“The innovation that is fostered by a strong patent system is a key driver of economic growth and job creation.” That is how the United States Patent and Trademark Office (USPTO) began the Federal Register Notice announcing the patent quality initiative back in early February 2015. While it may seem like the drive for patent quality is a brand new initiative at the USPTO, the truth is that Director Michelle Lee (pictured, left) has been talking about patent quality ever since she assumed the role of Deputy Director and de facto head of the Patent Office nearly 18 months ago.
On Wednesday and Thursday, March 25 and 26, the USPTO took the first public steps on the road to enhancing patent quality by hosting a Patent Quality Summit at the Office’s main campus in Alexandria, Virginia.
Leading up to the event, I spoke with Valencia Martin-Wallace, who was recently named to the newly created position of Deputy Commissioner for Patent Quality. I asked her about what the Office hoped to accomplish with the Summit.
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).
Each year, PLI holds its annual Patent Litigation seminar. I will be speaking at the New York Patent Litigation 2014 program, which will take place from November 10-11, 2014. There will be an earlier presentation of the program in Chicago, IL, from October 6-7, 2014. In addition to discussing the relatively new ethics rules applicable to patent attorneys, I will discuss a variety of ethics decisions from the Office of Enrollment and Discipline at the United States Patent and Trademark Office.
In one particular enforcement decision that I will discuss during my presentation — In the Matter of James Hicks — the Office of Enrollment and Discipline instituted an enforcement proceeding against James Hicks, who is an attorney admitted to practice in the State of California. Although Hicks is not a patent attorney duly admitted to practice before the United States Patent and Trademark Office, he had been permitted to practice before the Office in trademark and other non-patent matters, as can any attorney admitted to practice.
Hicks, a litigator, was alleged to have engaged in conduct prejudicial to the administration of justice. In Rates Technology, Inc. v. Mediatrix Telecom, Inc., No. 05-CV-2755, the United States District Court for the Eastern District of New York entered an order sanctioning him and his client for failing to comply with the court’s discovery orders. Indeed, the abuses were such that the district court ultimately dismissed the case and imposed monetary sanctions against Mr. Hicks and Rate Technology in the amount of $86,965.81, to be split evenly between them.
The America Invents Act (AIA) created three new ways to challenge the validity of claims in already-issued patents. The AIA was signed into law on September 16, 2011, but the new post grant proceedings did not become available until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review, and covered business method review (the latter a variety of post-grant review that is limited to business methods relating to the financial industry).
Inter partes review has been extraordinarily popular due to the fact that the rules are stacked in favor of the challenger. Indeed, recently, Scott McKeown (a partner at Oblon Spivak and co-chair of the Oblon post grant practice group) wrote on his blog that the Patent Trial and Appeals Board (PTAB) “offers unprecedented speed with none of the patentee safeguards of the district court.” The biggest safeguard that a patentee enjoys at the district court is a presumption of validity. The presumption of validity does not attach in a post grant administrative proceeding. That’s a significant benefit to the challenger.
Despite what the United States Patent and Trademark Office suggested in their initial guidance to patent examiners, the Supreme Court’s decision in Alice v. CLS Bank has substantially changed the prosecution landscape for computer implemented inventions (i.e., software).
At least initially, the USPTO guidance to examiners seemed extremely patentee friendly. In a memo to the patent examining corps, the USPTO explained that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” The USPTO then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld explained: “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”
Hirshfeld also explained that there is now a slight change in the way applications are to be examined when claims involve abstract ideas. Essentially, it was said, Alice stands for the proposition that the same analysis should be used for all types of judicial exceptions and the same analysis should be used for all categories of invention. Still, even recognizing this shift in analysis, Hirshfeld told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” (emphasis added). Therefore, this initial guidance clearly took the position that nothing has changed from a substantive law point of view as far as the USPTO was concerned.