Cleaning Up The Patent Eligibility Muck: A Welcome Proposal by The AIPLA

On Friday the American Intellectual Property Law Association (AIPLA) released a much needed legislative proposal to hopefully clean up the muck currently polluting patent (in) eligibility inquiries.  Under current U.S. “law”, the courts have made a muddled mess of patent eligibility (under the relevant statute 35 USC š 101).  And, in so doing, they have cast doubt over the patentability of most e-commerce and/or software inventions.

In short, the Courts have created an “abstract” idea exception to patent eligibility that is so broad, so subjective that few inventions could survive it. And the courts (and Patent Office) have long since disappeared into that un-navigable swamp.  We welcome the AIPLA proposal to clean up this court-created mess.  See: http://www.aipla.org/resources2/reports/2017AIPLADirect/Documents/AIPLA%20Report%20on%20101%20Reform-5-12-17.pdf.

This Blogger supports the proposed eligibility exception which states that a claimed invention would be ineligible “…only if the claimed invention as a whole exists in nature independent of and prior to any human activity.”  Restricting ineligibility inquiries to inventions that exist independently of AND (CAPS Intentional) prior to human activity seem like good ideas.  The proposed prohibition against courts (and the Patent Office) mucking about in prior art and drafting-related inquiries (under 35 USC šš 102, 103, and 112) should further limit the reach of the courts during eligibility examinations. And the strongly restrictive term “only” ought to serves as a long overdue admonition against the courts dragging potentially worthy ideas through the "abstract" idea mud.   

We shall see.  

The only improvement to the proposal that this Blogger would like to see is a safe haven for applications that were pending when (in hindsight) this court-created mess became intolerable.  While such a safe haven would be unusual, so too has been the resulting whole scale destruction of IP rights under the current so-called law.  

We at the Villhard Patent Group would welcome a chance to discuss your idea.  You can find more information about us at www.villhard patents.com or you can call us at (512) 897-0399.  We look forward to hearing from you.

Unpatentability Creep: Yet Another Way to Fall into the Publicly Announced Sales Pitfall

On occasion an Entrepreneur will have the good fortune (or marketing skill) to make a sale before having completely worked out how to make their invention work.  In other words they might pre-sale their product/service.  Under current U.S. law, that is now a potential problem.

As we discussed previously, publicly announcing a sale of a product/service incorporating an otherwise patentable idea can render that idea unpatentable.  While the Helsinn decision (see our last posting) did reiterate the requirement that an invention must also be ready for patenting (the Inventor knows enough about it to make it work), the Helsinn decision could nonetheless be an issue in the real world.

This result is so because Entrepreneurs are geared to sell their products.  Additionally, the marketing and research and development (R&D) teams might be somewhat ignorant of each other’s activities.  Thus, it could happen, that marketing might make a pre-sale while R&D still has work to do before understanding the invention well enough to meet the “ready for patenting” standard.  And, of course, both a "public" sale (or perhaps just an offer) and the ready for patenting condition must be present before triggering the offer-for-sale rule.  

But, once that pre-sale has occurred AND (CAPS intentional) is announced AND the invention becomes ready for patenting, that combination triggers the offer-for-sale bar on patentability.  This Blogger’s concern is that the combination of these factors could creep up on many Entrepreneurs.   

To guard against this “unpatentability” creep, Entrepreneurs should examine their marketing and R&D efforts and plans (in conjunction with one another) to ensure that before all three conditions become present that the Entrepreneur has at least filed a provisional patent application.  And that monitoring should occur on an ongoing basis as these efforts unfold and as the related planning documents evolve.

We at the Villhard Patent Group would welcome the opportunity to discuss your ideas and related marketing and R&D efforts with you.  To find more information about us, please visit www.villhardpatents.com or call us at (512) 897-0399.  You can also write us at contact@villhard patents.com.  We look forward to hearing from you soon.

New Patentability Pitfall: Publically Announced Sales/Offers

Entrepreneurs now have a new pitfall to avoid in trying to obtain a patent.  Namely, if they publicly announce a sale of a product/service incorporating an otherwise patentable idea, that public announcement of the sale (not the idea) now operates to instantly invalidate any subsequently filed patent application.  

 

This result occurs whether details of the idea were disclosed or were held secret/private.  Presumable, even a mere offer to sell the product would also be instantly fatal if announced publicly.  For those interested see: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (decided May 1, 2017).  In Helsinn, the patent owner publicly announced a sale of their product in an SEC filing while withholding certain key details of the underlying invention.  Yet, this decision rendered the patents at issue invalid under the on-sale bar rule.

Thus, it would seem that maintaining secrecy about a sale would prevent application of the fatal on-sale-bar rule to an otherwise patentable idea (provided that the idea remains secret).  While the panel that decided this case did state that their decision was a narrow one, this Blogger fears that this case will be read broadly.  And that it will come to stand for the proposition that all sales and/or offers will invalidate subsequently filed patent applications whether the sales are publicly announced or not.  Indeed, this Blogger has already seen one blog (less than 48 hours from the decision) that stated just that.  

Accordingly, Entrepreneurs should avoid 1) publicly disclosing their ideas AND (CAPS INTENTIONAL) 2) publicly announcing any sales or offers that they might make before filing their patent application.  Instead, Entrepreneurs should file at least a provisional patent application before making any offer (or sale) involving a potentially patentable idea.  Of course, this strategy was a good approach before Helsinn and is even more important to apply now.   

We at the Villhard Patent Group would welcome an opportunity to discuss your ideas with you.  You can find more information about us at www.villhardpatents.com.  Or you can call us at (512)-897-0399.  We look forward to hearing from you.