The UK’S departure from the EU is bringing very interesting changes to the current state of IP arrangements between the two. Beginning on January 1, 2021, EU trademarks and Community design applications and registrations will no longer have effect in the UK. However, under the Withdrawal Agreement, the UK Intellectual Property Office will automatically create comparable rights for all EU trademarks and Community designs which were registered on or before January 1, 2021 free of charge. Pending applications unfortunately won’t fare so well. EU trademark applications and Community design applications that have not been proceeded to registration before January 1, 2021 will no longer be effective in the UK, however filing a new corresponding UK application will be an available option. If you are interested in filing in the EU prior to the deadline, contact one of our attorneys at WVD!
Wolter Van Dyke Davis (WVD) partner and patent attorney, Dr. Eugene Molinelli, was recently successful in reversing the USPTO examiner and pre-Appeal review on Appeal before the Patent Trial and Appeal Board based on the Appeal Brief in Ex Parte Bustamante of Stanford University (2014/0045705), leading to allowance of all rejected claims. The invention is directed to determining genetic haplotype using novel bioinformatics techniques. Appellant’s arguments focused on 35 USC 101 issues against the Examiner’s art unit’s position that computer techniques involving only information in and only information out are not eligible for patent protection. Our brief was able to demonstrate, to satisfaction of the Board, specific non-mental processing steps of man-made measurements leading to a practical application.
Erica Cipparone has been selected as a recipient of Florida Association of Women Lawyer’s 2020 Leader in the Law Award. This honor is awarded to women who have earned the respect of others professionally, been involved in activities for the betterment of their local community, exemplified the qualities of a positive role model, and advanced the cause of women in their community. Congratulations Erica!
Eugene Molinelli, J.D., Ph.D.,
© 2019 Eugene Molinelli
The draft 2019 Revised Patent Subject Matter Eligibility Guidance (“draft Guidance”) should be modified to treat equations that relate physical phenomena involved in a man-made object, and steps that are not routinely performed mentally, as not per se abstract, but instead directed to a practical application that renders them patent eligible subject matter under 35 U.S.C. §101.
Step 1 of the patent eligibility analysis is to determine if the claims are directed to one of the four categories listed in 35 U.S.C. §101 (process, machine, article of manufacture, composition of matter). If not, the claim is not eligible. If so, the process moves to the two-step Alice/Mayo process that has been implemented by the USPTO as steps 2A and 2B of the patent eligibility analysis. In step 2A it is determined whether the claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas) . If not, the claim is patent eligible and the application is examined under the other criteria (useful, new and non-obvious). If the claim is found during step 2A to be directed to a judicial exception, then in step 2B it is determined if there is something more than the judicial exception that provides the novelty.
,Software is often found to be directed to an abstract idea at step 2A. The claim is examined to determine whether there is “significantly more” at step 2B. In the draft Guidance recently published for public comment, the USPTO asserts “that abstract ideas can be grouped as, e.g., mathematical concepts, certain methods of organizing human activity, and mental processes.” The draft Guidance further asserts mathematical concepts include “mathematical relationships, mathematical formulas or equations, mathematical calculations” citing several cases that have addressed mathematical claims (draft Guidance, p. 9-10). The draft Guidance further asserts mental steps include “concepts performed in the human mind” (draft Guidance, p. 11).
This grouping is too broad because it sweeps into abstract ideas many useful software inventions that do not fit the factual patterns of the cited cases finding ineligible software claims. In fact, this grouping has the potential to be a per se prohibition on pure software inventions that is eschewed by the Alice decision; and explicitly rejected in the Federal Circuit (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)) which states claims directed to software are not “inherently abstract” and too broad a grouping “otherwise risks . . . creating a categorical ban on software patents.” Enfish at 1335, 1339.
In many claims, a mathematical equation expresses the specificity that distinguishes the claimed process from generic computer processes such as “data analysis” and “correlation.” To automatically classify such an equation as abstract is to institute a catch 22 for the Applicant. The specificity and novelty are in the equation; and so, both are ignored in the examination of claims.
In the following, it is assumed that the equations operate on information input, e.g., information previously collected or stored; and, produce information output, e.g., the value(s) for some physical property that are not used to control a machine or transform a substance or article of manufacture or treat a patient. As proposed here, patent eligible software claims recite implementation on a computer/processor, with some output based on the result exported from the processor, either as data presented on a display or transmitted as a signal to a different component or device. In such claims, certain types of equation should be patent eligible under step 2A.
The new distinction that the USPTO, and judges, should consider under step 2A is whether the equation in the software is a mathematical identity or not. A mathematical identity is true, that is, the equality expressed by the equation holds, regardless of any physical phenomenon that might be represented by the variables x1, x2,… in the equation. It does not matter what physical phenomenon x represents, whether time, distance, mass, temperature, etc.. With this definition of a mathematical identity, there are two classes of equations that are used in software claims that influence whether the equation itself is an abstract idea.
- Mathematical identities.
1.1 (Not eligible) Mathematical identities simply evaluated on a computer.
This is the kind of equation found ineligible in Benson, which was implemented as an algorithm involving a series of steps, and simply converted a binary value (of zeros and ones) to a decimal value (of the digits 0 through 9) indicating the same numerical value. Such a conversion is true no matter what physical phenomenon the binary value or decimal value represents; it is a mathematical identity. There was no requirement, in claim 13 adjudicated by the SC in Benson, that the mathematical identity be confined to a particular computer operation, e.g., to retrieve digital data from a memory location and convert that value to decimal before storing on computer readable media, or presenting on a display, or sending to another component or device. Benson at 74.
1.2. (Eligible) Mathematical identities evaluated to cause computer operation.
It is inherent in the design of a general-purpose computer processor to perform operations that are agnostic as to the physical phenomenon being represented by the data. Such computer technologies rely on some mathematical identities. .Examples of such identities are the equations used in digital data compression, digital data transmission, digital data encryption, different digital implementation of a mathematical operation rather than used manually, e.g., Fast Fourier Transform for digital data, among others. However, unlike the claim in Benson, claims reciting these equations do not usurp all uses of the underlying mathematical identity. They are limited to how the computer operates during the process that has utility to the computer or computer system, e.g., the application of the process to compression, encryption, carrying out the evaluation, etc. This is the type of mathematical concept that should be patent eligible.
- Equalities among particular properties (not mathematical identities).
2.1. (Eligible) Equations for physical phenomena.
These equations are only true if the variables in the equations relate to particular physical phenomena. By definition, these are not mathematical identities. Example equations are employed for: inferring a value of a physical quantity from measurements of different physical quantities; changing a contour in a computer animation image based on a change in sounds, providing a segmentation boundary for a particular organ based on medical image data. These equations inherently involve a practical application and should be eligible and not be considered abstract under step 2A. It is noted that there are at least two subcategories of equations of this type that the courts have found not eligible. But in each case, these exceptions were found ineligible not because they were equations, but for other reasons. These sub-categories are described in section 2.2 and 2.3.
2.2 (Not eligible) Equations that evaluate a natural law.
These equations are only true if the variables in the equations relate to physical phenomena (thus not mathematical identities) but do express a natural law alone (e.g., correlation of physical phenomena in nature, such as, e=mc2). These are recognizable and distinguished from equations of type 2.1 because these equations are claimed as unrelated to whether a man-made object is involved, e.g., unrelated to whether a man-made device makes a measurement or not, or unrelated to whether a man-made device perturbs the environment or not. Each is ineligible, not as an abstract idea, but as directed to a natural law. Note that the Arrhenius equation adjudicated in Diamond v. Diehr, 450 U.S. 175, 188 (Diamond) is of this type. The draft Guidance states. The statement in Diamond appears to require an inventive step other than an equation. Diamond at 191. It should be noted that this is dictum because the claims were found to be eligible for reciting something more (under what is now known as step 2B), by operating a rubber molding device. Diamond at 191. The Court correctly noted that the Arrhenius equation is not patent eligible; but gave an overbroad statement, lumping all equations of different types into the same barrel. This overbroad statement need not be followed blindly; but, instead, should be confined to the facts of that case, which involve an equation citing a law of nature. Benson has already been discussed as directed to a mathematical identity of type 1.1.
2.3. (Not eligible) Equations involving only mental steps.
The equations in this category are equations that describe one or more mental steps that are typically/routinely/easily performed without a computer. Flook found an equation for an alarm limit to be patent ineligible. Flook at 594. The facts of Flook are consistent with ineligibility based on implementing mental step. Flook states “the computations can be made by pencil and paper calculations” and the adjudicated claim does not recite a processor or situation in which it is impractical to perform the steps mentally; thus, Flook should be limited to the mental steps exception and not stand for the proposition that all equations should be considered in the prior art; thus, making all claims directed to the use of equations on a computer ineligible. Flook at 586. The cases cited by Flook (Benson and Morse) do not support that conclusion; rather, those cases are related to citing a mathematical identity for equations of type 1.2 (Benson), and a natural law as described above for equation type 2.2 (Morse), respectively.
2.4. (Not eligible) Equations relating ineligible variables.
Equations that recite ineligible variables are only true if a variable in the equation relates to a particular property (thus not mathematical identities); but the particular property is not a physical phenomenon, and instead has been found by the courts to be abstract. Examples of properties found to be abstract by the courts, as listed in the draft Guidance, include certain methods of organizing human activity. These equations should not be eligible for patent protection because they involve variables or results that are specifically found to be abstract ideas. These are abstract, not because the equation is abstract; but, because of the other factors that render a claim abstract, namely, the variables x1, x2 … or result y, refer to abstract concepts. The organizing human activity portion of abstract ideas is the reason for unpatentable subject matter in many famous cases. Another example is SAP Am. Inc. v. InvestPic LLC, 898 F. 3d 1161 (Fed. Cir. 2018) cited in the draft Guidance, where the focus of the claims is analyzing data pertaining to investment. SAP at 1164-1165.
Figure 1 summarizes the above analysis of equations.
Figure 1. Venn diagram of mathematical equations. Red areas have been found patent ineligible in various cases. Green areas should be patent eligible as practical applications that are not abstract ideas.
What a mess. Kudos to the Boy Scouts of America for opening up its membership to girls, but the gender-specific nature of the branding, plus the undeniable existence of a competing group, the Girl Scouts of the USA, has created a brand battle that would be right at home on a law school exam.
Timothy Geigner at TechDirt has a good post about the mess, but the basic issue is simply that the Boy Scouts of America are rebranding as “Scouts BSA.” Yes, the “BSA” still presumably stands for “Boy Scouts of America,” but by dropping the “BOY” portion from the mark, it has allegedly created confusion among the scouting community as a whole and is harming the Girl Scouts.
As explained in the TechDirt article, and in other articles on this issue, The Girl Scouts have sued the Boy Scouts in federal court, claiming trademark infringement, dilution, and other unfair competition. The complaint is HERE, and it is 50 pages long – covering interesting scouting history and allegations of intentionally sowing confusion.
From the Introduction in the Complaint:
There is also corresponding activity at the USPTO’s Trademark Trial and Appeal Board. The lawsuit was filed in the Southern District of New York on November 6, 2018. However, prior to that, on October 16, 2018, the Girl Scouts of the USA filed a request to extend the time to oppose the Boy Scouts of America’s trademark application for “SCOUTS BSA,” which the BSA filed on May 3, 2018. Here is the TTAB docket:
Since there is now pending district court litigation, the Girl Scouts of the USA will likely not need to pursue opposing the application at the TTAB because the district court litigation can take care of the registrability and confusion issues, and, the TTAB typically suspends its own proceedings when there is concurrent district court litigation.
The Girl Scouts of the USA likely intended to pursue this in district court from the beginning, but the Boy Scouts’ “SCOUTS BSA” trademark application was published for opposition on September 18, 2018, which meant that the Girl Scouts had to either file a notice of opposition or seek an extension of time to file a notice of opposition within 30 days of September 18, 2018, otherwise the application would proceed toward registration. Thus, the Girl Scouts, in an abundance of caution, filed the extension request within the 30-day window to preserve the ability to oppose the mark at the TTAB regardless of the status of the district court litigation. Again, the TTAB will likely not have to get involved if the district court litigation takes off, but this is a good example of making sure all bases are covered before kicking off a litigation strategy.
Sorry, couldn’t resist.
This will be a fascinating case. Since these marks are so old and well-known, the dilution claims should be interesting.
*This article, in its entirety, was first published on Kevin’s personal blog, www.floridiptrends.com
I write a lot about trademark issues within the cannabis industry, but there is another aspect of intellectual property that I believe will have a greater impact on the industry than even brand/trademark disputes, and that is patent infringement.
Cannabis-related patents have been around for years, but we’re just starting to see those patents being challenged and asserted. Two recent examples are illustrative of what I believe will become more and more commonplace in the very near future.
Case 1: Insys Development Co. v. GW Pharma Ltd.
This case is actually an “inter partes review” (or “IPR”) before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”). In a nutshell, the IPR process allows a party to challenge the validity of another party’s patent prior to any claims of infringement. The argument is that the patent never should have been issued because the invention was already known or was obvious before the application was filed.
GW Pharma owns U.S. Patent No. 9,066,920 for “Use of one or a combination of phyto-cannabinoids in the treatment of epilepsy”. Claim 1 of the ‘920 Patent is simply this:
A method of treating partial seizure comprising administering cannabidiol (CBD), to a patient wherein the CBD is present in an amount which provides a daily dose of at least 400 mg.
Thus, if your CBD product is used to treat partial seizures and the treatment method includes CBD “in an amount which provides a daily dose of at least 400mg” then you arguably infringe the patent.
Insys filed an IPR petition to cancel the ‘920 Patent based on “prior art” (i.e. relevant evidence) which Insys believes shows that the invention in the patent was already known or was otherwise “obvious” in light of other prior art that existed prior to the filing of GW Pharma’s application. The IPR process (and patent law in general) is very complex and beyond the scope of this post.
One reason this IPR is so important is because the claims in the patent are fairly broad and could implicate many, many products that are already being marketed (albeit perhaps without the claims of treating epilepsy and seizures, which is part of what complicates these cannabis-patent issues). So, just how easy is it to challenge a patent like this via an IPR? Well, you’ll need over $30,000 just in filing fees to the USPTO if your petition is accepted by the USPTO and the proceeding is instituted ($15,000 just to file the petition, and another $15,500 if the USPTO “takes the case” and starts the review process). You read that correctly – over $30,000 just in government filing fees to get started. That does not include the attorneys’ fees that Insys (and GW Pharma) are paying, which I conservatively estimate are already in the hundreds of thousands of dollars. This is all to invalidate a single cannabis-related patent.
This is complicated litigation that few businesses can afford despite the fact that some of these patents affect the very ability of such businesses to exist.
There are many supplemental procedural issues involved in this case, but I expect a decision regarding the ‘920 Patent’s validity will be reached within the next couple of months.
Case 2: United Cannabis Corporation v. Pure Hemp Collective, Inc.
This case is different than the above IPR because this is a “classic” patent infringement case that is being brought within the United States District Court for the District of Colorado. Whereas Insys brought an IPR at the USPTO to try and invalidate GW Pharma’s patent prior to GW Pharma asserting the patent against Insys, here, United Cannabis Corporation owns a patent and is alleging that Pure Hemp Collective’s products infringe the patent. The similarity to the IPR is that it is typical practice for the defendant in a patent infringement case to defend against the infringement by counterclaiming that the patent is invalid. Thus, the Colorado court will likely address the validity of the patent should the case proceed.
The patent at issue in this case is U.S. Patent No. 9,730,911 for “Cannabis extracts and methods of preparing and using same.” Claim 1 is simply:
A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is tetrahydrocannabinolic acid (THCa).
The case was just filed early August 2018, so it’s too early to see how Pure Hemp Collective intends to respond. It is a pretty typical example of the type of a patent infringement complaint which I predict we will see more and more of in the very near future as cannabis-patent owners start asserting their patents.
In sum, I expect to see more patent friction within the cannabis industry, and I also expect the media attention to increase as the gravity of cannabis-related patents becomes more well-known. There are already “patent busting” projects out there related to cannabis-patents, and I would not be surprised to see an increased focus on those efforts.
* This article, in its entirety, was first published on Kevin’s personal blog, www.floridaiptrends.com.
Written By Eugene J. Molinelli
Before an invention is evaluated under the standards of novelty and non-obviousness, it must be determined if the invention is patent eligible subject matter. The basic principal is that patent eligible inventions, according to statute, are directed to: a process; machine; article of manufacture; or a composition of matter. However, judicial exceptions have been established by the case law to prevent patenting: laws of nature (such as e=mc2); natural phenomena (going by different names in different cases but including such phenomenon as naturally occurring minerals, organisms and molecules called products of nature, and naturally occurring correlations between or among measurables); and abstract ideas (such as mental steps, information, conventional business practice, generic computing). There has been much uncertainty in determining whether a particular claim falls into one of the exceptions. In an infamous decision, Alice Corp. Pty. Ltd. v. CLS Bank Int’l. 134 S. Ct. 2437 (2014), the Supreme Court laid out an analysis procedure. Step 1, determine whether the claim is directed to one of the 4 statutory categories. If not, it is not patent eligible. If so, perform step 2 to determine whether the claim is covered by one of the judicial exceptions. Step 2 has two parts. Step 2A, determine whether the claim is directed to, when taken as a whole, a judicial exception. If not, it is patent eligible. If so, then, in step 2B, determine whether the claim adds significantly more. If not, it is not patent eligible.
In Alice, claims to software to determine whether an account had enough funds to execute a purchase on an instantaneous basis was found to be directed to the abstract idea of performing conventional business practices on a computer and that the claims had nothing more than mental steps and generic computer operations. Therefore the claims at issue were patent ineligible. This decision was considered to be a significant blow to software based patents.
Several recent decisions by the U.S. Court of Appeals for the Federal Circuit (CAFC) and a memorandum from the Deputy Commissioner for Patent Examination Policy disseminated on November 2, 2016 provide more arguments that breathe life into software-related patent claims that had been receiving resistance from many examiners as not patent eligible.
In DDR Holdings, LLC. v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),the CAFC indicated that software for solving a problem that is rooted in the field of computer technology is not directed to an abstract idea.
In Enfish LLC v. Microsoft Corp. 2016 U.S. App. LEXIS 8699, 2016 WL 2756255 (Fed. Cir. May 12, 2016), The CAFC points out “Software can make non-abstract improvements to computer technology” and pass at the first stage of analysis and does not need the second stage to find “substantially more.” The CAFC further points out “The ‘directed to’ inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept … Rather . . . whether their character as a whole is directed to excluded subject matter.” This case also stands for the proposition that a physical component need not be recited in a software method claim, stating “that the improvement is not defined by reference to “physical” components does not doom the claims. To hold otherwise risks resurrecting a bright-line machine-or-transformation test . . . or creating a categorical ban on software patents.” Interestingly, the CAFC did not refer to software steps as “mental steps” performed on a general purpose computer, which is often argued by examiners when rejecting software patents.
In the non-precedential decision in SmartGene, Inc., v. Advanced Biological Labs., SA , No. 2013-1186 (Fed. Cir. Jan. 24, 2014), the CAFC clarified that prior cases taught mental steps were steps that could be and routinely are carried out mentally. This leaves room for software patents that apply complex routines that were never meant to be carried out manually by humans.
In McRO, Inc. v. Bandi Namco Games America, 120 USPQ2d 1091 (Fed. Cir. 2016), the CAFC expanded patent eligible software to computer-related technology. In this case the computer program was directed to improving appearance of animated speech, which could be considered information processing, and not directed to making a better computer or network device. These claims passed eligibility under step 2B, as specifying algorithms that were significantly more than the idea of generic computer operations and did not preempt all ways of accomplishing the same result. After this case, the USPTO distributed a memorandum to patent examiners, which stated, among other things, patent eligible claims are “not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of “rules” (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.” This is a big help because, in the past, examiners have rejected claims directed to processing medical images. Now we can argue that medical image process is a computer-RELATED technology.
In Trading Technologies International Inc., v CQG, Inc., No. 2016-1616 (January 18, 2017), the CAFC found eligible a specific structured graphical user interface (GUI) paired with functionality that resolves a specific problem in computerized trading. In this case the CAFC provided additional factors that favor eligibility: “not an idea that has long existed”; “Precedent has recognized that specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter”; “claim elements are considered in combination for evaluation under Alice Step 1, and then individually when Alice Step 2 is reached.” This case is remarkable for demonstrating the first commercial software found patent eligible since the Bilski v. Kappos., 561 U.S. 593 (2010) decision by Supreme Court found software to mitigate risk are abstract ideas; and, for adding “computerized trading” to computer-related technologies.
Currently we are recommending to clients that using computer software for processing information already available to produce output information is not patentable unless the processor performs specific, non-mental, non-routine processing that does not pre-empt all ways of producing the stated output from the stated input.
Written By Judith Evans
The USPTO just issued a May 2016 Subject Matter Eligibility Update providing further guidance to examiners and practitioners in determining subject matter eligibility under 35 U.S.C. § 101, more specifically to clarify the scope of judicial exceptions to subject matter eligibility. Subject matter involving an abstract idea, law of nature, natural phenomena, or natural products is considered ineligible for patent protection and is thus called a “judicial exception.” However, claims that include limitations involving these exceptions are not a priori unpatentable; instead they require heightened scrutiny by the examiner to determine whether the claim as a whole “adds meaningful limits on the use of the exception” that make the claim patentable. Continue reading May 2016 Subject Matter Eligibility Update
Written By Eugene J. Molinelli
A brand new decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) and new USPTO guidelines for examiners disseminated on May 4, 2016 may have breathed new life into arguments that had been receiving resistance from some examiners in response to rejections that software-related patent claims are not patent eligible under 35 U.S.C. 101.
For example, the guidelines state “Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.” By reciting many steps of a claim as the abstract idea, examiners have gone beyond any abstract idea recognized previously by the courts. Furthermore, some examiners have asked applicants to cite an example in the previous guidelines similar to applicants’ respective claims. Examiners may ignore applicants’ objections that there is o example corresponding to applicants’ respective claims. The new guidelines state “applicants should not be required to model their claims or responses after the examples to attain eligibility.” Thus it may be worth referencing those two points and resubmitting and even resubmitting previous responses to such rejections. Continue reading Comments on the Revival of Software Patents as Patent Eligible Subject Matter