The FTC To Agressively Pursue Pay-to-Delay Violations.

 The Federal Trade Commission (FTC) has vowed to take aggressive action after the U.S. Supreme Court ruled favorably on agency’s right to challenge so-called pay-to-delay agreements. However, it is also calling on Congress to move forward with stronger laws prohibiting such settlements.

Pay-to-delay agreements are most common in the pharmaceutical industry where brand name drug makers agree to resolve patent infringement suits against generic drug makers by paying them large financial settlements to refrain from selling the competing drugs for a specified number of years. In Federal Trade Commission v. Actavis, Inc., the Supreme Court ruled that pay-to-delay agreements could violate anti-trust laws.

According to the Court, although the anticompetitive effects of the reverse settlement agreement might fall within the scope of the exclusionary potential of the patent, this does not immunize the agreement from antitrust attack. The justices further held that courts reviewing pay-to-delay agreements should proceed by applying the “rule of reason,” rather than under a “quick look” approach, which shifts the burden to the defendant to show empirical evidence of procompetitive effects.

Going forward, the FTC plans to use the precedent to aggressively attack settlements that its sees as anticompetitive, Chairwoman Edith Ramirez told a Senate subcommittee earlier this month. However, she also voiced support for proposed legislation that would formalize the agency’s argument in Actavis. The bill, co-sponsored by Senator Amy Klobuchar (D-Minn.) and Senator Chuck Grassley (R-Iowa), would make pay-to-delay agreements presumptively illegal rather than subject to the rule of reason.

“While the rule of reason standard is an appropriate test and we intend to apply that going forward, I do believe declaring them presumptively invalid would also further help us put a stop to these types of settlements,” Ramirez said.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Guidance After The Myriad Decision.

USPTO Provides Guidance in Response to Myriad Decision

The U.S. Supreme Court recently issued its decision in Association for Molecular Pathology v. Myriad Genetics, Inc., which clarifies what types of DNA claims are patent eligible. Only a few days later, the U.S. Patent and Trademark Office (USPTO) issued preliminary guidance to its patent examining corps.

Earlier this year, tThe Supreme Court held that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.

As noted by the USPTO, “Myriad significantly changes the Office’s examination policy regarding nucleic acid-related technology.”In accordance with the Myriad decision, the USPTO advises it examiners:

As of today, naturally occurring nucleic acids are not patent eligible merely because they have been isolated. Examiners should now reject product claims drawn solely to naturally occurring nucleic acids or fragments thereof, whether isolated or not, as being ineligible subject matter under 35 U.S.C. § 101. Claims clearly limited to non-naturally-occurring nucleic acids, such as a cDNA or a nucleic acid in which the order of the naturally­occurring nucleotides has been altered (e.g., a man-made variant sequence), remain eligible.

The USPTO further added that it is closely reviewing the decision in Myriad and will issue more comprehensive guidance on patent subject matter eligibility determinations, including the role isolation plays in those determinations.

I will keep you informed of any new examination process and rule changes from the USPTO as they become relevant to you business.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Courts Agree to Disagree on Software Patents.

What constitutes a patentable software program versus what is simply an abstract concept has long plagued the field of patents.  Results from recent cases in the lower courts, where six different opinions came to different conclusions,  demonstrate the ongoing confusion.

One decision held that a concept “clothed in computer language” does not meet the requirements for patent eligibility.

Another proposed that a “practical application of this idea” via software is enough to uphold a patent.

Many hope that the Supreme Court will soon set a standard for what constitutes a patentable software program.

Because of the increasing number of cases with different interpretations on the question, attorneys believe that the Supreme Court will finally be forced to set a clear standard for this contentious area of patent law.
We all know too many cooks in the kitchen spoil the broth.  So many hope this will give the Supreme Court a reason to speak with one voice as to where the line between abstract idea and patentable invention is drawn.

Patent attorneys are optimistic that this time some clarity will be cast on this issue. A clear test will help patentees and practitioners determine where an abstract concept becomes a patentable invention.

How Can I Help?

Because of the uncertainty in software patents, it is very important to carefully craft your patent application.   While the courts can only agree to disagree, until the Supreme Court sets a clear standard, a well drafted patent application still provides the best protection for your software invention.  So please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

RECAP: Supreme Court Decision in Bowman vs. Monsanto

The U.S. Supreme Court’s decision in the closely-watched patent case, Bowman vs. Monsanto addressed the doctrine of patent exhaustion, which eliminates the right to control or prohibit the use of an invention after an authorized sale.

Bowman, the soybean farmer who purchased Roundup-resistant soybean seeds patented by Monsanto from a grain elevator, argues that once Monsanto sells a particular seed, its patent protection expires. Meanwhile, Monsanto contends that Bowman’s use of its patented seeds to create new seeds constitutes patent infringement. The case is novel because the seeds by their very nature are intended to self-replicate.

During oral arguments, the justices appeared concerned about the implications of siding with Bowman. As Justice John Roberts questioned, “Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want?”

The justices also appeared to agree with Monsanto that any replanting of the patented seeds constitutes infringement. “You can use the seed, you can plant it, but what you can’t do is use its progeny unless you are licensed to, because its progeny is a new item,” Justice Sonia Sotomayor said.

Although the Court’s ruling was narrow in scope and made the impact of the case very small (specifically the Court avoided setting a broad legal precedent), the implications of the decision will likely be felt outside of the agriculture industry. For instance, the Court’s decision on the doctrine of patent exhaustion may also impact the software and biotechnology industries, which also rely on self-replicating inventions.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Hold The Mayo!

The U.S. Patent and Trademark Office has issued interim guidance for use in subject matter eligibility for patent applications that involve laws of nature/natural correlations.  The guidelines come in the wake of the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Mayo).

Seal_of_the_United_States_Supreme_Court.svg

According to the USPTO, “The Office is issuing this guidance as an interim measure to provide instruction to examiners in technology areas impacted by the Mayo decision while pending cases at the Federal Circuit are reheard in view of Mayo.  While Mayo has provided additional details for the eligibility analysis…, the Office believes that the prudent course of action is to wait for resolution of these cases before issuing comprehensive updated guidance.”

The patent examination procedure set forth in the guidance consists of three “essential” inquiries:

1. Is the claimed invention directed to a process, defined as an act, or a series of acts or steps? If no, this analysis is not applicable.  If yes, proceed to Inquiry 2.

2. Does the claim focus on use of a law of nature, a natural phenomenon, or naturally occurring relation or correlation (collectively referred to as a natural principle herein)? (Is the natural principle a limiting feature of the claim?) If no, this analysis is complete, and the claim should be analyzed to determine if an abstract idea is claimed. If yes, proceed to Inquiry 3.

3. Does the claim include additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, and are sufficient to ensure that the claim amounts to significantly more than the natural principle itself? (Is it more than a law of nature + the general instruction to simply “apply it”?) If no, the claim is not patent-eligible and should be rejected. If yes, the claim is patent eligible, and the analysis is complete.

While the guidance offers useful insight into how patent examiners will analyze claims in light of the Mayo decision, this area of law is expected to continue to develop.

How Can I Help?

If you need help to with a patent or patent application, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

Supreme Court Revisiting Copyright Protections for Reselling “Gray Market” Goods.

The U.S. Supreme Court is still working on the issue of whether copyrighted works purchased overseas can be resold in the U.S., without the permission of the copyright owner.  The Court previously considered the issue in 2010, but ultimately split 4-4 after Justice Elena Kagan recused herself.

The current case, Kirtsaeng v. John Wiley & Sons, involves a Thai textbook dealer who purchased textbooks overseas and sold them to fellow students to help finance his education.  Following a copyright infringement lawsuit by publisher John Wiley & Sons, the student was ordered to pay damages in the amount of $600,000.  The verdict is now being challenged before the Supreme Court.

The case is expected to have wide implications.  Textbooks are just one of the products sold in the growing “gray market.”  According to the Washington Post, discount sellers such as Costco and Target and Internet retailers eBay and Amazon all benefit from a $63 billion annual market for goods that are purchased abroad, then imported and resold without the permission of the copyright holder.

Other courts have reached different conclusions regarding whether the “first-sale doctrine” applies to gray market goods. The first sale doctrine entitles the owner of a lawfully made work to resell the work without the authorization of the copyright owner.  Courts, including the Ninth Circuit Court of Appeals, have previously held that the first-sale doctrine applies only to goods made in the United States.  However, the courts that have confronted the question have also acknowledged that the issue is not clear-cut because the Copyright Act also prohibits the importation of copyrighted goods without the authority of the copyright owner.

Currently, the Court heard oral arguments on October 29th.  A verdict should be released in the spring of 2013.

How Can I Help?

If you need help to copyright your work, file a patent or a trademark, foreign or domestic, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman