11/22/12

Volume 94, Issue 3


  • Congress Giveth and Taketh Away: A Look at Section 18 of the America Invents Act and the Review of Business Method Patents — Jeff Kettle
  • Post-eBay Economic Standards for Assessing Irreparable Harm — Stevan D. Porter, Jr.
  • Avoid Japanization: Lessons from Japanese Gridlock on the Patent Recordation System — Nahoko Ono
Congress Giveth and Taketh Away:  A Look at Section 18 of the America Invents Act and the Review of Business Method Patents
 
By: Jeff Kettle

Business method patents have been criticized since their creation in the 1998 State Street Bank & Trust Co. v. Signature Financial Group, Inc. decision. After the State Street holding “opened the floodgates,” the Supreme Court pulled back on the patentability of business methods in Bilski v. Kappos. Congress has now weighed in on the issue in the form of new patent legislation.  
The America Invents Act (AIA) was passed in September of 2011. Under section 18 of the AIA, a transitional post-grant review process gives the United States Patent and Trademark Office a vehicle to invalidate poor quality business method patents. Although ambiguity exists in both section 18 statutory language and judicial interpretations of business method patentability, section 18 seems to correct where State Street allegedly erred. As a less-expensive and quicker alternative to civil litigation, a petitioner will be most successful when she can present prior art to invalidate the business method patent. Additionally, section 18 does not seem to have an overbroad effect, so businesses will still benefit from investing in business method patents that are novel, “unobvious,” and non-abstract.

Post-eBay Economic Standards for Assessing Irreparable Harm
 
By: Stevan D. Porter, Jr.
 
Since the Supreme Court’s ruling in eBay, permanent injunctions have issued in patent infringement cases in accordance with a four-factor equitable test.  One of these factors considers the presence of irreparable harm, which is injury not quantifiable or remediable as money damages. Courts’ analyses of irreparable harm have inconsistently addressed the issue of quantifiability and have thus contributed to uncertainty among litigants regarding the likelihood of injunction following trial.  Courts’ decisions also have been inconsistent with economic theory in their consideration of factors determining quantifiability of damages.  This paper describes courts’ post-eBay analyses of irreparable harm, discusses the relevant standard of valuation in contemplating forward-looking damage quantification in permanent injunction inquiries, and offers a generalized framework for assessing future damage quantifiability in this context. 

Avoid Japanization: Lessons from Japanese Gridlock on the Patent Recordation System
 
By: Nahoko Ono
 
This article is a response to The USPTO’s recently requested comments on possible revisions for the present recordation system for patent assignments. Given that “[a]n incomplete assignment record thus presents a significant barrier to market efficiency,” “the USPTO is interested in providing more complete patent assignment data to the public.” The author advocates that the USPTO should avoid the pitfalls that come with the recordation system in place in Japan after the passage of the Japanese Patent Act of 1959.  The author argues that one of the pitfalls was that a strict registration system led to a decrease in the number of granted patents. 

© 2000-2019, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy