applications drafted for the US and Europe. I find this a little excessive and don’t imagine many clients would be willing to pay twice to have the same application drafted twice. I can, however see value in having licensed practitioners in both jurisdictions critiquing an application.

A personal note

I am not licensed in Europe or in the US, but for most of my clients, the US is the #1 patent jurisdiction. Funding and subject matter permitting, most clients see Europe as highly desirable for patent protection, although may largest client (in terms of patent work) only files in the US and the Far East, considering Europe too expensive for companies there to compete with him.

When I draft patents, I consider both the USPTO and EPO guidelines and am familiar with the differences in the maximum number of claims that don’t require excess claim fees, the different positions of the USPTO and EPO regarding multiple dependent claims, unity of invention, the two-part claim construction, preferred transition terms and annotations of the claims. I don’t prosecute directly in the US or EPO by generally provide very advanced draft responses so that the associate has little to do other than to review and put into his or her template. In most cases for the US, I use the associate’s template so that there is even less for the associate to do.

Despite 15 years of experience, and having drafted and prosecuted hundreds of patents, I found this book worth reading and useful reference to keep handy.

 

What about Japan, China and Korea?

The US and European mind-states, though not identical, reflect a Western Judeo-Christian heritage. I think that similar works covering the Korean, Japanese and Chinese patent laws would be very helpful.

I have a book in the same series that looks at IP in China. In Communist China, Intellectual Property Law preceded regular property law. I have a book on Chinese IP whose opening chapter quotes Confucius. Notably, that book has no footnotes or references to court rulings. It seems that whereas in the US and Europe, court rulings create precedent, this is not the case in China.

I know that claims that I draft are generally considered clear by European and US examiners, but often receive long lists of clarity objections in Korea.  Sometimes I can work out what the Examiner’s problem is. Sometimes I am completely flummoxed. The Examiner is, of course, looking at a translation of the English text I wrote and my copy of the Office Action is a translation of the Examiner’s comments. In this game of Chinese Whispers, I have to rely on the associate whereas in the US and Europe, we are all looking at the same English language documents.