PATENTS

THE EUROPEAN COURT OF JUSTICE HOLDS INVENTIONS INVOLVING HUMAN EMBRYONIC STEM CELLS TO BE UNPATENTABLE
On October 18, 2011, the European Court of Justice handed down a significant ruling regarding the patentability of inventions involving human embryonic stem cells. For more on "THE EUROPEAN COURT OF JUSTICE.. please click here.

THE NEW IMPORTANCE OF PROVISIONAL PATENT APPLICATIONS
Under the recently enacted America Invents Act, the United States patent laws are transformed from a first to invent system to a first inventor to file system. Also, with limited exceptions, the United States will now apply an absolute novelty standard for patentability. These are the most significant revisions in the history of the U.S. patent laws. For more on "HE NEW IMPORTANCE OF PROVISIONAL PATENT APPLICATIONS; please click here.

SUMMARY OF CHANGES TO BE IMPLEMENTED IN THE NEW PATENT ACT
Congress has recently passed the America Invents Act, which revises the current U.S. patent laws (1) to transform from a first to invent system to a first inventor to file system; (2) to impose an absolute novelty bar with respect to third party activities; and (3) to provide post-grant opposition proceedings.  At present, it is unclear whether the first inventor to file provisions will be found to be constitutional by the Courts.  The Constitution empowers Congress to pass laws to issue patents to "inventors."  For over 200 years, Congress and the Courts have construed the term "inventor" as the "first and true inventor," not the first inventor to file a patent application. Whether the new law will be upheld is beyond the scope of this summary.  For more on "SUMMARY OF CHANGES TO BE IMPLEMENTED IN THE NEW PATENT ACT; please click here.

FILING OF PATENT INFORMATION DISCLOSURE STATEMENTS IN LIGHT OF THERASENSE
Assuming that Therasense is not overturned or modified by the U.S. Supreme Court, an applicant for a patent henceforth has a duty to disclose to the PTO prior art references or information, or to correct previous representations made to the PTO, only if the applicant believes that the PTO would not allow a claim if it became aware of the undisclosed prior art/information or correction. Nevertheless, applicants may still wish to submit references, information, or corrections which third parties may later contend are particularly relevant, such as category "x" documents in foreign search reports, in order to forestall inequitable conduct charges from being raised in future litigations involving the patent.   For more on "STATEMENTS IN LIGHT OF THERASENSE; please click here.

CAFC decision: Association for Molecular Pathology v. Myriad Genetics
The Court of Appeals for the Federal Circuit holds that claims to isolated DNA molecules are patentable, but claims to methods of screening which involve only "comparing" and "determining" steps do not satisfy 35 U.S.C. § 101.   For more on "CAFC decision; please click here.

Activity Outside the United States Can Infringe a United States Patent
NTP, Inc. v. Research in Motion, Ltd. ("Blackberry Case")
Users of the popular BlackBerry wireless messaging service might be following news about that lawsuit against its provider, Research in Motion ("RIM"), and might be aware that the District Court judge presiding over the case will soon decide whether to shut down the system entirely. What might be less widely appreciated, however, is that RIM was found liable for infringing a United States patent even though a critical component of its messaging system is located not in the United States, but in Canada.  For more on "the RIM Blackberry Case" please click here.

Are Isolated Human Genes Patentable? Association for Molecular Pathology et al. v. United States Patent and Trademark Office et al.
By Harry K. Ahn and Theodore J. Pierson
In a highly anticipated decision, federal district court Judge Robert W. Sweet on March 29, 2010 surprisingly held that human genes that have been isolated from its natural form do not qualify as patentable subject matter despite the fact that the U.S. Patent Office has already issued patents covering approximately 2,000 isolated human genes.  Association for Molecular Pathology et al. v. United States Patent and Trademark Office et al., No. 09-Civ-4515 (S.D.N.Y.) ("AMP case").  For more on "Are Isolated Human Genes Patentable?" please click here.

Possession is Everything in the En Banc Review of Ariad v. Eli Lilly
by Jeffrey A. Schwab and Charles S. Stein
On March 22, 2010, the Federal Circuit, sitting en banc, confirmed that the first paragraph of 35 U.S.C. § 112 has two distinct requirements: a written description requirement and a separate enablement requirement. The written description's purpose, according to the Federal Circuit, is to ensure that the claims are not overbroad when compared to the description presented in the specification. The description needs to establish that an "inventor had possession of the claimed subject matter as of the filing date." For more on "Possession is Everything" please click here.

U.S. Supreme Court Clarifies Test of Obviousness Making Patent Challenges Easier and the Obtaining of Patents More Difficult
by Jeffrey A. Schwab
Patent prosecution is likely to be more challenging and accused infringers are likely to be emboldened in view of the April 30, 2007 decision by the Supreme Court of the United States in KSR International Co. v. Teleflex Inc., et al., relating to the manner in which the obviousness bar to patentability is assessed.  For more on "Test of Obviousness in Patents" please click here.

United States - The Bilsky Decision
United States - Both Words And Deeds Matter: The Federal Circuit Solidifies Patent Law Regarding Limiting Claims By Amendments
United States: Cow Power? Generating Electricity from Organic Waste
United States: Patent Fee Increases At The Patent And Trademark Office
United States: Patent Tying And The Antitrust Laws
What's Cooking In The Federal Circuit? Part I: The Invalidity Of A "Meat Browning" Patent Is Upheld… But Anti-Trust? - Where's The Proof
What's Cooking In The Federal Circuit? Part II: The Invalidity Of A "Meat Browning" Patent Is Upheld. But What Does "Golden Brown" Mean?

TRADEMARKS AND UNFAIR COMPETITION

COPYRIGHTS

Barclays Capital, Inc. v. Theflyonthewall.com, Inc.
Canada: Originality and the Fair Dealing Clause

DOMAIN NAMES AND OTHER INTERNET MATTERS

New gTLD Program
LAUNCH OF .XXX sTLD
.PRO: Registration Extended to Accredited Professionals in Canada, Germany, and the United Kingdom
Dominica: Registration of .dm Domain Names Possible
European Union: Status of .EU
European Union: Status of .EU Domain Space
Hungary: Registry Opens to European Union Citizens and Entities
India: Opens Domain Name Spaces
Macedonia: Domain Registry Opens
Northern Mariana Islands: Registration of .mp Domain Names Possible
Palau: .PW Opens for Domain Name Registrations
Puerto Rico: Introduces Four New Extensions
Singapore: Registration of Domain Names in the .SG Domain Space Now Possible
Slovenia: Domain Registry Becomes Unrestricted

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