New Guidance On What Is Patentable by the USPTO

Since the Alice decision, there has been a lot of confusion about what is patentable – especially for life science and software related patents. At the beginning of 2019, the USPTO has issued new guidelines for determining patetability. These new guidelines set forth that non-patentable subject matter, or “judicial exceptions”, include abstract ideas such as “mathematical concepts, certain methods of organizing human activity, and mental processes.” Additionally, it also includes “laws of nature and natural phenomena.” It further goes on to say ...

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Grace period and on sale bar related to “secret” sales

In a Supreme Court decision which was unanimous and authored by Justice Thomas, the Court reiterated the significance of offering a product for sale and how it affects the patent eligibility of the product. In Helsinn Healthcare v. Teva Pharma USA (Supreme Court 2019) the Court was asked to look at the enacted AIA and whether “secret” sales continue to qualify as prior art under the revised Section 102.  The court examined the provision that “an inventor’s sale of an invention to ...

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Trademark and Trade-dress Laws

Christian Louboutin’s signature red-soled heels are universally known as the ultimate signs of luxury in the shoe fashion world. However, despite their fame, the question arises of whether Louboutin can trademark his red soles as exclusively his own.

Louboutin has attempted to obtain trademarks in several countries, and the verdicts are varied. In Switzerland, for example, Louboutin was denied trademark protection because the court ruled that the red sole was not of distinctive character. However, Louboutin has successfully obtained trademarks in ...

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Blockchain Technology and related Patent Protections

Blockchain technology appears to be picking up steam in a multitude of industries. Recently, it was announced that IBM has launched a new blockchain platform in conjunction with nine financial institutions. That is, beyond the cryptocurrency use cases, blockchain technology may be used by financial services industry to create blockhain applications, including know-your-customer processes, derivatives post-trade processing, and reconciliation and market data.

According to Wikipedia, a blockchain is “a continuously growing list of records, called blocks, which are linked and secured using ...

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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 Valley ...

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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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