Making Amendments to a PCT Patent Application

We sometimes receive requests to make changes to an already-filed PCT patent application. Various opportunities exist during prosecution for amending a PCT patent application depending on a nature and type of change requested. Obvious mistakes in the description, claims, or drawings of a PCT application can be rectified if correction of the mistake is requested within 26 months from the priority date of the PCT application. Mistakes are considered to be obvious if “something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.” PCT Rule 91.1(c).

However, an Applicant who wishes to make amendments to the claims of a PCT application that do not correct an obvious mistake can file the amendments under Article 19 prior to the expiration of 16 months from the priority date of the PCT application or two months from the mailing date of an International Search Report and Written Opinion, whichever is later. Additionally, amendments to the claims, as well as the description or drawings, of a PCT application can also be made after the Article 19 deadline passes, as long as a Demand for International Preliminary Examination is timely filed. Specifically, the Demand must be filed prior to expiration of 22 months from the priority date of the PCT application or within three months from the mailing date of the International Search Report and Written Opinion. Any desired amendments can then be filed at the time of filing the Demand or in reply to any notification mailed during International Preliminary Examination.

Finally, amendments can also be entered via a preliminary amendment upon entering the national stage in one or more countries, when the time has passed for filing amendments during the above-identified periods. However, unlike the amendments discussed above, a preliminary amendment must be filed in each country in which the national stage has been entered.

In summary, any amendments to the description or drawings of a PCT application must accompany a Demand unless the amendments correct an obvious mistake. However, claim amendments can be filed without the filing of a Demand, as long as the claim amendments are filed prior to the expiration of 16 months from the priority date of the PCT application or two months from the mailing date of an International Search Report and Written Opinion, whichever is later. Also, amendments to the description, claims, or drawings can be filed with a national stage entry application, but the amendments must be made in each country in which the national stage has been entered.

Where eagles dare

In addition to being a renowned statesman and one of the Founding Fathers of our country, Benjamin Franklin was also a scientist and inventor, being credited with inventing bifocals, the lightening rod, the flexible urinary catheter, and swim fins, among many other discoveries. Although he was not overfond of the Bald Eagle (he considered it a “Bird of bad moral Character”), one thing Franklin did not do was propose that the turkey be our national bird. He only felt the turkey to be a “much more respectable Bird, and . . . a Bird of Courage.”034

Method inducement requires all steps

On June 2, 2014, in Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 12-768 (2014), the U.S. Supreme Court held that liability for inducement of infringement of a patented method must be predicated on direct infringement. Akamai maintains a global network of content delivery servers that invisibly redirects users of their customer’s Web sites to content cached on Akamai’s servers. Limelight is a competitor whom Akamai sued for direct infringement of U.S. Patent No. 6,108,703 (‘703) for a “Global Hosting System” under 35 U.S.C. § 271(a) and for inducement of infringement under 35 U.S.C. § 271(b). The method claims in the ‘703 patent recite tagging content in a customer’s Web site and serving the tagged content from caching servers. Limelight, however, requires their customers to do their own tagging.

The jury found direct infringement and awarded Akamai $41.5M in damages. Upon motion for reconsideration, the district court granted Limelight’s previously-denied JMOL in light of the Federal Circuit’s holding in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (C.A.F.C. 2008). In Muniauction, the Federal Circuit held that a defendant that does not perform all claimed steps is only liable for direct infringement when either an agency relationship or a contractual obligation exists with a third party who performs the claimed steps. A panel of the Federal Circuit initially affirmed the district court’s granting of the JMOL that Muniauction precluded a finding of direct infringement, but upon rehearing en banc, the Federal Circuit reversed and found that liability for induced infringement can arise when a defendant carries out some steps of a claimed method and “encourages” others to carry out the remaining steps.

A unanimous Supreme Court sharply rejected the en banc Federal Circuit’s holding, stating that “inducement liability may arise ‘if, but only if, [there is] . . . direct infringement.’” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341 (1961), accompanied by the terse observation that, “[o]ne might think that this simple truth is enough to dispose of this appeal.” They went on to blankly explain that, “[a] method patent claims a number of steps; . . . The patent is not infringed unless all of the steps are carried out. . . .There has simply been no infringement of the method in which respondents have staked out an interest, because the performance of all the patent’s steps is not attributable to any one person.” (emphasis added).

A wonderful blend of juicy fruits

055-150x300On June 12, 2014, in POM Wonderful LLC. v. Coca-Cola Co., the U.S. Supreme Court held that a company may bring suit under the Lanham Act for unfair competition arising from false or misleading product descriptions, even though the Federal Food, Drug, and Cosmetic Act (FDCA) gives the Food & Drug Administration exclusive enforcement authority over misbranding of food and drink. Pom Wonderful LLC (“POM”) is a California business that grows pomegranates and distributes pomegranate juices, including a pomegranate-blueberry juice blend. POM sued The Coca-Cola Company (“Coca-Cola”) for unfair competition based on Coca-Cola’s sales of a pomegranate-blueberry juice blend through their Minute Maid subsidiary. While POM’s pomegranate-blueberry juice blend contained 85% pomegranate juice and 15% blueberry juice, Coca-Cola’s juice blend contained just 0.3 percent pomegranate juice, 0.2 percent blueberry juice, 0.1 percent raspberry juice, and 99.4 percent apple juice and was less expensive to produce and sell. (The pomegranate-blueberry component “amounts to a teaspoon in a half gallon.”) The Court applied established statutory interpretation rules to the Lanham Act and FDCA to find the acts to be complimentary, not preclusive. Although both acts concern food and beverage labeling, the Lanham Act protects commercial interests against unfair competition, while the FDCA protects public health and safety. As a result, competitors are free to bring Lanham Act claims for food and beverage labels that are also subject to regulation under the FDCA.

Patentability under three standards

In the last five years, we have seen multiple decisions Supreme Court decisions impacting patentability of software under section 101 and a recent Court of Appeals for the Federal Circuit (CAFC) case of Ultramercial v. Hulu is a good illustration of how the standards set by these decisions differ. The case concerns U.S. patent no. 7,346,545, which covers a method of distributing copyrighted media to consumers over the Internet in exchange for having the consumers view advertisements. CAFC had to consider the validity of this patent on section 101 grounds for a total of three times, in 2011, 2013, and 2014, with the Supreme Court vacating CAFC decisions and remanding the case for reconsideration as additional Supreme Court cases were decided. Initially, CAFC decided the case under the law as set by Bilski v. Kappos, and held the patent valid due to the patent claims requiring an extensive computer interface and complex computer programming. CAFC reconsidered and again upheld the patent for similar reasons under the standard set by the Supreme Court decision of Mayo v. Prometheus, concluding that the claims of the patent were not abstract enough as to be patent ineligible. When faced with the patent for the third time, now under the law set by Alice Corp., CAFC struck down the patent as invalid, ruling that the claims were directed towards an abstract idea and did not have additional elements necessary to transform the claims into a patent eligible application of the idea. CAFC also held that the claim did not satisfy the machine-or-transformation due to not being tied to a novel machine or apparatus and not covering a transformation of a physical matter or something that represents the physical matter.

Court decisions shape patent examination policies and as this case illustrates, the law guiding such policies can change within a few years, and a patent application written with one standard in mind may be examined under a different set of rules. Accordingly, one writing a patent application would be wise to attempt to anticipate a possible tightening of section 101 examination standard and put sufficient support into the specification to allow for claim amendments necessary in light of such a tightening.

Breaking the Trend: Software Patent Survives Challenge

While many post-Alice Corp. decisions regarding patentability of software were grim news for patent owners, a recent case from the U.S. District Court for the Northern District of Illinois goes against this trend. In Card Verification Solutions, LLC. v. Citigroup Inc., the court considered a motion to dismiss a patent infringement lawsuit complaint for failure to state a claim. The motion was based on the patent at issue, U.S. Patent No. 5,826,245, being allegedly directed to an abstract idea and thus being invalid. The claims of the patent cover a method for verification of information in a transaction between two parties, such as between a merchant and a customer.

The court applied a two-pronged test to evaluate patentability of the claims. First, the court asked whether the claims are directed towards an abstract idea, and concluded that verifying transaction information is a fundamental economic practice and indeed an abstract idea. The court then asked whether additional elements transform the nature of the claims into a patent-eligible application of the abstract idea and found that such a transformation is present for several reasons. First, the court reasoned that while the claims do not specifically recite any machinery, a plausible interpretation of the patent suggests that computer hardware would be necessary to use the invention, and invalidating the claims for lack of specific recitation of the hardware would be overly formalistic. The court also noted that while deciding whether the method could be performed by a human with a pen and paper was premature at this stage of the litigation, a reasonable inference could be drawn that a human could not perform the method due to the method including steps of generating pseudorandom numerical tags. Finally, the court applied the machine-or-transformation test and found that the method was transformative due to including steps of adding the pseudorandom tags to other information involved in the transaction. Accordingly, the court upheld the validity of the patent and denied the motion.

While the legal standard based upon which the motion was decided heavily favored the patent owner, the decision nevertheless remains significant for upholding the validity of a software patent in the post-Alice Corp. world. The decision may still eventually be overturned in higher courts, but, for now, software patent owners may take hope that the decision represents a new trend in evaluating software patentability.

Happy 15th Anniversary!

Yesterday, our sponsor, Cascadia Intellectual Property, celebrated 15 years of service to the legal community! The firm was founded on July 20, 1999. Here are ten interesting facts about Cascadia Intellectual Property:

  1. The firm was formed 30 years after the first moon landing.
  2. We are international. Six of us originate from outside the United States, including the Republic of Georgia, Poland, Russia, Japan, and China.
  3. Our mascot is a Shetland sheepdog, named Taisho, which means “Boss” in Japanese.
  4. We are multilingual. We speak eight foreign languages, including French, Georgian, Polish, Russian, Tartar, Japanese, Spanish, and Mandarin.
  5. The firm is in the tallest office building in the Lake City neighborhood.
  6. We like to eat. We spoil ourselves with ethic delicacies, like khatchapuri (Georgian cheese bread), borscht (Russian beet soup), Zapiekanki (Polish street sandwiches), and chichi dango (Japanese sweet rice treats).
  7. We take our summer interns geocaching at lunch time when the weather is nice.
  8. We are green thumbs. We have a Chrysanthemum that is three years old and Krista keeps a small grove of avocado trees in her office.
  9. Patrick is still using the same desk that he first started with.
  10. We are musical. We play the piano, saxaphone and guitar.

Use It (Correctly) or Lose It: Best Practices For Proper Trademark Usage

A trademark protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicates the source of the goods and services. 15 U.S.C. § 1127.

Trademark rights are based upon use of the mark. Accordingly, proper use of a trademark is critical to obtaining registration and for maintenance of the mark, as well as in weighing enforcement of trademark rights against an infringer.

Below we present some general guidelines on proper trademark usage.

1. Provide Notice

For a trademark or service mark registered with the United States Patent and Trademark Office, use the ® symbol in connection with the trademark, which signifies a federally-registered mark. Use of the ® symbol is not permitted with non-federally-registered marks. Failure to provide notice of a registered mark can be considered misuse and could result in abandonment of the trademark, as well as a possible reduction in the amount of damages for infringement.

For non-federally-registered marks, use “TM” in connection with goods and “SM” in connection with services where common law trademark protection is claimed. Although not required, the use of “TM” and “SM” supports correct trademark usage as a source identifier.

The above notations are generally placed above the right end of the mark. If the mark is used repeatedly within a document, providing notice within the title and with the first use in the body is sufficient.

However, when using a mark as a reference to a corporate entity instead of as a brand, use of a notice symbol is unnecessary.

2. Distinguish the Mark

Along with providing notice, for trademarks that include words, consider offsetting the mark by using typography different than the surrounding text. For example, capitalize, underline, boldface, italicize, or use a different size of font for the mark to create a distinction in the mind of the public between the mark and the goods or services that are provided by your business.

3. Always Use the Mark as an Adjective

Be sure to only use the trademark as an adjective, never as a noun or verb, when in combination with the general term for the product or service offered, and never use the mark in place of the general term. For example, “use a Kleenex® facial tissue for a runny nose” is proper, while “use a Kleenex for a runny nose” would be improper.

4. Affix the Mark

A trademark must be “affixed” to a good or used in connection with a service to function as a source identifier. A trademark can be affixed by placing the mark directly on the good, on a tag or label attached to the good, or on packaging containing the good, while a trademark for a service can be affixed by using the mark in connection with advertising or other promotional materials, or placed on letterhead or invoices.

Do not affix a service mark to goods, or a trademark to services.

“Their finest hour”

On this day, in 1940, the Luftwaffe began an aerial bombing campaign against the United Kingdom, in what has become known as the “Battle of Britain.” The British ultimately prevailed, with 544 aircrew killed, 422 aircrew wounded, and 1,547 aircraft destroyed, while the Luftwaffe lost 2,698 aircrew and 1,887 aircraft. Britain’s victory prevented Germany from achieving air superiority and stopped Hitler from launching Operation Sea Lion, an amphibious and airborne assault of Britain. Part of the credit goes to Sir Robert Alexander Watson Watt, who received a patent in Britain in 1935, GB593017, “Improvements in or Relating to Wireless Systems,” for a radar to detect aircraft. His work became the basis of the Chain Home ring of coastal early warning radar stations, which was instrumental in helping detect the approach of Luftwaffe aircraft.Spitfire_and_He_111_during_Battle_of_Britain_1940

The Aftermath of Alice Corp.

On June 25, 2014, the USPTO issued preliminary examination instructions to address the Supreme Court’s recent decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l et al. (“Alice Corp.”), which held that the patent claims at issue were not subject matter eligible under 35 U.S.C. § 101. When the notice first came out, we wondered how the instructions might affect the actual examination of patent applications.

This situation reminded me of the time when the Bilski v. Kappos decision was handed down in 2010. There, as here, the USPTO issued interim guidance for determining subject matter eligibility for process claims. Many of us were concerned about how the machine-or-transformation test would affect claim allowance and what amendments would be needed to place the claims in a condition for allowance. After months of working with examiners, we found that standard language regarding inclusion of a “suitably-programmed computer” or “a processor to execute method steps” could place process claims in compliance with the USPTO’s interpretation of Bilski.

Less than two weeks after having been decided, the Alice Corp. decision is already influencing the examination of software claims by throwing a metaphorical wrench into the familiar interpretation of statutory subject matter under the Bilski guidance. Now, under the new Alice Corp. instructions, statutory subject matter interpretation seems to suggest that: 1) a general computer is not enough to make a software claim statutory and the standard language used to comply with the requirements of Bilski under the former guidance will likely not make the software claim statutory; and 2) the steps of a method claim should be steps that cannot be performed by a human or alternatively, are known to be performed only by a computer and not a person, such as encryption.

My concern that the United States is moving closer to a view of software patents similar to that held by the European Patent Office appears to be validated. Currently, examiners and practitioners are struggling to interpret the Alice Corp. instructions; the examining corps has not yet been trained under the new instructions. Perhaps, once training has been provided and examiners have had an opportunity to work through a few cases, the actual implementation of the guidelines will be less stringently interpreted than appears to be the case today.