Patently Strategic Musings
By: Ashley Sloat, Ph.D.
One of the more frequent questions I get from clients, when they receive their first patent office rejection and the rejection includes a published U.S. patent application, is:
“This publication didn’t even become a patent and they aren’t even practicing what they said in the patent. Is this a legitimate reference?”
The short answer to the question is “Yes.” The long answer is still “yes” but with some context. References (or in other words the “art”) that can be used by the United States Patent and Trademark Office in a rejection include all references that were in the public domain prior to the earliest filing date of the client’s application. This may include public/published presentations, dissertations, newspaper articles, journal articles, web content, and yes, event published patent applications that never became an issued patent. A skilled draftsman (such as those found at Aurora Consulting :) ) will include many variations and various embodiments of the technology in the patent application. The client may never practice or implement these variations or may never even intended to practice or implement these variations, but these various embodiments and variations are included in patent applications to provide breadth and options to the client over the long-term. These various embodiments, by virtue of the patent application publication process (publication occurs 18 months after filing date), become available to the public and thus ripe for use in rejections. I get it - it does some unfair that patent applications that never issued can be used in rejections- but the fact is they can be and are used. What a client needs in turn is a skilled draftsman that can assess the art, draft claims that avoid the art, and include significant breadth in drafted patent applications to give the client a leg up on future competitors - basically doing the same thing to future patent filers as previous patent filers have done to you.
By: Ashley Sloat, Ph.D.
In Securus Technologies, Inc. v. Global Tel*Link Corp., the Federal Circuit reviewed a claim construction dispute with respect to the following claim from U.S. Patent 7,853,243:
1. A method for restricting access to a public telephone network using a telephone call management system, said method comprising the steps of:
assigning a first identification number to each of a plurality of potential callers;
recording a first voice print of at least one potential caller;
storing said first voice print and said first identification number in a database;
during each access attempt to said public telephone network by said potential caller:
prompting said at least one potential caller to input a second identification number;
recording a second voice print of said at least one potential caller;
matching said first and second identification numbers;
comparing said second voice print with said first voice print associated with said first identification number;
granting said at least one potential caller access to said public telephone network to attempt to place a telephone call if said second voice print matches said first voice print;
monitoring at least one conversation to detect the presence of a three-way call attempt; and
recording at least one conversation between said at least one potential caller and a third-party remotely located from said at least one potential caller if said recording is permissible; and
detecting the presence of predetermined keywords in audio of said at least one conversation.
The segment of the claim of interest to the Federal Circuit is shown in blue above. In particular, the Federal Circuit was tasked with determining whether the step of “during…:” included all of the subsequent steps of just the step of “prompting…;”. The Federal Circuit agreed with Global Tel*Link Corp. interpretation of the claimed feature and held that it was most appropriate to include all of the claimed steps from "prompting" to "monitoring" with the "during" step.
What we can learn from this is that punctuation matters in a claim. The intent behind the punctuation can also be augmented using formatting (e.g., indentation), enumeration, or other tricks. We at Aurora tend to use formatting to explicitly define which elements are included in a claimed feature. At least some drawbacks of enumeration are that, when used, it could be read that the steps in the method need to be performed in the order in which they are presented rather than any order that is fitting and/or that the method does not include any additional steps (intrinsic or otherwise) that are not recited.
By: Ashley Sloat, Ph.D.
Many of our clients are in the digital health space, so here is a brief update on new developments in FDA regulation of this space. The new FDA Commissioner Scott Gottlieb, M.D. announced last week that the FDA is formally launching a voluntary Pre-Cert for Software Pilot Program. Scott Gottlieb states that: “This new program embraces the principle that digital health technologies can have significant benefits to patients’ lives and to our healthcare system by facilitating prevention, treatment, and diagnosis; and by helping consumers manage chronic conditions outside of traditional healthcare settings.”
The polite program will work similar to TSA pre-check in that companies that have a demonstrated track record of software quality (based on design, validation, and maintenance) will experience an expedited approval route through the FDA (e.g., required to submit less or no information prior to marketing the new tool). In contrast, those companies that require more quality assurance will be required to submit more information before marketing their new digital health tool. A link to the press release from the FDA is here. If you are a company in the digital health space, I encourage you to investigate whether you have any interest in volunteering to be a part of this polite program. We all know that more regulation is coming to the digital health space, now each of us has to determine if we want to contribute to the shape of that regulation.
By: Ashley Sloat
Senators Chris Cooms, Tom Cotton, Dick Durbin, and Mazie Hirono recently introduced the Support Technology and Research for Our Nation's Growth and Economic Resilience (STRONGER) Patents Act of 2017 into the Senate. The STRONGER Patents Act seeks to remedy some of the unintended negative consequences of the American Invents Act on patent owners. To highlight a few key aspects, the STRONGER Patents Act focuses on:
(1) Harmonizing claim construction standards across adjudicating bodies to “ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains.”
(2) Refining and limiting processes by which post-issuance proceedings (e.g., post-grant review and inter partes review) are instituted.
(3) Providing a (improved) pathway for patent owners to amend challenged claims during an expedited examination procedure or during a Patent Trial and Appeal Board (PTAB) Proceeding.
(4) Restoring presumption of injunctive relief for patent owners when a patent is found valid and infringed.
(5) Eliminating USPTO fee diversion so that fees collected by the USPTO can remain with the USPTO.
Overall, I think all these changes are positive and exciting (especially from patent owner and practitioner viewpoints), but I will wait to give my full appraisal until after the House and Senate battle it out. The pendulum is starting to swing back in favor of patent owners, but now we just have to make sure we find a good balance between the extremes.
By Ashley Sloat and Kristen Wolff
Software patenting has come under intense scrutiny in the last decade. Since the landmark case, Alice Corporation PTY. LTD. v. CLS Bank International, there has been a slow trickle of patents found valid under 35 U.S.C. §101. In this seminar, we will review these court cases and distill the opinions down into a set of drafting tips that will increase the probability that your software claims are patentable. However, in the event that your software claims are not a good fit for patenting, we will also discuss various alternative strategies for protecting software. These alternative strategies include advantages and disadvantages that we will also discuss.
• Overview of relevant software patent court cases
• Specification/claim drafting tips to hedge your bets for section 101
• Alternatives to patents for protecting software innovations
• Advantages and disadvantages to not patenting software
LES Michigan Chapter: Leveraging Intellectual Property to Increase Business Value (Traverse City, MI)
The Michigan Chapter of the Licensing Executives Society (LES) is pleased to present this distinguished panel of industry leaders for a discussion on leveraging intellectual property (IP) to increase business value. With success in certain industries (e.g., biotech and software) being almost three times more likely with IP than without it and with the patent premium alone being 22 percent, IP is crucial to the survivability and value of any business. This discussion will present perspectives on how to appropriately identify, utilize and license IP, how IP strategies are adapting to rapidly evolving technologies, and how this is impacting deal flow and valuation. Especially in light of the changing landscape for utility patents, the panel will uncover alternative deal structures as well as the best practices for leveraging all types of IP including design patents, copyrights, trade secrets, and know how. Whether your company is a startup or a global enterprise, appropriately leveraged IP is critical.
4:00 pm – 5:30 pm EST – Welcome Reception
5:30 pm – 7:00 pm EST – Panel Discussion
7:00 pm – 8:00 pm EST – Networking Reception
8:00 pm EST – After-event networking in downtown Traverse City, MI
Vice President - Intellectual Property Business Strategy
Director of Licensing
University of Michigan, Tech Transfer
Senior Vice President
Ann Arbor SPARK
By: Ashley Sloat, Ph.D.
Digital health devices are rapidly becoming a key sector of the medical device and IoT space. This revolution begs us to understand issues that digital health companies are facing. In this post, we will describe what makes digital health companies unique and key challenges of digital health companies.
Digital health devices are rapidly becoming a key sector of the medical device space. This revolution begs us to understand IP and licensing issues that are being presented as a result of this newly emerging field. In this webinar, we will explore how digital health looks today and what are some changes we can expect in the near to distant future.
By: Ashley Sloat, Ph.D.
In an interesting opinion in Matal v. Tam, the USPTO will now start issuing disparaging trademarks. In my opinion, the lack of registration of a mark does not prevent someone from using the mark (i.e., does not inhibit free speech), it just means that the federal government will not allow certain protections guaranteed under trademark law for use of the mark. Looks like the Washington Redskins might be able to once more protect their brand under trademark law.
Ashley Sloat, Ph.D.
Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.