Intellectual Property

On October 1, 2014, the United States Patent and Trademark Office (“USPTO”) announced the After Final Consideration Pilot 2.0 (“AFCP 2.0”) – a program intended to provide new features that will enhance communication between the USPTO and the applicant, as compared with the original After Final Consideration Pilot (“AFCP”).

The Federal Circuit recently denied en banc review of its prior decision dismissing a patent infringement suit where a co-owner of the patent-in-suit refused to join the case voluntarily and the court held that it could not force the co-owner to join the suit involuntarily.

The first parts of the new UK Intellectual Property Act 2014 come into force today. The act will introduce a range of new measures, one of which is that it expands the options available to patent proprietors for marking patented products.

On September 16, 2014, United States Patent and Trademark Office Chief of Staff Andrew Byrnes presented to the Boston Patent Law Association an update on new quality initiatives and the implementation of White House patent policies.

Administrative Law Judge Essex of the International Trade Commission (“ITC”) recently issued the public version of his decision in ITC investigation No. 337-TA-868. 

Administrative Law Judge Essex recently issued the public version of his Initial Determination in ITC investigation No. 337-TA-868, ruling that the respondents are precluded from relying on the defense that the patent holder is required to license the patents-in-suit on fair, reasonable and non-discriminatory (“FRAND”) terms when they failed to seek a license before practicing the standard to which they now claim those patents are essential.

The Supreme Court yesterday issued its long-awaited decision in Alice Corporation v. CLS Bank International addressing the patent eligibility of computer-implemented inventions under 35 USC §101.

In Actavis Group HF v. Eli Lilly & Co. the UK High Court has granted a declaration of non-infringement in the UK, France, Italy and Spain. A jurisdictional challenge in relation to the French, Italian and Spanish jurisdictions was rejected.

Earlier this week, the United States Supreme Court delivered unanimous opinions in two separate cases addressing questions of patent law, Limelight Networks v. Akamai Technologies (on induced infringement) and Nautilus v. Biosig Instruments (on indefiniteness).

On Monday, May 5, 2014, the Court of Appeals for the Federal Circuit, by transferring the Microsoft v. Motorola case to the Court of Appeals for the Ninth Circuit, issued an order which may significantly impact the ability of participants in standard-setting organizations (“SSOs”) to obtain relief for patent infringement.

The International Trade Commission (ITC) issued its much-awaited decision in Certain Digital Models on April 3, 2014, affirming in a decision with important implications for the software and media industries that digital importation is within the jurisdiction of the Commission.

On March 10, 2014, Sonos announced it would forward-publish its patent applications before they would traditionally be available to the public. This has given rise to quite a bit of discussion in patent legal circles.

On March 4, 2014, the U.S. Patent and Trademark Office (“USPTO”) issued a memorandum to the Patent Examining Corps with guidance for determining the patent eligibility of claims relating to products of nature and laws of nature (“the Guidance”) in view of the U.S. Supreme Court decisions in Assoc. for Molecular Pathology v. Myriad Genetics (“Myriad”) and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (“Prometheus”).

Recently, the Federal Circuit issued a decision in Novartis v. Lee (2013-1160, Fed. Cir., Jan. 15, 2014) which alters Patent Term Adjustment (PTA) calculations for patents where a Request for Continued Examination (RCE) was filed during prosecution.

The EPO has announced rule changes that will provide applicants with the option to have additional searches carried out during the European regional phase of Euro-PCT applications.

The European Patent Office (EPO) has announced rule changes that will provide applicants with the option to have additional searches carried out during the European regional phase of Euro-Patent Cooperation Treaty (PCT) applications.

News broke last week that the European Patent Office's (EPO) Administrative Council has decided to remove the time limits for filing divisional applications. As of 1 April 2014, applicants will be able to file divisional applications at any time whilst an application is pending at the EPO.

The CLS Bank case (CLS Bank Int’l v. Alice Corp. Pty. Ltd., 2011-1301) decision issued by the Court of Appeals for the Federal Circuit highlighted the difficulty that those working in the field of software patents in the US are having in deciding what constitutes patent eligible subject-matter (discussed in a prior Mintz Levin advisory).

The EPO’s Administrative Council has decided to reverse the changes made in 2010 to the rules for filing divisional applications. These changes introduced a 24-month time limit within which divisional applications had to be filed.

Since 16 March 2013 the America Invents Act (AIA) has expanded what constitutes prior art. The run-up to this law change date saw a spike in new patent applications filed with the United States Patent and Trademark Office (USPTO) from applicants wanting to take advantage of the pre-existing first-to-invent rules.