01/03/14

Volume 95, Issue 4

The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • The § 112, ¶ 6 Pitfalls for Computer Software System Claims Under the February 2011 Examination Guidelines Sean J. Holder
  • Towards a More Uniform Procedure for Patent Invalidation Arjun Rangarajan
  • Unique Copyrights Andrew Tutt
  • Software Patent Eligibility: A Call for Recognizing and Claiming Concrete Computer Programs Seong-hee (Emily) Lee
  • In re Yasuhito Tanaka - An Improper Expansion of Reissue Law and Practice Stephen Marcus
  • Inefficiencies in Overcompensating Design Patent Damages under 35 U.S.C. §289 in Complex Technologies Dennis M. White
  • Annual Index

The § 112, ¶ 6 Pitfalls for Computer Software System Claims Under the February 2011 Examination Guidelines Sean J. Holder

On February 9, 2011, the USPTO published supplementary guidelines for patent examiners regarding interpretation of claims under 35 U.S.C. § 112. One of the main purposes for the update was to provide supplemental information for examining computer software claims that employ functional language. The supplementary guidelines are misleading because they do not explicitly treat the roles of presumptions as reflected in case law. Four months after the release of the USPTO guidelines, the Federal Circuit Court of Appeals decision in Inventio AG vs ThyssenKrupp Elevator Corporation clarified the role of presumptions in means plus function claiming. Consequently, the examination guidelines do not accurately reflect the law as clarified in Inventio. Practitioners unaware of these changes may inadvertently surrender claim scope by allowing an Examiner to incorrectly interpret a claim as means plus function claim. Accordingly, practitioners should take precautions to ensure broader claim scope.

Towards a More Uniform Procedure for Patent Invalidation Arjun Rangarajan

There are multiple fora in which a defendant can initiate proceedings to invalidate a patent. The estoppel effects of the validity of the patent itself and of the arguments brought forth during the proceedings vary. Part I of this paper is an introduction to patent invalidation after grant. Part II and III talk about the various points at which a patent can be invalidated, including the estoppel implications at each point, before and after the passage of the America Invents Act.

Unique Copyrights Andrew Tutt

Its critics emphasize its name—“The Sonny Bono Copyright Term Extension Act”—for the same reason they call it the “Mickey Mouse Protection Act,” and plot evocative charts tracing the striking parallels between the expiration of the Disney Copyright and the timing of the last several copyright extensions. The received wisdom of the last copyright extension act is that it was purchased by a narrow class of intensely interested copyright holders at the expense of the public domain.

Software Patent Eligibility: A Call for Recognizing and Claiming Concrete Computer Programs Seong-hee (Emily) Lee

Software patents have generated numerous comments and discussions over the last few years in academia, courts, the industry, and the general public. While much of the discussion has been over the negative impact of certain “bad” software patents on innovation, there are also a number of commentaries suggesting how to fix the patent system to adjust to the new and growing field of software innovation. Currently, courts do allow software patents when the invention is not a pure algorithm on a general-purpose computer and includes specific hardware or transformative processes. However, the current status of the law is very much unsettled rendering diverse district court opinions and incompatible Federal Circuit opinions

In re Yasuhito Tanaka - An Improper Expansion of Reissue Law and Practice Stephen Marcus

On April 15, 2011, a divided three judge panel of the Court of Appeals for the Federal Circuit issued a decision in an appeal styled as In re Yasuhito Tanaka. Tanaka reversed Ex parte Yasuhito Tanaka, a precedential decision by an expanded sevenmember panel of the Board of Patent Appeals and Interferences (“Board”) in the United States Patent and Trademark Office (“USPTO”).

Inefficiencies in Overcompensating Design Patent Damages under 35 U.S.C. §289 in Complex Technologies Dennis M. White

The purpose of the patent system is "to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries."1 The patent system is potentially an efficient system that can be explained by a utilitarian rationale: By awarding patents, the benefits of exclusivity to the inventor and society outweigh the costs to society.

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