aipf 2016
TRANSCRIPT
Patent Issue-Spotting for Trademark Lawyers
presented byCrissa A. Seymour Cook
Association of Intellectual Property FirmsWebIPHour
February 23, 2016
Protecting “Inventions”• Patents
- Inventions: *Processes/Methods *Machines/Devices
*Compositions• Trade Secrets
- Confidential information which has economic value: *Formulas *Customer lists *Manufacturing processes
America Invents Act (AIA)• Signed into law September 16, 2011• The United States (along with the rest of the
world) is now a “first-inventor-to file” system.• Still some major differences between U.S.
and other countries• Goes into effect for any patent applications
with effective filing dates on or after March 16, 2013.
AIATwo major categories of “prior art”*:•A public “disclosure” regardless of how made, as of the date it was publicly accessible
•U.S. patent, published U.S. application, or published PCT application, as of the date its subject matter was effectively filed. *USPTO’s interpretation
AIA“Disclosures” and anything else “otherwise available to the public”•Printed publication (book, magazine, article, webpage, patents, published apps, powerpoint presentation)•Public Use or Display*
– a demonstration at a trade show– an oral presentation at a scientific meeting– Lecture or speech
•Public Sale*•Statement made on a radio talk show•YouTube video
*Public use or sale does NOT have to be
an “enabling” disclosure
AIA• Notable changes in new law:
– Expands “public use” and “on sale” prior art to anywhere in the world (used to be limited to “in this country”)
• Changes “invention date” to “effective filing date” as relevant comparison time
• PCT/US applications used to be prior art only as of their U.S. or PCT filing date. Now they can be prior art as of their foreign priority date.– Foreign applications themselves are still prior art
only as of their publication date.
AIA• 1 Year Grace Period?
– Still available – One-year grace period for inventor’s
own “disclosure,” or disclosure of the inventor’s work by another.
– One-year counted from the earliest effective filing date of the claimed subject matter.
AIA – public use and saleUSPTO position is that “public use” is limited to uses
that are accessible to the public.USPTO position is that the phrase “on sale” means the
sale must make the invention available to the public.“AIA...does not cover secret sales or offers for sale” (2013 Guidelines, page 11075)
*NDAs become very important because they can save any pre-filing activity from becoming a “sale” that triggers your 1 year grace period.
Patentable subject matter• Hot topics at the U.S. Supreme Court
– Software– Business methods– Biotechnology
• Tug of war between the pro-patent U.S. Federal Circuit and the somewhat anti-patent U.S. Supreme Court.
Caselaw• U.S. Supreme Court
– Alice Corp.: Alice Corp. Pty. Ltd. v. CLS Bank Int’l (2014)
– Myriad: Assoc. for Molecular Pathology v. Myriad Genetics, Inc. (2013)
– Mayo: Mayo Collaborative Services v. Prometheus Labs. Inc. (2012)
– Bilski: Bilski v. Kappos (2010) • U.S. Federal Circuit
– Ariosa Diagnostics v. Sequenom (2015), en banc rehearing request denied
Patentable subject matter• “Anything under the sun made by man” – key
language• Laws of nature, abstract ideas, natural
phenomenon, algorithms, etc. are not patentable (have “never” been patentable)– Are not made by man – handiwork of nature– Presence of a law of nature, algorithm, etc. does
not automatically render an otherwise patentable claim unpatentable
– Application or implementation may be patentable
Patentable subject matter• Processes pose special problems because
they can be interpreted as attempts to patent ineligible subject matter such as abstract ideas or phenomena. – Creates special problems for claiming
diagnostic methods and software• Biotechnology and nutraceuticals more
difficult to protect (“products of nature”)
Patentable subject matter• “I know enough about Alice or Myriad to be
‘scary!’”• Numerous guidance documents from the USPTO
– Federal Register Notice: 2014 Interim Guidance on Patent Subject Matter Eligibility • 2014 Interim Eligibility Guidance Quick Reference Sheet (December 2014)• Nature-Based Product Examples (December 16, 2014)• Abstract Idea Examples (January 27, 2015)
– Federal Register Notice: July 2015 Update on Subject Matter Eligibility• July 2015 Update: Subject Matter Eligibility (July 30, 2015)• July 2015 Update Appendix 1: Examples (July 30, 2015)• July 2015 Update Appendix 2: Index of Eligibility Examples (July 30, 2015)• July 2015 Update Appendix 3: Subject Matter Eligibility Court Decisions [updated Nov.
4, 2015]• July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet (July 30, 2015)
Stay tuned!
Patentable subject matter• Ineligibility themes
– Claims not tied to specific structure or machine– Process can be performed mentally or on paper– Generic computer elements recited– “computer-implemented”– Mere automation– Merely provide “the routine or conventional
use” of the Internet or a generic computer
Patentable subject matter• Some things we do “know”• Unpatentable abstract ideas:
– Fundamental economic practices» Creating a contractual relationship
(buySAFE)» Performance of financial transaction
(Bilski)» Hedging risk (Bilski)» Mitigating settlement risk (Alice)
Patentable subject matter• Unpatentable abstract ideas:
– Certain methods of organizing human activities » Processing loan information (Dealertrack)» Managing a game of bingo (Planet Bingo)» Using advertising as a currency
(Ultramercial)» Using algorithm to determine optimal # of
client visits (In re Maucorps)» Meal planning (DietGoal)
Patentable subject matter• Unpatentable abstract ideas:
– Ideas, themselves (processes that can be performed mentally (or with pen and paper))» Comparing test data to a control or target data
(Ambry, Myriad)» Comparing data to determine risk level (Perkin
Elmer, Prometheus)» Using categories to organize, store, and transmit
data (Cyberfone)» Using mathematical correlations to organize
information (Digitech)
Patentable subject matter• What might be patentable in the software space?
– Technology that is “necessarily rooted in computer technology” in order to overcome a problem specifically arising in the realm of computer networks.
• E.g., Antivirus software • What about natural products?
– Method claims implementing a natural product may still be okay (for now)
– Nature-based products need to be distinct from their natural counterpart in some way, OR the claim must recite additional elements that amount to something significantly more than the natural product.
Intersection of TM and patents• Impact of a trademark application on the
filing of a patent? – 1 year grace period triggered? – Probably not – the TM application itself will
usually not contain a sufficient disclosure of the subject matter of the invention
• Consider whether the description of goods and services “gives away” any points of novelty
• Consider whether the application “admits” to a use of the invention in commerce (or gives away a specific date relative to invention)
Intersection of TM and patents• Impact of other activities on the filing of a
patent? – 1 year grace period triggered? – Publication, demonstration, and promotion– Consumer testing, and market or usability
studies or market or consumer testing*– Working with manufacturers or suppliers*
* Can be “saved” if nondisclosure agreements in place.
Intersection of TM and patents• Design patents and Trade Dress
– Design patent protects the ornamental design for a product
• Filed before May 13, 2015: 14 years from date of grant• Filed on/after May 13, 2015: 15 years from date of grant
– Trade dress protects consumers (prevent consumer confusion, confidence in purchasing, etc.), as well as the owner’s property rights in the mark, and investment in design and marketing of its product to create awareness of the design.
• Potentially perpetual
Intersection of TM and patents• Design patents and Trade Dress
– Design patents are filed and examined at the USPTO for novelty and non-obviousness.
– Must have some ornamental feature and cannot be solely functional.
– No “common law” design patent rights
Intersection of TM and patents• Design patents and Trade Dress
– “Functionality” •The ornamental or non-functional
requirement is less strict in examination of a design patent application than in trade dress (typically trade dress cannot contain any functional features).
•A utility patent filing can create "strong evidentiary inference of functionality” if it claims a feature asserted to be non-functional in the trade dress registration.
Intersection of TM and patents• Design patents and Trade Dress
– Publication, demonstration, and promotion of a product to establish “secondary meaning” and help secure trade dress rights can be counterproductive to patent rights – may start 1-year bar
– In theory, consider whether you can start with design patent protection (keep out competition while developing secondary meaning) and finish with trade dress protection.
Patent Ownership Primer• In the U.S., patent rights initially vest in their human
inventors.• General practitioners who draft agreements relating to
employment, confidentiality, research, manufacturing, etc. need to be cognizant of IP provisions and the proper approach to establishing a clear chain of title.
• Essentially, any IP created by an organization is employee-created IP – because only human individuals can “invent” under the U.S. patent scheme. – The term “employee” is used very broadly herein to encompass inventors that
might not be traditional employees, but have some relationship to the company which may entitle the company to intellectual property created by that individual.
Patent Ownership Primer• In the U.S., mere employment is NOT sufficient
to vest title to an employee’s invention in the employer. Stanford v. Roche 563 U.S. 776 (2011)
• Employment agreements should include express provisions clearly addressing ownership of employee-created IP.
• The same approach should be taken for independent contractors, etc.
•
Patent Ownership Primer
If possible, employment agreements should always have a present assignment of inventions.
Patent Ownership Primer
A formal assignment should still be executed and recorded once a patent application has actually been prepared to provide notice to third parties.
Record within 3 months, otherwise can run into a BFP situation.
Employment Agreements
Caveat - State-specific requirements: Several U.S states, including Kansas (KSA 44-130) have labor laws addressing the assignment of inventions.
Other Pitfalls“Work for hire” – This language is sometimes used erroneously in employment agreements with respect to inventions. It is specific to copyright and does not apply to patent law.
There is, however, a “hired to invent” type doctrine, as well as a “shop rights” doctrine that may help a company successfully argue ownership, even where no specific employment provisions are present.
Other Pitfalls• “Hired to invent” does not apply to general
employee job descriptions. It must be a specific task and the facts must make it unmistakably clear the person was hired to achieve a specific result.
• “Shop rights” does not give the company patent-type rights. It’s traditionally viewed as simply a license to practice the invention.
Thank You!
Hovey Williams LLP84 Corporate Woods
10801 Mastin Blvd., Suite 1000Overland Park, KS 66210
913.647.9050www.hoveywilliams.com