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Inherency of Provisional Application to Support Later Non-Provisional Application

Jim Ruttler, Patent Attorney

Posted Tuesday, September 27, 2016 by Jim Ruttler

The Federal Circuit Court of Appeals decided a case this week that enhances the value of provisional patent applications.

Essentially, in Yeda Research v. Abbott, the Court held that a provisional application doesn’t have to disclose all the details so long as those details are inherent based on a later filed non-provisional which includes the details. This amounts to allowing general disclosures in provisional applications to have their gaps filled by later filed non-provisional applications having more details. The significance of this is that the provisional application retains its priority date despite the fact that it doesn’t include all of the details that are added later via a non-provisional date.

The case here involved a provisional application by Abbott that didn’t include the specific amino acid sequence of a protein. Right after filing this application, a reference surfaced with that amino acid sequence. Then, following this intervening art, Abbott filed a non-provisional with the amino acid sequence specifically spelled out. The provisional application was therefore important because otherwise Abbott’s patent application would have been filed after the intervening art. The Court allowed the provisional application to serve as priority despite the fact that there was no actual disclosure of the amino acid sequence under the theory of inherent disclosure.

Based on this decision, filing provisional applications - even if all the detail isn’t yet available - is good practice because there is a chance that that provisional application can help you overcome art that may surface while prototyping and engineering.

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Weekly Round-Up of Trademark News

Daniel Mills, Trademark Attorney

Posted Thursday, September 22, 2016 by Daniel Mills

Here is a summary of some of the interesting trademark headlines from the past week.

First Up - What do a an Asian-American rock band and the Washington Redskins have in common? - They both are on the same side of an argument over the 1st amendment and the USPTO over trademark rules that prohibit disparaging marks. Read More Here

There can be only one - GRACELAND. A Danish man who is a very big Elvis fan and memorabilia collector named his museum in Randers, Denmark Graceland. Well, that did not sit well with the folks in Memphis, Tennessee who own and operate the real home of the King of Rock and Roll. The court in Denmark agreed with GL SPE, LLC and ordered the Danish super fan to pay $75,0000.

What happens in Vegas may soon include NFL Football. A limited partnership called The Oakland Raiders has filed three trademark applications for LAS VEGAS RAIDERS for a variety of goods and services including: clothing, entertainment services in the nature of professional football games, and various decoration and trinkets associated with the team.

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Additional Software Patent Eligible: McRo, Inc. v. Bandai Namco Games America,

Jim Ruttler, Patent Attorney

Posted Sunday, September 18, 2016 by Jim Ruttler

The Federal Circuit for the fourth time this year has confirmed eligibility of software under Section 101. In perhaps the most clear decision to date on the issue of subject matter eligibility, the Federal Circuit held that McRo’s claims directed toward lip synchronization are patent eligible. The lower District court had struggled with the amorphous test set forth by the Supreme Court. It held that the claims essentially were two broad to be non-abstract. However, the Federal Circuit struck this down and stated that breadth does not equal abstract. Instead, the test for abstractness was refocused on pre-emption. That is, the test is whether the claims preempt all ways to practice an idea. For instance, lip synchronization using a computer would preempt all methods of lip synchronization completely. However, as with McRo’s claims, a specific broad way of performing lip synchronization is not abstract because there were not ways to perform lip synchronization.

The Federal Circuit appears to have pivoted a little toward preemption. This is a positive development because preemption is something that objectively can be proven. The test now for software and other inventions really is whether the claims are directed toward an invention where the result could be achieved via another solution - even if the other solution is less marketable. This test is relatively easy to satisfy moving forward.

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Federal Circuit Appears Likely to Overturn Patent Office Denials of Amendment During IPR

Jim Ruttler, Patent Attorney

Posted Tuesday, August 30, 2016 by Jim Ruttler

Back in May 2016, the Federal Circuit decided in Aqua Products that a patent owner had the burden to argue patentability for any amended claims during inter partes review proceedings. In these proceedings, also known as IPRs, patent owners often file motions to amend the claims to overcome newly discovered art. The Patent Office, however, has made it very difficult to amend claims, denying 95% of all motions to amend. The statute, however, specifies that patent owners shall have the right to file a motion to amend one time. The Patent Office’s response to this is that the statute only permits a right to file a motion and that they can deny that motion. Worse yet, the Patent Office says often that the reason the motion is being denied is because the patent owner has not proved that the amended claims are patentable.

The Patent Office has gotten away with this charade for a year now, but the jig is about to be up - at least in my opinion. The patent owner should be entitled by statute to amend the claims and the Patent Office should bear the burden to determine whether the claims are unpatentable - not the patent owner.

The Federal Circuit decided this week to reconsider the Aqua Products decision en banc. This means that a majority of the judges believe this case should be reconsidered and it is rare and significant.

Expect a decision by end of 2016 on this.

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Arendi v. Apple, Google, Motorola: Fedeal Circuit Warns Patent Office to Quit Relying on Conclusory Assertions

Jim Ruttler, Patent Attorney

Posted Friday, August 12, 2016 by Jim Ruttler

The United States Patent Office consistently relies on ’common sense’ to issue rejections and invalidate patents. They obviously do this because it is easier than actually finding evidence to support their positions. And, few take their commonly poorly drafted opinions to the Federal Circuit for review.

The PTO’s legal justification for this sloppy legal analysis is the Supreme Court’s decision in KSR, where the Court stated that common sense can be used to determine whether it would be obvious to COMBINE references to reach the claimed invention.

However, this KSR decision doesn’t speak to the use of common sense to SUPPLY missing details NOT PRESENT in any prior art reference. When there are missing elements in the prior art as compared to the claimed invention, the USPTO cannot use KSR to supply that missing element based on common sense. Instead, the USPTO must find everything in the claims in some piece of documentary evidence. They are then given authority - and believe me they use it - to say the combination would be common sense without any evidentiary support.

The Court here took another opportunity to warn the USPTO against this type of short-cut no-evidence because-I-say-so legal analysis. The PTO was first warned in Hear-Wear and now here in Arendi. We’ll see if the USPTO changes its ways to actually follow the law or whether it continues to act as if the law doesn’t apply to it.

Remember missing elements cannot be supplied based on common sense.

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