Imminent and recent changes in USPTO policy and US patent practice: A proposed response for inventors and investors

1. Imminent and recent changes in USPTO policy and US patent practice:A proposed response for inventors and investors Daniel M. Goldstein, Ph.D. Sanford T. Colb & Co. dgoldstein@stc.co.il This presentation includes many general thoughts about the topics discussed, and is not intended to be legal advice.

2. Source: USPTO.gov

3. US Patent Allowance Rate Increase Chart From: PatentlyO May 11, 2010

4. Weakening of KSR Holding • KSR v. Teleflex(2007) invalidated the Teaching-Suggestion-Motivation test as the sole test for non-obviousness. • Recent case-law still using motivation as a standard for determining obviousness in the unpredictable arts. • Example:Procter & Gamble Co. v. Teva Pharmaceuticals USA, May 2009 (Court of Appeals for the Federal Circuit) “A party seeking to invalidate a patent based on obviousness must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention …“ Emphasis Added.

5. USPTO Acceleration Programs:Green Technology and Patent Prosecution Highway

6. Green Technology Categories of technology that can receive accelerated examination: • Energy Conservation • Development of Renewable Resources • Greenhouse Gas Emission Reduction • Materially Enhances Quality of the Environment

7. Patent Prosecution Highway • National patent offices share information relating to the examination process with each other • Office of Second Filing advances out of turn an application that has been allowed in an Office of First Filing.  • To encourage use, USPTO eliminated fee for use

8. Patent Prosecution Highway tidbits • Substantive examination of second application must not have begun yet • National phases of PCT’s not currently eligible • US: average number of office actions before allowance drops from 2.7 to 1.7 for “Highway” cases. • US: 93% allowance rate, versus 44 percent for non-PPH cases. • US1EP2 due to (1) US allows claims faster and (2) US allows claims of broader scope

9. Other “Special Status” Application Areas Include: • Superconductivity Technologies • Inventions Relation to HIV/AIDS and Cancer • Inventions for Countering Terrorism • Biotechnology Applications from Small Entities • Inventions Relating to Recombinant DNA • Infringement • Applicant’s Health or Age

10. Software and Business MethodsIn Re: Bilski (Oral Argument heard November, 2009) In re Bilski: • Machine or Transformation Test versus • Useful, Concrete, and Tangible Result

11. DNA Patentability Association for Molecular Pathology v. USPTO, Myriad Genetics, et al. (April, 2010). District Court for the Southern District Of New York Myriad Genetics patents on BRCA1 and BRCA2 invalidated by District Court Standard court used: Is there a transformation? Does the isolated DNA possess markedly different characteristics from the same DNA in vivo? Result: DNA claims without transformative step are invalid Stay tuned for appeal...

12. False Marking… An Expensive Proposition “Whoever marks upon… or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public…Shall be fined not more than $500 for every such offense.” 35 U.S.C. § 292.

13. $500 is per item marked , not per decision to mark (Forest Group vs. Bon Tool, December 2009) • Anyone may bring a suit on behalf of the federal government, and receive half of the award. • Result: Many opportunistic suits.

14. Patent Term Adjustments (PTA)Wyeth v. Kappos, January 2010 • PTO has been incorrectly calculating patent term adjustments. The PTA for a large number of issued patents is therefore incorrect.

15. Wyeth court standard often yields more PTA days. • Consider requesting a recalculation of your patent term adjustment in view of Wyeth, if your patent issued between December, 2009 and March 2, 2010.

16. INFRINGEMENT To prove induced infringement, must show party had knowledge of the patent. (DSU Med Corp v. JMS, 2006) • Different types of infringement: • Direct • Indirect (Contributory and Induced)

17. What constitutes knowledge?SEB S.A. v. Montgomery Ward & Co, February 2010 • Defendant copied the “cool touch” features of plaintiff’s deep fryer. Did not check for a patent. • Hired an attorney to do a right-to-use study. Did not tell him they had copied the design. • Jury found Defendant liable for infringement and inducement to infringe. • Defendant appealed inducement finding on basis it had no knowledge of SEB’s patent.

18. United States Court of Appeals:Deliberate Indifference = Induced Infringement • A showing of deliberate indifference to whether one is infringing a patent satisfies the DSU knowledge requirement. (SEB S.A. v. Montgomery Ward & Co, February 2010)

19. Numbers in Claims are (sometimes) OK • Numbers are limiting and therefore usually avoided • Numbers could be helpful to narrow claim to avoid prior art

20. Divisional Applications • NEW: 2 year filing deadline in Europe • NO SECOND CHANCES: No right  to amend  claims of a divisional application between filing and searching

21. Thanks to Elana Krupka Daniel M. Goldstein, PhD Sanford T. Colb & Co. dgoldstein@stc.co.il Tel: (050) 827 4677