Posts Tagged: "aia"

Surviving Alice: Counseling the Client

In accordance with the above discussion, particularly point (a), the client should be apprised of the necessity of fully fleshing out the inventive aspects of the technical implementation (i.e. the fuzzy logic). The client, however, may not know what the technical implementation is or what technical problems may need to be overcome. At this point, there may be no harm in filing a provisional patent application to capture the earliest priority date for the client. The next step under point (b) is to work with the client to develop a plan for implementation. Actual technical implementation can be expensive, but it is a very effective way to reveal technical problems that have to be solved. Technical implementation always (in our humble experience) reveals unforeseen technical problems. At some point, what is readily available may need to be modified or customized to serve the specific needs of the new business application, particularly as that application is scaled up. This is where patentable innovation occurs.

SCOTUS says Patents are a Government Franchise, Not a Vested Property Right

While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system must move along a different path, it is impossible to think that one man will be able to correct the collective mistakes of 535 elected Members of Congress and 9 ivy league educated jurists who seem convinced that forfeiting America’s patent system is somehow what the Constitution demands. His job just became much more difficult, and all the more important.

Supreme Court Issues Much Anticipated Oil States and SAS Decisions

Earlier today, the US Supreme Court issued it’s highly anticipated 7 to 2 decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC which upheld the Constitutionality of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). SCOTUS applied the public rights doctrine to the government’s grant of a patent, finding that patent validity trials need not take place in an Article III court nor did they violate the Seventh Amendment, which ensures a person’s right to a jury trial. The majority opinion was authored by Justice Clarence Thomas. Justice Neil Gorsuch penned a dissent to which Chief Justice John Roberts concurred.

Do Recent Decisions Signal a Change in Patent Owner’s Rights to Defend and Amend Claims in Post-Grant Proceedings?

Ever since the introduction of AIA post-grant proceedings, many have questioned whether the procedural deck is stacked against patent owners.  Limits on making claim amendments, having to bear the burden of showing the validity of claims already issued, and being subjected to multiple serial attacks, certainly have made it seem so.  But have recent cases signaled the playing field may now be tipping ever so slightly in a patent owner’s favor?  Or are these decisions just an illusion?

A Modest Patent Proposal

Just as Swift’s solution to the crises of his day was abhorrent, i.e., eating the children of the poor for nourishment, eating the issue of our Founders is also abhorrent, as well as ill-advised. Our Founders recognized the value of patent and copyright systems, and inculcated this philosophy into the Constitution itself – and our nation has benefited thereby. Likewise, trademarks provide considerable benefits to us all. A societal reward for innovation and creativity is a small price to pay to assure our greatness for generations to come.