Intellectual Property

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.

On June 24, 2013, the International Trade Commission (“ITC”) announced a pilot program for early adjudication of potentially-dispositive issues in investigations.

After an en banc hearing at the United States Court of Appeals for the Federal Circuit (CAFC), questions remain about the patent eligibility of software under US Patent and Trademark Office rules (specifically, § 101). 

The en banc Court of Appeals for the Federal Circuit recently could not agree on the proper approach for determining whether software-based inventions constitute patent eligible subject matter under § 101 of the patent statute or whether they fall within the judicially-created “abstract ideas” exception to patent eligibility as it has evolved under existing Supreme Court precedent.

As of April 1st, companies paying UK corporation tax can take advantage of a new tax regime, dubbed the “Patent Box,” to reduce their tax burden. Here we explain why this new regime has been put in place and how and why it might benefit your business.