PATENT ELIGIBILITY

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On June 22, 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2023, which seeks to clarify the jurisprudence surrounding 35 U.S.C. § 101. The current patent eligibility requirements under Section 101 have been evolving by judicially-created exceptions stemming from the Supreme Court’s rulings in Alice and Mayo, and numerous Federal Circuit decisions that have interpreted the Alice and Mayo framework. Those opinions have, on occasion, appeared to provide inconsistent guidance that has led to continued confusion regarding section 101’s application.Continue Reading Senators Propose New Legislation to Clarify Patent Eligibility Under 35 U.S.C. § 101

PART 4:  INTELLECTUAL PROPERTY LEGISLATION TO WATCH IN 2020

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first three parts of the series, we looked at the IP issues currently pending before the Supreme Court, possible changes to the law of patent eligibility, and hot topics surrounding inter partes review proceedings.  In this last part of our series, we look at proposed legislation related to intellectual property issues.  In particular, we consider:

  • The “Inventor Rights Act,” which would establish protections for “inventor-owned patents,” including a prohibition on USPTO reexamination of such patents without the patentee’s consent;
  • The Copyright Alternative in Small-Claims Enforcement (“CASE”) Act of 2019, which would establish a small claims tribunal within the Copyright Office to address copyright disputes involving less than $30,000 in damages;
  • The Counterfeit Goods Seizure Act of 2019, which would authorize the U.S. Customs and Border Protection Agency to seize counterfeit articles that infringe a design patent; and
  • The Trademark Modernization (“TM”) Act of 2020, which would establish new ex parte procedures in the USPTO to expunge trademarks obtained based on false claims that the marks were used in commerce.

Continue Reading Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 4

PART 3: HOT TOPICS RELATED TO INTER PARTES REVIEW

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first two parts of the series, we looked at the IP issues currently pending before the Supreme Court and possible changes to the law of patent eligibility.

In this third part of the series, we look at several issues related to inter partes review proceedings that we expect to be hot topics in 2020, including:

  • Whether the appointment of Administrative Patent Judges on the Patent Trial and Appeal Board (the “PTAB”) violates the Appointments Clause of the Constitution;
  • Whether the PTAB will allow a greater number of claim amendments under the Pilot Program announced in March 2019;
  • Whether the deadline to file an IPR petition should continue to run when an infringement case is dismissed without prejudice;
  • Whether invalidation of patent claims in an IPR should retroactively annul district court decisions on infringement and validity; and
  • Whether the PTAB will be able to coherently apply the new standard for identifying real-parties-in-interest.

Continue Reading Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 3