PTAB Questions Machine-or-Transformation Claims

Just over three years ago, the United States Supreme Court issued its decision in Bilski v. Kappos. The critical question presented to the Court for consideration was whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter. The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, but is an important clue, thereby overruling the Federal Circuit who had earlier ruled that the machine or transformation test was the test to determine whether an invention is patentable subject matter.

But what practical effect has the Supreme Court ruling in Bilski v. Kappos had? Truthfully, not much. at least in terms of the day-to-day approach of patent attorneys and the U.S. Patent and Trademark Office.  (Certainly, the decision was important in that it preserved the patentability of at least some business methods and preserved the patentability of software.)

While the machine-or-transformation test is now only an important clue, it really has become a safe harbor for practitioners.  The assumption has been that you satisfy the machine-or-transformation test announced by the Federal Circuit and you have a patentable invention. Fail to satisfy the machine-or-transformation test and you may have a patentable invention, but neither the Patent Office nor any court has yet found an invention that failed the machine-or-transformation test to be patentable.


Patentability of Business Method Subject Matter Divides Federal Circuit

A new level of significance is reached when the Federal Circuit U.S. Court of Appeals decides to address an issue even though it is not in fact at issue in the case before them. On March 2, 2012, the Federal Circuit issued its decision in MySpace, Inc. v. GraphOn Corp. (No. 2011-1149), in which they affirmed the lower court’s decision, finding the case was properly decided under §§ 102 and 103 of the Patent Act and not under § 101.

The significance is that even though the Federal Circuit was deciding on the issue of patent invalidity under §102’s anticipation standard and under § 103’s obviousness standard, the issue of whether or not the underlying subject matter was patentable was still brought up and discussed by the Federal Circuit judges.  (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patents Post-Grant: Supplemental Examination Rules Issued by USPTO – This post breaks down the USPTO’s Notice of Proposed Rule Making and how it outlines the procedures for conducting supplemental examination.

2) IP Watchdog: Business Methods by the Numbers: A Look Inside PTO Class 705 -As Gene Quinn explains, “The United States Patent Classification System is a system for organizing all U.S. patents into a smaller sub-collection of patents based on common subject matter. Each subject matter division includes a major component, which is called a class, and a minor component, which is called a subclass.”  This post discusses Class 705, which is the generic class for innovations relating to business methods.

3) Patent Docs: The Medicines Company to Get Patent Term Extension – This post provides a breakdown of the settlement of litigation reached between the Medicines Company and APP Pharmaceuticals, and gives a detailed case background and procedural history explaining how the parties reached their final settlement.

4) The Tech Transfer Blog: New Pact Brings “Express” Licensing Concept to Sponsored Research Agreements – Binghamton University (my alma mater) developed what it is calling the Binghamton Express Square Terms or BEST Deal License, a nonexclusive, royalty-free license on patentable innovations that arise from sponsored research. This post explains how this express licensing is intended to benefit the sponsored research negotiating process while also establishing standards and predictability for its industry partners.

5) FOSS Patents: Samsung allowed to show Apple-Qualcomm contracts, letters and limited source code to foreign courts – This post details the impact of Samsung’s discovery  request being granted in its case with Qualcomm and how the U.S. District Court came to its decision. The post also compares the Samsung-Qualcomm matter with the Apple-Qualcomm matter.

The New Law the USPTO is Thankful for this Thanksgiving

In the spirit of expressing gratitude this Thanksgiving holiday, Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, shares the newest law for which the USPTO is thankful. On November 18, 2011, President Obama signed into law H.R. 2112, the Consolidated and Further Continuing Appropriations Act. This bill provides the USPTO with official spending authority through the end of September 2012 (the end of the fiscal year) and the ability to spend up to $2.7 billion dollars. According to Scott’s post (more…)

Post Grant Dead Zone Coming Soon

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

PGR Window Anomaly to Encourage Early Litigation?

Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA).  Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.

As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).

When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR,  becomes available for all patents next September 16, 2012. (more…)