Patent

On May 10, 2013, the U.S. Court of Appeals for the Federal Circuit released its much-awaited en banc decision in CLS Bank International v. Alice Corp.  A majority of the court affirmed a district court's holding that Alice's claims are not directed to patent-eligible subject matter under 35 USC § 101.

On March 16, 2013, the America Invents Act (AIA) changes U.S. patent law from a first-to-invent system to a first-inventor-to-file system, which moves U.S. patent law into closer harmony with most industrialized nations throughout the world. Among other practical consequences, this change will (1) expand the scope of what constitutes prior art and (2) phase out interference proceedings used to resolve disputes regarding who first invented a technology.

Earlier this month, the State Intellectual Property Office (“SIPO”) of the People’s Republic of China released a proposed amendment to the Chinese Patent Law and is now accepting comments.  The proposed amendment will be the fourth amendment to the Chinese Patent Law since its initial adoption in 1984. Click here to view the comments submitted by the ABA.

The America Invents Act (AIA) changed the landscape in the United States for those seeking to challenge the validity of an issued patent outside of litigation.  On September 16, 2012 Inter Partes review (IPR) will replace the current Inter Partes reexamination (IPX) procedures.

Final Rules relating to these and other AIA procedures will be issued by the USPTO by August 16, 2012 and thus although planning should start now, flexibility will be important during the transition.

A comparison of each procedure and a detailed comparison of the impending changes is included in this update.

Click Here for Inter Partes Comparison

Patent applicants who are dissatisfied with a rejection by the Board of Patent Appeals and Interferences have two options for review. They can appeal directly to the Federal Circuit, which will review the Board’s decision on the record before the U.S. Patent and Trademark Office. Alternatively, 35 U.S.C. § 145 provides that an applicant may “have remedy by civil action against the Director” of the Patent Office in the United States District Court for the District of Columbia. The primary issue in Kappos v. Hyatt was what limitations, if any, exist on an applicant’s right to submit new evidence that was not before the Patent Office in such a district court action.

The U.S. Supreme Court unanimously held that claims on methods of determining whether drug dosing levels should be increased or decreased based on levels of a metabolite in a patient’s bloodstream were not patent eligible.