As noted earlier on the Malloy & Malloy IP Blog, even the White House has recently joined the national discussion on what many perceive as increasingly widespread and over-aggressive tactics by “patent trolls.” Patent trolls, which are less pejoratively known as patent assertion entities (PAEs) or non-practicing entities (NPEs), are persons or companies who legitimately obtain patent rights and then enforce the patents against alleged infringers, without actually making or using the patented inventions themselves (which is perfectly legal). There has traditionally not been a great degree of public concern about such practices other than by those on the receiving end of patent enforcements, although public sentiment has been building over the past several years in reaction to a substantial increase in more aggressive activities of this kind.
Those of us who have been waiting with bated breath for the U.S. Supreme Court’s decision on gene patents in the case of Myriad can now exhale. The Court issued its opinion this morning, in which, as we predicted, they held that cDNA is patentable subject matter, but “isolated DNA” derived from genomic DNA is not patentable.
The Obama administration has released a memo to Congress outlining several measures that would help curtail “patent trolling.” The White House had no qualms about using the colloquial term “patent troll” to describe entities that – rather than researching or developing technology relative to their rights -- acquire patents solely to extract payments from alleged infringers.
The suggested reforms are aimed at increasing transparency and providing defendants "better legal protection against liability." A few recommendations worth noting include (1) requiring parties to disclose the "real-party-in-interest" in lawsuits and demand letters; (2) encouraging the publication of demand letters to make them accessible to the public; (3) protecting end users using "off-the-shelf" products; and (4) make it easier for a prevailing defendant to obtain an award of attorneys' fees in a patent infringement action. The memo also recommends facilitating challenges to business method patents and restricting the circumstances under which the International Trade Commission (ITC) can issue injunctions.
While it remains to be seen what legislative action will follow, the administration has – for the time being – approved the creation of a US Patent and Trademark Office (PTO) website informing patent troll victims about their rights and defenses. For more information click here.
When are computer related inventions considered patent eligible rather than merely abstract ideas? Put simply, there is no bright line test at the moment, which was essentially (though unofficially) confirmed in CLS Bank International v. Alice Corp on May 10, 2013. Rather than providing a specific new test for determining whether a computer-implemented invention is patent eligible and not merely an “abstract” idea under Section 101 of the U.S. patent laws, the Federal Circuit in this case simply issued a per curiam opinion affirming the District Court’s ruling. The District court held that the asserted claims of Alice Corp.’s U.S. patents were invalid because they did not recite patent-eligible subject matter, but were instead merely directed to the abstract idea of “employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk,” despite involving computers.
This week, the U.S. Supreme Court ruled – unanimously – that Monsanto’s patent for soybeans was infringed by Indiana farmer Vernon Bowman. Even though expressly called out as limited to this case and potentially not applicable to other self-replicating technology, it bodes well for the patent community.
West Encounters East, a film by firm client Stella Holmes, a Miami-based art collector and museum trustee, is currently airing on PBS stations across the country. West Encounters East explores the Japanese diaspora to Latin America through the eyes of artists whose work emerges from the Asian-Latin American cultural mix. The film will be airing locally in South Florida on WPBT on May 6, 2013 at 9:00 p.m. and on May 10, 2013 at 10:00 p.m. Click here for WEE air dates and times in your area. The 7-minute Trailer for West Encounters East can be viewed below.
Yesterday, the U.S. Supreme Court heard oral arguments in the much-publicized gene patenting case AMP v. Myriad Genetics. Myriad and the University of Utah own several patents directed to isolated gene sequences for mutations in the BRCA-1 and BRCA-2 genes, as well as methods of using the same for predicting risk of breast cancer. AMP is seeking to invalidate these patents for claiming inventions that are not patentable subject matter, i.e. merely products of nature, which should not be restricted from widespread use. Myriad maintains that since the patents are for isolated gene sequences, they do not cover genes as naturally occurring within the body, and therefore are not overly restrictive and should properly be the subject of patent protection.
With potentially hundreds of new generic top level domains (“gTLDs,” e.g. .store, .law, .food) just around the corner, the Internet Corporation for Assigned Names and Numbers (ICANN)—the organization response for overseeing Internet domain name allocations--recently opened its Trademark Clearinghouse (TMCH), where current brand owners can record their existing trademarks.