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Supreme Court rules that “secret” sales triggers the on-sale bar to patentability!

On January 22, 2019, the US Supreme Court decided Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.  The main issue in that case was whether a “secret” sale of the invention triggers the 1 year time period to apply for a US patent application.

The America Invents Act (AIA) amended 35 U.S.C. §102 as follows:  “A person shall be entitled to a patent unless . . . the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The underlined portion was added by the AIA.

Plaintiff Helsinn argued, that the addition of the phrase “or otherwise available to the public” in the AIA statute altered the meaning of on sale in such a way that if an invention’s sale was confidential (and, therefore, not available to the public), the invention was not on sale under the AIA statute. The Supreme Court disagreed.

Thus, inventors and patent owners should be aware that any sale, secret or public, triggers the on-sale bar, and a patent application must be filed within 1 year of the first sale, or public disclosure of the invention—otherwise the invention is ineligible for patent protection.  Stated another way, PATENT EARLY!

The case can be read here.

Article on How Trade Shows can Help Inventors!

I just read an interesting article on How Trade Shows can Help Inventors from the United Inventors Association of America. Two sentences jumped out at my from the article.  The first was:  “Manufacturers often look to independent inventors to find their next great product, and might enter into a licensing agreement with you if you have that product.”  The next was:  “Cathie Kirik, our Trade Show Director, mentioned, ‘participating in a trade show is an opportunity for new inventors to test the waters, it can be very beneficial to practice pitching your product and even more important to listen to the feedback, good or bad.’ ”

Read the article here.

USPTO ISSUES NEW SUBJECT MATTER ELIGIBILITY GUIDANCE

The USPTO has issued new subject matter eligibility guidelines, which can be found here.  I have reviewed the 27 page guidelines and have the following comments.

The USPTO now has expressly identified groups of abstract ideas to be used in the Alice/Mayo test.  The groups of abstract ideas are:

a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;

b) Certain methods of organizing human activity;

c) Mental processes.

In addition there is a “…rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea”.

Further, the USPTO states that claim are NOT directed to a judicial exception  (abstract idea), “if the claim as a whole integrates the recited judicial exception into a practical application of that exception”.   The USPTO goes on to state:

“If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.

“If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B (where it may still be eligible if it amounts to an “inventive concept”).”

With respect to the “integrated into a practical application” determination, the USPTO states the following:

“Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit, for example those listed below.”

“Examiners should note, however, that revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.”

“In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements)24 may have integrated the exception into a practical application:

“an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;

“an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;

“an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;

“an additional element effects a transformation or reduction of a particular article to a different state or thing; and

“an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.”

I believe the above guidance will help inventors and patent attorneys in protecting inventions in the business method and software arts.

Patents, Trademark & Copyrights Class for Individuals and Businesses

 I am happy to announce that I will be teaching another class on Patents, Trademarks, and Copyrights for individual inventors and small businesses. An overview of the U.S. patent system, trademarks and copyright will be presented. The class also includes: the patent process, preparation, prosecution, and issuance. In this class you will learn about how to protect your inventions. The course will be held on two nights, Thursday March 7, 2019, and Thursday March 14, 2019, from 6:30 pm – 8:30 pm at Jonathan Law High School, 20 Lansdale Ave, Milford, CT 06460, room 101.  To sign up, please visit the Milford adult education website, which can be reached here.

USPTO remains open despite government shutdown

According to the USPTO: 

“Although parts of the federal government have experienced a lapse in appropriated funding, the USPTO remains open for business as normal. This is possible because the agency has access to prior-year fee collections, which enables the USPTO to continue normal operations for a few weeks. Should the USPTO exhaust these funds before a partial government shutdown comes to an end, the agency would have to shut down at that time, although a small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. Further information regarding any adjustments to the USPTO’s operating status will be posted on the USPTO website and delivered to the news media.”  The USPTO statement can be found here

USPTO offers free virtual instructor led training webinar on Legal Analysis Writing Workshop

The USPTO will offer training to members of the public as part of the Virtual Instructor Led Training (vILT) program. vILT is designed to allow stakeholders in the USPTO to be briefed on a variety of focused topics related to examination practice and procedure derived from recent training delivered to experienced USPTO examiners. The interactive online format of vILT allows participants to remotely attend the training without the need to travel to USPTO locations.     

Registration is opened from December 17, 2018 – January 27, 2019 for the next vILT webinar titled “Legal Analysis Writing Workshop” scheduled for February 12 and 13, 2019 at 1pm ET. This course if for patent attorneys and patent agents.  This course is first come first serve, has a limited capacity, and selection is required to attend. The USPTO is applying for CLE credit in Virginia for this course. All vILT events are free to attend.  The sign up form can be found here