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Dec. 4, 2011 - American Invents Act No.3 - CPLRG™ 0078

AIA Analysis: Section-by-Section Review of America Invents Act with Cross-References

The American Invents Act contains 37 sections.  The sections vary greatly in relative length, importance and generality.  For example, Section 3 makes a fundamental change in the priority principle by substituting a “first inventor to file” principle for the historic “first to invent” principle.  In contrast, Section 24 names the new Detroit satellite office of the Patent and Trademark Office.

The substantive amendments to the patent statutes  made by the AIA are best understood against the background of existing law.  Attached is a draft section on the AIA, organized section-by-section.  For each section, it analyzes the changes in the Patent Act made by the AIA and their impact, together with cross references to discussions of the affected subject area in the Chisum on Patents treatise.  The AIA Analysis is here:  AIAOverview

Sep. 16, 2011 - America Invents Act No. 2 - CPLRG™ 0077

What the Reform Act Does NOT Reform

Perhaps the first and most important feature of the 2011 patent “reform” legislation is what it does not reform.

The changes made by the AIA are significant and numerous, but they change little of the substantive law on patentability and infringement.

For example, essentially unaltered are:
(1) the standards of novelty and unobviousness in relation to the prior art (though the Act will, prospectively, alter the definition of prior art),
(2) the enablement and written description requirements,
(3) patent eligible subject matter,
(4) claim interpretation,
(5) the doctrine of equivalents and prosecution history estoppel,
(6) remedies for infringement, and
(7) direct and indirect infringement (active inducement and contributory infringement).

These important matters will continue to be defined by the constant flow of case law.

The switch to first-to-file priority is significant, but it goes into effect only for applications filed 18 months after enactment.  Many, many applications and patents will be governed by the “old” law.  Alas, many of us may expire before the first-to-invent principle does (fully).   Also, standards for proving invention (conception, reduction-to-practice, etc.) will continue to be relevant to determine issues such as co-inventorship and ownership.

Also, the grace period includes an inventor disclosure rule that will, arguably, allow an inventor to set a priority date by a “public disclosure” of the invention (up to a year before filing), which eliminates from the prior art a subsequent, pre-filing independent disclosure by another.  The Act does not define what constitutes a public disclosure for this purpose.

Never has so much attention been focused on a patent enactment that accomplished so little.

Sep. 16, 2011 - America Invents Act No1 - CPLRG™ 0076

Introduction to AIA

On September 16, 2011, President Obama is scheduled to sign into law the “Leahy-Smith America Invents Act” (hereafter “the Act” or “AIA”).  The Act makes numerous changes to the governing United States patent statutes, which are codified in United States Code Title 35.

The Act is from a bill of the House of Representatives,  112th Cong., H. R. No. 1249.  AmericanInventsActHR1249

Pertinent to the interpretation of the Act is the House Report on the Bill, 112th Cong., H.R. Report 112-98.  HouseReportonAmericanInventsAct

Information on the legislation can be found at a U.S. Patent and Trademark Office (PTO) website here.

A series of Chisum Patent Law Reference Guides will address specific changes, issues, and developments on the AIA.

CPLRG 076:  Introduction to AIA

CPLRG 077: What the Reform Act Does NOT Reform

CPLRG 0078: Section-by-Section Analysis

Aug. 16, 2011 - Cybersource Corp. v. Retailed Decisions, Inc - CPLRG™ 0074

Cybersource Corp. v. Retailed Decisions, Inc., 2011 U.S. App. LEXIS 16871 (Fed. Cir. 2011) (DYK, Bryson & Prost). Cybersource08162011

Major issues: mental steps as unpatentable methods; Section 101; Bilski; claims to computer readable medium with executable programs instructions; Beauregard claims

A Federal Circuit panel, in an opinion by Judge Dyk, held that method claims to a credit card fraud prevention system, which could be carried out by a human mentally or with the aid of pencil, were unpatentably abstract in the Bilski sense.  The panel also held claims to “computer reaable medium” for carrying out the methods to be unpatentable.

Cross Reference. For a discussion of the “mental steps” doctrine, see Chisum on Patents Sec. 1.03[6]. Read CPLRG™ 0074

Jul. 29, 2011 - Ass'n for Molecular Pathology v. United States Patent and Trademark Office - CPLRG™ 0073

Ass’n for Molecular Pathology v. United States Patent and Trademark Office, 2011 U.S. App. LEXIS 15649 (Fed. Cir. July 29, 2011) (LOURIE, MOORE, concurring in part; BRYSON, concurring in part and dissenting in part)  MyriadGenetics07292011.fc

Major issues:  claims to isolated genes; claims to comparing gene sequences to detect cancer; Bilski; patent eligible subject matter

In a much-watched case, known generally by the name of the patent owner, Myriad Genetics, a Federal Circuit panel addressed Section 101 issues concerning claims to isolated DNA and to methods of screening for cancer by DNA testing.  The panel also addressed the issue whether the plaintiffs, “an assortment of medical organizations, researchers, genetic counselors, and patients” had “standing under the Declaratory Judgment Act to challenge Myriad’s patents.”
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On standing, the Federal Circuit held that “at least one plaintiff,” a doctor, had standing.  On the merits, the majority distinguished between claims to isolated genes and screening by cell growth rates and claims to methods of comparing DNA sequences.  The former but not the latter were for patent eligible subject matter.

Pertinent to this decision is the Supreme Courts June 20, 2011 grant of certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347, CPLRG 0071 (Fed. Cir. 2010), which involves Section 101 issues on patent claims concerning medical diagnostics. Read CPLRG™ 0073

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