WIPO Adopts Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge

May 26, 2024Patentbiopiracy, genetic resources, paid, patent disclosure, traditional knowledge, WIPODennis Crouch

by Dennis Crouch

For many years, there have been concerns about "biopiracy" - the misappropriation of genetic resources (GR) and traditional knowledge (TK) from indigenous peoples and local communities, often in developing countries. Biopiracy involves researchers or companies obtaining GR or TK, using it to develop commercial products like medicines, and obtaining patents without adequately compensating or getting permission from the original TK/GR holders.

Some well-known examples of alleged biopiracy include: patents on wound-healing properties of turmeric, which had long been known in India; patents related to neem tree extracts, also used for centuries in India; Japanese and American patents on extracts of the African "Hoodia" cactus, traditional used by San people to stave off hunger; and a US patent on the Amazonian "ayahuasca" vine, considered sacred and used in ceremonies by indigenous peoples. You can see a Sean Connery look-alike doing this in my image below.

World Intellectual Property Organization (WIPO) member states have adopted a groundbreaking new treaty addressing patent rights in the context of these genetic resources and traditional knowledge associated with genetic resources. The WIPO Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge, finalized on May 24, 2024,

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USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know

May 24, 2024Patentanalogous art, CAFC, design patent, Graham factors, motivation to combine, obviousness, ordinary designer, paid, primary reference, secondary reference, USPTO, visual similarityDennis Crouch

by Dennis Crouch

On May 22, 2024, the day after the Federal Circuit's en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court's overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be "basically the same" as the claimed design, and (2) secondary references be "so related" to the primary reference that features in one would suggest application to the other. This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination.

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Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings

May 23, 2024Patentcritical date, derivation, en banc, interference, materially different, obviousness, paid, patent law, Section 135(b)(1), two-way testDennis Crouch

by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a "two-way test" to determine whether pre-critical date claims and post-critical date claims are "materially different" under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates' post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates' pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers

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Decoding Patent Ownership beginning with Core Principles

May 22, 2024Patentautomatic assignment, employment agreement, en banc, inventorship, obviousness, paid, patent law, reasonable expectation of successDennis Crouch

by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court's grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW. Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention "entirely on [his] own time" under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties' intent. Judge Mayer dissented.

Although not discussed in the court's decision, the appellant brief includes a suggestion that the Federal Circuit should "narrow or overrule" the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny

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Nominate Someone (Yourself?) for the USPTO’s Advisory Committees

May 22, 2024Patentadvisory committee, nominations, paid, patent public advisory committee, trademark public advisory committee, USPTODennis Crouch

by Dennis Crouch

The USPTO is seeking nominations for several open positions on its Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC).

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Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

May 21, 2024Patentanalogous art, design patent, en banc, Graham v. John Deere Co., Historical Cases, KSR, obviousness, paid, Whitman SaddleDennis Crouch

by Dennis Crouch

In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test's requirements that 1) the primary reference must be "basically the same" as the claimed design, and 2) any secondary references must be "so related" to the primary reference that features from one would suggest application to the other, "impose[] limitations absent from § 103's broad and flexible standard" and are "inconsistent with Supreme Court precedent" of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 "applies to all types of patents" and the text does not "differentiate" between design and utility patents. Therefore, the same obviousness principles should govern. This decision will generally make design patents harder

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Cellect or Reject? SCOTUS Asked to Consider Fate of ODP Doctrine

May 20, 2024PatentCellect v. Vidal, double patenting, en banc, obviousness, obviousness-type double patenting, paid, patent law, patent term adjustment, patent term extensionDennis Crouch

by Dennis Crouch

In its new petition for certiorari in Cellect LLC v. Vidal, No. __ (U.S. May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB's (PTAB) invalidation of Cellect's four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). The key issue is whether ODP can cut short the patent term extension provided by the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b). Meanwhile, Dir. Vidal is looking to extend the power of ODP via rulemaking. This is an important case coming at an important time.

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Federal Circuit Limits Defendant Attorneys’ Fees Awards for IPR Expenses

May 20, 2024Patent28 U.S.C. § 1927, attorney fees, exceptional case, Federal Rule of Civil Procedure 11, IPR, paid, plaintiff's counsel, prevailing defendant, Section 285Dennis Crouch

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Discussing Stern’s “Myth of Nonrivalry” for Patent Law

May 19, 2024PatentDamages, double patenting, information goods, injunctions, intellectual property, nonrivalry, Oil States, paid, patent law, property rightsDennis Crouch

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USPTO ARP Panel Restores MPF Sanity, but Still Rejects Xencor’s Claims

May 17, 2024Patentantibody patents, Jepson claims, means-plus-function, paid, patent law, Written DescriptionDennis Crouch

by Dennis Crouch

In a new Appeals Review Panel (ARP), the USPTO has clarified the Office's position on means plus function claims -- explaining that the specification need not describe statutory equivalents to satisfy the written description requirement. The outcome here shows value for the intentional use of means-plus-function limitations as a mechanism for expanding patent scope when genus claims are otherwise unavailable.

Still the court maintained the written description rejection on other grounds -- finding that the broad preamble "method of treating a patient" to be limiting and not adequately supported by the specification. Perhaps on remand the patentee will amend the preamble to instead claim a "means of treating a patient."

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Navigating the USPTO’s Regulatory Wave: Key Comment Deadlines for Summer 2024

May 15, 2024Patentai, artificial intelligence, double patenting, obviousness, paid, patent fees, patent law, patentability, prior art, regulatory changes, terminal disclaimer, USPTODennis Crouch

by Dennis Crouch

Over the past two months, the USPTO has issued an unusually large number of public comment requests related to various proposed rules and procedure changes. This wave of RFCs includes significant proposals aimed at adjusting patent fees for fiscal year 2025, refining terminal disclaimer practices, and addressing the impact of artificial intelligence on prior art and patentability. The agency is also seeking feedback on formalizing the Director Review process following Arthrex and various changes to IPR proceedings, including discretionary review. And there's more...

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The Legacy of A.B. Dick and Motion Picture Patents: How these 100+ Year Old Ruling Reshaped Patent Law

May 15, 2024Patentantitrust law, contributory infringement, paid, patent exhaustion, patent law, patent misuseDennis Crouch

by Dennis Crouch

I see the US Supreme Court's 1912 decision in Henry v. A.B. Dick Co. as a major turning point in American patent and antitrust law. 224 U.S. 1 (1912). The Court's 4-3 decision favored the patentee and allowed the patent owner to place restrictions on the use of its patented product even after sale. But, that decision sparked a major reform effort. Just a few years later, the Supreme Court reversed course in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), effectively overruling A.B. Dick and signaling a new largely anti-patent-monopoly era.

In A.B. Dick,

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PREP Act Immunity and its Silent Treatment of Intellectual Property Rights

May 14, 2024Patentcountermeasures, COVID-19, immunity, paid, patent infringement, PREP ActDennis Crouch

by Dennis Crouch

Although the Federal Circuit has dismissed Copan v. Puritan on jurisdictional grounds, I use the case to talk through COVID-19 immunity under the PREP Act, and whether patent infringement is included within its scope.

The 2005 Public Readiness and Emergency Preparedness (PREP) Act provides immunity for

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How Chestek Impacts USPTO’s Rulemaking Authority and the Push to Restore

May 13, 2024Patentadministrative procedure act, Chestek v. Vidal, Federal Circuit, notice-and-comment, paid, patent office rulemaking, trademark registrationDennis Crouch

by Dennis Crouch

The Federal Circuit's recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024). Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).

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Gorsuch’s “Dead Letter” Prophecy: Hearst v. Martinelli may Settle Copyright’s Discovery Rule following the Warner Chappell Avoidance

May 13, 2024PatentCopyright, copyright infringement, discovery rule, Gorsuch, Hearst v. Martinelli, paid, statute of limitations, Supreme Court, Warner ChappellDennis Crouch

by Dennis Crouch

The pending Hearst v. Martinelli case may be the "dead letter" offered by Justice Gorsuch. This time, the Supreme Court might actually decide whether the "discovery rule" applies to the Copyright Act's statute of limitations.

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Terminal Disclaimers: A Growing Concern in Patent Practice

May 10, 2024Patentdouble patenting, non-statutory double patenting, paid, patent law, patent portfolio, terminal disclaimer, USPTODennis Crouch

by Dennis Crouch

In a recent post, I discussed major proposed changes to terminal disclaimer practice that could significantly impact the landscape of patent law. Today, I want to briefly note a trend that underscores why these proposed changes are more pertinent than ever: the increasing percentage of U.S. utility patents bound by a terminal disclaimer.

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Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it)

May 9, 2024Patentdouble patenting, obviousness, paid, patent law, patent strategy, patent validity, terminal disclaimerDennis Crouch

by Dennis Crouch

The USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections. Under the proposed rule, a terminal disclaimer must include an agreement that the patent will be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). The new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common ownership.

This is a major proposal that fundamentally alters the effect of terminal disclaimers.

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Supreme Court Affirms Availability of Back-Damages Under Copyright Discovery Rule

May 9, 2024PatentCopyright, Damages, discovery rule, paid, statute of limitations, Supreme CourtDennis Crouch

By Dennis Crouch and Timothy Knight

On May 9, 2024, the Supreme Court issued its opinion in Warner Chappell Music v. Nealy, No. 22-1078, 601 U.S. ___ (2024), resolving a circuit split over the availability of back-damages in copyright infringement cases. In a 6-3 decision authored by Justice Kagan, the Court affirmed the Eleventh Circuit's ruling, permitting recovery of damages for acts that occurred more than three years before the filing of the lawsuit under the "discovery accrual rule."

For those of you who have not been following the case, the Plaintiff Sherman Nealy, a music producer, helped create musical works in the 1980s with his collaborator, Tony Butler. Nealy was incarcerated from 1989 to 2008 and again from 2012 to 2015

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Finding More Than Studs: Domestic Industry Nexus Tightens

May 8, 2024PatentCopyright, domestic industry, ITC, paid, patent family, Section 337(a)(2), Section 337(a)(3)Dennis Crouch

by Dennis Crouch

I always struggle to use these stud finders; I think its hard for them to focus when I'm around.

Zircon Corp. v. International Trade Commission, No. 2022-1649 (Fed. Cir. May 8, 2024)

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Eolas Seeks Supreme Court Review of Federal Circuit’s Patent Eligibility Decision

May 8, 2024Patenten banc, Eolas, paid, patent eligibility, patent law, Section 101, Supreme CourtDennis Crouch

Eolas is seeking a writ of certiorari from the Supreme Court -- hoping that the court will overturn the Federal Circuit's decision invalidating its distributed computing (WWW) claims as ineligible under Alice Corp. and Mayo and ostensibly under 35 U.S.C. § 101. The petition presents three key questions:

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