A Federal Circuit Lesson on the Structuring of Employment Agreements to Ensure That a Company Owns Its Employees’ Inventions
| July 25, 2012
Preston v. Marathon Oil Company and Thomas Smith
July 10, 2012
Panel: Bryson, Dyk and O’Malley. Opinion by O’Malley.
Summary
In this case, an employee, Yale Preston (“Preston”), executed an employment agreement about one month after starting to work as an employee for Marathon Oil Company (“Marathon”). Whether or not the execution of an agreement after starting employment requires further consideration beyond “continued employment” varies based on state law. Here, the Federal Circuit held that no further consideration was required under Wyoming state law and that the employer, Marathon, owned the invention at issue by virtue of the employment agreement. The Federal Circuit further held that Preston did not breach the employment agreement by failing to later sign a subsequent assignment because the employment agreement included the language “does hereby assign” in relation to future inventions, whereby the invention at issue was assigned to Marathon by the employment agreement regardless of whether the invention was after the execution of the employment agreement.
Tags: assignment > contract > employee > employment contract > ownership
Summary of Oral Arguments in AMP v. USPTO remand
| July 20, 2012
July 20, 2012
In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”. A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.
Tags: §101 > bilski > biotech > diagnostics > DNA > law of nature > Mayo > Myriad > patent eligible subject matter
CLS Bank v. Alice Corporation: An attempt in formulating the abstractness of the “abstract ideas” test to patent eligibility
| July 18, 2012
CLS Bank v. Alice Corporation
July 9, 2012
Panel: Linn, Prost and O’Malley. Opinion by Linn. Dissent by Prost.
Summary
The district court for the District of Columbia held that claims to computer systems, computer readable medium and claims to methods of using a computer of the asserted patents were all invalid as “abstract ideas.” In so holding, the district court ignored the limitations recited in the claims and boiled the invention down to a mere abstract concept “of employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk.” On appeal, the Federal Circuit reversed the district court’s judgment of invalidity under 35 U.S.C. § 101. The Federal Circuit, after considering each asserted claim “as a whole”, found that it was not “manifestly evident” that the claims of the asserted patent were drawn to “abstract ideas.” Therefore, the Federal Circuit held that claims must not be deemed inadequate under 35 U.S.C. § 101.
Tags: §101 > abstract idea > algorithm > bilski > business method > computer product > computer system > mathematical formula > mental process > patent eligible subject matter
When should incorporation by reference language be taken care of?
| July 11, 2012
Hollmer v. Harari
June 7, 2012
Panel: Prost, Mayer, O’Malley. Opinion by Prost
Summary
During the interference proceedings, Harari relied on the disclosure of 07/337,579 (‘579 application) which had been originally incorporated by the earliest 3rd great grandparent application 07/337,566 (‘566 application) of the subject application 09/310,880 (‘880 application). The ‘566 application included the disputed incorporation statement and had been abandoned. Two intervening applications copied the same statement and had been patented. The subject application (‘880 application) included the copy of the statement, but Harari corrected the incorporation statement by preliminary amendment which, according to Hollmer, was new matter because it would newly introduce the disclosure of ‘579 application. CAFC decided for Harari by applying the relaxed “reasonable examiner” standard (Harari I, 602 F.3d 1348). However, Harari was not allowed to claim the benefit of the filing date of the ‘566 application because CAFC found that the intervening applications in the chain leading back to the earlier ‘566 application did not comply with the written description requirement due to the ambiguous incorporation statement by applying the strict “person of ordinary skill” standard.
本件は、米国特有の”incorporation by reference”プラクティスに関するものである。インターフェアレンス手続において、Harariは最先の出願(566出願)が”incorporation by reference”によって引用した米国出願(579出願)の開示内容に依存した。566出願は不十分な”incorporation by reference”の記述を含んでいたがそのまま放棄された。566出願の出願日の利益を主張する出願がその後5代に渡って続き、全ての出願は当該不十分な”incorporation by reference”の記述をコピーしていた。Harariは5代目の本願(880出願)を予備補正して”incorporation by reference”の記述を訂正したが、2代目と3代目の中間の出願はそのような訂正を経ずに特許になってしまっていた。本願に関する予備補正が新規事項の追加になるか否かの争いについて、CAFCは、ゆるやかな「審査官の観点」の基準を適用して予備補正が適切であると判断した。一方、本願が特許法第120条の利益を享受して最先の出願日に遡るためには全ての中間の出願が” written description requirement”の要件を満たす必要がある。この要件が不十分な”incorporation by reference”によって妨げられるか否かの争いについて、CAFCは、より厳しい「当業者の観点」の基準を適用して第120条の利益を認めなかった。
[実務上の指針] 最先の出願日に遡るためには、その間にある全ての中間の出願を補正して適切な”incorporation by reference”の記述を含むようにしておくことが必要。
Tags: §120 > Incorporation by reference > written description
Presumption of validity attaches to all issued patents, even incorrectly issued patents
| July 5, 2012
Sciele Pharma Inc. v. Lupin Ltd.
July 2, 2012
Panel: Lourie, Prost, Moore. Opinion by Moore
Summary
Shionogi (new name for Sciele Pharma) obtained US Patent No. 6,866,866 (“the ‘866 patent”) which included broader claims that were intended to be cancelled in favor of narrower claims in response to a rejection. Shionogi brought suit against Lupin for infringement of the ‘866 patent including claims that were to be cancelled. Lupin began selling the alleged infringing product and Shionogi moved for a preliminary injunction. The District Court granted Shionogi’s request for preliminary injunction and Lupin appealed. On appeal, the CAFC stated that even though the ‘866 patent issued with the incorrect claims, the ‘866 patent nonetheless had a presumption of validity and that the clear and convincing evidentiary standard applied for invalidating the patent. The CAFC also stated that there is not a heightened standard just because references were considered by the PTO. With the proper clear and convincing evidentiary standard applied to the ‘866 patent, the CAFC stated that Lupin has raised a substantial question of invalidity, and thus, the preliminary injunction is vacated.
Tags: clear and convincing standard > enablement > injunction > obviousness > preliminary injunction > presumption of validity > validity
USPTO issues Interim Procedure for §101 examination after Prometheus v. Mayo
| July 3, 2012
Since the Supreme Court issued their decision in Mayo v. Prometheus (English discussion here; Japanese discussion here), rejections of claims based on failure to comply patent-eligible subject matter requirements of §101 seem to be on the rise. Until now, Examiners had been given only very little guidance (see here), resulting in Mayo being cited inconsistently. However, today, the USPTO has provided Examiners with additional guidance about how to handle this issue. Please click below for more information:
These guidelines should improve consistency of the manner in which Mayo and related cases are relied upon by the Examining Corps, as well as provide practitioners with a basic framework for responding to such rejections.
Keep in mind that as the CAFC (and perhaps the Supreme Court, eventually) continues to address this issue in other pending cases such as Myriad and Ultramercial, these guidelines may be revised by the USPTO.
Tags: §101 > bilski > law of nature > Mayo > Myriad > patent eligible subject matter
