How The Supreme Court Decision In Alice Corp. v. CLS Bank Undermines The USPTO Subject Matter Eligibility Guidance

On June 19, 2014, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International, finding that patents directed to “a computer-implemented scheme for mitigating ‘settlement risk’” were invalid as being drawn to a patent-ineligible abstract idea. Although the Court did not address patent claims relating to laws of nature or natural phenomena, the decision undermines the USPTO’s Subject Matter Eligibility Guidance for such claims by showing that the USPTO’s approach is contrary to the Supreme Court’s guiding principles. Continue reading this entry

USPTO Proposes Revised Patent Term Adjustment Rules For RCEs Under Novartis

The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination (RCE) has been filed, after the Federal Circuit held in Novartis v. Lee that the USPTO’s original rules were not consistent with the PTA statute. While the proposed rules appear to follow the Federal Circuit decision for applications which proceed directly to grant, they go further than Novartis by addressing what happens when prosecution is reopened after allowance. The USPTO will consider written comments on the proposed rules received by August 18, 2014.  Continue reading this entry

Federal Circuit Says Mistaken Belief Required For Reissue Error

In In re Dinsmore, the Federal Circuit held that the reissue process could not be used to correct an alleged defect in a terminal disclaimer between patents that were not commonly owned, because there had been no “mistaken belief” to support a reissue error within the meaning of the statute. This case underscores the limits of the reissue process and highlights the care that should be taken with terminal disclaimers. Continue reading this entry

Is Evidence Of Obviousness Always Required?

In K/S HIMPP v. Hear-Wear Technologies, LLC, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the decision of the Central Reexamination Unit Examiner that refused to hold claims obvious where the inter partes reexamination requestor had failed to provide any evidence that the claim element at issue was known in the art. Judge Dyk’s strong dissenting opinion is notable for taking the USPTO to task for failing to invoke its own technical expertise to invalidate the claims at issue without requiring direct evidence of obviousness. Continue reading this entry

Supreme Court Adopts Reasonable Certainty Test For Definiteness

On June 2, 2014, the Supreme Court issued a unanimous decision in Nautilus, Inc. v. Biosig Instruments, Inc., rejecting the Federal Circuit’s “insolubly ambiguous” test for patent claim indefiniteness under 35 USC § 112, and instead adopting a “reasonable certainty test.” The Court vacated the Federal Circuit decision rendered under the “insolubly ambiguous” test, and remanded for the Federal Circuit to evaluate Biosig’s claims under the new standard. Continue reading this entry