Patent

Tuesday, 21 October 2014 17:03

Software Patentability after Alice Corp v. CLS Bank

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In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case's more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of "abstract ideas".

The White House under Obama Administration is ”pressuring” the new Indian Prime Minister Narendra Modi to revise the Indian Intellectual Property Laws, especially to repeal Section 3 of the Indian Patent Act of 1970, as amended in 2005.  In an ongoing effort to strengthen relationships between the U.S. and India, both administrations have agreed to establish high level working groups on intellectual property matters to engage in issues of concern.  This move on part of the White House, however,  is not unprecedented, given that the United States has consistently advanced higher intellectual property protections through its trade working groups and partnerships on international platforms.

The White House is working on initiatives geared to aid defendants from suits asserted by Patent Troll Plaintiffs.  A Patent Troll or a patent assertion entity is a non-practicing person or entity that enforces its rights against accused infringers in an attempt to collect damages often from a big pocket entity like Microsoft or Apple.  A patent troll generally does not manufacture products or advance services from the patent in question, but rather stockpiles it, until an entity or person infringes on their patent. 

Personal Audio LLC, a patent troll has recently been flourishing in its efforts of collecting huge royalties from podcasters all across the United States. Its patent claims to have invented “episodic content” transmitted over the Internet, including video content. The infamous podcasting patent was infringed by media giant CBS.

The Supreme People’s Court of the People’s Republic of China (China) has proposed a bill to inaugurate three (3) Intellectual Property (IP) Courts in predetermined geographical areas. The Courts are strategically proposed to be in predominant IP hubs of China: Shanghai, Beijing and Guangzhou. It is rumored that the bill will be introduced to the legal committee of National People’s Congress in China expeditiously. The proposed bill is detailed for the IP Court to be a mid-level court, similar to the United States Federal District Court here in the United States.

Thursday, 11 September 2014 13:38

Tesla Motors’ Voluntary Release of its Patents

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Tesla Motors (NASDAQ: TSLA, Trading at 286.044.85 (1.72%) as of September 04, 2014) is an American company that manufactures, designs and sells fully electric vehicles including electric vehicle powertrain components. Tesla Motors significantly gained notoriety amongst consumers when they first introduced their Tesla Model S model. The model is a fully electric vehicle capable of going up to 300 miles without the need for an electric refuel.  This innovative effort helped the company leapfrog in the forefront of the electric vehicle market evidenced by its unprecedented profit gains in 2013. Tesla Motors also recently announced its new Model III, a mid-size sedan expected to make its debut in 2016. The price of the vehicle is set at around $35,000, putting it in direct competition with BMW 3 series and Mercedes C-Class.

In 2011, Congress launched the patent pilot program to streamline patent litigation. Out of all the federal district courts in the United States, fourteen (14) federal district courts were nominated to participate in a 10-year pilot project calculated to augment expertise in patent cases among United States District Court judges. The pilot program was mandated by Pub. L. No. 111-349 effectuated in July, 2011.

To be eligible to participate, courts had to be among the 14 district courts in which the largest number of patent and plant variety protections cases were filed in 2010. Alternatively, it could be one of the district courts that adopted or certified to the Director of the Administrative Office of the United States Courts (AOUSC) with the purpose to espouse local rules for patent and plant variety protection cases.

The Southern District of Florida was one of the fourteen (14) district courts selected. Soon thereafter, the Patent Pilot Program was administratively entered on June 20, 2011 by then-Chief Judge Federico A. Moreno for the United States District Court for the Southern District of Florida.

Bingo, the popular game of chance and subject of a multi-billion dollar gaming industry, came within the sights of the Federal Circuit’s application of patent eligibility recently.

In a unanimous opinion, the U.S. Supreme Court ruled today that all claims at issue in the highly anticipated case of Alice Corp. v. CLS Bank Int'l. are invalid under §101 of the patent statutes.

Effective June 2, 2014, the United States Patent and Trademark Office will commence a six-month Glossary Pilot Program to promote clarity in patent claims, particularly for software-related inventions (falling under technologies examined by USPTO Technology Centers 2100, 2400, 2600, and 3600/Business Methods).  Possible benefits of the program could include quicker and more consistent examination, with hopes for higher quality patent claims.  Possible concerns about the initiative might include a potential for inadvertent over-narrowing of certain defined terms.

The program requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claims.  Applications accepted into the pilot program will receive expedited processing and be placed on an examiner’s special docket prior to the first office action.

The March 27, 2014 Federal Register details for the Glossary Pilot Program can be found here.

A link to the USPTO press release about the program is provided here.

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