USPTO Releases 101 Guidance and Illustrative Examples

Recently, the United States Patent and Trademark Office released several patent eligible subject matter examples, which together with the recently released patent eligibility guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all-important area.

To recap, in December 2014, the USPTO released Interim Eligibility Guidance, which provided information about how the Office interprets 35 U.S.C. 101 in light of recent Supreme Court decisions.  This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).

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The Art of Negotiation – Mediation of IP Disputes

Jeff Kichaven (pictured left) is one of California’s leading mediators. I met Kichaven several months ago while I was in Newport Beach, California, to speak at the Orange County Bar Association. At the conclusion of our breakfast meeting I asked if he would be interested in an on the record conversation for publication. He agreed. What follows are except from our conversation, which took place on Monday, December 22, 2014. To read the full transcript of the interview please see Working toward settlement wherever possible.

Here is our dialogue on the reality that in most circumstances neither party really wants a court to make a decision and would be better off reaching a negotiated resolution.

QUINN: … And my experience usually when the judge or the jury makes the decision neither party is happy.

KICHAVEN: That’s true. So many times it has cost so much, taken so long and been so grueling along the way, that even the winner questions whether it was worth it.

QUINN: Yes.

KICHAVEN: It’s especially true in intellectual property cases because when people get too involved in litigation focusing on the past and perhaps lose their focus on the marketplace, new competitors can come in and beat them in the marketplace. So it’s important, particularly for technology companies in fast moving industries, to keep their eyes focused on the future and competing in the marketplace rather than focused on the past and competing in the courtroom, other than in a small number of cases where that focus really is absolutely necessary.

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Medical Innovations Also a Focus for Samsung

Medical innovations were strongly reflected in Samsung’s patent applications published in the past few months by the USPTO. Rumors that Samsung would jettison its medical device division during its December 2014 restructuring proved to be unfounded, although the company may realign healthcare technology R&D which are currently separated between the consumer electronics division and Samsung Medison, a medical device developer. In late November, Samsung announced a partnership with U.S.-based Thermo Fisher Scientific, a medical equipment company, to find new markets for Samsung’s medical diagnostic devices. Known for fitness tracking devices, the corporation has also unveiled an open access development platform for health programs that could aid in chronic disease management and other areas of medical care.

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02.5.15 | posts | Gene Quinn

HP Patents: From Cloud Computing to Electronic Display Dust Removal

A review of Hewlett-Packard’s recently issued patents show a variety of technologies related to cloud computing, including one system that enables those purchasing cloud services to find the most cost-effective option suited to their needs. Another patent protects a method for establishing perceived eye contact among participants of a video conference. Also intriguing is a mechanism for clearing dust from an electronic display screen using ionized air.

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02.5.15 | Patent Issues | Gene Quinn

A conversation about patent valuation and the market

Recently I had the opportunity to interview Efrat Kasznik (pictured left), who is President of Foresight Valuation Group. Kasznik specializes in performing valuations of intangible assets for financial reporting, tax compliance, transfer pricing, litigation damages and business liquidations. She is also starting to work with start-up companies at earlier stages in order to help them develop a strong IP portfolio and to prevent them from making mistakes that later cannot be fixed.

What follows are the highlights of my long form interview, which took place on Tuesday, December 23, 2014, and was published on IPWatchdog.com on January 7, 2015.

I spent some time discussing whether investors should seek patent protection or whether they should freely share their ideas, which is what some VCs actually recommend.

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01.26.15 | Patent Issues | Gene Quinn

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