MVS Filewrapper® Blog: Additional Patent Reform Legislation Proposed in the House and Senate

Post by Dan Lorentzen



In an ongoing trend of alternative patent reform legislation being introduced in Congress, new legislation was introduced in both the U.S House of Representatives and the Senate.  The legislation, called the "Grace Period Restoration Act," was introduced as S. 926 by Senators Tammy Baldwin (D-WI) and David Vitter (R-LA), and as H.R. 1791 by Representatives Jim Sensenbrenner (R-WI) and John Conyers, Jr. (D-MI) in the House.    


Although intended to amend the Leahy-Smith America Invents Act (AIA), the legislation is much more narrowly tailored than other patent reform legislation previously introduced.  This bill is designed to specifically address what the sponsors characterize as "unintentionally ambiguous language" in the AIA that significantly limited the one-year grace period for patent filing that existed under the pre-AIA patent law.  The sponsors particularly point out the apparent effect that the limitation of the grace period has on academic research institutions, such as universities.  The bill seeks to address this problem by amending 35 U.S.C. § 102 to re-establish the pre-AIA grace period. 


At first glance, this legislation would represent a back-track from the "first inventor to file" system enacted by the AIA.  In addition, this new bill adds to an increasingly crowded field of legislation proposed to amend the AIA less than five years after that legislation was enacted, and only just over two years since the final provisions of the AIA went into effect. 

The full text of the Grace Period Restoration Act is available here.



MVS Filewrapper® Blog: New Best Practices for DMCA Takedown Notices from the Department of Commerce

Post by Dan Lorentzen

Under the Digital Millennium Copyright Act (DMCA), online service providers are immunized from liability for copyright infringement so long as they comply with two requirements intended to protect the rights of copyright owners.  Under the DMCA, online service providers include, for example, internet service providers, email providers, news providers, entertainment providers, search engines, e-shopping sites, e-finance or e-banking sites, e-health sites, e-government sites, and Wikipedia.  Congress enacted the DMCA in 1998, which amended the Copyright Act to address issues raised by a rapidly developing Internet by updating rights, exceptions, and enforcement mechanisms.  In order to qualify for immunity under the DMCA, an online service provider must (1) accommodate and not interfere with standard technical measures; and (2) adopt and reasonably implement a policy of addressing and terminating accounts of users who are found to be "repeat infringers"—commonly known as the "takedown" notice process. 

The U.S. Department of Commerce recently released a document titled "DMCA Notice-and-Takedown Processes:  List of Good, Bad and Situational Practices." While the document does not create any new policies or rules, it does set out "good," "bad," and "situational" practices for both senders and recipients of copyright "takedown" notices under the DMCA.  The document is intended to help improve the efficiency of the handling and processing of both "takedown" notices and counter-notices.  Although it is not comprehensive, the document is a good resource for any copyright owner or online service provider looking for basic practical guidance on making or dealing with "takedown" notices. 

The "DMCA Notice-and-Takedown Processes:  List of Good, Bad and Situational Practices" document is available here.  Additional information about copyrights and DMCA "takedown" notices is available here, here, and here.  

MVS Filewrapper® Blog: New Decision on Plant Patentability at the EPO

Post by Dan Lorentzen

A recent decision has resulted in a change in European patent law that should make it easier to obtain patent protection for certain types of plants or plant products.  Under European patent law (Article 53(b) of the European Patent Convention (EPC)), essentially biological processes for the production of plants are not eligible for patent protection.  In addition, plant and animal varieties are excluded from patent protection.  However, the outer limits of the exclusion have not previously been set:  does Article 53(b) of the EPC exclude patent protection on all plants and animals, or does the statutory language make specific exceptions leaving room for non-varietal protection of plants and animals?  The recent decision from the highest patent court in Europe—the European Patent Office (EPO) Enlarged Board of Appeal—has confirmed that plants as products (as opposed to the processes for making them) are eligible for patent protection under European patent law. 

The case involved two different patents—the first covering tomatoes with reduced fruit water content, and the second covering broccoli with elevated levels of 3-methylsulfinylpropyl glucosinolates, or 4-methylsulfinylbutyl glucosinolates.  The claims at issue in both patents were drafted as product-by-process claims, where the recited processes had previously been determined to be excluded by the EPC.  The challengers to the patents argued that because the processes were excluded from patent protection, the products must also be excluded. 

The two patents were granted, and each was the subject of a separate opposition proceeding at the EPO.  The cases were both referred to appeal boards to for determination of whether the claims were excluded under the EPC.  Ultimately, the cases were both referred all the way to the highest patent court at the EPO where they were consolidated. 

The Enlarged Board of Appeal decided three questions:

 (1) Whether the EPC exclusion of essentially biological processes for the production of plants precludes patent protection for product claims directed to plants or plant material such as plant parts;

(2) Whether (a) the fact that the process features of the product-by-process claims were biological processes for the production of plants or (b) the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application render the claims unallowable; and

(3) Whether it is relevant that the protection encompasses the  generation of the claimed product by means of an essentially biological process for the production of plants excluded under the EPC. 

The Board answered all of these questions in the negative. 

In concluding that the plant products were eligible under the EPC, the Board determined that the claimed subject matter was not limited or directed to a plant variety, but rather related to the EPC exclusion from patentability of "essentially biological processes for the production of plants" other than plant varieties.  The Board determined that the exception is limited to methods and processes, and does not encompass products that are obtained and/or defined by those methods or processes. 

This decision represents a change in European patent law that should make it easier to obtain EPO patent protection for certain types of plants or plant products.  However, as the Board noted in its decision, a number of EPO member countries—specifically Germany and the Netherlands—have amended their own patent laws to exclude products derived from essentially biological processes.  This may create situations where an EPO patent is granted, but will not be validated by particular member countries.

The full decision is available here.

MVS Filewrapper® Blog: Likelihood of confusion at USPTO may be preclusive in litigation

Post by Dan Lorentzen

Although trademarks exist outside of the federal trademark system set out in title 15 of the U.S. Code (the Lanham Act), federal trademark law provides a number of benefits to mark owners who register their trademarks through the United Stated Patent and Trademark Office. In the context of federal trademark law, a trademark owner's rights in a mark, and the validity of that mark, can be tested in two separate types of proceedings: a lawsuit in federal court, or opposition at the USPTO.  The recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc. provides important clarification on how determinations in the two types of proceedings interact.

B&B registered its mark SEALTIGHT in 1993 for "“threaded or unthreaded metal fasteners and other related hardwar[e];namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring, for use in the aerospace industry.”  Hargis began producing metal screws for use in building construction using the mark SEALTITE, and sought to register the mark in 1996.  B&B sued Hargis in federal court for trademark infringement and also filed a concurrent opposition to Hargis' registration at the USPTO.  A central question in both proceedings was whether there was a likelihood of confusion between Hargis' SEALTITE mark and B&B's already registered SEALTIGHT mark. 

Before the District Court had ruled on the likelihood of confusion, the Trademark Trial and Appeal Board (TTAB) of the USPTO ruled on the opposition proceeding, determining that Hargis' mark could not be registered because there was a likelihood of confusion with respect to B&B's mark.  Hargis did not appeal the TTAB decision to either a district court or the Federal Circuit.   B&B, in turn, argued to the District Court that as a result of the TTAB's decision, Hargis could not contest likelihood of confusion in the pending court proceeding.  Following Eighth Circuit precedent, the District Court disagreed, reasoning that the TTAB is not a judicial body created by Article III of the Constitution, and so the TTAB decision could not have preclusive effect on the District Court.  The jury ultimately found there to be no likelihood of confusion.  B&B appealed to the Eighth Circuit, which affirmed the District Court on the basis that the TTAB weighs different interests (e.g., the right to register versus the right to use) and applies different factors in determining likelihood of confusion than a district court would. 

On ultimate appeal, the Supreme Court resolved a Circuit-split on this issue and held that determinations of likelihood of confusion at the USPTO could be preclusive for subsequent determinations in litigation.  The Court concluded that an administrative determination, such as by the USPTO, can be preclusive for determinations of the same issue in federal court when the administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate.  The Court further determined that although the specific factors used by the district courts and the USPTO for determining likelihood of confusion may be different, the underlying legal standard is the same for both litigation and registration.  However, the holding is limited to situations where the application/registration at issue in the TTAB proceedings covers goods and services that are "materially the same" as those at issue in the federal court proceeding. 

It is worth noting that the Court's opinion relates to TTAB decisions regarding likelihood of confusion for trademark registration—that is, determinations proceedings such as oppositions where the parties have a chance to "litigate" the pertinent issues.  The same type of preclusion would not apply simply as a result of registration of a mark with the USPTO. 

As a result of this decision, parties considering taking action against a federal trademark applicant or registrant should carefully compare the goods/services shown in the trademark application/registration to the their own goods and services to determine whether they should proceed in the TTAB or a federal court.  Additionally parties trademark applicants/registrants who lose at the TTAB should strongly consider an appeal of that decision because that decision may now have preclusive effect in later federal court cases. 

The full decision is available here. 

MVS Filewrapper® Blog: Russ Slifer Sworn-In as USPTO Deputy Director and Patent Quality Initiatives

Post by Jill Link


USPTO Director Michelle Lee nominated Russ Slifer as Deputy Director of the USPTO. Slifer previously served as the Regional Director for the Denver Satelite Office of the USPTO. He is a patent attorney with over 20 years experience, including 8 years as the Chief Patent Counsel for Micron Technology. Slifer was appointed by Secretary of Commerce for this political appointment, along with Director Lee who was also recently appointed and sworn in earlier this month (March 2015).  With both Director and Deputy Director in place the USPTO is now fully staffed again.

The Director has issued a focus for their remaining terms - Patent Quality Initiatives. For example, Deputy Director's first official day on the job was spent with the Director hosting the USPTO Patent Quality Summit. The Summit follows a Federal Register Notice setting forth various proposals for focus on patent quality. The Federal Register listed the following: 

1. USPTO proposes a mechanism for an applicant to request the Office of Patent Quality Assurance to review an examiner’s Office action during prosecution.

2. USPTO is seeking input on whether to conduct automated pre-examination searches for all applications, and if so, what tools might be used to complete those searches.

3. USPTO is seeking the public’s assistance in identifying ways to enhance the clarity and completeness of the official record during prosecution of an application.

4. USPTO is considering ways to measure and enhance the effectiveness of examiner training, and how best to improve quality metrics.

5. The USPTO is seeking input to help determine whether the current compact prosecution model should be modified.   In particular, is seeking ideas for proactive alternatives to Requests for Continued Examination filings and appeals to the Patent Trial and Appeal Board.

6. The USPTO is considering the viability of enabling applicants to have in-person interviews with examiners, regardless of the examiner’s duty station.

Filewrapper will keep you posted on further updates of these and other patent quality initiatives.



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