USPTO Releases New Subject Matter Eligibility Guidelines (35 U.S.C. § 101)
On January 4th, the USPTO released new patent subject matter eligibility guidelines (“2019 Revised Patent Subject Matter Eligibility Guidance”) to be used by its patent examiners when determining whether a patent claim is directed to subject matter that is eligible for patent protection in the United States.
Under the previous test for subject matter eligibility set forth in the 2014 Interim Guidance on Patent Subject Matter Eligibility, a claim directed to one of the four statutory patent-eligible classes (i.e., process, machine, manufacture, or composition of matter) is patent eligible if either of the following is true:
(1). The claim is not directed to a judicial exception (a law of nature, a natural phenomenon, or an abstract idea); or
(2). The claim is directed to a judicial exception, but amounts to significantly more than the judicial exception.
The new 2019 guidelines set forth an additional two-part test (referred to below as “the new test”) to be implemented by patent examiners when assessing whether a claim is “directed to a judicial exception” under the first prong of the test set forth above. These new guidelines narrow the myriad of categories that may potentially qualify as “abstract ideas” and also outline certain characteristics that may permit even these category-suspect claims to be deemed “not directed to a judicial exception” and therefore patent eligible.
Under the first prong of the new test, a claim cannot be considered “directed to an abstract idea” unless it recites subject matter pertaining to one of three qualifying categories or is otherwise approved by a USPTO Technology Center Director as being directed to an abstract idea. These three qualifying categories include (1) mathematical concepts; (2) certain methods of organizing human activity; and (3) mental processes.
The second prong of the new test provides that a claim directed to one of the above three categories may still be patent eligible provided that the claim recites one or more additional elements that integrate the judicial exception into a practical application. The new guidelines also list several considerations that may indicate that an additional claim element or combination of claim elements may have integrated a judicial exception into a practical application. These considerations listed include, without limitation:
• an additional claim element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
• an additional claim element applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
• an additional claim element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
• an additional claim element effects a transformation or reduction of a particular article to a different state or thing; and
• an additional claim element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
The USPTO’s ultimate goal with this revised guidance is to draw distinctions between claims to principles in the abstract and claims that integrate those principles into a practical application. While the complexity of applying this new approach remains uncertain, it seems likely that these new guidelines will make it more difficult for patent examiners to sustain claim rejections based on subject matter eligibility.
Congratulations Tera Smith, 2019 Super Lawyers’ Rising Star
Rick Holzer is teaching at DU Law – Spring 2019
Rick Holzer will be teaching the Patent Prosecution and Appeals course at the University of Denver, Sturm College of Law for the Spring Semester of 2019. This is Rick’s 3rd year of teaching at the Sturm College of Law.
Holzer Patel Drennan (“HPDLaw”) believes that education about intellectual property (IP) issues is important to a company’s success, such to enhance the spotting of IP opportunities and concerns and making IP decisions down the road. For example, what IP issues may arise when hiring an outside developer or designer? What do we do when we receive an infringement notice letter from another party? What do the patenting and trademarking processes cost? How much do I tell an investor or vendor about my intellectual property assets and plans? How do I enforce my IP rights?
As such, HPDLaw offers IP educational presentations at no charge to clients and non-clients, including small business organizations, universities, chambers of commerce, teacher associations, and more. With sufficient notice, HPDLaw can develop a customized IP presentation for an organization’s particular interests and concerns. Service providers, such as attorneys and accountants, have also benefited from these presentations by gaining an updated and accurate understanding of IP issues with which they can counsel their own clients.
While we do not provide specific legal advice in such presentations, we can present a clear context in which these issues and concerns can be better understood.
If you or your organization is interested in having HPDLaw present on IP topics for your organization, please contact us at firstname.lastname@example.org. We will sync up with you to see how we can help.
Vice Chair for AIPLA
Rachel Carnaggio has been selected to serve a two year term as Vice Chair of the Special Committee on Pro Bono for the American Intellectual Property Law Association. Congratulations, Rachel!
HPD Fun in the Sun with Seagate
HPD had a great day with Seagate at the Rockies game on September 13th. Here are some photos of their awesome day:
Rachel Carnaggio for STEM Denver
Congratulations to Rachel Carnaggio who has been elected to the Board of Directors of Girls in STEM Denver, a non-profit organization that provides numerous pathways for middle school and high school girls to explore various STEM industries and careers. http://www.gstemdenver.org.
If there is interest in sponsoring events or hosting and acquainting girls with STEM skills, please contact Rachel Carnaggio via phone or email: 720-204-3234, email@example.com, firstname.lastname@example.org.
Inventor’s Day: Part 1 at The University of Wisconsin – River Falls
The University of Wisconsin – River Falls welcomes independent inventors, entrepreneurs, and small businesses to learn how innovation changes lives with Elijah J. McCoy from the Midwest Regional USPTO. Please join Mara DeBoe to learn about how innovation plays a key role in our society and get a glimpse behind the scenes from the USPTO. There is no fee to attend, but space is limited. Please follow the link for more details and registration for Inventor’s Day: Part 1.
Identifying Intellectual Property and Brand Protection – Meetup Speaking Engagement
On September 25th, Rick Holzer and Judi Keene will be expert, guest speakers at a Meetup event on Identifying Intellectual Property and Brand Protection. AnythingDATA is proud to host this informative session to educate everyone from entrepreneurs to established businesses on what is intellectual property and why does it matter? Please join us! More details on the event can be found on Meetup
The Colorado Intellectual Property American Inn of Court
Chirag Patel is really excited about the beginning of this year’s programs at the Colorado Intellectual Property Inn of Court feels honored to have been elected the Vice President for this year. We’re looking forward to working with Nancy Dempsey and Cecily Winmill. https://lnkd.in/eS3wfUN
Leads By Example Networking Group
Where the belief that networking = relationship building. Mara DeBoe attended the semi-annual luncheon for the Leads By Example Networking Group at Station 280 in St. Paul, MN. Good food, good people and good contacts! Please join Mara at the next Leads By Example meeting, held every 1st and 3rd Monday of the month at the Roseville West Building, located at 2277 W. Hwy. 36, Roseville, MN 55113 in the 2nd floor Conference Room.
Small Business Planning
The Twin Cities Small & Emerging Growth Companies (SEGC) Resource Group held their monthly meeting on August 23 at 6:45 am in St. Louis Park. This month’s speaker was Ron Eckstam, who discussed how to prepare an exit plan from the company and why you should have one even if you are not planning to yet retire. Ron told about the ups and downs that occurred when selling his own business 20+ years ago. He now helps small businesses set up the basic exit plan.
USPTO visit to St. Croix Valley
The USPTO visited the St. Croix Valley Business Innovation Center in River Falls, WI on Wednesday, Aug. 22. Supervisory Examiner Gwen Blackwell and Alford Kindred, Outreach Assistant Regional Director covered “intellectual Property Basics and Local Inventor Resources” for individuals and small businesses. The USPTO discussed the resources available through the USPTO for researching, preparing and filing your trademark and patent applications. Representatives from the University of Wisconsin “WiSys” program presented what resources they have available for prototyping, app creation, marketing, and overall business guidance.
Happy 7th Anniversary to the Firm!
On July 1, 2011, HolzerIPLaw opened in some empty offices at a friend’s telecom company in the Denver Technology Center. After seven busy years and a rebranding to Holzer Patel Drennan, we are going strong and looking forward to continued growth. We are working hard to develop new practice areas and a wider range of clients and technologies. Holzer Patel Drennan is actively recruiting more valuable members to add to our amazing team. We are working with wonderful, talented people in a workplace that values all of us! Holzer Patel Drennan is well-respected in Colorado, and we are spreading our wings for more recognition and growth going forward. Cheers to the next seven years and so much more to come!
Trademark Confusion between Beer, Wine & Spirits
Beer, Wine and Liquor … oh my!
On June 12, 2018, the Trademark Trial and Appeal Board (TTAB) dismissed an opposition to the trademark registration of PIRATE PISS (for beer, ale and lager), finding that the evidence was insufficient to find a likelihood of confusion with the mark PYRAT RUM (for rum). Shortly thereafter, on June 15th, the Trademark Trial and Appeal Board found that DEAD BIRD BREWING COMPANY (for beer) was confusingly similar to DEADBIRD (for wines). In addition to other evidence, the examining attorney who first denied the application relied on 24 use-based registrations wherein both wine and beer were sold in conjunction with the registered mark. These registrations demonstrated the “relatedness” between beer and wine. Additional relatedness factors were also detailed.While the PIRATE PISS/PYRAT RUM case lacked must evidence to support relatedness, the DEAD BIRD case appeared to include sufficient evidence to support relatedness and a likelihood of confusion.The TTAB further stated that inconsistent prior decisions and actions of examining attorneys have little evidentiary value and are not binding on the Board. See the decision here.
Congratulations Rachel Carnaggio!
Mollybeth Kocialski, Director of the Rocky Mountain Regional Office of the USPTO, recognized attorney Rachel Carnaggio at the annual Rocky Mountain Intellectual Property & Technology Law Institute on June 1, 2018 for her pro bono work with ProBoPat, a program administered by Mi Casa Resource Center. Rachel prepared and filed utility patent applications on behalf of low-income inventors and was awarded a certificate from the USPTO.
Congratulations Chirag Patel and Eric Drennan!
The Colorado IP American Inn of Court Board elected a new Vice President and 7 new Board Members for the 2018-2019 term.
For the upcoming term, Chirag Patel will serve as the Vice President and Eric Drennan will serve as a Board Member. Congrats!
Rick Holzer attended the IBLC Conference in Germany
Rick Holzer attended the 2018 Spring Meeting of the International Business Law Consortium (IBLC) in Freiburg, Germany, April 12-15, 2018. The event was entitled “Freiburg – Fit for the Future” and included sessions on “Innovation and Technology Transfer at the University of Freiburg,” “Innovative Science – New Technologies that will Shape our World,” and “’Death of a Law Firm?’ – The Future of Law Firms.” The Spring Meeting was hosted by Friedrich Graf Von Westphalen of Freiburg, with 58 firms attending from 29 different countries. Rick is a Council member of the IBLC. He also chairs the IBLC Recruiting Committee and co-chairs the IBLC Intellectual Property Practice Group with his HPDLaw partner, Chirag Patel.
Second Wind Fund Gift of Life Breakfast
Rachel Carnaggio and fellow board members of the Second Wind Fund had great success hosting the Gift of Life Breakfast of April 26th, 2018. They raised $45,000 with the help of Robin Hickenlooper and other amazing speakers who contributed to a world class event. With the CO teen suicide rate spiking and referrals to the Second Wind Fund up 120% since last year, these donations will help save many children’s lives. Great work!
Copyright Claim By Monkey Dismissed, published by Judith Keene
On Monday, April 23, 2018, the 9th Circuit Court of Appeals affirmed a trial court’s dismissal of copyright infringement claims brought by a monkey who took selfies that went viral in 2011. The court ruled animals do not have standing to file copyright infringement lawsuits. While Naruto, the monkey, did not personally file the suit, the action was filed by People for the Ethical Treatment of Animals, Inc. (PETA) claiming “next-friend standing for the monkey. The court, however, stated that PETA failed to allege any facts establishing the required significant relationship and, in any case, an animal cannot be represented by a “next friend.” The full opinion can be viewed here.
David Schachter speaking on Colorado Public Radio
“Why The Google-Oracle Legal Battle Over Software Matters In Colorado”
A major court ruling that involves Google and its Android phone could affect thousands of Coloradans who work in the software industry, and many more who rely on the companies’ products. Click here to read more about David, who has followed the case, tell CPR’s Colorado Matters about the long-running legal drama: Oracle owns a programming language called Java.
Do You Conduct Business Or Process Customer Information In Europe?
As of May 25, 2018, things are going to change…..The General Data Protection Regulation (GDPR) continues to have major effects on the Internet. As of May 25, WHOIS information that is publicly accessible and available will be limited to
– the domain name,
– the owner’s organization (if any),
– the owner’s state or province and country,
– an anonymous email address or web form (for forwarding an email communication),
– name servers,
– information regarding the domain name registrar, and
– the domain’s creation and expiration dates.
There will be no real names, telephone numbers, or email addresses for direct communications with the domain name registrant. All other information will be available subject to accreditation. Stay tuned as there are not yet any “accreditation” standards. Click here to read Judith Keene’s article on the updates to The General Data Protection Regulation (“GDPR”).
Speaking Engagement and Client Development
Eric Drennan just returned from a week-long trip to China and South Korea. While traveling, Eric presented on Virtual Patent Marking and conducted numerous meetings in Beijing and Seoul. Eric’s meetings included our client’s legal counsel in China and South Korea, as well as other Chinese and Korean legal counsel.
USPTO Certificate of Volunteer Recognition – Rachel Carnaggio
At the Volunteer Appreciation event at Mi Casa Resource Center, Molly Kocialski awarded Rachel Carnaggio a Certificate of Volunteer Recognition by the US Patent & Trademark Office for donating more that 50 hours to the ProBoPat program in 2017. Congratulations Rachel!
HPD Welcomes David Schachter to the Team!
David joins the firm as Senior Counsel. He has over 36 years of experience in Intellectual Property, Corporate Law, Venture Capital, and Business and Transactional Counseling. Welcome David!
HPD Welcomes Amber Barger to the Team!
Amber is starting with us as the new Billing and Legal Administrative Assistant. She is taking over Maggie’s role while Maggie will be our new Legal Secretary. Welcome Amber!