Warren D. Woessner and Robin A. Chadwick, Schwegman, Lundberg & Woessner, P.A.

Section 101 of the Patent Act (the Act) states that the following categories of invention are eligible for patent protection, so long as the other standards of patentability are met: processes, machines, manufactures, and compositions of matter, as well as improvements thereof. In 1980, the Supreme Court ruled that a man-made microorganism was also eligible for patent protection under Section 101, reaffirming at the same time that no patents should be granted on laws of nature, physical phenomena and abstract ideas. Instead, the Court emphasized that patent-eligible inventions must be generated by human ingenuity. Apart from its decision in 2001 that plants were also eligible for patenting, the Supreme Court had not again addressed whether living organisms, or their natural components, were patent eligible until 2012.

Although the courts have grappled for years with the “abstractness” of software claims, after about 2010 the courts turned their attention to life sciences patents, finding that many diagnostic claims were patent-ineligible as abstract ideas, while others were patent-ineligible for patenting as embracing natural phenomena. Shortly after the Bilski decision held that claims to a method of hedging commodity risk were patent-ineligible under Section 101 as an attempt to patent an abstract idea, the Supreme Court granted certiorari and remanded the Classen case involving an appeal of claims to immunization schedules, and then decided two biotech/pharma cases, the Mayo case in 2012 and the Myriad case in 2013. The application of the Supreme Court’s Mayo decision by the Federal Circuit to the prenatal testing claims in the PerkinElmer case and in the Ariosa case, as well as the Federal Circuit’s own rejection of the Myriad diagnostic claims suggests that claims directed to the use of biomarkers in personalized medicine have increasingly become vulnerable to attack by litigants as not constituting patent-eligible inventions. The recent Athena case further confirms the court’s stance against the patent eligibility of diagnostic claims. The U.S. Patent and Trademark Office has also issued a series of their own Memoranda outlining the patent eligibility of natural products, natural phenomena, and laws of nature. 


The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names

J. Spencer Sanders II

In January 2012, The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit responsible for the maintenance and operations of the Internet, created a program designed to increase the number of generic top-level domains (“gTLDs”). The program’s purpose was to address the demand problem associated with gTLDs, increase competition, customer choice, and innovation. The first expansion closed in April 2012 and brought in over 1,900 applications for new gTLDs. The program came with its fair share of problems, with some applicants running into issues when applying for brand specific gTLDs. Specifically, the e-commerce giant Amazon’s application came under fire by countries in the Amazon rainforest region. The clothing company Patagonia and the hotel chain Shangri-La had similar problems with their gTLD applications for Patagonia and Shangri-La. After official opposition from representative members from each of the countries on ICANN’s Governmental Advisory Committee, the applications were put on hold and official processes started to decide whether the gTLD applications would be allowed to proceed. Issues over geographic name gTLDs and property rights in trademarks arose and the parties are still battling it out. The ICANN board needs to make changes in the promised second round of expansion to avoid these problems happening again. 

Volume 101 Issue 2 is coming soon! 

Who Owns A Fox? Possession is the root of title in patent law

Christine Johnson

What is it to possess? This appears a very simple question- there is none more difficult of resolution, and it is in vain that its solution is sought for in books of law: the difficulty has not even been perceived.”

The most valuable public resource in America today may lie in the public common of human ingenuity and ideas. Like ferae naturae ideas in the public common are not subject to individual ownership in their wild state. In English law private ownership of ferae naturae is acquired by taking possession of them. The state of possession raises prima facie title. The Copyright and Patent Clause of the Constitution empowers Congress to secure to inventors exclusive rights to their inventions. A patent is a deed that conveys title to an invention as private property. The title is granted in a quid pro quo exchange involving public rights. When the PTO issues a patent, it “take[s] from the public rights of immense value, and bestow[s] them upon the patentee.” At the end of the patent’s term the invention described in the patent’s written description is conveyed to the public. Describing that invention in writing is an inventor’s burden in the quid pro quo exchange. The public benefits from the exchange to no more extent than the inventor meets this burden. To describe one’s invention one must have invented. Patents describing ideas for effects and results in the abstract of any completely conceived invention cause grave public harm. 



Yan Song

Every element of a design mark in a US federal trademark application is assigned a design search code, a numerical classification index that codifies design figurative elements into categories, divisions and sections. There are 29 categories with hundreds of sub divisions and sections per category. Design search codes act as the equivalent of a filing system by which all possible design elements can be searched. However, symbol-based foreign languages are classified in one of only five categories. Since all syllable-based logographies (Chinese, Japanese, etc.) are assigned only five design search codes, an Examiner’s ability to search the mark as a design is extremely limited. To avoid approval of similar marks, an Examiner would have to compare the foreign mark to every other existing mark in the same category–an impracticality given that there are tens of thousands of logographic marks that exist. As such, an Examiner can search only the literal translation and phonetic translation of a foreign mark, so confusingly similar marks may be very well approved by the USPTO. This paper draws attention to the problem and investigates the abilities of other foreign trademark offices to perform comparable searches for foreign words. This paper begins by discussing how lingual communication functions in trademark and the difference between trademark in alphabetic language and logographic language. Next, it introduces functionality and limitation of USPTO for searching for foreign trademarks. By showing an example of foreign trademark search, it visualizes the problem of the TESS (Trademark Electronic Search System) database, from which reason of failure from linguistic perspective is also discussed. Ultimately, it suggests that technology of search system should be exchanged for the improvement on the reliability of TESS which would reduce the possibility of similar foreign marks being approved. 



William J. McNichol, Jr.

Patents play an important role in American business. Their stated purpose is to incentivize innovation and there is a large body of scholarship concerning how they perform this function. Scholars have noted the patent system’s “natural connection to innovation.” Patents long played an important role in in the related function of capital formation. This is no less true in the industries now emerging around sales of Cannabis products.5 However, under a long line of authorities going back to The Highwayman’s Case in 1725, the illegality of the use, possession, and distribution of these products probably creates an insurmountable barrier to the enforcement of most patents that claim Cannabis products or their use. This means that, with respect to the Cannabis industry, the U.S. patent system is unlikely to play its customary roles of incentivizing innovation and encouraging investment. 


PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude

James A. Worth

Upon instituting an AIA trial proceeding, a panel of the Board issues a scheduling order that provides a timeline for discovery, for the filing of briefs, and for the date of an oral hearing. Parties may contact the Board to request an initial conference call if there is a need to propose changes to the scheduling order or propose motions that have not been provided for by the scheduling order or by the PTAB Rules. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (“TPG”); Trial Practice Guide Update (“Update”) at 24. Otherwise, parties may proceed with discovery and briefing without consulting the Board. Occasionally, parties will have a dispute about the scope of discovery or briefing that they cannot resolve on their own, and will ask the panel to resolve the issue, usually in the run up to the hearing. Disputes over the scope of argument and evidence may result in a motion to strike or a motion to exclude. 


The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States from the USPTO and the Courts

Andrei Iancu

Good afternoon everyone! Thank you, Pete Thurlow, for that generous introduction. It’s a great honor to open today’s panel discussion on the current state of innovation within the U.S. legal system, and I appreciate NYIPLA’s gracious invitation to be part of this outstanding annual event.

This very day 59 years ago, on March 22, 1960, the United States Patent Office issued patent number 2,929,922 to New York native Arthur Schawlow of Bell Labs and Charles Townes, a Columbia University professor and consultant to Bell Labs, for coinventing the optical maser—now called a laser. While doing postdoctoral research at Columbia University, Schawlow met Townes, and together they sought ways to extend the maser principle of amplifying electromagnetic waves into the shorter wavelengths of infrared and visible light.

In 1958, the two scientists published a proposal for the invention in an issue of Physical Review, prompting an international competition to build a working laser. Today, of course, lasers have countless applications and make it possible to play CDs, correct eyesight, scan labels in a grocery store, enable autonomous vehicles, measure time precisely, survey planets and galaxies, and even witness the birth of stars. 

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