More Guidance on What Software IS and IS NOT Patentable

In a recent holding of Finjan Holdings, Inc., the Federal Circuit cited to another decision saying that they had previously concluded virus scanning is well-known, an abstract idea, and not patentable.  However, after further review, the Finjan patent  appeared to be claiming a method of operating differently than traditional virus scans that tagged as being previously-identified viruses.  In doing so, the Federal Circuit characterized the Finjan family of patents as using a “behavior-based” approach as compared to a “code-matching” approach of ...

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Right to Use and Resell Patented Products

The U.S. Supreme Court in a recent ruling has opined on the rights of a purchaser to use and resell patented products.

The patent system give the patent owner the right to exclude others from making, using, and selling the patented invention, for the life of the patent. The right to exclude, however, is subject to the rule of patent exhaustion – upon the sale of a patented product, the patent owner’s patent rights are exhausted and the buyer is free ...

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Trademark Cancellation Proceedings

The United States Patent and Trademark Office (USPTO) provides administrative procedures for contesting the validity of a trademark registration through a procedure known as cancellation proceeding via a “Petition to Cancel” an already registered mark. This procedure is useful to eliminate an interfering trademark registration or to weaken an opponent’s threatening litigation. It is also useful to cancel a mark that perhaps should not have been obtained and is now being cited against your pending application. The cancellation proceeding is essentially a micro-lawsuit within the USPTO and ...

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An Evolutionary Process: The Ins and Outs of Patent Law

A patent is a “proprietary right granted by the federal government pursuant to laws passed by Congress, which conveys to its owner exclusive rights to a claimed invention.” A simple description surely, but one that’s fraught with twists, turns and pitfalls that make the process of obtaining and defending a patent, particularly one involving an abstract idea, a challenging proposition.

Partner at Brooks Acordia IP Law, PC, Pejman Yedidsion, was quoted in this article:

Read the full article in the ...

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Patent Office Gives Examiners Guidance in Light of Enfish

In light of the Enfish, LLC v. Microsoft Corp. ruling by the Federal Circuit, the U.S. Patent and Trademark Office has updated its guidance to the Examiners. In it, Examiners are to consider that a claim “directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts.” The guidance also cautioned Examiners “against describing a claim at a high level of abstraction untethered from the ...

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Prioritized Patent Examination

A few years ago the USPTO merged our clients’ desire for faster prosecution with the USPTO’s desire for currency to create the TrackOne Prioritized Examination program. Since then, we at Brooks Acordia have had great success in getting our clients’ applications prepared, filed, prosecuted, and issued within twelve months. Under the program, the USPTO promises a final disposition—a Final Office action or Notice of Allowance—within about twelve months for an additional fee ranging from $1,035 for a micro-entity to $4,140 ...

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Important Changes to Design Patent Disclosures

At Design Day 2013, USPTO Design Practice Specialist Joel Sincavage delivered a nine-page PowerPoint presentation that changed how design patent applications would be examined. The first page depicted an old-time baseball player hitting a baseball through a design patent. The next eight pages changed how design patent applications would be examined.

Joel Sincavage announced that the USPTO would no longer be using the outdated standard of MPEP 1504.04 to determine whether converting solid lines to broken lines was new matter. Instead, ...

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Patent Reform by Executive Action: Part Two

President Obama has signed a series of executive actions to implement modest reforms in the U.S. patent system and to protect businesses from abusive patent litigation. Meanwhile, Congress continues to work on broad reforms.

Our previous post detailed recent progress on five executive actions from last year. Now, we will look at three executive actions that have just been announced.

Crowdsourcing prior art: The process of determining whether an invention is novel depends on finding relevant prior art. But many times, prior ...

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Indefiniteness as interpreted by the Supreme Court and PTAB

Supreme Court Changes Standard For Drafting Patents

The U.S. Supreme Court has effectively raised the bar requiring sufficient definiteness be present in a patent application “to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.” In a unanimous decision, on June 2, 2014, the Court reversed the Federal Circuit’s standard for “definiteness” and remanded Nautilus, Inc. v. Biosig Instruments, Inc. to the lower court. The Court held that “a patent is invalid ...

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Patent Reform by Executive Action: Part One

The White House and the United States Patent and Trademark Office (USPTO) are working to implement modest, but important, changes to the U.S. patent system as Congress continues to work through a slew of broader reforms. The White House recently highlighted progress on five executive actions signed by President Obama in June 2013 and announced three new executive actions.

This blog post will detail how last year’s executive actions are being implemented. Our next post will cover the newly announced executive ...

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