James joined Malloy & Malloy after years of practicing law in Houston and Boston, in boutique IP practice, as in-house IP counsel at a software company, and after running his own practice. Some of his clients include software companies, healthcare professionals, filmmakers, physicians, and individual inventors. Prior to earning his J.D. and LL.M. in Intellectual Property, James used his Computer Science degree as a software developer for more than 10 years, designing and writing computer programs in many different industries.
The Supreme Court is currently posed with the question: Does the confidential sale of an invention disqualify that invention from later patenting? Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 138 S.Ct. 2678 (2018).
The patent statute does not directly address this question, but does state that an invention is precluded from patenting if that invention was “on sale” or “in public use” prior to the filing date for that patent application. Years of case law have added to the meanings of these terms. But now there is an additional term, “or otherwise available to the public.” 35 U.S.C. § 102(a)(1). Under which circumstances does this new term preclude patenting? Circumstances that are applicable to the certified question for the Court?
The Supreme Court has previously ruled that public use of an invention will not preclude patenting if the public use is for experimentation. Pfaff v. Wells Elecs., 525 U.S. 55, (1998). That Court qualified the statutory language, reading in the experimentation use. But that Court did not rule on the “on sale” criteria except to identify a distinction between experimental use and “products sold commercially.” Is there a similar qualification of a commercial sale, supported by precedent and legislative history, that can exempt a confidential sale from being barred from patenting?
And where would “otherwise available to the public” fit in here? Does “otherwise” mean that the previous items in the list, such as “on sale,” are also to be understood as “available to the public?” Or is it a modern catch-all for new patentability conditions that were not contemplated when the provision was written in 1952?
The European Parliament has approved some proposed amendments to EU copyright law. The proposals must now pass a final step before becoming law. The stated intention of the amendments is to bring Europe’s copyright protection in line with how content is being created and used in the internet age. The text of the law is not yet finalized, and the vote on the finalized text will not occur until January 2019. However, speculation has only just begun as to what effect the proposed laws will have on the freedom of the internet. Of the 24 Articles proposed in the new Directive, 2 have received attention as being especially controversial: Article 11 and Article 13.
Article 11 proposes to grant the same rights to news media publishers as is currently provided to authors, performers, film producers, and broadcasting organizations. Some commentators believe this amendment will discourage some aspects of the exchange of news articles, such as “link previews” that show a snippet of the linked article to a reader. These commentators believe this will, in turn, limit access to information and boost “fake news.”
Article 13 proposes to increase copyright liability for popular websites that host user-submitted content. The current law places most of the responsibility for avoiding copyright infringement on the user who submits the content; but the proposed amendment redirects much of this liability to the hosting website. Commentators who criticize this proposed amendment include internet luminaries who argue the new law will stifle the freedom of information on the internet. These commentators believe that if the big internet companies who post user-submitted content are also required to police that content more closely, then that policing will necessarily be overbroad; and the result will be the muffling of the freedom of speech and creativity on the internet.
It is difficult to predict what effect the laws will have on the free flow of information and creativity on the internet. This unpredictability is especially true because the laws themselves are not yet finalized. So, between now and January 2019, the proposals are ripe for debate; and maybe the proposed laws are ripe for revision.
An original work of authorship is accorded copyright protection when the work is fixed in a tangible medium of expression (17 U.S.C. §102). However, a copyright owner cannot sue for infringement of the copyrighted work until either 1) “registration has been made” of the work to the Copyright Office, or 2) the work is refused registration by the Copyright Office and the required deposit, application, and fee have been delivered to the Copyright Office in proper form (17 U.S.C. §411).
The phrase “registration has been made” has been interpreted differently by different federal appeals courts. Some courts have ruled the phrase means that the application has been accepted and registered by the Copyright Office. Other courts have ruled the phrase means that a properly filed application for copyright has been received by the Copyright Office. These other courts find support in their interpretation from other statutes where the same phrase is understood to mean properly applying for registration. Supporters of both interpretations point to part 2) of the statute for support of their respective interpretation.
This conflict among federal appeals courts has been recognized in the highest courts, and now the Supreme Court has agreed to settle the dispute in the case, Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, et al. Does the phrase “copyright registration being made” require only a properly filed application to be received by the Copyright Office? Or does that phrase require an action to be taken by the Copyright Office—either acceptance or refusal—in response to receipt of a properly filed application? The Supreme Court will soon answer that question.
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., the Supreme Court ruled that an inter partes review (IPR) proceeding does not violate the Constitutional right to be heard in court. But that decision did not consider whether an IPR—a procedure in effect only since September 16, 2012—could be applied to patents filed prior to that date. In fact, the Supreme Court expressly reserved that issue of “retroactive application” for a future case. That is, the Court acknowledged there is a potential controversy regarding the application of IPR to patents filed before the effective date of the IPR procedure.
So, are patents that were filed prior to September 16, 2012, subject to IPR? If not, does that mean those patents are not subject to any inter partes challenge at the PTO? Or does that mean those patents may still be subject to an inter partes reexamination, as that proceeding existed prior to September 16, 2012?
Since the Supreme Court expressly reserved this issue for future cases, and since the IPR procedure remains a popular option, it is likely the Federal Circuit will weigh in on the issue before too long. Which aspects will the Federal Circuit find compelling?
-The reliance on the pre-IPR patent system by inventors who chose not to protect their invention through trade secrets?
-Statistical data that illustrates different substantive results between inter partes reexaminations and inter partes reviews?
-The strength or weakness of the particular patents before the court?
The statute that created the IPR defines that proceeding to apply to “any patent issued before, on, or after that effective date.” Pub. L. 112-29, § 6(c)(2). But with the express reservation by the Supreme Court, will the statute—or at least the retroactive application of it—survive?