By Stephen Hall
“Adjudication:” a proceeding which leads to a judicial decision
On November 27, 2017, the Supreme Court heard arguments concerning a challenge to the most frequent form of patent challenges before the United States Patent and Trademark Office (“USPTO”), known as inter partes review (“IPR”). The USPTO is a federal agency empowered by Congress to grant patents and perform other functions related to patents. Its other functions include the authority to review previously granted patents and determine whether they were, in fact, validly granted.
In some cases, the need for review may occur because material not found by the patent examiner would have prevented the patent from being granted in the first place. With all the millions of patents, published applications and journal articles in this country and worldwide, as well as other written publications, industry standards and activities that could affect the right to a patent, there is no system of patent searching guaranteed to uncover every relevant item. Thus, for several decades, Congress has authorized Continue reading Is Inter Partes Review Unconstitutional?
By Stephen Hall
Once-in-a-generation patent reform was introduced in our country about five years ago. Similar to many major initiatives, it may have reaped a few unintended consequences as well. Andrei Iancu, current nominee for USPTO Director, has written about one of these consequences that affects certain procedures at the Patent Office. Among his many other writings, he also has written substantively concerning the patentability of software. This post examines Mr. Iancu’s writings on both topics, and offers some thoughts on how his thinking could affect future patent cases.
THE SUBSTANTIVE: WHEN SHOULD SOFTWARE BE PATENTABLE?
There is not and never has been a bright line rule on the patentability of software-based systems. Rather, patentability depends on the nature of the problem the system solves and the extent of the improvements over existing technology present in the solution.
Although most cases addressing the software issue begin by citing the 2014 Alice case by the Supreme Court, Mr. Iancu was Continue reading Will the New USPTO Director’s Practical Thinking Translate to a More Flexible Approach and Better Decisions?
By Steve Hall and Kate Van Namen
Having been sworn in as the Forty-Fifth president of the United States, Donald Trump will now appoint individuals who will leave their fingerprints on the intellectual property landscape. Although it might not happen overnight, at some point in 2017 the President is expected to appoint a Director of the United States Patent and Trademark Office, and a new Supreme Court justice to fill the seat of Justice Antonin Scalia. These are at least two of the significant appointments by President Trump related to intellectual property.
The USPTO Director sets the tone for hiring and promoting administrative judges, examiners, and supervisors – individuals who, collectively, exercise great power with respect to the protection and enforcement of intellectual property rights. Also, the Director serves as the principal advisor to the President on domestic and international intellectual property policy matters.
Undoubtedly, the criteria for USPTO Director candidates will revolve around jobs. The President has expressed the need for strengthening U.S. patents worldwide and preventing misappropriation of intellectual property as substantial factors in protecting jobs in this country. Candidates who do not go to sleep at night thinking about Continue reading The Impact of President Trump’s IP-Related Appointments
By Stephen C. Hall
A recent opinion by a Federal Circuit panel demonstrates that three years can be a long time in the smartphone industry. MobileMedia Ideas, LLC v. Apple, Inc. targeted Apple’s iPhone products and determined, for now at least, the fate of claims in two patents owned by MobileMedia, a non-practicing holding company partially owned by Nokia and Sony. (Fed. Cir. 2014-1060, 2014-1091.) Rulings on two separate patents hinged on whether a skilled artisan would have been motivated to combine multiple references.
The determination of obviousness is a legal question based on juror fact findings. In the case at hand, two references in combination taught Continue reading The Motivation to Combine References: Substantial Evidence and the Obviousness Examination Guidelines
By Stephen C. Hall
Inter Partes Review (“IPR”) is a trial proceeding established by the America Invents Act that started in September 2012. Conducted before the Patent Trial and Appeals Board (“Board”), IPR allows an interested party to challenge claims in a patent for obviousness or lack of novelty, based on prior art patents or printed publications. Generally, IPR involves two steps: (a) filing a petition, which may (or may not) be followed by the patent owner’s response, and the Board rendering an “institution decision” within six months of petition; then (b) if the Board decides to institute IPR, it should in most cases enter its final determination within one year of institution. To institute an IPR (step “a” above), the Board must find that a reasonable likelihood exists that the petitioner would prevail with respect to at least one challenged claim.
Using IPR, petitioners have challenged thousands of claims contained in hundreds of issued patents. As discussed below, data existing on the USPTO website suggests a Continue reading IPR Statistics Suggest an Interesting Recent Trend
By Carl Eppler
It may not seem intuitive to connect intellectual property rights with a human tragedy, but indeed, the two intersect more often than we realize. This is likely not the proper forum to opine on the propriety of such an intersection, or the motives of those who mine its connections, but it is a topic ripe for discussion because it is so common in today’s world.
In the wake of the Paris Charlie Hebdo massacre on January 7, 2015, people from around the world began showing their solidarity with the victims under the hashtag “#jesuischarlie.” “Je Suis Charlie!” also became a rallying cry for the multiple demonstrations that followed the attack. Forty-eight hours later, someone in the U.S. filed a trademark application for “Je Suis Charlie.” You can check out the filing for yourself.
On its face, the filing appears legitimate — the applicant, the Je Suis Charlie Trust, is seeking to trademark the phrase for “[p]romoting charitable giving that reflects the core values of the donor by providing a method to identify the donor’s core values and to select charities that foster those values.” The application claims the first use of the mark in commerce was “at least as early” as the day of the attacks, though it is unclear how Continue reading Commentary: Trademarking Tragedy