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Thursday, October 30, 2008

Collection of First Impressions on the In Re Bilski decision

In re Bilski was decided today. Like many such landmark cases, it will probably take a while for the lower courts to parse the decision and apply it to specific cases. But for now, it looks as though business method patents and software patents are dead in the United States. Below are initial reactions from some of the major IP bloggers:

Patently-O - The Federal Circuit has affirmed the PTO's Board of Patent Appeals (BPAI) finding that Bilski's claimed invention (a method of hedging risks in commodities trading) does not satisfy the patentable subject matter requirements of 35 U.S.C. § 101. In doing so, the nine-member majority opinion (penned by Chief Judge Michel) spelled the "machine-or-transformation" test for patentability of a claimed process.

Peter Zura's 271 Patent Blog - State Street still good law, but methods must be implemented on a machine.

PLI Patent Blog - Federal Circuit Decides Software No Longer Patentable

WSJ Law Blog
- Speculates as to whether this will be granted a writ of certiorari by the Supreme Court.

Wednesday, October 22, 2008

PTO Allowance Rates

This graphic says it all. I simply cannot believe that applications have suddenly become so poor that this kind of drop can be explained merely by poor prosecution, which seems to be the PTO's consistent position on the subject:

Tuesday, October 21, 2008

Design Patent Resurgence

With the new life breathed into design patents by the Egyptian Goddess ruling (wherein the judges agree that the 1871 Gorham "ordinary observer" test is the "sole test for determining whether a design patent has been infringed"), now is a good time to remind ourselves of famous design patents from the past. Many people are unaware that our own Statue of Liberty was granted a design patent in 1879!

Monday, October 20, 2008

Four Corners test for Anticipation Clarified

The CAFC in Net MoneyIn v. Verisign has established a clearer standard for determining novelty under Section 102. Anticipation is not created simply by finding all elements of a claimed invention in a prior art document. Rather, it is necessary for the finder of fact (including Examiners?) to show that the reference teaches "all of the limitations arranged or combined in the same way as recited in the claim." As explained by the court:

Section 102 embodies the concept of novelty—if a device or process has been previously invented (and disclosed to the public), then it is not new, and therefore the claimed invention is "anticipated" by the prior invention. . . . Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements "arranged as in the claim."

Patent Term Extensions Become Meaningful?

Great post from Dennis Crouch at Patently-O on a recent decision by the District Court of Washington D.C. which would mandate calculating patent term extensions based on both a broad "guarantee of no more than 3-year application pendency" and a more narrow focus on the timeliness of individual PTO actions. Previously, these calculations were made separately and then the longer of the two was used, in order to avoid double counting. The court has ruled that this is impermissible as long as the same delay is not counted twice in contravention of the double counting prohibition. The case awaits appeal to the CAFC.

Monday, October 13, 2008

President Bush Establishes IP Czar Position

As reported over at CNET, the Prioritizing Resources and Organization for Intellectual Property Act has been signed into law by the President, adding another cabinet-level position for the next President to choose. The position's full job description is not fully fleshed out, but, among other aspects, Gizmodo reports that the new IP Czar will:

The cabinet position will give a single point of authority to a job now handled by a scattered handful of different agencies and committees. It also calls for increased strength to prosecute and punish IP offenders. A provision that hoisted the responsibility for civil (in addition to criminal) prosecutions for IP cases on the Justice Dept. had to be thrown out first, as it would have effectively gave the already over-burdened folks at the DoJ the added enjoyment of being the entertainment companies' civil trial lawyers.

Trolls Return to Europe

As with other endangered species, it appears that even imaginary creatures are returning to areas once abandoned by them.

In this case, patent trolls have come to Germany. From the October 2008 edition of IP Law & Business comes this article reporting that IPCom GmbH & Co., a patent holding company in Pullach, Germany, is suing Nokia for damages that would total out at 12 billion euros for infringement of its patents on mobile telecom technology. As the article points out:

Sabine Rojahn, a partner in Taylor Wessing's Munich office, says German law tends to work very much in favor of the patent owner. IPCom has an advantage in bringing the suit in Mannheim's regional court, which specializes in patent infringement cases, Rojahn notes. The Mannheim court rules on whether a patent has been infringed before the federal patent court in Munich decides on validity. In addition to seeking damages, patent owners have an automatic right to an injunction if infringement is found-before the federal court has ruled on validity, says Rojahn. Also, "if a patent troll wins damages, the infringer can be forced to pay back its gross revenues for a product as damages," she says, "and not just its net profit.
Although any decision will apply only to Germany, it is being closely watched as a potential harbinger of pan-European decisions that may follow.