Developments in I.S. Patent Law
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The document discusses significant changes and developments in U.S. patent law, particularly regarding reforms pushed by the Obama administration, including a shift to a first-to-file system and expanded reexamination procedures. It highlights the initiatives of new USPTO Director David Kappos aimed at improving efficiency and responsiveness within the patent office. Key court cases, including in re Bilski and Synthes v. G.M. Dos Reis, are noted for their implications on patentable subject matter and the evolving landscape of patent law.
Developments in I.S. Patent Law
- 1. Developments in U.S. Patent Law Jay Erstling October 30, 2009 Changes in the USPTO The push for reform Director Kappos’ new vision for USPTO Developments in U.S. Caselaw In re Bilski Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico International Developments Patent prosecution highway Filings and timelines Information Disclosure Statements
- 2. Developments in U.S. Patent Law © 2009 Patterson, Thuente, Skaar & Christensen, P.A., some rights reserved - www.ptslaw.com RIGHT TO USE: This presentation may be freely distributed, used and/or modified, so long as appropriate attribution is made that includes retention of the PTSC logo in connection with any materials from this presentation. DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter. Jay A. Erstling 612-349-5771 erstling@ptslaw.com
- 3. Agenda Changes in the USPTO The push for reform Director Kappos’ new vision for USPTO Developments in U.S. Caselaw In re Bilski Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico International Developments Patent prosecution highway Filings and timelines Information Disclosure Statements
- 4. Patent Office Changes New Leadership David Kappos was sworn in on August 13, 2009 as the 52nd Undersecretary of Commerce for Intellectual Property and Director of the USPTO. Speedy appointment and confirmation under Obama Administration Average term in recent years is between 2-4 years Key Federal Circuit opinions affecting USPTO practice during the past ? months
- 5. US Patent Reform Key Proposed Changes First-to-file system • Eliminates one-year grace period in most cases Damages • Look to invention’s “specific contribution over prior art” to determine damages • Would likely reduce patent awards Expanded Reexam Proceedings • Reexaminations may be requested based on published prior art, or evidence of prior public use or sale in US Additional Post-Grant Review • Third party can file cancellation petition based on any ground of invalidity (rather than simply prior art) within 12 months of issuance
- 6. US Patent Reform The Push for Reform Administration is pushing both Senate and House very strongly to get this moving and done, in both chambers, this year Reason behind push is two fold – • (i) the need to fix Patent Office funding issue, and • (ii) the desire to take advantage of the political compromise reached on the damages issue It seems like there is a real chance that Patent Reform may pass this year
- 7. Changes in the USPTO Director Kappos’ New Vision for USPTO PTO is re-engineering its internal processing steps to try to reduce delay and also its quality measures and statistics it will use to report quality First Action Interview program increases chances of a first action allowance by 600% (from what to what was not given) PTO Director's blog, currently internal, will soon be going external on PTO web site CAFC decision in Bose gives PTO good guidance on inequitable conduct in terms of trademark statements of use, PTO is looking for input on how to provide better guidelines for submission of statements of use. In re Bose Corp., No. 2008- 1448, 2009 WL 2709312 (Fed. Cir., Aug. 31, 2009).
- 8. Changes in the USPTO Director Kappos has rescinded rules on continuations that have been the subject of litigation in Tafas v. Kappos. Tafas v. Kappos, 541 F. Supp. 2d 805 (E.D. Va. 2008) Proposed rules • “Continuation Rule” and “RCE Rule” would have permitted an applicant to file only two continuation applications and one request for continued examination (“RCE”) per application family • “Claims Rule” would have permitted an applicant to file five independent claims and twenty-five total claims per application USPTO announced October 8, 2009, that it will rescind the claiming and continuations rules package. • “In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.” – Director Kappos
- 9. In re Bilski Bilski and Warsaw filed a patent application on April 10, 1997 for a method of hedging risks in commodities trading Federal Circuit’s Decision A process is statutory subject matter if it either is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing. In Re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) Thus, Bilski’s method was not patentable subject matter Oral argument before US Supreme Court scheduled for November 9, 2009 Will hopefully provide guidance on business method patents as patentable subject matter William Mitchell College of Law IP Institute has filed an amicus brief
- 10. Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico
- 11. International Developments Patent Prosecution Highways Bilateral agreements between the patent offices of two countries that allow for expedited application prosecution in certain circumstances As of July 2009, the USPTO had PPH agreements, either as fully implemented programs or pilot projects with Japan, the UK, Canada, Korea, Australia, Europe, Denmark, Singapore, Germany, and Finland Some Statistics on USPTO Filings and Timelines Patent average first action pendency FY 2008 – 25.6 months Patent average total pendency FY 2008 – 32.2 months Patent applications filed electronically FY 2008 – 72.1% Applications filed by residents of China (Hong Kong) FY 2007 – 1,447 Applications filed by residents of China (People’s Republic) FY 2007 – 4,422
- 12. Information Disclosure Statements Statutory duty of candor and good faith before the USPTO applies to each individual associated with the filing and prosecution of a patent application (35 CFR 1.56) Statutory duty of an applicant to file an IDS during the pendency of a patent or re- issue of a patent application (35 CFR 1.97) IDS considered by the Examiner only when such disclosure complies with both statutory content requirement and timeliness requirement
- 13. 37 CFR 1.98 Information Disclosure Statements Content Requirement A list of all patents, publications, U.S. applications, or other information Legible copies of each foreign patent, each publication or relevant portion of the publication A concise explanation of relevance as presently understood for all non-English documents Breach of candor and good faith duty when the patentee knowingly submit partial translations and concise relevance explanations that will mislead the Examiner. See Semiconductor Energy Lab.Co. v. Samsung Elecs. Co., 204 F.3d 1368 (Fed. Cir. 2000)
- 14. Information Disclosure Statements Trigger Inequitable Conduct McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007) Duty of candor to submit IDS extends to activities occurring during prosecution of related applications • Prior art in one co-pending application • Information from Office Actions Materiality and intent threshold met based on “Reasonable Examiner” standard Cumulativity threshold determined by the Examiner
- 15. Summary
- 16. Contact Jay A. Erstling Patterson, Thuente, Skaar & Christensen 4800 IDS Center, 80 South 8th Street Minneapolis, MN 55402 (612) 349-5771 erstling@ptslaw.com www.ptslaw.com