Patent Law News
by Marin Cionca
July 01, 2014: USPTO issues “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” A two-step analysis is required from the examiners, while no definition for the 'abstract idea' is provided. See instructions.
June 23, 2014: Update on Supreme Court's June 19, 2014 Decision in ALICE CORPORATION PTY. LTD. v. CLS BANK INTERNATIONAL ET AL. Alice's software patents were held invalid as claiming an abstract idea, with no inventive concept added to transform the abstract idea in patentable subject matter. This decision has singnificant implications to the software applications for patent and software patents. Read more...
- Watch Video Below About the decision of the Federal Circuit in CLS Bank Case: Abstract Ideas are not patentable. "Inventive Concept" or "Meaningful Limitation" is required. CLS Bank Int'l v. Alice Corp. (Fed. Cir. 2013) (en banc)
- Watch Video Below About the decision of the Supreme Court in Myriad Case: isolated DNA is not patentable but synthesized cDNA is typically patentable. Assn. for Molecular Pathology v. Myriad (U.S. 2013)
- Watch Video Below About the Supreme Court's decision in Prometheus case: law of nature is not patentable. Claim must include "inventive concept" not merely routine activity. Mayo Collaborative Servs. v. Prometheus Labs. (U.S. 2012)
America Invents Act (AIA) is here. On September 2011, the new patent law was enacted. It changes 200 hundred years of American patent law tradition: the first-to-invent priority rule will be replaced in March 2013 by the new, first-to-file rule. Learn More about the AIA.
General Purpose Computer - Indefinite. A means-plus-function claim element for which the only disclosed structure in the specification is a general purpose computer is indefinite, and therefore, invalid. In order to make the means-plus-function claim element definite, the disclosed structure should also include the computer algorithm designed for the general purpose computer to perform the particular claimed function. MoneyIN Inc. v. VeriSign, Inc.. (Fed. Cir. 2008).
Substitution of "Minimum 10 GHz" with "Radio Frequency" - No New Matter. If in the original application, "the minimum transmission frequency of 10 GHz", is referred to as a preferred embodiment of the invention, and not as a limitation, the substitution later with "radio frequency" (3 KHz to 300 GHz), does not constitute new matter under 35 U.S.C. § 132 or 35 U.S.C. § 112. Commonwealth Scientific v. Buffalo Techs. (USA), Inc. (Fed. Cir. 2008).
Different Arrangement of Claim Elements - No Anticipation. A reference anticipate a claim only if (1) all the elements of the claim are found within the four corners of the document, AND (2), the claim elements are arranged or combined in the reference as in the claim. The difference in claim elements arrangement is particularly important when it indicates that the reference and the claim in question are referring to different subject matters. That means that there is no anticipation. MoneyIN Inc. v. VeriSign, Inc. (Fed. Cir. 2008).
M. Cionca2/24/2016 8:18:30 PM
What is a Patent Search?More
A patent search is conducted by an examiner when reviewing an application to confirm that it does not, in fact, conflict with prior art. This is required, of course, as the entire point of filing a patent is to protect your invention from potential infringements by future inventors and businesses. What is optional, however, is the ability of the inventor to conduct a separate patent search prior to filing the application. The USPTO, as well as other international offices, has a public database that allows users to personally examine prior art and decide if their invention is patentable.
“Is it worth it?”
There is the question of “is it worth it?” The answer is almost always yes. Not only does it give an inventor the opportunity to determine the viability of applying for a patent on an invention, but provides insight into whatever prior art may be related to the invention. This second point is important, as it allows the inventor become more familiar with “what is already out there,” which in turn provides insight into what is unique about the invention under consideration.
At the very least, it his highly advisable to conduct a search before filing a non-provisional patent. Because of the high cost of a non-provisional application, it would be extremely unfortunate if a patent search would have revealed a conflict of claims between the invention in the application and prior art. Conducting a patent search prior to filing can avoid a loss of critical time and money by revealing such conflicts to the inventor.
Hire a Patent Law Professional?
It is ideal, if the budget allows for it, to hire a patent law professional to conduct a search for the inventor. A patent attorney will have a much better understanding of what to look for in prior art, and will be able to determine which patents are more likely to conflict with the invention under consideration. Additionally, a patent attorney will provide a “patentability opinion,” which is their estimate of how likely is that an application will be approved by the USPTO. However, it is important to understand that patent searches are “part art, part science.” Patent attorneys are very skilled at conducting patent searches, but it is impossible for them to be 100% accurate.
One cause for inaccuracy is that inventors have the option to not publicly file a patent application. If a patent attorney is conducting a search for a client, the privately filed application (which could potentially conflict with the attorney’s invention) will not be available. The examiner, however, will have access to the private application, and may reject the attorney’s filed application on the basis of prior art. This is not very common, however, and the benefits of hiring a patent law professional to conduct a search far outweighs such unlikely situations as this example.
Concluding Remarks - Patent Searches
As a general guideline, conducting a patent search prior to filing an application is recommended if the budget allows it. If the search shows that prior art conflicts with an inventor’s idea, the inventor has the ability to change the scope/focus of the invention before submitting the application (or abandoning it entirely to pursue another idea, saving time and money in the process). Even if there are no discernible conflicts of claims after conducting a search, a thorough knowledge of prior art allows for an inventor or attorney to prepare a much better application that not only has a higher chance of approval, but is much better defined in the claims it sets out to protect.
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899VERIFY