the Supreme Court's decision on BILSKI

On Monday, 28 June 2010, the United States Supreme Court decided a case regarding the patentability of business method patents.  The case can be found at Bilski et al. v Kappos, 08-964.

The Court affirmed the Court of Appeals for the Federal Circuits rejection of a patent application regarding business method patents.

Claim 1 of the patent application recites,

"(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumers;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions."

The Court reasoned:

     In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
     The patent application here can be rejected under our precedents on the unpatentability of abstract ideas.The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

Therefore, a business method that is known to the public, is probably not patentable, even if it is integrated with a computer program, or software.

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THE UNITED STATES' MOST UNAPPRECIATED ASSET - INNOVATION

Where would the United States be today without the innovations of:

1. Thomas Edison
          Thomas Edison patented over 1000 inventions include the phonograph, the incandescent light bulb, and the motion picture;

2. Samuel F. B. Morse
          His inventions include the telegraph and morse code;

3. Alexander Graham Bell
          His inventions include the telephone in 1876;

4. Henry Ford
          The automotive industry drove the American economy since it inception;

5. George Eastman
          He invented the Kodak camera;

6. Bill Gates and Steve Jobs
          Computers.

Many important inventions were invented or best produced in the United States.  The reason is that the U.S. constitution created the structure of our government.  The limits of the government provide free enterprise to grow by the incentive and fun involved in creating and inventing, and reaping the benefits of one's creation, generally through the U.S. patent system and international patent laws.

Where would the U.S. be had the above inventions been invented or primarily developed in another country?

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WHETHER A TRANSFEROR OF TRADEMARK RIGHTS CAN STILL USE THE MARK FOR OTHER COMMERCIAL PURPOSES?

Answer:  It depends what is specifically recited in the agreement.  If the transferee (receiver of the rights) wants all commercial rights, the agreement should specify that the transferor is transferring or selling or assigning "all commercial rights" not only "trademark rights."  The case of JA Apparel v Abboud, 2010 WL 103399 (S.D.N.Y., Jan. 12, 2010), the plaintiff, JA Apparel sued Defendant Abboud because in 2007 Abboud was intending to, or did use his name for commercial purposes of selling clothing, and in 2000, the parties entered into an agreement.  In the agreement, Abboud conveyed, "all of [his] right, title and interest in ant to...[t]he names, trademarks, trade names, service marks, logos, insignias...trademark registrations and applications therefor, and goodwill related thereto."

Abboud contended that this did not include all commercial purposes of his name.  The Second Circuit Court agreed.

Lesson: If you are receiving trademark rights, it may be a good idea to include in any agreement, that the transferor is also transferring "all commercial uses of the name" or something similar.

Call Robert at 1-888-468-0444 with your patent or trademark questions.
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WHAT IS A CONTINUATION IN PART (CIP) PATENT APPLICATION?

Under the Manual of Patent Examining Procedure (MPEP) 201.08; A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. (In re Klein, 1930 C.D. 2, 393 O.G. 519 (Comm'r Pat. 1930)). The continuation-in-part application may only be filed under 37 CFR 1.53(b). The continuation-in-part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c). For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11.
A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part" of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.

The mere filing of a continuation-in-part does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.

A continuation-in-part filed by a sole applicant may also derive from an earlier joint application showing a portion only of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a joint continuation-in-part application may derive from an earlier sole application.

Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the earlier nonprovisional application is repeated in the second application in a continuation-in-part situation. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the **>other< requirements of 35 U.S.C. 120 >and 37 CFR 1.78, such as:

     (A) The first application and the alleged continuation-in-part application were filed with at least one common inventor;
     (B) The alleged continuation-in-part application was "filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application"; and
     (C) The alleged continuation-in-part application "contains or is amended to contain a specific reference to the earlier filed application." (The specific reference **>must be submitted either in the first sentence(s) of the specification or in an application data sheet (see 37 CFR 1.76(b)(5)).) See MPEP § 201.11 for more information on claiming the benefit of a prior nonprovisional application.< For notation to be put in the file history by the examiner in the case of a continuation-in-part application see MPEP § 202.02. See MPEP § 708 for order of examination. Use form paragraph 2.06 to remind applicant of possible continuation-in-part status.

¶ 2.06 Possible Status as Continuation-in-Part

This application repeats a substantial portion of prior Application No. [1], filed [2], and adds and claims additional disclosure not presented in the prior application. Since this application names an inventor or inventors named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to obtain the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78.

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CAN AN INVENTOR FILE A PATENT APPLICATION IN CANADA AFTER FILING IN THE UNITED STATES?

Yes.  However, the filing of the patent application in Canada must be within one year of first public disclosure.  To claim priority based on a previously filed United States patent application, the Canadian patent application must be filed within one year of the U.S. filing.  Also, a Canadian agent must be designated at the time of filing.  The Canadian agent is designated to receive correspondence from the Canadian Intellectual Property Office.  The format of the Canadian application is similar to the United States format, so there is usually no changes that have to be made prior to filing.

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CAN AN INVENTOR OBTAIN BOTH A DESIGN PATENT AND A UTILITY PATENT FOR THE SAME INVENTION?

Yes.  In general terms, a "utility patent" protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

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A PARTY MUST SHOW ITS ROYALTY RATE WITH SUFFICIENT EVIDENCE

On 5 February 2010, the Court of Appeals for the Federal Circuit decided ResQNet.com, Inc. v. Lansa, Inc.  The Court held that a plaintiff must present 'sufficient evidence' of its royalty rate.  Defendant has no burden to present or rebut evidence if Plaintiff has not presented at least 'sufficient evidence.'

Call Robert at 1-888-468-0444 with your questions on patent or trademark law.
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