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IPO Daily News™

Tuesday, 31 January 2017 1:40 pm

IPO SUPPORTS LEGISLATION TO AMEND U.S. PATENT ACT SECTION 101

In a meeting on Sunday in Orlando, Florida, the IPO Board of Directors adopted a resolution supporting legislation to amend 35 U.S.C. § 101 as follows:

101(a) ELIGIBLE SUBJECT MATTER
Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY
A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD
The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

IPO supports legislation because the patent eligibility test created by the U.S. Supreme Court is difficult to apply and has yielded unpredictable results for patent owners in the courts and at the USPTO. IPO’s proposed legislative language would address these concerns by reversing the Supreme Court decisions and restoring the scope of subject matter eligibility to that intended by Congress in passing the Patent Act of 1952; defining the scope of subject matter eligibility more clearly and in a technology-neutral manner; requiring evaluation of subject matter eligibility for the invention as a whole; and simplifying the subject matter eligibility analysis for the USPTO, courts, patent applicants, patentees, practitioners, and the public by preventing any consideration of “inventive concept” and patentability requirements under sections 102, 103, and 112 in the eligibility analysis.

YOUR INPUT NEEDED FOR IPO STRATEGIC PLANNING

This year the IPO Board of Directors will create a new strategic plan to carry the organization through the next three years. The output of this process will only be as good as the input IPO receives, so it is critically important that we receive input from members to ensure your voices are heard and considered. Please take 10-15 minutes to complete the strategic planning survey by 6 February 2017. All survey responses will be compiled, but kept anonymous. Thank you for your help in this important work.

IPO SUBMITS COMMENTS ON USPTO PATENT EXAMINATION TIME GOALS

Yesterday Executive Director MARK LAUROESCH submitted a letter to the USPTO commenting on patent examination time goals. The IPO letter agreed that a study of patent examination time goals is appropriate, given the increase in patent examiners’ responsibilities and the few adjustments that have been made by which productivity is reviewed during the last 40 years. To properly assess the questions posed in the USPTO’s request, IPO suggested that the USPTO create a pilot group of patent examiners who track daily time by application number and examination activity to understand how patent examiners are actually using their existing time allotment.

The IPO letter suggested that the study “start with a clean slate and a willingness to re-engineer the patent examination process” and reiterated IPO’s support for eliminating the policy that every second Office action be made final and the attendant after final practice, which can waste both the USPTO’s and applicants’ time and resources by placing an artificial stop in the examination of a patent application. IPO’s U.S. Patent Office Practice Committee assisted with the comments. KAVEH RASHIDI-YAZD (Siemens Corp.) is Chair. Vice-chairs are COURTENAY BRINCKERHOFF (Foley & Lardner), KEVIN GREENLEAF (Dentons U.S. LLP), and SUNJEEV SINGH SIKAND (RatnerPrestia). The Committee’s Secretary is AAMIR HAQ (Hewlett Packard Enterprise Company).

IP IN THE MASS MEDIA

ISPs, MPAA, RIAA Discontinue Copyright Alert System

On Saturday Yahoo! Tech reported that internet service providers, the Motion Picture Association of America, and the Recording Industry Association of America discontinued the Copyright Alert System, a voluntary agreement to fight internet piracy by alerting offenders of infringing activity and curbing their internet speed. The organizations cited the inability to stop repeat offenders and the evolving nature of online piracy as some of the reasons for ending the four-year-old program.