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IPO Daily News™

Thursday, 18 April 2019

Lawmakers Release Bicameral, Bipartisan Framework for Section 101 Legislation

LAWMAKERS RELEASE BICAMERAL, BIPARTISAN FRAMEWORK FOR SECTION 101 LEGISLATION

Yesterday the Senate Judiciary Subcommittee on Intellectual Property’s Chairman THOM TILLIS (R-N.C.) and Ranking Member CHRIS COONS (D-Del.), along with House Judiciary Committee Ranking Member DOUG COLLINS (R-Ga.), House IP Subcommittee Chairman HANK JOHNSON (D-Ga.), and Rep. STEVE STIVERS (R-Ohio) released a framework for legislation to amend Patent Act section 101. Based on feedback from participants in a series of roundtables that began in December 2018, the framework is not legislative text and instead captures concepts that will form the basis of a bill that likely will be introduced in early summer after the lawmakers receive additional feedback from stakeholders.

Among the concepts reflected in the framework are keeping the four existing statutory categories of patent-eligible subject matter—process, machine, manufacture, or composition of matter—and eliminating the requirement in section 101 that an invention be “new.” The framework proposes defining an exclusive list of exceptions to subject matter eligibility, which might include categories such as “fundamental scientific principles” and “products that exist solely and exclusively in nature.” The framework proposes to create a “practical application test” to save claims that merely make use of subject matter that falls into one of the exceptions.

The framework is posted on Chairman Tillis’s website. IPO is studying the framework and will continue to provide feedback as the process moves forward.

* * FEDERAL CIRCUIT UPHOLDS DISTRICT COURT CLAIM CONSTRUCTION

E.I. Du Pont De Nemours & Co. v. Unifrax I LLC, 17-2575 — Yesterday in an opinion by Judge REYNA, the Federal Circuit upheld a district court’s claim construction. Du Pont’s patent claimed three-layer composite laminates used in “thermal-acoustic blankets installed on the interior of the fuselage in aircraft.” Unifrax argued that the district court erred in construing the term “100% by weight,” which it argued should exclude layers that contained anything in the “inorganic refractory layer” other than platelets.

The Federal Circuit held that the district court properly construed the term to refer to the percentage of platelets relative to carrier material. The patent’s claims and specification both disclosed embodiments where platelets comprised 100% of the layer by weight but the layer also contained residual dispersant. The Court also found that district court properly relied on the parent application, which disclosed a two-layer material and “did not share the disputed ‘100%’ claim term,” as intrinsic evidence given the patents’ familial relationship, citation during prosecution of the patent at issue, and common subject matter.
(1 to 4 stars rate impact of opinion on patent & trademark law)

TRADEMARK CONGESTION, AI, AND MORE DISCUSSED AT IPO’S EUROPEAN PRACTICE CONFERENCE ON 2 MAY IN BASEL, SWITZERLAND

Join IPO’s European Practice Committee on 2 May in Basel, Switzerland, for a one-day conference on The Ever-Changing IP Landscape: Patents, Trademarks, and Trade Secrets in 2019 and Beyond. A panel discussion on trademarks will be moderated by ROGER LUSH (Carpmaels & Ransford LLP). The issue of trademark congestion will be presented by WOJCIECH KREFT (Novartis). NEIL WILKOF (Eyal Bressler) will discuss the impact of AI on trademark lawyers. Prof. Dr. ULRICH HILDEBRANDT (SKW Schwarz) will discuss decision-making in trademark matters. For more information and to register, visit www.ipo.org/Europe19.

USPTO PROVIDES UPDATE ON PATENTS EXTERNAL QUALITY SURVEY

In a Federal Register notice published yesterday, the USPTO indicated that it will be submitting its proposal for the semi-annual Patents External Quality Survey to the Office and Management and Budget (OMB) for clearance. “The USPTO uses the feedback gathered from the survey to assist them in targeting key areas for examination quality improvement and to identify important areas for examiner training.” The notice provides a deadline of 17 May 2019 for submission of related written comments and recommendations to OMB.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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