Supreme Court Preserves District Court Challenges to USPTO Decisions

In a recent decision, the Supreme Court unanimously decided that the ability of a patent applicant to present evidence to a District Court regarding a decision of the U.S. Patent and Trademark Office (USPTO) is limited only by the general rules regarding admissibility of evidence. The Court also ruled that a District Court should review USPTO decisions where new evidence is presented de novo. A contrary view was advanced by the USPTO.

Supreme Court to Decide if Isolated Human Genes Are Patentable

The U.S. Supreme Court recently granted review of a decision by the Court of Appeals for the Federal Circuit affirming that isolated human genes are eligible for patent protection. The Court granted review of a single question:

Are human genes patentable?

Claim Term Glossaries

Anyone involved with patent prosecution or enforcement knows that the most critical aspect of patent litigation is claim construction. In plain English, claim construction means deciding precisely what the words in the claims mean. Thus, defining claim terms is critical to patent litigators and must be given careful consideration by patent draftsmen. The Public Patent Foundation published three patent claim term glossaries by Dr. David Garrod, the Foundation's Senior Litigation Counsel, free of charge. They may be viewed or download (in Adobe .pdf format) here.

USPTO Proposes Increased Patent Fees

The USPTO released their proposed fee increases for the next fiscal year. Though most of the increases are moderate, there are some significant increases:

USPTO Announces Pilot for Responses After Final Rejection

The United States Patent & Trademark Office (USPTO) announced a new test program for handling applicant response filed after a final rejection. Under current law, an applicant does not have the right to amend a patent application, including the claims, after a final rejection. Under current practice, an amendment submitted after final rejection will not be entered unless the Examiner determines that the amendment puts all claims in condition for allowance or places the claims in better condition for appeal. Despite the fact that an amendment after final could be entered, the fact is that almost all such amendments are not entered with the most common reason being that the amendment cannot be examined without further searching. For that reason, an applicant wanting to amend an application in order to obtain allowance from the Examiner without the delay and expense of an appeal must file a Request for Continued Examination (RCE).

The End of False-Marking Trolls

The recent passage of the America Invents Act (AIA) has taken the steam out of the recent frenzy of patent false-marking suits by eliminating any risk for leaving expired patent numbers on covered products. (See the text of 35 USC § 292 below). It is still a violation to falsely mark a product as patented, but the high standard for proving intent to deceive the public remains. Furthermore, so-called false-marking trolls cannot take advantage of the statute because only the United States or a party that has suffered "competitive injury" as a result of false marking can bring suit.

U.S. District Court Declares False Marking Statute Unconstitutional

Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc. (N.D. Ohio Feb. 23, 2011)

U.S. District Court Judge Dan Polster ruled that the qui tam provision of the patent false marking statute (Title 35 U.S.C. § 292) unconstitutional under the Take Care Clause of Article II. The Court concluded, in pertinent part:

Applying the Morrison “sufficient control” analysis to the False Marking statute, it is clear the government lacks sufficient control to enable the President to “take Care that the Laws be faithfully executed.” As discussed, supra, unlike the FCA, the False Marking statute lacks any of the statutory controls necessary to pass Article II Take Care Clause muster. The False Marking statute essentially represents a wholesale delegation of criminal law enforcement power to private entities with no control exercised by the Department of Justice. See Pequignot, 608 F.3d at 1363 (False Marking statute is criminal). It is unlike any statute in the Federal Code with which this Court is familiar. Any private entity that believes someone is using an expired or invalid patent can file a criminal lawsuit in the name of the United States, without getting approval from or even notifying the Department of Justice. The case can be litigated without any control or oversight by the Department of Justice. The government has no statutory right to intervene nor does it have a right to limit the participation of the relator. The government does not have the right to stay discovery which may interfere with the government’s criminal or civil investigations. The government may not dismiss the action. Finally, the relator may settle the case and bind the government without any involvement or approval by the Department of Justice.