MVS Filewrapper® Blog: Additional Patent Reform Legislation Proposed in the House and Senate

Post by Dan Lorentzen



In an ongoing trend of alternative patent reform legislation being introduced in Congress, new legislation was introduced in both the U.S House of Representatives and the Senate.  The legislation, called the "Grace Period Restoration Act," was introduced as S. 926 by Senators Tammy Baldwin (D-WI) and David Vitter (R-LA), and as H.R. 1791 by Representatives Jim Sensenbrenner (R-WI) and John Conyers, Jr. (D-MI) in the House.    


Although intended to amend the Leahy-Smith America Invents Act (AIA), the legislation is much more narrowly tailored than other patent reform legislation previously introduced.  This bill is designed to specifically address what the sponsors characterize as "unintentionally ambiguous language" in the AIA that significantly limited the one-year grace period for patent filing that existed under the pre-AIA patent law.  The sponsors particularly point out the apparent effect that the limitation of the grace period has on academic research institutions, such as universities.  The bill seeks to address this problem by amending 35 U.S.C. § 102 to re-establish the pre-AIA grace period. 


At first glance, this legislation would represent a back-track from the "first inventor to file" system enacted by the AIA.  In addition, this new bill adds to an increasingly crowded field of legislation proposed to amend the AIA less than five years after that legislation was enacted, and only just over two years since the final provisions of the AIA went into effect. 

The full text of the Grace Period Restoration Act is available here.



MVS Filewrapper® Blog: New Best Practices for DMCA Takedown Notices from the Department of Commerce

Post by Dan Lorentzen

Under the Digital Millennium Copyright Act (DMCA), online service providers are immunized from liability for copyright infringement so long as they comply with two requirements intended to protect the rights of copyright owners.  Under the DMCA, online service providers include, for example, internet service providers, email providers, news providers, entertainment providers, search engines, e-shopping sites, e-finance or e-banking sites, e-health sites, e-government sites, and Wikipedia.  Congress enacted the DMCA in 1998, which amended the Copyright Act to address issues raised by a rapidly developing Internet by updating rights, exceptions, and enforcement mechanisms.  In order to qualify for immunity under the DMCA, an online service provider must (1) accommodate and not interfere with standard technical measures; and (2) adopt and reasonably implement a policy of addressing and terminating accounts of users who are found to be "repeat infringers"—commonly known as the "takedown" notice process. 

The U.S. Department of Commerce recently released a document titled "DMCA Notice-and-Takedown Processes:  List of Good, Bad and Situational Practices." While the document does not create any new policies or rules, it does set out "good," "bad," and "situational" practices for both senders and recipients of copyright "takedown" notices under the DMCA.  The document is intended to help improve the efficiency of the handling and processing of both "takedown" notices and counter-notices.  Although it is not comprehensive, the document is a good resource for any copyright owner or online service provider looking for basic practical guidance on making or dealing with "takedown" notices. 

The "DMCA Notice-and-Takedown Processes:  List of Good, Bad and Situational Practices" document is available here.  Additional information about copyrights and DMCA "takedown" notices is available here, here, and here.  

MVS Filewrapper® Blog: New Decision on Plant Patentability at the EPO

Post by Dan Lorentzen

A recent decision has resulted in a change in European patent law that should make it easier to obtain patent protection for certain types of plants or plant products.  Under European patent law (Article 53(b) of the European Patent Convention (EPC)), essentially biological processes for the production of plants are not eligible for patent protection.  In addition, plant and animal varieties are excluded from patent protection.  However, the outer limits of the exclusion have not previously been set:  does Article 53(b) of the EPC exclude patent protection on all plants and animals, or does the statutory language make specific exceptions leaving room for non-varietal protection of plants and animals?  The recent decision from the highest patent court in Europe—the European Patent Office (EPO) Enlarged Board of Appeal—has confirmed that plants as products (as opposed to the processes for making them) are eligible for patent protection under European patent law. 

The case involved two different patents—the first covering tomatoes with reduced fruit water content, and the second covering broccoli with elevated levels of 3-methylsulfinylpropyl glucosinolates, or 4-methylsulfinylbutyl glucosinolates.  The claims at issue in both patents were drafted as product-by-process claims, where the recited processes had previously been determined to be excluded by the EPC.  The challengers to the patents argued that because the processes were excluded from patent protection, the products must also be excluded. 

The two patents were granted, and each was the subject of a separate opposition proceeding at the EPO.  The cases were both referred to appeal boards to for determination of whether the claims were excluded under the EPC.  Ultimately, the cases were both referred all the way to the highest patent court at the EPO where they were consolidated. 

The Enlarged Board of Appeal decided three questions:

 (1) Whether the EPC exclusion of essentially biological processes for the production of plants precludes patent protection for product claims directed to plants or plant material such as plant parts;

(2) Whether (a) the fact that the process features of the product-by-process claims were biological processes for the production of plants or (b) the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application render the claims unallowable; and

(3) Whether it is relevant that the protection encompasses the  generation of the claimed product by means of an essentially biological process for the production of plants excluded under the EPC. 

The Board answered all of these questions in the negative. 

In concluding that the plant products were eligible under the EPC, the Board determined that the claimed subject matter was not limited or directed to a plant variety, but rather related to the EPC exclusion from patentability of "essentially biological processes for the production of plants" other than plant varieties.  The Board determined that the exception is limited to methods and processes, and does not encompass products that are obtained and/or defined by those methods or processes. 

This decision represents a change in European patent law that should make it easier to obtain EPO patent protection for certain types of plants or plant products.  However, as the Board noted in its decision, a number of EPO member countries—specifically Germany and the Netherlands—have amended their own patent laws to exclude products derived from essentially biological processes.  This may create situations where an EPO patent is granted, but will not be validated by particular member countries.

The full decision is available here.

MVS Filewrapper® Blog: Russ Slifer Sworn-In as USPTO Deputy Director and Patent Quality Initiatives

Post by Jill Link


USPTO Director Michelle Lee nominated Russ Slifer as Deputy Director of the USPTO. Slifer previously served as the Regional Director for the Denver Satelite Office of the USPTO. He is a patent attorney with over 20 years experience, including 8 years as the Chief Patent Counsel for Micron Technology. Slifer was appointed by Secretary of Commerce for this political appointment, along with Director Lee who was also recently appointed and sworn in earlier this month (March 2015).  With both Director and Deputy Director in place the USPTO is now fully staffed again.

The Director has issued a focus for their remaining terms - Patent Quality Initiatives. For example, Deputy Director's first official day on the job was spent with the Director hosting the USPTO Patent Quality Summit. The Summit follows a Federal Register Notice setting forth various proposals for focus on patent quality. The Federal Register listed the following: 

1. USPTO proposes a mechanism for an applicant to request the Office of Patent Quality Assurance to review an examiner’s Office action during prosecution.

2. USPTO is seeking input on whether to conduct automated pre-examination searches for all applications, and if so, what tools might be used to complete those searches.

3. USPTO is seeking the public’s assistance in identifying ways to enhance the clarity and completeness of the official record during prosecution of an application.

4. USPTO is considering ways to measure and enhance the effectiveness of examiner training, and how best to improve quality metrics.

5. The USPTO is seeking input to help determine whether the current compact prosecution model should be modified.   In particular, is seeking ideas for proactive alternatives to Requests for Continued Examination filings and appeals to the Patent Trial and Appeal Board.

6. The USPTO is considering the viability of enabling applicants to have in-person interviews with examiners, regardless of the examiner’s duty station.

Filewrapper will keep you posted on further updates of these and other patent quality initiatives.



MVS Filewrapper® Blog: Blurred Lines in Copyright Law Following 'Blurred Lines' Jury Verdict

Post by Paul S. Mazzola


Under the Copyright Act of 1909, a work was protected when it was published with the notice of copyright protection.  Although changed by the Copyright Act of 1976, releasing a sound recording of a composition under the 1909 act (i.e., musical notes and lyrics) did not constitute “publication” of a musical work.  Thus, for musical works before the 1976 Act, protection was not typically afforded until the owner deposited a manuscript copy of the music in the copyright office.  For copyright infringement cases involving pre-1976 musical works, this aspect of the law presents an interesting issue.  The recent case involving the song Blurred Lines presents such a case.


On March 10, 2015, a jury determined that performers Robin Thicke and Pharrell Williams copied Marvin Gaye's 1977 song Got to Give It Up when the duo created the 2013 hit song Blurred Lines.  The jury found Thicke and Williams liable for copyright infringement and awarded $7.4 million dollar to the children of Gaye.


Although most individuals will compare the two audio recordings and/or listen to a "mashup" of the two songs on YouTube before reaching a conclusion, the legal analysis is not so simple.  From an intellectual property law standpoint, this case is particularly interesting.


Gaye recorded Got to Give It Up in December 1976.  At that time, the Copyright Act of 1976 had been signed into law two months earlier, but did not go into effect until January 1, 1978.  As a result, aspects related to the copyright(s) of Got to Give It Up were governed by the Copyright Act of 1909.


As noted by the judge in a ruling for summary judgment, "in order to claim copyright in a musical work under the 1909 Act, the work had to be reduced to sheet music or other manuscript forum."  The Copyright Act of 1976 broadened the scope of federal copyright protection to include "works of authorship fixed in any tangible medium of expression," thereby encompassing a sound recording of a composition.


Due to the timing of Gaye's recording relative to the effective date of the Copyright Act of 1976, his copyrights were limited to the sheet music compositions.  In fact, the federal district judge granted Thicke and Williams a motion in limine to prevent the full, produced audio recording of Got to Give It Up from being played at the trial; a redacted version consistent with the sheet music was played for the jury.


To succeed at trial, lawyers for the Gayes were tasked with proving that the lyrics, melody and chords contained in the sheet music were copied when composing Blurred Lines.  The sheet music of Got to Give It Up, however, was reportedly missing several elements commonly associated with the produced audio recording, such as, most notably, the well-known drum beat.


The legal test for copyright infringement is a two-part analysis, each of which addresses whether the allegedly infringing work is "substantially similar" to the copyrighted work.  Despite the similar verbiage, the analyses are separate and distinct.  The first inquiry is considered to be a lower threshold and involves: (i) showing the alleged infringer had access to the copyrighted work; and (ii) the two works are substantially similar such that the alleged infringing work was copied from the copyrighted work.  In the case of Thicke and Williams, the popularity and distribution of Got to Give It Up no doubt proves access, and Thicke cited the song as inspiration when composing Blurred Lines.  If the first inquiry is answered in the affirmative, the jury determines whether the alleged infringer copied a substantial amount of protectable expression.  Whether Blurred Lines was substantially similar to the protectable expression captured in the sheet music of Got to Give It Up such that it misappropriates the same is certainly a question reasonable minds differ.


The verdict has had some divisive fallout.  Many artists applaud the verdict for advancing strong copyright protection.  Others believe the facts of the case create blurred lines in copyright law, from which the resulting unpredictability may stifle creativity when artists look to features of existing works for inspiration.

MVS Filewrapper® Blog: Michelle Lee Confirmed as USPTO Director

The Senate on Monday confirmed the White House's nominee for the long-vacant director position at the USPTO.  Director Lee had been serving as Deputy Director and acting Director for over a year, pending the nomination process. 

Director Lee takes over for former-Director Kappos, who left the position in February 2013.  The confirmation has been both long-expected and long-awaited. 


Congratulations to Director Lee.   

MVS Filewrapper® Blog: Alternative Patent Reform Legislation Proposed in Senate

Post by Dan Lorentzen


Even though the America Invents Act is just over 3 years old, patent reform legislation has arisen on several occasions over the past years.  The most visible legislative efforts have involved the "Innovation Act" proposed by Senator Goodlatte in 2013, and again in 2015.  The version of the Innovation Act introduced in 2013 stalled out in the Senate, but has been re-introduced in the House with a larger number of co-sponsors.   A new, alternative bill has now been proposed in the Senate.


Senator Chris Coons (D-Del.), along with co-sponsors Dick Durbin (D-Ill.) and Mazie Hirono (D-Hawaii), has now proposed the "Support Technology & Research for Our Nation’s Growth (STRONG) Patents Act of 2015."  The bill was introduced as S.632 on March 3, 2015 as "[a] bill to strengthen the position of the United States as the world's leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country's economy." 


This new legislation addresses many of the same issues as the Innovation Act in the House, but in some cases does so in markedly different ways.  Included in the provisions are proposed amendments to the Title 35 that would bring claim construction in inter partes review (IPR) and post-grant review (PGR) proceedings at the PTAB in line with litigation in district court.  In particular, the bill would dictate that claim construction in an IPR and PGR proceeding be conducted using the "ordinary and customary meaning" standard instead of the broadest reasonable interpretation (BRI) standard currently applied.  In addition, the bill would require the PTAB in an IPR and PGR proceeding to consider any previous construction of the claims or claim terms at issue performed by a court, provided the patent owner was a party to the prior civil action.  In addition, the bill would import into IRP and PGR proceedings the presumption of validity applied in litigation. 


The bill also includes, among other provisions, the elimination of Form 18 for pleading in patent infringement cases in federal court, retention of fees collected by the USPTO, and inclusion of universities and other institutes of higher learning for micro entity status.  In addition, the bill would change the standard for a finding of willful infringement to a preponderance of the evidence.  Finally, the bill would create a cause of action under the Federal Trade Commission Act for sending a demand letter in bad faith.


A number of notable organizations have expressed their support for the STRONG Patents Act, including the Association of American Universities, the Association of Public Land Grant Universities, and the Biotechnology Industry Organization (BIO). 


The Filewrapper® blog will continue to follow developments for both the STRONG Patents Act and the Innovation Act.  The full text of the STRONG Patents Act is available here.

MVS Filewrapper® Blog: U.S. Takes Final Steps in Joining International Industrial Design System

Post by blog staff

The Hague system for registration of industrial designs offers applicants the potential for obtaining protection in a number of member countries and intergovernmental organizations by means of a single international application.  The system offers possible increased filing efficiencies and cost savings in pursuing protection for designs.

On February 13, 2015, the USPTO announced that the United States had deposited with the World Intellectual Property Organization (WIPO) its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, representing the last step for the United States to join the Hague system. As a result, the treaty, which has already been ratified but not put into law, will go into effect in the U.S. on May 13, 2015.

As discussed in a prior blog post, the proposed rules will allow applicants to file a single international design application, potentially seeking protection of their industrial design in more than 40 countries. U.S. applicants would be able to file their applications with the USPTO as an “indirect filing” and the USPTO would then transmit the application to WIPO for review. The USPTO will continue its examination of design applications and grant patents, whether the application is filed under the Hague Agreement or as a U.S. design patent application.

Final rules will soon be published in the Federal Register and are expected be effective on May 13, 2015. U.S. design patents granted on or after this date will have a 15 year term.

More information on the Hague industrial design system is available here and here, and the USPTO press release is available here.

MVS Filewrapper® Blog: Updates to the Innovation Act

Post by Jill Link



The Filewrapper® Blog has previously reported on the Innovation Act as passed by the U.S. House of Representatives on December 5, 2013 (H.R. 3309) and the companion bill subsequently failing to pass in the senate (S. 1720). Last week a bipartisan bill was introduced by House Judiciary Committee Chairman Bob Goodlatte (R-Virginia) and again referred to as the "Innovation Act" (H.R. 9). The bill is now co-sponsored by Representatives Peter DeFazio (D-Oregon), Darrell Issa (R-California), Anna Eshoo (D- California), and Lamar Smith (R-Texas). To be clear, this is the same legislation passed in 2013 by the House of Representatives and now brought during the inauguration of the 114th U.S. Congress.

The Innovation Act is primarily focused on addressing perceived increases in abusive patent litigation by non-practicing entities (often referred to as “patent trolls”). Supporters of the bill state their intention of curbing patent litigation which only seeks to obtain settlement payments from defendants in an effort to pay the millions of dollars it can cost to proceed through a patent infringement trial.  The bill outlines heightened pleading standards, including requiring a patent plaintiff to name the owner of the patent and whether there is any financial harm as a result of the alleged patent infringement. In addition, the bill provides for a fee-shifting provision that requires courts (with some exceptions) to award the prevailing parties reasonable attorneys' fees and other expenses when the court concludes the action was a frivolous lawsuit or claim. 

The Innovation Act also requires a court to make early decisions regarding patent validity in an effort to avoid a patent case being litigated when claims may ultimately be found to be invalid. For example, there would be required delays in the discovery process until after claim construction is determined. In addition, the Judicial Conference would be required to set forth rules aimed to decrease costs associated with discovery (which often creates a barrier to small businesses and other entrepreneurs pursuing patent litigation).

There is also a voluntary process for small businesses to postpone patent lawsuits while larger sellers complete similar patent lawsuits against the same plaintiff. Similarly, the act allows a manufacturer to intervene in a lawsuit against its customers and have the action stayed for the customer if both the customer and manufacturer agree. 

MVS and the Filewrapper® Blog will continue to bring updates on the progress of the House and Senate as the Innovation Act is again considered in 2015.



MVS Filewrapper® Blog: Update on "Patent Troll" Legislation in the Wake of the 2014 Elections

Post by Luke Holst

In December of 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act," ostensibly to address the problem of abusive patent litigation, sometimes referred to as patent trolling.  While H.R. 3309 passed with bipartisan support by an overwhelming margin of 325-91 votes, its companion bill failed to clear the Senate.  Failure of the Senate bill is attributable to removal of controversial fee-shifting language from H.R. 3309 by Judiciary Committee Chairman Patrick Leahy, D-Vt. The fee-shifting provisions required losing parties in patent litigation to pay their opponent's legal fees—a situation critics argued would discourage the filing of meritorious patent suits by small businesses.  After votes on the Senate counterpart bill stalled repeatedly, Senator Leahy withdrew the bill from the Senate Judiciary Committee's agenda last May.


In the wake of the 2014 midterm elections, Republicans have vowed to take up the legislation again early in 2015.  House Judiciary Committee Chairman Bob Goodlatte, R-Va., recently stated that a new version of the Innovation Act, and two companion bills addressing trade secret protections, should be reintroduced in the U.S. House of Representatives in January and pass with bipartisan majorities.  The trade secrets legislation looks to create private civil trade secret misappropriation lawsuits under the federal Economic Espionage Act, which currently only allows prosecutors to bring criminal cases.  On the Senate side, Senator Charles Grassley, R-Ia., is expected to replace Leahy as Chairman of the Judiciary Committee as the Republicans take over the Senate majority in January.  Senator Grassley has signaled his intention to make patent reform a priority in the new Congress and believes patent reform can be accomplished early next year.  In addition, the White House has signaled its support for legislation curbing abusive patent litigation, signaling that this may be an issue for which meaningful legislative action could be seen during the 2015 term.



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