Patent Docs

Webinar on CRISPR Ownership Disputes

August 1, 2020

McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "CRISPR Ownership Disputes: Current Status and Future Prospects" on August 18, 2020 from 10:00 am to 11:15 am (CT). In this presentation, Patent Docs author and MBHB attorney Kevin E. Noonan will consider the following details about the technology and the patent disputes relating to ownership:

• A brief overview of the technology
• The players and what they have invented
• The first interference and the grounds for the PTAB's decision
• The current interference, the status of the parties' claims and motions
• Possible outcomes of the PTAB's consideration of these motions
• The upcoming priority phase of the interference
• Potential outcomes and impact on development and commercialization of CRISPR technology

While there is no fee to participate, attendees must register in advance. Those wishing to register can do so here. CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.

The Three Properties of Patent-Eligibility: An Empirical Study

July 30, 2020

By Michael Borella and Ashley Hatzenbihler* —

Patent eligibility is a bit of a mess these days. Ever since the Supreme Court handed down the Alice v. CLS Bank decision six years ago, the distinction between what might be subject matter that can be patented and what is not has been blurry at best.

Famously, the Court legislated its own two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While the Alice inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

However, the Court declined to define what it meant by "abstract idea" or "significantly more," leaving that for the Federal Circuit and the rest of us to figure out. By admission of several of its own members, the Federal Circuit has failed to do so in a cogent fashion. As just one example (and this is a doozy of an example) Judge Plager wrote in 2018's Interval Licensing v. AOL case that "[t]he law . . . renders it near impossible to know with any certainty whether the invention is or is not patent eligible" and "a search for a definition of 'abstract ideas' in the cases on § 101 from the Supreme Court, as well as from this court, reveals that there is no single, succinct, usable definition anywhere available."

Meanwhile, the USPTO's interpretation of Alice has added more steps to the test, clarified some aspects, muddied others, and counts for little to nothing in the courts.

Simply put, the problem is that we are spending too much time trying to ascertain the unknowable contours of Alice. The Federal Circuit has separated and combined and separated and combined the two parts to the point where some have questioned whether Alice is actually a one-part inquiry in practice. Further, at the prompting of ill-reasoned language from Justice Breyer in Mayo v. Prometheus, the Federal Circuit has amplified that case's overlap between §§ 101, 102, 103, and 112.

Rather than approach the Alice test with the rigidity of an automaton, there is a more pragmatic approach. As described in a previous article, what the Federal Circuit is actually looking for to rule that a claim is patent-eligible can be expressed as three properties: specificity, technical character, and novelty. And not only does a claim almost certainly have to exhibit each to clear the § 101 hurdle, but there needs to be a nexus between these properties. In other words, if one element of a claim is specific, another has technical character, and yet another is novel, that probably will not cut it. Instead, a single element should exhibit all three.

That is not to say that claims lacking one of these properties are automatically ineligible — there is a certain degree of flexibility in how the Federal Circuit balances the three. But, as a rule, the more specific, technical, and novel your claim, the more likely it is to be patent-eligible. Conversely, the less specific, technical, and novel your claim, the less likely it is to be patent-eligible. A synthesis of the Federal Circuit § 101 case law makes this clear, and we have the data to back it up.

But before we get into the empirical stuff, let's do something that the Supreme Court did not do and define our terminology.

Claim specificity is not the same thing as claim breadth, although in practice the two are correlated. Specificity, though, refers to whether and how much the claim recites a series of steps or set of elements that can be used to achieve a goal, rather than the goal itself. The latter style has been referred to as "result-oriented," "outcome-oriented," and "black box" claiming, where the claim recites what the inventor hopes to achieve without reciting how the inventor purports to have achieved that goal. The Federal Circuit often lauds the specificity of claims that it eventually find eligible (see McRO, Inc. v. Bandai Namco Games America Inc., Enfish LLC v. Microsoft Corp., Trading Techs Int'l v. CQG, Inc., and SRI Int'l Inc. v. Cisco Systems Inc.) while disparaging claims that lack this property (see Electric Power Group, LLC v. Alstom S.A., Two-Way Media Ltd. v. Comcast Cable Communications, LLC, and American Axle & Mfg. v. Neapco Holdings LLC).

Technical character is a bit trickier to explain. Notably, § 101 lacks any requirement that inventions be technical, and even Alice only hinted that such a requirement might be the case. But the Federal Circuit has run with these sub-dicta suggestions, using the term "technical solution to a technical problem" among others to describe what it is looking for in eligible claims. To understand this property, it helps to imagine all inventions on a spectrum of technical character. Those at one extreme are clearly technical because they improve the operation of machines (engine control, error correction coding, image sharpening, memory management in a computer). Those at the other extreme are clearly more business-oriented than technical (derivative trading, annuity calculations, human resource management, retail schemes). Put another way, the former improves how a machine works, while the latter improves how a business works. The fact that business-oriented inventions can be run on computers (and may even require computers to obtain meaningful results) is largely irrelevant to this analysis — such claims are still "non-technical". Finally, in the middle of the spectrum we have inventions that improve how a person works (graphical user interfaces, video game animations, livestock management). These could be viewed as either technical or non-technical depending on the actual claim language at play.

Novelty is a simple enough concept, and is well-understood in patent law. The exact nature of the de facto prior art analysis under § 101 is unclear. Nonetheless, comparisons between claimed inventions and prior art are found in a vast number of § 101 decisions including the aforementioned KPN, Chamberlain, Enfish, and McRO cases, as well as Cellspin Soft, Inc. v. Fitbit, Inc., Data Engine Technologies LLC v. Google LLC, Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., and Internet Patents Corp. v. Active Network, Inc., just to name a few.

So are the three properties a better way of understanding patent-eligibility than the two-part test? We think so. Do we like it? No. Do we think it is what the law should be? Of course not. But don't just take it from us. Anyone who balks at the three properties should take note of Dropbox Inc. v. Synchronoss Techs. Inc. where the Federal Circuit recently wrote "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art" (emphasis added).

To quantify the three properties, we selected 24 notable post-Alice Federal Circuit decisions and scored them on a scale of 0-2 for each property, where 0 is a low score and 2 is a high score. This scoring was not done in a vacuum — we adhered to the following process. If the Court spoke positively of a particular property in a decision, the score for that property would be a 2. If the Court spoke negatively of a particular property, the score for that property would be a 0. If the Court spoke neither positively nor negatively about a property or did not discuss the property in sufficient detail, we would review the claim language and the Court's discussion of the invention to come up with a value.

Thus, a specificity of 2 indicates that the claim describes the elements or steps involved in achieving its goal. A specificity of 0 indicates that the claim is outcome-oriented. A specificity of 1 indicates that the claim is partially descriptive and partially outcome-oriented.

Likewise, a technical character of 2 indicates that the claim is focused on a technical solution to a technical problem (i.e., improving the operation of a machine or system). A technical character of 0 indicates that the claim is focused on a non-technical problem (i.e., improving the operation of a business). A technical character of 1 indicates that the claim exhibits both technical and non-technical aspects (i.e., improving human performance or facilitating human decision making).

Similarly, a novelty of 2 indicates that the Court has stated that the claim is focused on an advance over the prior art. A novelty of 0 indicates that the Court has stated that the claim is focused on a long-standing procedure or uses well-understood, routine, or conventional elements or steps to achieve its goal. A novelty of 1 indicates that the Court made little or no comparison between the claim and the prior art.

Once determined, the specificity, technical character, and novelty scores for each case were added, resulting in summed values from 0 to 6. Intuitively, one would expect that the higher this sum, the more likely that a claim is to be held eligible.

So, on to the data.

Case	Specificity (0-2)	Technical Character (0-2)	Novelty (0-2)	Sum (0-6)	Eligible?
DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014)	2	1	1	4	Yes
Internet Patents Corp. v. Active Network, Inc. (Fed. Cir. 2015)	0	1	1	2	No
Versata Dev. Group, Inc. v. SAP America, Inc. (Fed. Cir. 2015)	2	0	0	2	No
Electric Power Group, LLC. V. Alstom S.A. (Fed. Cir. 2016)	0	0	1	1	No
Enfish LLC v. Microsoft Corp. (Fed. Cir. 2016)	2	2	2	6	Yes
McRo, Inc. v. Bandai Mamco Games America, Inc. (Fed. Cir. 2016)	2	2	2	6	Yes
Shortridge v. Found. Construction Payroll Service, LLC (Fed. Cir. 2016)	2	0	0	2	No
Thales Visionix Inc. v. U.S. (Fed. Cir. 2017)	0	2	2	4	Yes
The Chamberlain Group, Inc. v. Techtronic Indus., Co. (Fed. Cir. 2017)	0	1	1	2	No
Trading Techs Int'l v. CQG, Inc. (Fed. Cir. 2017)	2	1	2	5	Yes
Two-Way Media Ltd. v. Comcast Cable Commc'n., LLC (Fed. Cir. 2017)	0	1	1	2	No
Berkheimer v. HP Inc. (Fed. Cir. 2018)	1	2	2	5	Yes
Core Wireless Licensing S.A.R.L. v. LC Elec., Inc. (Fed. Cir. 2018)	2	2	2	6	Yes
Data Engine Tech. LLC v. Google LLC (Fed. Cir. 2018)	2	2	2	6	Yes
SAP America, Inc. v. InvestPic LLC (Fed. Cir. 2018)	0	0	2	2	No
Cellspin Soft, Inc. v. Fitbit, Inc. (Fed. Cir. 2019)	2	1	1	4	Yes
ChargePoint, Inc. v. SemaConnect, Inc. (Fed. Cir. 2019)	0	1	1	2	No
Koninklijke KPN N.V. v. Gemalto M2M GmbH (Fed. Cir. 2019)	2	2	2	6	Yes
SRI Int'l Inc. v. Cisco Sys. Inc. (Fed. Cir. 2019)	1	2	2	5	Yes
Trading Techs Int'l v. IBG LLC (Fed. Cir. 2019)	2	0	1	3	No
Elec. Commc'n. Techs., LLC v. ShoppersChoice.com, LLC (Fed. Cir. 2020)	0	0	0	0	No
Ericsson Inc. v. TCL Commc'n. Tech. Holdings Ltd. (Fed. Cir. 2020)	0	1	1	2	No
Dropbox, Inc. v. Synchronoss Techs. Inc. (Fed. Cir. 2020)	0	1	0	1	No
Uniloc USA, Inc. v. LG Elecs. USA, Inc. (Fed. Cir. 2020)	1	2	2	5	Yes

The 24 scored cases include 12 that were ruled eligible and 12 that were ruled ineligible. Of the eligible cases, the sums of all landed in the range of 4-6. Of the ineligible cases, the sums of all landed in the range of 0-3. Thus, our initial intuition appears to be correct — eligible claims tend to be more specific, technical, and novel, while ineligible claims are less specific, technical, and novel. Notably, there were five with the highest possible sum of 6, but only one with the lowest possible sum of 0.

Overall, there was a correlation of 0.91 between sum and whether the claim was patent-eligible (we converted the "yes" or "no" results of the rightmost column to 1's and 0's respectively to perform correlations). While this is a very high correlation, we need to keep in mind that in most cases correlation does not mean causation. However, we believe that our analysis reflects a causative link from the properties of specificity, technical character, and novelty to eligibility. In particular, the Court often states explicitly that a claim is eligible because it exhibits each of the three properties to at least some degree, or that a claim is ineligible because it lacks at least one of these properties.

We also calculated correlations between each of the properties and the eligibility outcome. For specificity, the correlation was 0.58, for technical nature, the correlation was 0.80, and for novelty, the correlation was 0.74. These results have an interesting implication for patent practitioners drafting initial claim sets or making amendments. The technical nature of an invention appears to have the biggest impact on whether it is found to be eligible, but the practitioner has the least control over this aspect. An invention that solves a business problem may be difficult to recast as solving a technical problem even using the cleverest claim drafting techniques. Specificity and novelty, however, are more under the control of the practitioner, as detailed elements directed toward features believed not to be in the prior art can always be added (modulo the applicant's needs of course). Thus, for a claim that is on the fence with respect to its technical character, making sure that it has at least one element that is specific and novel may help.

To sum up, the three properties appear not only to be a reasonably useful way of thinking about patent-eligibility in a world where the two-part test is bewildering and obtuse, it is also highly predictive of patent-eligibility outcomes.[1] Nonetheless, while we attempted to avoid any bias during the scoring process, we are aware that there is a degree of subjectivity in our evaluations. Moreover, the set of case law should be expanded beyond these 24 samples. Therefore, we welcome others to suggest adjustments to the scoring and/or to continue this study with further cases.

[1] Of course, when you are before the USPTO or a Court, you need to argue the two parts of Alice. But keeping the three properties in mind can help you hone those arguments.

* Ashley Hatzenbihler is a student at Loyola University Chicago School of Law where she is focusing her studies on Intellectual Property. Ashley is a staff member of the Loyola University Chicago Law Review and a Summer Associate at McDonnell Boehnen Hulbert & Berghoff. Prior to law school, Ashley received her Bachelors in Mechanical Engineering with a minor in Mathematics from Marquette University. Ashley also completed her Masters of Science in Mechanical Engineering for her research on the optimal conditions for auto-ignition testing of diesel fuels and surrogates from Marquette University.

Evidence of Smallpox Infection in First Millennium Scandinavian Viking Settlements

July 29, 2020

By Kevin E. Noonan —

One of the signal public health achievements/victories of the 20th Century is the eradication of smallpox (variola virus, VARV) announced by the World Health Organization (WHO) in 1980; it has been estimated that smallpox infection killed 300-500 million people in the 20th Century alone. (A compelling example of the effects of smallpox in 18th Century America can be found in Pox Americana: The Great Smallpox Epidemic of 1775-1782, by Elizabeth A Fenn.) Fortuitously arriving before the advent of antivaxxers, the Internet, and proliferation of misinformed (at best) amateurs on social media, WHO, supported by most of the Western world was able to track down and subdue (by vaccination) outbreaks of the disease which has no known animal host reservoir. While a theoretical possibility ever since Jenner used the insight that milkmaids were "naturally" immune due to encountering vaccinia virus from cows in 1796, it took the organization (and relative wealth) of the post-war world and the auspices of the United Nations to remove a viral scourge known from time immemorial.

But how much time is "immemorial"? There is some evidence (but not definitive) from examination of mummies in Egypt that the disease had arisen 3000-4000 years ago. Smallpox manifests (besides by causing death) in skin lesions, and very little skin remains after death. Recently, an international team* of researchers, using genetic technology tools, were able to find smallpox associated with teeth and skeletons from deceased Scandinavians dating to the 6th or 7th Century A.D. These researchers' report, entitled "Diverse variola virus (smallpox) strains were widespread in northern Europe in the Viking Age" was published in the scientific journal Science on July 24th.

Variola virus is one of a number of pox viruses in different species (including camels, gerbils, monkeys, mice, and most famously cows), having a linear DNA double stranded genome comprising ~186,000 – ~228,000 basepairs. The central ~100,000 basepairs encode conserved genes involved in replication and transcription of viral genes, with the terminal portions encoding more host species-specific genes believed to be involved in host range and modulating host immune responses. The discovery disclosed in this paper was the result of high-throughput shotgun sequencing from 1867 samples from human remains dated from more than 31,000 to 150 years ago. Twenty-six positive samples were identified but only 13 were amenable to further study (illustrating the difficulty of performing successfully this type of archeological/viral detective work), and 11 of those were from northern Europeans, specifically Viking people from Scandinavia. These researchers were able to reconstruct almost complete viral genomes from 4 of these samples. Comparison of the genes present in these samples showed significant ("great contrast") differences with modern varieties, including 3 genes active in all modern smallpox variants that were inactive in the archeological sample-derived variants. There are 10 genes inactive in both modern and Viking-Age samples that show different inactivating mutations, and 14 genes inactive in modern variola viruses that were active in the archeological viral samples. A common theme is the reduction of active genes during the "evolution" of variola virus over time, perhaps due to adaptation to the host species (i.e., us).

The relationship of these genetic inactivations and various subsets of variola variants is shown in this Figure:

where:

Each row to the right indicates gene status (present, inactivated) in the virus at that level in the cladogram (bottom eight rows), or in an inferred internal node or the root (top seven rows). The 40 columns represent genes that are either absent or that have an inactivating mutation in at least one of the mVARV (modern) or aVARV ("ancient") sequences, excluding 19 genes that are absent in both mVARV and aVARV. Genes are sorted left-to-right by category and then by position in the genome. Empty circles indicate genes assumed to be present and functional. Colored circles indicate genes with a gene-inactivating mutation, genes that are absent, or genes that do not have coverage in the ancient sequences (also indicated by an X). Within a column, genes with identical gene-inactivating mutations are shown in the same color. Color correspondence between columns carries no meaning. Genes with partial coverage (in the aVARV sequences) are marked with a black dot. A horizontal bar across a filled circle indicates a gene-inactivating mutation considered uncertain, because of less than three reads covering the position of the mutation. A horizontal bar across an empty circle indicates a gene that may be functional (with a length intermediate between its length in viruses where it is functional and viruses where it is not).

Based on these data the researchers determined that these samples belonged to a viral clade previously undetected in modern variola variants and now believed to be extinct. The researchers posit that this clade was specific for their Viking Age human population and arose from a common ancestor to all variola virus variants.

The authors are cautious in recognizing that these results were obtained from about 2% of the samples studied (525) from this time period, and that Scandinavia in the ~450 years spanning when these samples arose increased in population from ~750,000 to ~ 1 million. In addition, the very small number of positive samples suggests that there is a large "false negative" rate, due to "differences in DNA preservation, source tissue, or sequencing depth in the screening." Accordingly, they note that "it would not be prudent to use the 2% detection rate to estimate smallpox prevalence or fatality rates during the Viking Age. The likely inaccurate (low) detection rate and the very small sample size argue against regarding prevalence. Even if all other sources of uncertainty were resolved, it would still not be clear how the figure relates to case fatality rates during that period, because we cannot be sure that the individuals died as a result of their infections."

Nevertheless, these researchers also recognize the significance of their results in "pushing back" the earliest date of confirmed smallpox incidence from the 17th-18th century to the 6th-7th Century in Europe. Their results are inconsistent with introduction from other parts of the globe as a result of "returning Crusaders" or "the Moorish invasion of [Spain in] 710 A.D." "or the invasion of England by the Normans in 1066). The paper concludes with these thoughts:

The Viking Age sequences reported here push the definitive date of the earliest VARV infection in humans back by ~1000 years and reveal the existence of a previously unknown, now-extinct virus clade. The ancient viruses were following a genotypic evolutionary path that differs from modern VARV. This is highlighted by at least three genes inactivated in some aVARV sequences but still active in the mVARV clade, and by 10 genes inactivated in both clades but with gene-inactivating mutations that differ between clades. The ancient viral genomes show reduction of gene content during the evolution of VARV and that multiple combinations of gene inactivations have led to viruses capable of circulating widely within the human population.

* From the Center for Pathogen Evolution, Department of Zoology, and Department of Pathology, University of Cambridge; Institute of Virology, Charite-Universitatsmedizin, Berlin; German Center for Infection Research, Berlin; Lundbeck Foundation GeoGenetics Center, Section for Evolutionary Genomics and Laboratory of Biological Anthropology, University of Copenhagen; Institute for Molecular Biology, National Academy of Sciences of Armenia; Department of Archeology and Ancient History, Lund University; Sydsvensk Arkeologi, Kristianstad; Department of Human Genetics, University of Chicago; Trace and Environmental DNA Laboratory, Curtin University; Department of Archeology and Cultural History, Norwegian University of Science and Technology; Museum of Cultural History, University of Oslo; Research Institute and Museum of Anthropology and Department of Archeology, Moscow State University; Thames Valley Archeological Services, Reading; Peter the Great Museum of Anthropology and Ethnography, St. Petersburg; Roskilde Museum, Jaegerpris; Malmo Museum, Malmo; Institute for Infectious Diseases and Zoonoses, University of Munich; German Center for Infection Research, Munich; Department of Viroscience, Erasmus Medical Center, Rotterdam; Wellcome Trust Sanger Institute, Hixton; and Danish Institute for Advanced Study, University of Southern Denmark.
USPTO Issues Final Rule to Revise PTA Rules in View of Supernus v. Iancu

July 28, 2020

By Donald Zuhn —

Last month, the U.S. Patent and Trademark Office published a final rule in the Federal Register (85 Fed. Reg. 36335), in which the Office set forth revisions to the rules of practice concerning Patent Term Adjustment (PTA) in view of the Federal Circuit's decision in Supernus Pharm., Inc. v. Iancu. The final rule implements revisions that were previously discussed in a notice of proposed rulemaking published by the Office in May 2019 (see "USPTO Proposes Revisions to PTA Rules in View of Supernus v. Iancu"). With respect to the PTA rules being changed, the Office is revising the period of reduction of PTA in the following subsections of 37 C.F.R. § 1.704:

• Deferral of issuance of a patent (37 C.F.R. § 1.704(c)(2));
• Abandonment of an application (37 C.F.R. § 1.704(c)(3));
• Submission of a preliminary amendment (37 C.F.R. § 1.704(c)(6));
• Submission of papers after a decision by the Patent Trial and Appeal Board or by a Federal court (37 C.F.R. § 1.704(c)(9)); and
• Submission of papers after a notice of allowance under 35 U.S.C. § 151 (37 C.F.R. § 1.704(c)(10)).

According to the Office's notice, the revisions to the rules will specify a period of reduction corresponding to "the period from the beginning to the end of the applicant's failure to engage in reasonable efforts to conclude prosecution" as opposed to the consequences to the Office of applicant's failure to engage in reasonable efforts to conclude prosecution.

In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit reversed the entry of summary judgment by the District Court for the Eastern District of Virginia, which concluded that the U.S. Patent and Trademark Office had not erred in calculating the PTA for U.S. Patent No. 8,747,897. During prosecution of U.S. Application No. 11/412,100, which issued as the '897 patent, the Examiner issued a final Office Action, and Supernus responded by filing a Request for Continued Examination (RCE). After filing the RCE, Supernus was notified that an opposition had been filed in related European Patent No. EP 2 010 189 (which had issued from a European application corresponding to an International application that claimed priority from the '100 application). One hundred days after the European Patent Office's notification of the opposition, Supernus filed a supplemental Information Disclosure Statement (IDS) citing the Notice of Opposition and other documents concerning the opposition. The USPTO ultimately issued the '100 application as the '897 patent, determining that the '897 patent was entitled to 1,260 days of PTA. The Office's PTA determination included an assessment of 886 days of applicant delay, of which 646 days were assessed for the time between the filing of the RCE and the submission of the supplemental IDS. Supernus filed a request for Reconsideration of Patent Term Adjustment, but the Office rejected Supernus' request, concluding that the 646-day reduction in PTA was proper.

Supernus challenged the Office's PTA determination in the Eastern District of Virginia, contending that it was entitled to at least 546 of the 646 days of PTA reduction (i.e., the period of time between the filing of the RCE and the EPO notification of opposition). The District Court granted summary judgment in favor of the USPTO, finding that the USPTO did not err in the PTA calculation for the '897 patent.

In January of 2019, the Federal Circuit reversed the District Court's grant of summary judgment in favor of the USPTO, finding that because there were "no identifiable efforts" that Supernus could have undertaken in the time period between the filing of an RCE during prosecution of the application that issued as the '897 patent and the mailing of an EPO notification of opposition for a European counterpart patent (which resulted in Supernus filing a supplemental Information Disclosure Statement during prosecution of the '897 patent), Supernus had not failed to engage in reasonable efforts to conclude prosecution during that time period. The Federal Circuit noted in Supernus that "Congress expressly granted the USPTO authority to determine what constitutes reasonable efforts [under 35 U.S.C. § 154(b)(2)(C)(i)], but the USPTO lacks any authority to exceed the statutory 'equal to' limitation by including the 546-day time period during which it does not contend that Supernus failed to undertake reasonable efforts to conclude prosecution." The Court therefore found the USPTO's PTA reduction for the '897 patent to be inconsistent with the PTA statute, accorded no deference to the USPTO's application of the regulations at issue in the circumstances of this case, and reversed and remanded the District Court's summary judgment order.

In the final rule, the Office points out that "[t]he Federal Circuit in Supernus held that a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C) must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application." As a result, the final rule revises certain provisions of 37 C.F.R § 1.704 for consistency with the Federal Circuit's decision in Supernus. The final rule explains that "[w]hile the Federal Circuit decision in Supernus involved 37 CFR 1.704(c)(8), there are several provisions in 37 CFR 1.704(c)(1) through (c)(14) whose period of reduction corresponds to or includes the consequences to the USPTO of the applicant's failure to engage in reasonable efforts to conclude prosecution, rather than 'the period from the beginning to the end of the applicant's failure to engage in reasonable efforts to conclude prosecution.'" Therefore, the final rule addresses that issue with respect to 37 C.F.R. § 1.704(c)(2), (3), (6), (9), and (10).

One addition to the rules revisions discussed in the Office's notice of proposed rulemaking involves after-allowance amendments or other after-allowance papers that are "expressly requested by the Office." In the final changes to 37 C.F.R. § 1.704(c)(10), the Office has excluded after-allowance amendments or other after-allowance papers that are "expressly requested by the Office" from the after-allowance amendments or other after-allowance papers that will result in a reduction of PTA under § 1.704(c)(10). Thus, the final rule states that "an amendment under § 1.312 or other paper not expressly requested by the USPTO (i.e., a 'voluntary' amendment under § 1.312 or other paper) after the notice of allowance will result in a reduction of patent term adjustment under § 1.704(c)(10)." The notice also indicates that "[a]n amendment under § 1.312 or other paper going beyond what was requested by the USPTO (i.e., including material not expressly requested by the USPTO in addition to what was requested by the USPTO) would not be considered 'an amendment under § 1.312 or other paper expressly requested by the Office' under § 1.704(c)(10)" (emphasis added).

The notice points out that the phrase "expressly requested by the Office" in § 1.704(c)(10) "requires a specific request in an Office action or notice, or in an Examiner's Interview Summary (PTOL–413), for the amendment under § 1.312 or other paper" (emphasis added), and explains that:

[G]eneric language in an Office action or notice, such as a statement in a notice of allowability containing an examiner's amendment indicating that if the changes and/or additions are unacceptable to applicant, an amendment may be filed as provided by § 1.312 (section 1302.04 of the Manual of Patent Examining Procedure (MPEP)), is not a basis for considering an amendment under § 1.312 to be "expressly requested by the Office" within the meaning of § 1.704(c)(10) as adopted in this final rule. Similarly, the provisions of §§ 1.56, 1.97, and 1.98 are not a basis for considering an information disclosure statement including information that has come to the attention of the applicant after a notice of allowance has been given or mailed to be a paper "expressly requested by the Office" within the meaning of § 1.704(c)(10). An information disclosure statement in compliance with §§ 1.97 and 1.98, however, will not be considered a failure to engage in reasonable efforts to conclude prosecution of the application under § 1.704(c)(10) (or § 1.704(c)(6), (8), or (9) if the information disclosure statement is accompanied by a statement under § 1.704(d)).

Significantly, the notice indicates that even if an amendment under § 1.312 or other paper is expressly requested by the USPTO, if the amendment or other paper is not filed within three months from the date of mailing or transmission of the USPTO communication notifying the applicant of such request, the submission will result in a reduction of PTA under § 1.704(b).

According to the Office's notice, the final rule took effect on July 16, 2020, and the final rule applies to original utility and plant patents issuing from applications filed on or after May 29, 2000, in which a notice of allowance was mailed on or after July 16, 2020. The notice also indicates that the Office is currently modifying its PTA computer program, which uses information recorded in the USPTO's Patent Application Locating and Monitoring (PALM) system to make an initial PTA determination, to implement the changes in the final rule. The Office notes that it will decide any timely request for reconsideration of such PTA determinations provided that the request complies with 37 C.F.R. § 1.705(b) (i.e., is made within seven months of patent issuance), regardless of whether the notice of allowance was mailed on or after July 16, 2020.

In addressing the seven comments the Office received in response to its notice of proposed rulemaking, the final rule also indicates that nothing in the revisions to 37 C.F.R. § 1.704(c)(10) has changed the list of papers that can be submitted after a notice of allowance is mailed without adversely impacting PTA. In particular, the Office has explained that the following papers may be submitted after a notice of allowance is mailed without resulting in a reduction of PTA under § 1.704(c)(10):

(1) Fee(s) Transmittal (PTOL–85B); (2) power of attorney; (3) power to inspect; (4) change of address; (5) change of entity status (micro/small/not small entity status); (6) a response to the examiner's reasons for allowance or a request to correct an error or omission in the "Notice of Allowance" or "Notice of Allowability"; (7) status letters; (8) requests for a refund; (9) an inventor's oath or declaration; (10) an information disclosure statement with a statement in compliance with § 1.704(d); (11) the resubmission by the applicant of unlocatable paper(s) previously filed in the application (§ 1.251); (12) a request for acknowledgment of an information disclosure statement in compliance with §§ 1.97 and 1.98, provided that the applicant had requested that the examiner acknowledge the information disclosure statement prior to the notice of allowance, or the request for acknowledgement was the applicant's first opportunity to request that the examiner acknowledge the information disclosure statement; (13) comments on the substance of an interview where the applicant-initiated interview resulted in a notice of allowance; and (14) letters related to government interests (e.g., those between NASA and the USPTO).

In addition, as discussed above, the Office has now added "an amendment under § 1.312 or other paper expressly requested by the Office" to the list of documents above.

Marked-up versions of the rules that the Office has revised are set forth below (note: subsections of 37 C.F.R. § 1.704(c) in which the term "mailing date" was changed to "date of mailing," but where no changes were made to the period of reduction of PTA, are not included below; a complete version of the revised rule can be found in the Federal Register notice for the final rule; bold, underlined text indicates changes to the rules since the Office's notice of proposed rulemaking).

1.704 Reduction of period of adjustment of patent term.

* * *

(c) * * *

(2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the earlier of the date a request to terminate the deferral was filed or the date the patent was issued;

(3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the date the issue fee was due and ending on the earlier of:
    (i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
    (ii) The date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed;

* * *

(6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the mailing date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the original Office action or notice of allowance national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of the supplemental Office action or notice of allowance; the preliminary amendment or
    (ii) Four months other preliminary paper was filed;

* * *

(9) Submission of an amendment or other paper after a decision by the Board of Patent Appeals Trial and Interferences Appeal Board, other than a decision designated as containing a new ground of rejection under § 1.19641.50(b) of this title or statement under § 1.19641.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the mailing date of the original Office action decision by the Patent Trial and Appeal Board or notice of allowance by a Federal court and ending on the mailing date of the supplemental Office action or notice of allowance; amendment or
    (ii) Four months other paper was filed;

(10) Submission of an amendment under § 1.312 or other paper, other than an amendment under § 1.312 or other paper expressly requested by the Office or a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
  (ii) Four months;
Gensetix, Inc. v. Board of Regents of the University of Texas System (Fed. Cir. 2020)

July 27, 2020

By Kevin E. Noonan —

In a conundrum worthy of a law school civil procedure examination, plaintiff Gensetix found itself apparently with no remedy for infringement by Baylor College of Medicine, Diakonos Research Ltd., and William Decker of patents licensed from the University of Texas (UT), when UT refused to join as a necessary party on sovereign immunity grounds. The Federal Circuit, in a fractured decision reminiscent of the alignment of the judges in Amgen v Sandoz, remedied this situation in its decision last Friday in Gensetix, Inc. v. Board of Regents of the University of Texas System.

The case arose related to Gensetix' exclusive license of UT-owned patents, U.S. Patent Nos. 8,728,806 and 9,333,248 relating to methods of modifying a patient's immune system to kill cancer cells. Defendant Dr. Decker had invented the claimed methods when we was a UT faculty member and then left (as professors are wont to do) to join the faculty at Baylor.

The license between Gensetix and UT provided that Gensetix was obliged to pursue infringement at its own expense and was entitled to any recovery from such enforcement efforts. However, should Gensetix fail to pursue its legal remedies within six months of obtaining knowledge that there was infringement, UT had a secondary right to pursue enforcement of these patents (with a corresponding entitlement to any recovery). There were provisions in the contract of mutual cooperation between the parties of any such lawsuits. Importantly, however, the contract also contained an express provision that UT did not waive its sovereign immunity as a State by entering into the contract.

Gensetix attempted to join UT under Fed. R. Civ. Pro. 19(a) as an involuntary plaintiff upon filing suit against Baylor and Dr. Decker when UT refused to voluntarily join. UT responded with a motion to dismiss under Rule 12(b)(1) on the grounds that as an arm of the State, UT was shielded from compulsory joinder by the State's sovereign immunity under the Eleventh Amendment. Baylor responded by arguing that UT was a necessary party because it was the owner/assignee of the patents-in-suit and thus, if State sovereign immunity under the Eleventh Amendment precluded involuntary joinder then the District Court should dismiss under Rule 19(b). The District Court agreed and dismissed the case.

The Federal Circuit affirmed-in-part (as to the sovereign immunity issue), reversed-in-part (as to the motion to dismiss), and remanded, in a decision by Judge O'Malley joined by Judge Newman with regard to reversing the District Court's grant of Baylor's motion to dismiss and Judge Taranto on affirming UT's exercise of sovereign immunity as an arm of the State of Texas. Judge O'Malley's opinion with regard to the sovereign immunity issue was straightforward. The Eleventh Amendment (as interpreted by the Supreme Court; the actual wording of the Amendment is more limited in scope) precludes involuntary joinder of a State in a lawsuit brought by a citizen of the State or other States (or a foreign country, for constitutional completeness). The opinion rejects the distinction advanced by Gensetix that by its terms the Amendment merely "bars suits brought by private citizens against the state." Rather, the Court noted that the Amendment has a broader sweep than that, citing Coll. Sav. Bank v. Fla. Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666, 687 n.5 (1999), insofar as the amendment "serves to avoid the indignity of subjecting a State to the coercive process of judicial tribunals at the instance of private parties," citing Seminole Tribe of Fla. v. Fla., 517 U.S. 44, 58 (1996). The Court found no basis for Gensetix' proposition that these principles do not apply in the context of joining a State as an involuntary plaintiff, distinguishing Gensetix' cited authority, Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1564 (Fed. Cir. 1997), on the grounds that in Regents the arm of the State had brought the lawsuit in California and the issue was whether it could be forced to litigate in Indiana on a motion to transfer (i.e., whether sovereign immunity could be used to enforce which district court heard the matter; it could not). Indeed, the opinion finds this distinction "dispositive," in that UT was not a plaintiff in this case, did not bring the action ab initio, and had refused to join as a plaintiff. Under these circumstances, the Court held that State sovereign immunity precluded joining UT as an involuntary plaintiff under Rule 19(a).

Finally, the panel majority rejected Gensetix' contention that UT entering into an exclusive contract imposed an "implied obligation" (an argument that registered with Judge Newman in her dissent on this issue; vide infra) to support Gensetix' infringement suit against Baylor and Dr. Decker. "[I]t is of no moment that the license agreement requires initiation of an infringement suit by Gensetix or cooperation by UT in any infringement suit," according to the opinion, because "[a]lthough UT willingly entered into the license agreement, so too, did Gensetix" and Gensetix was aware of the express reservation of sovereign immunity that was also part of that contract.

With regard to the issue of whether Rule 19(b) required the District Court to dismiss the case in the absence of UT as a necessary plaintiff, Judge Newman joined Judge O'Malley in concluding that it did not. Reviewing the District Court's decision under an abuse of discretion standard, the Court held that dismissal was an abuse of discretion because the circumstances were not consistent with the reasoning behind the Rule. Rule 19(b) provides that, where a necessary party cannot be joined, "the court must determine whether, in equity and good conscience, the action should proceed among the existing parties or should be dismissed." This inquiry has been understood to depend on four considerations: "(1) the extent to which a judgment rendered might prejudice the missing required party or the existing parties; (2) the extent to which any prejudice could be lessened or avoided (3) whether a judgment rendered in the required party's absence would be adequate; and (4) 'whether the plaintiff would have an adequate remedy if the action were dismissed for nonjoinder.'" The District Court based its decision to dismiss on "three out of the four Rule 19(b) factors weigh[ing] in favor of dismissing the case." With regard to the first factor, the District Court held that "a judgment rendered in UT's absence might prejudice UT or the parties to the litigation," citing A123 Systems, Inc. v. Hydro-Quebec, 626 F.3d 1213 (Fed. Cir. 2010) (that risk being that UT's patent(s) might be invalidated). This precedent was not apropos here, according to the panel majority on this issue, because unlike in A123 Systems, Gensetix had a license in every field making identical the parties' interests in the patents-in-suit. "The prejudice to UT is minimal, or at least substantially mitigated, because, unlike the licensee in A123, Gensetix will adequately protect UT's interests in the validity of the patents-in-suit," according to the opinion. As to the second prong, the District Court had dismissed this as a risk inherent in patent licensing from a sovereign, which the panel majority held was an abuse of discretion because "the district court should have given weight to the fact that Gensetix is without recourse to assert its patent rights because UT cannot be feasibly joined." Also contrary to the proper application of the District Court's discretion was its application of the third prong, because according to the panel majority there was no risk to defendants of multiple suits because the contract provided Gensetix with the primary right to sue and UT with a secondary right triggered only if Gensetix did not sue within six months of knowledge of infringing activity. As for the fourth prong, the majority held that the District Court did not properly weigh as a factor that Gensetix had no ability to assert its licensed patent rights in the absence of UT as a party unless the District Court denied Baylor's motion to dismiss.

The panel majority on this issue held that the District Court's error was that instead of considering these factors it relied too heavily on UT's status as an arm of the State and the sovereign immunity asserted on that basis. The District Court's grant of Baylor's motion to dismiss was an abuse of discretion according to the panel majority and accordingly the Federal Circuit reversed and remanded on those grounds.

Judge Newman's opinion, concurring in part, dissenting in part, and concurring in the judgment, was based on her opinion that State sovereign immunity should not be used as a shield in cases like this one where the "arm of the State" actively engaged in licensing its patents to private parties. The Eleventh Amendment, according to Judge Newman, "does not insulate a State from its contractual obligations." "[T]he State must pay its bills," according to Judge Newman, and in like manner it must comply with its contractual obligations. The Judge cited Justice Breyer's dissent in College Savings Bank in this regard, wherein "[w]hen a State engages in ordinary commercial ventures, it acts like a private person, outside the area of its 'core' responsibilities, and in a way unlikely to prove essential to the fulfillment of a basic governmental obligation." In Judge Newman's view, UT's position is directly contrary to its obligation under the terms of the contract with Gensetix to "cooperate" with regard to patent infringement litigation brought in the first instance by Gensetix under rights granted by the contract. Judge Newman disagreed with the majority that upholds that exercise of sovereign immunity.

With regard to the Rule 19(b) issue, Judge Newman concurred with the result but would have held that UT transferred sufficient rights to Gensetix in its license that Gensetix should be entitled to sue infringers "in its own name" without joining UT as a necessary party.

Judge Taranto, concurring in part and dissenting in part, believes that the District Court properly dismissed under Rule 19(b), relying on Republic of Philippines v. Pimentel, 553 U.S. 851 (2008), which held that "when a sovereign entity is a required party under Rule 19(a), is protected against joinder by sovereign immunity, and makes a non-frivolous assertion that it will be prejudiced by a suit proceeding in its absence, a district court is generally obligated to dismiss the suit under Rule 19(b)." While the panel majority distinguished Pimentel on its facts, Judge Taranto believes that such distinctions are inadequate and the Federal Circuit erred in reversing the District Court's decision to dismiss. Judge Taranto sees the Supreme Court's holding in Pimentel as a "bright line rule" mandating dismissal. The Judge also sees that there could be an occasion for UT's patent interests to be harmed in its absence and to be precluded from relitigating the bases for such harm should the need for UT to assert these patents arise. And as for Gensetix' predicament, Judge Taranto cited the Supreme Court's recent Allen v. Cooper decision for the reality that "state sovereign immunity jurisprudence contemplates that patent owners may be left without a remedy when States are involved."

Gensetix, Inc. v. Board of Regents of the University of Texas System (Fed. Cir. 2020)
Panel: Circuit Judges Newman, O'Malley, and Taranto
Opinion by Circuit Judge O'Malley; opinion concurring in part and dissenting in part by Circuit Judge Newman; opinion concurring in part and dissenting in part by Circuit Judge Taranto
Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

July 26, 2020

By James L. Lovsin —

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims. The appeal raises issues of finality as well as the Board's authority. Judge O'Malley filed a dissenting opinion—nearly as long as the majority opinion—on both issues, which may signal that this case could be headed for rehearing. Judge O'Malley stated that as a result of the Court's decision, "when it comes to substitute claims, the Board can engage in full-blown examination."

The parties were involved in parallel district court litigation and IPR related to U.S. Patent No. 8,566,960 (the '960 patent). In the IPR appealed from here, the Board issued a Final Written Decision, concluding that all of the granted '960 claims were unpatentable and denying Uniloc's motion to amend because the proposed substitute claims were patent ineligible. Hulu opposed the proposed substitute claims on multiple grounds, including § 101.

Meanwhile, the District Court dismissed Uniloc's complaint under Federal Rule of Civil Procedure 12(b)(6), concluding that the '960 claims were invalid for lack of patentable subject matter. The Federal Circuit summarily affirmed and Uniloc did not file a cert. petition in the Supreme Court.

The Board's final written decision predated the Federal Circuit's affirmance in the district court litigation by about a week. However, after the Federal Circuit affirmance, Uniloc sought rehearing on the IPR at the Board. The Board denied rehearing on the merits rather than concluding that the IPR was moot because of the District Court invalidity judgment.

On appeal, Uniloc challenged the Board's authority to consider § 101 in resolving a motion to amend. While Hulu defended the Board's authority, it also argued that the appeal was moot because of the District Court judgment. The PTO intervened, arguing that the appeal was not moot and the Board had authority to consider § 101 for proposed substitute claims.

Mootness

The majority (Judges Wallach and Taranto) addressed mootness both procedurally and substantively. To begin, the majority found that Hulu waived the mootness argument. Hulu never raised it with the Board on rehearing and never filed a cross-appeal with the Court seeking vacatur of the Board's decision. In any event, the majority rejected Hulu's argument on the merits, noting that Uniloc can receive relief on appeal if the Court agrees that the Board erred in considering § 101.

Judge O'Malley dissented on mootness. She explained that once the District Court's invalidity judgment became final, the '960 patent ceased to exist. Because the '960 patent was a nullity, Uniloc could not substitute claims into it. Put another way, after the '960 patent was invalidated, Uniloc had nothing to give up for the substitute claims.

The majority disagreed with Judge O'Malley's understanding of a substitute claim. Rather, the majority explained that substitute claims exist whether or not the original claims do.

Although the Board's authority to consider § 101 for substitute claims is the bigger issue here, it will be interesting to see how the impact of a district court judgment on motions to amend and substitute claims in IPR develops. Judge O'Malley's concerns with finality in this appeal echo her disagreement with the Federal Circuit's Fresenius line of cases. The Supreme Court denied a cert. petition on that issue last month—Chrimar Systems, Inc. v. Ale USA Inc., 19-1124.

The Board's Authority to Consider § 101

The majority concluded that the text, structure, and legislative history of the America Invents Act confirm the Board's authority. The majority and dissent engaged in dueling statutory construction of §§ 311, 316(d), and 318 in regard to this question. In short, the majority concluded that § 311's limit of IPR petitions to certain §§ 102 and 103 unpatentability grounds does not apply to motions to amend and substitute claims.

The majority also explained that Federal Circuit case law on inter partes reexamination supported the Board's authority. In this regard, the majority relied on In re NTP, 654 F.3d 1268 (Fed. Cir. 2011), where the Court held that priority under § 120 could be considered in reexamination. In dissent, Judge O'Malley distinguished reexamination from IPR. She noted that unlike reexamination conducted by a patent examiner, IPR is an adjudication conducted by an APJ. With respect to NTP, Judge O'Malley noted that unlike § 101, § 120 is not a patentability provision, and that the NTP Court acknowledged that in reexamination original claims cannot be challenged on § 101 grounds.

Further, the majority rejected Uniloc's argument that Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), forecloses the Board's authority to consider § 101 for substitute claims. The majority explained that while Aqua Products stands for the petitioner bearing the burden of proof on unpatentability of substitute claims, that case is silent on whether a petitioner, like Hulu, can raise a § 101 challenge to such claims. In dissent, Judge O'Malley explained that the plurality opinion in Aqua Products (joined by five of the eleven judges rehearing that appeal) addressed a question closely related to the majority's and dissent's disagreement about the statutory interpretation of § 318 in this appeal.

Going forward, it will be interesting to see how often § 101 is used to oppose and deny motions to amend in IPR and whether resolving motions to amend becomes "full-blown examination" as Judge O'Malley predicts.

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)
Panel: Circuit Judges O'Malley, Wallach, and Taranto
Opinion by Circuit Judge Wallach; dissenting opinion by Circuit Judge O'Malley
Conference & CLE Calendar

July 26, 2020

August 5-6, 2020 – Advanced Summit on Life Sciences Patents Conference (American Conference Institute)

August 18, 2020 – "CRISPR Ownership Disputes: Current Status and Future Prospects" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

September 11, 2020 – IP, Technology & Social Justice in the Age of Coronavirus (Center for Intellectual Property, Information & Privacy Law at UIC John Marshall Law School and Institute for Intellectual Property & Social Justice) – 7:40 am to 3:00 pm (CT)
IPO Webinar on Secondary Considerations

July 25, 2020

The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Secondary Considerations: Latest Guideposts" on July 30, 2020 from 12:00 pm to 1:00 pm (ET). Paul Ainsworth of Sterne Kessler Goldstein & Fox; Jennifer Huang of Fish & Richardson, PC; and Stephen Yoder of IBM Corp. will review and analyze the latest judicial guideposts regarding the role and weight of objective indicia in evaluating the non-obviousness of a claimed invention, and focus on recent decisions from the Federal Circuit and PTAB, which have clarified the nexus aspect of this issue.

The registration fee for the webinar is $135 (IPO member) or $150 (non-member) (government and academic rates are available upon request). Those interested in registering for the webinar can do so here.
Webinar Conversation with the Commissioner

July 25, 2020

LexisNexis IP and IPWatchdog will be offering a webinar entitled "A Conversation with the Commissioner: A Look Inside Patent Processes at the USPTO" on July 30, 2020 at 12:00 pm (ET). Gene Quinn of IPWatchdog.com and Megan McLoughlin of LexisNexis IP will be joined by Drew Hirshfeld, Commissioner for Patents; Jay Kramer, Group Director Patent Operations; and Matthew Such, Group Director Patent Operations of the U.S. Patent and Trademark Office for a discussion that will focus on the patent classification system, how applications are routed to art units, how applications are assigned to patent examiners, and other processes at the USPTO.

There is no registration fee for this webinar. However, those interested in registering for the webinar, should do so here.
Webinar on Supplementary Protection Certificates

July 25, 2020

Mathys & Squire will be offering a webinar entitled "Supplementary Protection Certificates in Europe (Part 1)" on July 30, 2020 from 6:00 to 7:00 pm (GMT Summer Time). Peter Arch and Alexander Robinson of Mathys & Squire LLP will provide an introduction to the basic requirements for obtaining Supplementary Protection Certificate (SPC) protection, the types of products which can be protected, and the scope and duration of protection.

While there is no cost to participate in the program, those interested in attending the webinar can register here.

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