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December 1, 2020 will mark the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction). In a series of blog posts, we…
The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These questions are: Whether APJs of the Patent Trial and Appeal Board (PTAB) are principal officers who must be appointed by the President under the Appointments Clause of the Constitution; and whether, if APJs are determined to be principal officers, severing the application of 5 U.S.C. 7513(a) to those judges cures any violation of the Appointments Clause.  The Court declined to hear a third question of whether the Court of Appeals…
Reprinted with permission from the October 1, 2020 issue of The Intellectual Property Strategist, ALM Media, LLC. I. INTRODUCTION During patent prosecution before the USPTO, applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeal to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice related issues taken to the PTAB are not necessarily the Alice related issues decided by the PTAB.…
This post originally appeared as an article in the July/August 2020 issue of the Journal of Corporate Renewal (JCR), the official publication of the Turnaround Management Association (TMA). The ability of companies to continue as going concerns has become more challenging than ever. As companies pivot and move forward with product production and sales, they must consider not only their financial viability but the financial viability of their customers, suppliers, and licensors.…
In Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co. Ltd, the Federal Circuit held that two scientists, Dr. Gordon Freeman and Dr. Clive Wood, should be included as joint inventors, along with Dr. Tasuku Honjo for patents related to immunotherapy for treating cancer. Identifying foundational discoveries underlying a patent claim could be considered a significant contribution that may rise to the level of inventorship even though the claims do not recite such discoveries. The decision clarifies inventorship rules in the context of pioneering therapeutic work, and suggests that no necessary contribution can be ignored in the inventorship analysis, even if…
On June 30, the Supreme Court issued an 8-1 holding in U.S. Patent & Trademark Office v. Booking.com B.V., finding that whether a “GENERIC.COM” mark qualifies for trademark protection depends on its ability to act as a source identifier to consumers. In other words, a “GENERIC.COM” mark may or may not actually be generic. Adding “.COM” to an otherwise generic, and unregistrable, mark does not automatically affect whether the mark qualifies for trademark protection.…
The United States Patent and Trademark Office (USPTO) today announced a pilot program for fast-tracking appeals of applications for original utility, design, or plant patents. The so-called “Fast-Track Appeals Pilot Program” is intended to provide a vehicle for advancing applications during the ex parte appeals process before the PTAB (Patent Trial and Appeal Board).…
On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the earlier filing date. Typically, the applicant still has two additional months to petition the USPTO to restore this right with a petition fee.[4] The USPTO has authorized an initiative to further extend the two-month period, while waiving the petition fee, in…
The Patent Trial and Appeal Board’s (“PTAB”) institution rate for inter partes reviews (“IPRs”) has fallen virtually every year.  In its recent decision in Apple, Inc. v. Fintiv, Inc. issued on May 13, 2020, the PTAB denied institution of Apple’s petition for IPR and set forth a new test for determining whether to institute an IPR based on the status of the underlying district court proceedings, which suggests that institution rates may continue to fall.…
The current COVID-19 environment has disrupted standard operations in nearly every industry and created fertile grounds for innovation. This is the first of a series of blog posts that will look at how industries have enabled technologies at lightning speed, in an effort to pay homage to the wonders of science innovation in view of COVID-19.…
On May 4, the USPTO made available a new web-based intellectual property (IP) platform, Patents 4 Partnerships, to provide the public with a user-friendly, searchable repository of patents and published patent applications related to the COVID-19 pandemic. To be included in the repository, the patentee or patent applicant must indicate that the patent or patent application is available for licensing. The platform can help entities find collaborations to encourage voluntary licensing and commercialization of key innovations by helping to bring to the marketplace new products and technologies for the prevention, treatment, and diagnosis of COVID-19.…
The United States Patent and Trademark Office (USPTO) today announced a new Prioritized Examination Pilot Program for qualified patent applications relating to COVID-19.  This program is available without the usual prioritized-examination fees and the USPTO’s goal under the program is to reach final disposition of applications in the program within twelve months from the date prioritized status is granted.  However, the USPTO notes that it may be able to reach final disposition in six months if applicants provide more timely responses to notices and actions from the USPTO.  This pilot program is limited to a total of 500 accepted requests,…
On March 31, 2020, the USPTO announced that it is permitting applicants, for delays that are based on the ongoing COVID-19 emergency in the United States, to request a 30-day extension of the time allowed to file certain documents and to pay certain fees. We provided an explanation of this announcement when it was published. Since then, the USPTO provided a form to be used for the “statement of delay” required in claiming a COVID-19-related filing extension. Extensions were originally applicable to due dates falling between March 27 and April 30. The USPTO, on April 28, 2020, extended the applicable…