What is Patentable? A Brief Background on Bilski and Where We Are Now.

Monday, 16 November, 2009 18:04 Written by Mark Malek 5 Comments

Oral arguments before the United States Supreme Court In re Bilski were held on November 9, 2006. This case has been closely watched by the patent community because it can have some serious ramifications as to the type of subject matter that is patentable. The patent application filed by Bernard Bilski and Rand Warsaw is directed to a method of hedging risks in commodities trading. The Examiner issued a final rejection, noting that the invention was not directed to patentable subject matter, pursuant to Section 101 of Title 35, United States Code. Pursuant to 35 U.S.C. § 101, to be patentable, an invention must be directed to a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The Applicants appealed the Patent Office’s decision to the Federal Circuit. The en banc Federal Circuit upheld the PTO’s decision and noted that patentable subject matter does not include “laws of nature, national phenomena, or abstract ideas.” The court went on to reiterate the “machine or transformation test” with respect to patentability. More specifically, patentable subject matter must be tied to a particular machine or apparatus, or it must transform a particular article into a different state or thing. Using that test, the Federal Circuit found that the method of hedging risks in commodities trading did not meet the requirements for patentability.

Patently-O’s First-to-File Survey

Thursday, 12 November, 2009 10:13 Written by jfischer1975 1 Comment

by Jason Fischer

Professor Dennis Crouch
University of Missouri
School of Law

Not that we want to club anyone to death with stories about first-to-file patent reform, but given that Director Kappos has begun beating the patent reform drum, it’s becoming more important that all the facts are known. Up to now, there really hasn’t been any consensus on whether moving to a first-to-file priority system would be a drastic change. Dennis Crouch, over at Patently-O, insists that the Director may be using flawed statistics to demonstrate that change will not be so bad. Interestingly enough, after Professor Crouch and a few others posted comments about it on Director Kappos’s blog, the comments were closed off, ending the discussion on that forum. I guess Mr. Kappos is not really interested in hearing from the patent community — despite portraying that he will listen to feedback.

In an effort to come up with some real numbers, Professor Crouch has created a survey that is designed to record the position of patent professionals on this issue. If you have an opinion, one way or the other, you should take a minute, click over, and take the survey. You can’t complain later about how things end up, if you didn’t participate in the discussion.

UPDATE: It looks like Kappos’s blog has let through a few more comments, but they are clearly censoring responses.

Interferences and Dodo Birds

Wednesday, 11 November, 2009 11:26 Written by philipzies 1 Comment

by Philip Zies

The dodo bird, last sighted 1662

As you probably already know, the first to invent is the one who has the right to a patent under current U.S. law. If you invent something and someone else has already filed a patent application in the U.S. for the same invention, the U.S. Patent and Trademark Office (USPTO) will conduct an interference proceeding to determine who invented first. Interferences can be beneficial to the first to invent because there is no presumption of validity in an interference proceeding, the first to invent can obtain the patent rights of the first to file if successful in the interference proceeding, and the threat of an interference can be used by the first to invent as a tool in negotiating a license with the first to file. Or, at least, that is how it is in the U.S. right now. There has been a lot of talk about the U.S. joining the rest of the world in giving the right to a patent to the first to file a patent application, regardless of who was first to invent. Some say that if Congress passes any patent reform legislation at all that the first-to-file will be a part of the legislation because it is the least controversial part of the present reform bill. In the past when patent reform appeared imminent, the USPTO delayed declaring an interference proceeding, sometimes for years. While interference delays don’t appear to be the norm now, the delays could reoccur if the patent reform dialogue heats up. So, before interferences go the way of the Dodo bird, if you feel it is important to establish who was the first to invent by way of an interference proceeding, do it now.

Board of Patent Appeals ~~and Interferences~~
SIGN ON THE DOOR: Appeals Only (after 2010)?

If you are interested in finding out more, this article provides more detail.

The USPTO Embraces the Blogosphere, Lobbies for First-to-File

Tuesday, 10 November, 2009 17:33 Written by jfischer1975 1 Comment

by Jason Fischer

Kappos: “Hey Ted, can you show me how these here tubes work?”

The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.

In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog. In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.

The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention. The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in. The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention. The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.

Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.

Classic Rewind: Can McDonald’s really sue you for how you make your sandwich?

Friday, 06 November, 2009 05:58 Written by jfischer1975 0 Comments

This story was originally posted back in April of 2009 on The Legal Satyricon.

by Jason Fischer

Short Answer: No. Probably not.

I call this one "the McBaby." Should I try to patent it before McDonald's does?

McDonald’s Corp. is getting some recent attention in the blogosphere for a patent application, originally filed in late 2004, which describes its “Method and Apparatus for Making a Sandwich.” What’s interesting to me about this news item is the array of different reactions that various people have to this kind of story. Personally, it makes me laugh that McDonald’s paid a patent attorney an *expletive/deleted*-ton of money to write and prosecute a fifty-four page app, comprising twenty-three pages of drawings and flow charts and describing, in painful detail, how one might go about simultaneously preparing sandwich garnishes while “heating a pre-assembled meat and/or cheese filling”. Clearly, my reaction is the same as the folks’ over at PatentlySilly.com.

The other response that I quite frequently see is one of outrage or consternation. “How can they claim a patent for that?” “Will they be able to sue me for how I make my sandwich?” “This is what’s wrong with the U.S. patent system.” “Yadda, yadda, yadda.” “I love lamp.” You get the idea. This was Marc Randazza’s reaction when we had a conversation on the subject a few days ago. Now I don’t mean to criticize or belittle anyone who has this initial reaction (obviously, Marc is no IP n00b), but it exposes the reactor as someone who doesn’t have a firm grasp on the intricacies of patent law. This is nothing to be ashamed of, because the majority of the world doesn’t either. Without digging into the details of each individual case, it’s easy to go off half cocked.

Archive for November, 2009

What is Patentable? A Brief Background on Bilski and Where We Are Now.

Patently-O’s First-to-File Survey

Interferences and Dodo Birds

The USPTO Embraces the Blogosphere, Lobbies for First-to-File

Classic Rewind: Can McDonald’s really sue you for how you make your sandwich?

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