United States: Inventive Asia: Latest Developments In U.S. Intellectual Property Law

Last Updated: October 23 2019
Article by Andrew N. Thomases, Scott A. McKeown, David Chun and Han Xu

WELCOME TO THE INAUGURAL ISSUE OF INVENTIVE ASIA!

Inventive Asia is a quarterly publication of Ropes & Gray's intellectual property practice. The goal of this publication is to provide executive-level summaries on key developments in the U.S. intellectual property landscape. We hope our clients will leverage this information to more strategically manage their U.S. intellectual property challenges and better navigate potential risks and liabilities.

In the Fall 2019 issue, we discuss the effort now underway in the U.S. Congress to reform subject matter eligibility for patent protection; U.S. Supreme Court review of PTAB appeal practices; a planned increase in USPTO fees; and a growing use of the International Trade Commission that may threaten imports from Asia.

I hope you find this information worthwhile, and, of course, we are happy to follow up with you on any specific concerns you would like to discuss relative to your business.

U.S. POISED TO RESET PATENTABLE SUBJECT MATTER REQUIREMENTS

35 U.S.C. § 101 defines what kinds of subject matter may qualify for patent protection, identifying "any new and useful process, machine, manufacture, or composition of matter... subject to the conditions and requirements of this title." However, in recent years, the U.S. courts and U.S. Patent and Trademark Office (USPTO) have issued a growing—and, some would argue, inconsistent—body of guidance/judicial decisions on 101 eligibility. This has prevented many critical technologies, such as medical diagnostics, computer science and biotechnology, from securing or maintaining patent protection in the United States. The U.S. Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014), amplified the struggle to predictably navigate 101 requirements. Since Alice, it has become an increasingly difficult task for legal professionals and inventors alike to determine what exactly falls within the bounds of patentable subject matter. Former heads of the USPTO and even former Federal Circuit Chief Judge Paul R. Michel have expressed dissatisfaction with the current 101 regime. Judge Michel explained, "[i]f I, as a judge with 22 years of experience deciding patent cases on the Federal Circuit's bench, cannot predict outcomes based on case law, how can we expect patent examiners, trial judges, inventors, and investors to do so?"

Washington, D.C. (Draft Legislation)

In response to these complaints about the confusing state of the law, Congress is stepping in to attempt to reform the 101 landscape. On May 22, a bipartisan group from the House and Senate, headed by Senators Chris Coons (D-Del.) and Thom Tillis (R-N.C.), released a draft framework reforming Sections 101 and 112 of the Patent Act. The bill proposes to:

  • Create a presumption in favor of patent eligibility under 35 U.S.C. § 101
  • Abrogate Alice and its progeny, eliminating the abstract idea, laws of nature, and natural phenomena judicial exceptions to patentability
  • Strike the term "new" from § 101 to distinguish it from the novelty and non-obviousness requirements of 35 U.S.C. §§ 102 and 103
  • Broaden 35 U.S.C. § 112(f) to mandate means-plusfunction interpretation for all functional claim language, regardless of the presence of a "magic word" like "means for" or "step for"

A revised framework incorporating stakeholder feedback is expected sometime this fall

What does this mean for you?

Given the proposed changes to patentable subject matter of the early drafts, it is expected that the 101 landscape will become more patent friendly. This could cause an increase in patent assertions for e-commerce and "business method patents" and create opportunities to rescue patents struck down under the old framework. It is therefore critical that businesses prepare for this impending shift in landscape.

U.S. SUPREME COURT LOOKS AGAIN AT PTAB PRACTICES

Under the one-year window of 35 U.S.C. § 315(b), an accused patent infringer may petition for AIA trial review of the asserted patent within one year after it has been served the infringement complaint. The PTAB has consistently held that when an initial complaint was dismissed without prejudice, the new complaint could restart the one-year window, with the original window trigger nullified. But the Federal Circuit reversed this in Dex Media Inc. v. Click-To-Call Technologies, LP, instead holding that the voluntary dismissal of a civil action does not reset the one-year time bar triggered by the original complaint. After Dex Media, the USPTO has followed the Federal Circuit's reading of § 315(b).

On June 24, 2019, the Supreme Court granted certiorari in Dex Media. But does this mean patent practitioners and owners should expect another big change to the § 315(b) time bar? Probably not. The court only granted cert on the threshold issue of whether time bar rulings are even reviewable by the Federal Circuit. Therefore, even if the court did vacate the Federal Circuit decision on this threshold issue, the practice at the PTAB will likely remain the same, which is to follow the Federal Circuit's reading of § 315(b) that voluntarily dismissed lawsuits will not reset the § 315(b) time bar.

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