US Patent Cases Weekly Update November 18th November 25th, 2014

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

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Enforcement of Patent rights in a country of transit

Introduction

A foreign vessel, aircraft or land vehicle might be using a technology or carrying a product that might be protected by patent(s) in a country through which it might transit, whereas the technology or the product might not be protected in a country of origin or destination. Understanding enforcement of patent rights at the country of transit in such scenarios is of importance to parties engaged in international trade.

Patent infringement concerning inventions used in foreign vessel which is on transit  

In the above discussed scenario, if a foreign vessel is using an invention, protected by patent in India, comes to India either temporarily or accidentally then the patent rights in India are not infringed, as long as the invention is used in the body of the vessel or on board the vessel only for its actual needs. Similarly, as long as a foreign aircraft or land vehicle uses an invention in its construction, working, or as accessories, the foreign aircraft or land vehicle is not deemed to be infringing patent rights in India. Section 49 of the Indian Patents Act, 1970 provides the provisions being discussed.

Section 49

Patent right not infringed when used on foreign vessels etc., temporarily or accidentally in India. – (1) Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a person ordinarily resident in such country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention –

(a)                    In the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or

(b)                    In the construction or working of the aircraft or land vehicle or of the accessories thereof, as the case may be.

(2) This section shall not extend to vessels, aircrafts or land vehicles owned by persons ordinarily resident in a foreign country the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in the ports or within the territorial waters of that foreign country or otherwise within the jurisdiction of its courts.

It shall be noted that India extends the above discussed provisions only to vessels, aircrafts or land vehicles owned by entities ordinarily resident in those countries that extend similar provisions to vessels, aircraft or land vehicle owned by entities ordinarily resident in India.

In the above discussed provisions and similar provisions in several other countries, the meaning of the word “temporarily” has the potential of being disputed, and the is apparent in Cali v. Japan Airlines. 

In Cali v. Japan Airlines (1974), the United States District Court New York construed the word “temporarily” as:

"Temporarily," then, could not sensibly mean any less than entering for the purpose of completing a voyage, turning about, and continuing or commencing a new voyage.

In National Steel Car, Ltd. v. Canadian Pacific Railway, Ltd. (2004), the United States Court of Appeals for the Federal Circuit construed the word “temporarily” as:

"In conclusion, we hold that the definition of entering "temporarily," as: the word is used in section 272, is entering for a period of time of finite duration with the sole purpose of engaging in international commerce…If the cars are entering the United States for a limited time — that is, they are not entering permanently — and are entering only for the purpose of engaging in international commerce — that is, they are entering to unload foreign goods and/or to load domestic goods destined for foreign markets — they are entering "temporarily" for the purposes of section 272 regardless of the length of their stay within the jurisdiction of the United States."

In the case of Rolltrailer, a German court stated that for a stay to be considered non-temporary it would have to be of “at least several months.”, which was based on German domestic law relating to motor vehicles that considers a stay of up to one year to be temporary.

Two very notable cases that were responsible for the establishment of exemption from infringement of patent in the scenario being discussed are Caldwel v. Vanvlissengen and John brown v. Duchesne.

Caldwel (Plaintiff) v. Vanvlissengen (Defendant) in 1851:

A plaintiff had a patent on screw propeller in England. A Dutch based ship was a regular visitor to England, and was alleged to have employed the screw propeller for which the plaintiff held the patent rights in England. The English court was requested to grant an injunction against the defendants by the plaintiffs. The defendants squabbled for a fact that they were oblivion about the plaintiff’s English patent on propeller and plaintiff’s held no corresponding patent in Holland where the ship was built. The defendants emphasized the importance of propeller as it would aid in transportation of ship and an injunction would impediment the trade between Holland and England. The English court granted injunction against defendant, the owner of the Dutch based ship. The English court suggested that if policy considerations dictated a different result then it was upon the legislature to change the law.

In response to the English court ruling, the parliament overruled the court decision legislatively by amending the patent law to add an exception to foreign vessels from infringement liability when they are in English waters.

John brown (Plaintiff) v. Duchesne (Defendant) in 1856:

The defendant was held for infringement of a patent which the plaintiff had obtained for an improvement in constructing the gaff of sailing vessels. The plaintiff alleged that the defendant has used the improvement at Boston without his consent. The defendant demurred that the improvement in question was used by him in the schooner that was built in France, and owned and manned by French subjects. At the time of the alleged infringement, the schooner was upon a lawful voyage, under the flag of France; and that the gaffs he used were placed on the schooner at or near the time she was launched by the builder in order to fit her for sea. The defendant further mentioned that the improvement in question had been commonly used in French merchant vessels for more than twenty years before his vessel was built and it was a well-known common property of every French subject long before the plaintiff obtained his patent.

The question that arose in the court was:

“whether any improvement in the construction or equipment of a foreign vessel, for which a patent has been obtained in the United States, can be used by such vessel within the jurisdiction of the United States, while she is temporarily there for the purposes of commerce, without the consent of the patentee?”

Judgement by the court:

The court are of opinion that the rights of property and exclusive use granted to a patentee does not extend to a foreign vessel lawfully entering one of our ports; and that the use of such improvement, in the construction, fitting out, or equipment of such vessel, while she is coming into or going out of a port of the United States, is not an infringement of the rights of an American patentee, provided it was placed upon her in a foreign port, and authorized by the laws of the country to which she belongs.

It may be noted that a decision in favour of the plaintiff would confer political rights to the patentee and would interfere with legislation of Congress when exercising its constitutional power to regulate commerce.

Article 5ter:

Caldwel v. Vanvlissengen and John brown v. Duchesne cases had caught attention at international level and thus led to the revision of Paris convention for the insertion of article 5ter at The Hague on November 6, 1925.

Article 5ter:

In any country of the Union the following shall not be considered as infringements of the rights of a patentee:

(i) the use on board vessels of other countries of the Union of devices forming the subject of his patent in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of the said country, provided that such devices are used there exclusively for the needs of the vessel;

(ii) the use of devices forming the subject of the patent in the construction or operation of aircraft or land vehicles of other countries of the Union, or of accessories of such aircraft or land vehicles, when those aircraft or land vehicles temporarily or accidentally enter the said country.

It shall be noted that the above provision is extended to vessels, aircraft or land vehicles from a contracting member country, and have visited another contracting member country of Paris convention either temporarily or accidentally.

Patent infringement concerning consignment in transit  

While we have so far discussed about the use of patented invention for the actual needs of the foreign vessel, utilization of patented invention for construction, operation or accessories of the foreign aircraft and land vehicles, the questions pertaining to carrying consignments having patent protection which is of no functional value for the working of vessel, aircraft and land vehicles arise.

In the year 2008, the Dutch customs seized a drug consignment sent by Dr Reddy’s Laboratories Ltd. (DRL) from India, which was on its way to Brazil. DRL consignment had the drug “Losartan”, which was a generic drug. A patent covering Losartan was held by US-based company, DuPont in Netherlands.

The Dutch custom officials followed Council Regulation (EC) No 1383/2003, which sets out conditions and measures to be taken against goods that are suspected of infringing certain intellectual property rights when such goods are entered for release for free circulation, export or re-export. Many other generic drug consignments during its transit through Netherlands were seized, and subsequently concerns were raised by countries of provenance and destination which were affected by the detention of generic medicines during its transit through European Union (EU).

In 2012, the European Commission issued guidelines concerning the enforcement by EU custom authorities of intellectual property rights with regard to goods, in particular medicines, in transit through the EU.

Shipments of medicine which does not have patent protection in the country of provenance and destination, but transit through EU territory, where the medicine has patent protection, the medicine does not infringe patent rights during its transit through EU territory.

“….it is understood that the mere fact that medicines are in transit through the EU territory, and there is a patent right applicable to such medicines in the EU territory, does not in itself constitute enough grounds for customs authorities in any Member State to suspect that the medicines at stake infringe patent rights.”

If there is any evidence that the shipments of medicine which does not have patent protection in the country of provenance and destination, but transit through EU territory and divert the medicines onto EU market, where the medicine has patent protection, then the medicines infringe patent rights during its transit through EU territory.

“It is further understood that a situation in which medicines are in transit through EU territory, and there is adequate evidence that satisfies the customs authorities that there is a substantial likelihood of diversion of such medicines onto the EU market, may constitute enough grounds for customs authorities to suspect that the medicines at stake infringe patent rights.”

Conclusion:

The most significant reason for providing certain exemptions to foreign vessels, aircrafts and land vehicles from patent infringement is to facilitate international trade and commerce. Lack of such exemptions would grant a patentee exhaustive rights which may impediment governments’ relation with foreign nations pertaining to trade and commerce.

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Patent Office India Published Patent and Design registration Information November 21st, 2014

Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

Data sourced from Indian Patent Office by Team InvnTree.

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The publication includes published patent applications, design registration and granted patents, among other information, for the week of  November 21st, 2014

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Duty of disclosure in a patent application

Quite often patent applicants are hesitant in revealing in their patent application, prior art references that may have an adverse impact on the patentability of their patent application. Further, some of the applicants may reveal such references while filing an application, however, they may ignore informing the patent office any additional relevant references that they may come to know of after filing the patent application but before the patent is issued. Failure to reveal relevant prior art references that the applicant is aware of to the patent office can have an adverse impact on the validity of a patent that was obtained by concealing such information.       

The Duty

The US patent law obligates individual associated with the filing and prosecution of a patent application to disclose information material to patentability of the patent application. 

37 C.F.R. 1.56   Duty to disclose information material to patentability.

 “…Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability…”

The duty to disclose applies to individuals associated with the filing and prosecution of a patent application, which may include the inventor(s), each attorney or agent, and every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the assignee or anyone to whom there is an obligation to assign the application. Additionally, individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.

All information “material to patentability” includes prior art such as patents and publications, information on enablement, possible prior public uses, sales, offers to sell, derived knowledge, prior invention by another, inventorship conflicts and so on. The duty applies only to the one or more claims pending in the application and not the claims that have been cancelled or withdrawn from consideration. The duty to disclose is an ongoing obligation and continues until a patent is issued or abandoned. 

Materiality applies to any information that an examiner would be likely to take into account in deciding whether to allow an application to issue as a patent. Any information that may be cumulative to something already being cited or submitted to the USPTO may not qualify as “material to patentability”, and hence may not be disclosed.

Dilemma

Sometimes, such individuals may face conflicts in deciding whether a piece of information that he has would be considered material information. Actually what information is considered “material” for an application in question is sometimes difficult to determine. But as the saying goes “better safe than sorry”, hence any piece of information that is likely to put the individual under confusion in determining whether the information is “material” may be submitted so as to avoid regretting later, unless the information is cumulative information.

It may be noted that “material information” may include references cited in search reports of foreign patent offices with respect to counterpart applications. Such prior art is material where it has been used in rejecting the same or similar claims in the foreign application or where it has been identified as relevant. Apart from relevant prior art, material information that may be of interest to the patent office can be one or more among co-pending US Patent Applications, information from related litigation, if any, and information relating to claims copied from another patent.

How and when should the information material to patentability be disclosed to the Patent Office?

Any individual associated with the filing or prosecution of a patent application can disclose relevant information to the USPTO by submitting an Information Disclosure Statement (IDS). As mentioned earlier, since the duty to disclose is an ongoing process, multiple Information Disclosure Statements may be filed for a single application, at various stages from the date of filing and

a)    within 3 months of the filing date of the national application or before the mailing date of a first Office action, whichever is later.

b)   after (a) and before the mailing of a final Office action, a Notice of Allowance.

c)    after (b) and before the issue fee is paid.

It may be noted that, other than the provision presented in (a), a fee will have to be paid of the IDS is submitted in accordance with any of the remaining provisions.

The IDS may include a list of relevant US patents, publications and applications, legible copies of each foreign patent, each publication or the portion which caused it to be listed and non-patent literature. A concise explanation of the relevance, as it is understood by the individual most knowledgeable about the content of the information should be included for any information that is not in English language. A copy of the English-language translation of a non-English-language document, or portion thereof must be disclosed.

Consequences

An individual should always act in compliance with the duty of candor and good faith in dealing with the USPTO, failing which the individual may be charged with engaging in inequitable conduct or practicing fraud on the Patent and Trademark Office. No patent is granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. For any patent that was granted but later held for inequitable conduct, all claims of such a patent are held unenforceable.

However, to prove inequitable conduct due to failure to disclose, proper evidence is necessary to establish failure to disclose material prior art with intent to mislead. Where intent to mislead is clear, fraud may be found to exist, otherwise not.

The duty of disclosure also applies to the patent owner during reexamination proceedings. That duty is a continuing obligation on the part of the patent owner throughout the proceedings. However, “fraud,” “inequitable conduct,” or “violation of duty of disclosure” are not considered in the reexamination proceedings. 

The consequences and interpretation of the duty of disclosure can be understood from the proceeding of the below listed cases.

Case 1: Apotex Inc. v. UCB, Inc

The Federal Circuit affirmed a finding of inequitable conduct and held a patent unenforceable.

Apotex (plaintiff) held a US patent 6,767,556 (’556) which issued on July 27, 2004, from an application that claimed priority to a Canadian application filed on April 5, 2000. Dr. Bernard Charles Sherman, founder and chairman of Apotex was the sole inventor of the ’556 patent. Apotex filed suit on April 20, 2012, accusing UCB (defendant) of infringing the ’556. U.S. Patent No. 4,743,450 (’450 patent), was a prior art to Dr. Sherman’s patent. Further, interestingly two of Apotex’s products Univasc and Uniretic were produced using the process claimed in ‘556, even before the patent application was filed; however, the instant information was concealed. During prosecution before the USPTO, the ’556 patent received three obviousness rejections. After the final rejection, at the direction of Dr. Sherman, his counsel submitted the expert declaration of Dr. Michael Lipp, who reinforced the representations regarding the prior art (the ’450 patent and the Gu article).

On a three day bench trial, the district court found that Dr. Sherman was aware that Univasc was made according to his claimed process before the’556 patent, but concealed this knowledge from the PTO, and misrepresented the nature of Univasc and the prior art through his counsel’s arguments and Dr. Lipp’s declaration. The district court found that Dr. Sherman made several misrepresentations to the PTO regarding the prior art and lied in the ’556 patent application by including certain examples of experiments that were never conducted, which he later admitted. The district court further concluded that Dr. Lipp was only hired to add legitimacy to Dr. Sherman’s misrepresentations. The district court concluded that Dr. Sherman intentionally violated his duty of candor by making repeated misrepresentations to the PTO during prosecution of the ’556 patent. The district court therefore held the ’556 patent unenforceable due to inequitable conduct. The Federal Circuit found evidence that Dr. Sherman directly instructed his counsel to bolster their arguments against the PTO through an expert declaration. The federal Circuit affirmed that the district court did not err in finding that Dr. Sherman knew, or at least had a strong suspicion, that he was seeking to patent the very same process used to obtain an already existing and widely available drug. Hence the Federal Circuit affirmed the judgment of the District Court in favor of the defendants.

Case 2: Santarus, Inc., v. Par Pharmaceutical, Inc,

Plaintiff, Santarus, Inc. was the exclusive licensee of the patents that were for the inventions of Dr. Jeffrey Phillips, assigned to the University of Missouri. Par Pharmaceutical, the defendants, filed an Abbreviated New Drug Application (ANDA) for FDA approval to sell a generic counterpart of the Santarus products requesting permission to market the same formulations describing Par’s products as bioequivalent to the products marketed by Santarus. Santarus charged Par with infringement for which Par asserted unenforceability and invalidity of all of the claims of the Phillips’ patents. While this case uncovers several grounds for invalidating the claims, in this decision we shall not go into the details of the other grounds, only a brief discussion on the ground of “inequitable conduct”, will be presented. Each of the Phillips patents in question was a continuation or continuation-in-part in a chain that originated with Patent No. 5,840,737 (the ’737 patent) filed on January 4, 1996. Par argues that the Phillips patents are unenforceable due to inequitable conduct by Dr. Phillips, the University of Missouri, and their attorneys, on the ground that they failed to inform the PTO that Dr. Phillips administered a medication disclosed in the patents to some hospital patients and recorded the test results in hospital records, before the filing date of his first patent application. However, the test information and report had been provided to the PTO only during the prosecution of the continuing application. Dr. Phillips testified that he believed that only sale and public use were required to be disclosed to the PTO and not his experimental administration to patients, and that he had not intentionally withheld information or delayed its disclosure to the PTO. The district court found that the evidence presented was not sufficient to establish that Dr. Phillips acted with an affirmative intent to deceive because the accused infringer could not prove that the patentee acted with the specific intent to deceive the PTO. The decision of the district court was affirmed by the Federal Circuit.

Provision made in the Indian Patent Act

The Patents Act, 1970, of India has a similar provision under Sec 8, which states that an applicant of an Indian patent application shall provide “detailed particulars” about patent applications filed outside India (foreign applications) for the same or substantially same invention. Such “detailed particulars” will have to be submitted as long as those foreign applications are filed by the applicant, or by any person deriving title from him or by any person through whom he derives title. The Controller is empowered to seek such information corresponding to the foreign applications at any time during the prosecution of the Indian patent application. The applicant should file the statement and undertaking within 6 months of filing the Indian patent application or when foreign applications are filed subsequent to filing of the statement and undertaking, then detailed particulars of such applications shall be filed within 6 months of such filing. The Act, however, does not clarify what information falls within “detailed particulars”. General practice suggests that “detailed particulars” relate to details corresponding to filing of patent application, grant of patent, issuance of examination report, response to examination report, amendment of specification and objections to grant of patent, among others. The details of this provision in the Act can be accessed here.

Duty of Disclosure under the European Patent Office

The European Patent Office also has the provision of “duty to disclose” under Article 141, which requires the applicants to disclose results of any official searches/examinations carried out on priority applications. The EPO requires the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. 

Conclusion

The burden to disclose relevant prior art to patent offices varies from one country to another. The US seeks a large spectrum of prior art to be disclosed, as opposed to India or the EPC. However, the negative consequences of not complying with the discussed duty of disclosure can be far reaching in most of the countries. Hence, individuals applying for patents should comply with their duty of disclosure.       

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Software innovations: Patent or Copyright ? What should you file!

Computer software or programs are instructions that are executed by a computer. These are in the form of source codes and object codes, which take a lot of skill, time and labor to develop them. Computer programs have a market value and hence can be copied and used by unauthorized persons. These should hence be protected under a strict legal regime. Software can be protected under copyright law, and inventions related to software may as well be protected under patent law.

PROTECTION UNDER COPYRIGHTS:

The Copyright Act of India was amended to include 'computer program' as 'literary work'. Further, Section 2(ffc) of the Act defines 'Computer program' as a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result. Hence, software program can certainly be protected under Copyright law.

An example of software program registered as copyright in India is the copyright granted to the Hindi to Punjabi Machine Translation Software developed by Dr. Vishal Goyal and Dr. G.S.Lehal, from the Punjabi University Patiala.

Copyright protection extends for author’s lifetime plus 60 years. Hence, protecting software program under copyright law (which in any case is automatic) may arrear to be attractive. However, it has to be noted that copyright protects expression of an idea and not the idea itself. Hence, in the case of software programs, it is the software program that is protected, and not the functionality of the software programs. Hence, it may not be a good idea to rely solely on copyright law to protect software related invention. One may wish to explore the option of protecting software related inventions using patents.

PROTECTION UNDER Patents:

A software patent is defined by the Foundation for a Free Information Infrastructure (FFII) as being a "patent on any performance of a computer realized by means of a computer program". While The Indian Patent Act allows a new product or process involving an inventive step and capable of industrial application to be patentable, it also provides a list of subject matter that cannot be patented. Section 3 of the Act lists down subject matter that cannot be patented, and Section 3(k) specifically states that “computer program per se” is not a patentable subject matter. 

Most countries place some limits on the patenting of invention involving software. For example, U.S. patent law excludes "abstract ideas", and this has been used to refuse some patent applications involving software.

In Europe, "computer programs as such" are excluded from patentability.  The EPO holds that a program for a computer is not patentable if it does not have the potential to cause a "further technical effect" beyond the inherent technical interactions between hardware and software.

It is very important to note that a computer program (source code) may not be patentable as such, but it does not mean that a software invention cannot be patented. One way of determining whether a software invention will be considered patentable subject matter or not, is by trying to judge whether the software invention offers a technical solution to a technical problem. The invention may be consider a patentable subject matter if the software invention offers a technical solution to a technical problem. A software invention once patented, will be valid for 20 years.

Advantage of patent over copyright

A patent over a software invention can be used to prevent others from utilizing a certain algorithm without permission, or to prevent others from creating software programs that perform patent protected functions. In contrast, copyright law protects only the expression of an idea and not the idea itself. In other words, copyright can only prevent the copying of a particular expression of an idea i.e. copying of source code or a portion of it, and not the copying of the idea/functionality. Hence, patents offer much broader protection.

There are significant differences in protection offered by patent and copyright. Some major contrasting features of these two forms of protection are illustrated below.

  • Patent law protects functional aspects of an invention. Copyright protects the idea that is expressed. Under copyright, the form of expression is protected, and not the idea or concept.
  • Copyrights become effective the moment a work is created in a fixed, tangible form of expression. Patents need to be applied for before the same is made public (some countries provide a grace period for filing a patent application post public disclosure).
  • Copyright protection extends for author’s lifetime plus 60 years (may vary based on the type of work being copyrighted), whereas term of a patent is 20 years.

Conclusion

Any software program, whether there is an inventive aspect involved or not, is protected under copyright. However, the dilemma of whether to opt for patent protection arises when there is an inventive aspect associated with a software product or a process. In case the software product or a process has inventive aspects, then one should definitely explore the option of protecting the same using patents. The reason being, protection offered by patents as compared to copyright is much broader and stronger.

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Disclosure requirements for software patents

In patent law, it is the "claims" that defines the metes and bounds of an invention. In other words, claims define the scope of patent right. Claims are drafted such that it defines the boundaries of the invention with a purpose of providing clear notice of the claimed invention.

Patentees usually try to increase the scope of the claim by defining the claims with functional limits rather than structural limits. The claims that define functional limits in a patent specification are usually known as functional claim. Functional claiming is a common drafting technique used to describe the features by what it does rather than by what it is. Functional claiming is desirable since it covers all the materials, or acts for accomplishing a function by a specific means.

Functional claims are usually used in various technologies; however, patent applications for computer related inventions tend to use functional claims more often. A patent application is allowed to claim an invention in functional terms in exchange for disclosing structures in the specification which clearly perform the claimed function.   

Even though using functional language limits the scope of a claim, there is a tendency for functional limitations to blur the boundaries of a claim’s scope. The instant issue is addressed by 35 U.S.C. § 112 (f) in the US. This section limits a functional claim (means-plus-function claim) element to the particular technologies described in the specification and the equivalents thereof.

35 U.S.C. § 112 (f):

Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

In a computer related invention, the patent application may disclose a computer processor or hardware that may be sufficient for enabling a general computing function. However, mentioning a computer processor or hardware may not be sufficient for enabling a structure for performing a specific function, since novelty in computer related inventions most often resides in the software or the computer program that is being executed on the computer processor or the hardware, not the hardware itself. Generally, in inventions related to technologies, such as mechanical engineering, the corresponding structure for functional claim is easily identifiable. However, when it comes to identifying the “corresponding structure” for a computer related invention (ex: means for selecting a data file), an “algorithm” is the one which carries out the claimed function, and is usually regarded as the corresponding structure for a computer-implemented means-plus-function limitation.

For example, if an encoder is claimed using functional language, disclosure of a computer processor or hardware may not be sufficient for enabling a structure for performing the claimed encoding function. The specification must describe in detail, may be by using a flow chart, the method of carrying out the function recited in the claims.

The U.S. Court of Appeals for the Federal Circuit has held means-plus-function claims invalid on several occasions for failure to disclose algorithm (not necessarily in the form of source code) used to perform the function.  

In Augme Technologies v. Yahoo, concerning indefiniteness of claims, the United States Court of Appeals for the Federal Circuit affirmed the district Court’s judgment. Claims 19 and 20 were held indefinite under 35 U.S.C. § 112.  The claims recited “means for assembling, at said server system, said second computer readable code module,”

The Court held:

"We affirm the district court’s conclusion of indefiniteness because the ’691 patent does not disclose any algorithm for assembling the second computer readable code module."

“It is undisputed that “means for assembling” is a computer-implemented means-plus-function limitation. Thus, to meet the definiteness requirements of 35 U.S.C. § 112, second paragraph, the specification must disclose an algorithm for performing the claimed function. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). Certainly, the algorithm may be expressed in “any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”

In another case, Ergo Licensing, Inc. v. Carefusion, the court held:

“Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that per-form the function, as required by section 112 paragraph 6.” Id. Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.

Conclusion

Adequate measure has to be taken to enable a means-plus-function limitation present in a claim on a computer related invention. The specification must disclose the algorithm that can be used to perform the function of the means-plus-function limitation. The algorithm need not necessarily be in the form of source code; the algorithm may be expressed in any understandable terms, such as mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.

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Patent protection for improvements made over your previously filed patent applications

Introduction

Inventions result from continuous research and innovation, which may be patented. After patenting an invention, scope of further improvement or modification over the previous patent may still exist, at later stages. Under such a scenario, the improvement or modification over the original patented product or process may be protected by what is known as "Patent of Addition" in India and several other jurisdictions, and “Continuation-in-Part” (CIP) application in the United States.

Patents of Addition or CIP applications may be filed in circumstances where a patent application (parent application) has been filed for an invention, and where another related invention, which may be a variation of the earlier filed patent application, is later developed, but the variation may not be distinct or inventive enough to qualify for an independent patent in light of the earlier filed parent application. 

Brief overview of Patent of Addition under the Indian Patent System

Filing Patent of Addition in India

A patentee can file an application separately for a patent of addition in a prescribed manner for any improvement or modification over an invention for which he has already filed a patent application or for which a patent has been granted.

According to Rule 13(3) of the Patents Rule, a patent of addition includes in its specification a serial number of the Application for Patent in respect of the original invention, and, at the beginning of the description, a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent granted/applied for. The Specifications should also include a short statement of the invention as disclosed in the earlier Specification. The date of filing of a patent of addition shall be the date on which the application for patent of addition has been filed.

According to Section 56 of the Patents Act, the patent of addition cannot be revoked or invalidated for lack of inventive step in light of the parent application. Thus the main patent or patent application cannot be cited by the examiner to show lack of inventive step in the patent of addition. The Examiner, however, can cite the main patent or patent application to establish lack of novelty.

Patents of addition are granted after the grant of the main patent and expire along with the main patent.

Advantages associated with filing a Patent of Addition

The inclusion of Patents of Addition in the Indian Patent Act, 1970 was based on the recommendation of the Ayyangar Committee through the Report on the Revision of the Patents Law of 1959, mainly influenced by the U.K. Patents Act of 1949 which was based on the recommendations of the Swan Committee.

The inclusion of the clause “Patents of Addition” was basically to provide opportunities to patentees to adequately claim their inventions in a way that would cover variations or amplifications of the monopoly claimed in respect of their basic invention.

A patent of addition comes with an economic benefit. In India, one does not have to pay a separate renewal fee for the patent(s) of addition unless the parent patent is revoked and the patent of addition is converted into an independent patent, on request by the patentee.

Another benefit is that the improvement over the main patent covered by the patent of addition cannot be invalidated by the main patent or patent application on grounds of lack of inventive step.

Disadvantages associated with filing a Patent of Addition

As a patent of addition expires along with the main patent, the term for which the patent of addition will remain in force is reduced even though the patent of addition gets a new filing date.

Another issue of concern associated with filing the patent of addition is that as the patent of addition will be entitled to a new filing date and as such an application may not claim benefit from the earlier filed parent application, any application (other than the parent application) that may have been filed or published before the filing date of the patent of addition may be used to challenge the patentability of the patent of addition.

Continuation–in-part (CIP) applications under US patent system

The United States Patent and Trademark office also, like the Indian Patent Office, has provision to protect improvements or modifications over an invention for which patent application has been already filed. Such patent applications that are filed to protect improvements or modifications over an invention, for which a patent application has been already filed, are known as CIP applications.

A CIP application may be filed during the lifetime of an earlier non provisional application. A CIP application differs from the patent of addition in the following aspects:

Ø  Maintenance fee/renewal fee is to be paid for a CIP application.

Ø  The CIP application should be filed during the pendency of the parent application (before issue of patent or abandoning of the parent application).

Ø  A patent of addition can be filed even after a patent is issued

Claiming priority by a continuation-in-part application

Under the provisions of 35 U.S.C 120, during the pendency of a patent appli­cation, the filing of a continuation-in-part appli­cation is entitled to the benefit of the filing date of the earlier filed  parent provided the parent includes in its specification adequate written description so as to support the continuation-in-part appli­cation’s claims. The new claims included in the continuation-in-part application, not present in the parent application, will be entitled to claim benefits/priority from the continuation-in-part application and not from the main application. As such, a continuation-in-part appli­cation may only partially claim benefit from the parent application.

We shall have a look at the case Santarus, Inc., and the Curators of the University of Missouri, v. Par Pharmaceutical, Inc to have a clear understanding of the parent application providing benefits to a CIP application. The decision of the district court was partially affirmed, partially reversed and remanded by the Federal Circuit.

Plaintiff Santarus, Inc. was the exclusive licensee of the patents that were for the inventions of Dr. Jeffrey Phillips, assigned to the University of Missouri. Par Pharmaceutical, the defendant, filed an Abbreviated New Drug Application (ANDA) for FDA approval to sell a generic counterpart of the Santarus products requesting permission to market the same formulations describing the Par products as bioequivalent to the products marketed by Santarus. Santarus charged Par with infringement for which Par asserted unenforceability and invalidity of all of the claims of the Phillips patents. Each of the Phillips patents in question was a continuation or continuation-in-part in a chain that originated with Patent No. 5,840,737 (the ’737 patent) filed on January 4, 1996.

The district court found Par’s ANDA products to be infringing on the Phillips patents, but held the entire asserted claims of one or more of the Philip’s patent invalid on grounds of obviousness and inadequate written description. The district court, however, established that there was no inequitable conduct by Dr. Phillips and the assignee, the University of Missouri, inequitable conduct being one of the grounds for invalidating the Philips patents. The district court also held certain claims invalid on a new ground that the common disclosure in a parent patent is prior art to the chain of continuing patents, which was reversed by the Federal Circuit. While this article will not go into the details of the other grounds, a discussion on the new ground raised, that the common disclosure in a parent patent is prior art to the chain of continuing patents, will be presented.

While supporting Par’s argument that Dr. Phillips’s own ’737 patent had rendered obvious the claims to which it was prior art, the district court had held that the parent ’737 patent that issued to Dr. Phillips “is an invalidating reference based on the common subject matter that has priority to the parent patent’s filing date.”

The district court stated that the claims of one of the patents Patent No. 6,699,885 (’885 patent), which was a continuation-in-part of the ’737 patent include subject matter disclosed in the ’737 patent and hence the claims in the ’885 patent were rendered obvious by the parent ’737 patent. However, priority for the ’885 patent was properly claimed, in accordance with 35 U.S.C. §120.

The Federal Circuit reversed this ruling of the district court stating that a continuation-in-part is entitled to the parent’s filing date as to any subject matter in common, but only to its own filing date as to the new matter. In words of the circuit judge, the panel majority had “forgotten” that “matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application.” The Circuit Judge, therefore, dissented from the district Court’s incorrect ruling.

Another case where the entitlement to benefits becomes clear is the PowerOasis, Inc. v.  T-Mobile USA, Inc. Here, the decision of the district court was affirmed by the Federal Circuit.

PowerOasis, the Plaintiff, filed their first application in the patent chain on February 6, 1997 and issued as U.S. Patent No. 5,812,643 (’643 patent). Subsequently, on June 15, 2000, PowerOasis filed a continuation-in-part application, which issued as U.S. Patent No. 6,314,169 (’169 patent). The patents in question (’658 patent and ’400 patent) in this case were filed subsequent to the ’169 patent. The district court found that the ’169 patent had added “substantial new matter” in its specification.

PowerOasis sued T-Mobile for patent infringement, alleging that T-Mobile’s wireless “HotSpot Network” infringed the claims of the PowerOasis patents in question (’658 patent and ’400 patent). T-Mobile filed a motion for summary judgment that the asserted claims were anticipated by MobileStar Network, a product developed, deployed, publicly used, and offered for sale by MobileStar Networks, Inc. (a company acquired by T-Mobile in 2002). PowerOasis responded by claiming that the asserted claims had the benefit of priority of the filing date of its Original application (’643 patent) which would antedate the MobileStar Network.

On summary judgment, the district court determined that the asserted claims were not entitled to the priority date of the original application because the written description of the original application did not support the later issued claims. To this judgment, PowerOasis argued that the district court erred in concluding that the disclosure of the Original application did not provide a written description adequate to support the asserted claims of the two patents. PowerOasis also argued that the district court erred by placing the “burden of proof” on PowerOasis to show that it is entitled to the priority date of the Original application. The district court concluded that when a dispute concerning whether a CIP patent is entitled to priority to the date of the original application arises and when the Patent Office has not addressed the issue, the “burden of proof” ordinarily should rest with the party claiming priority to the date of the original application.

The Federal Circuit in their decision stated, “it is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application.” Also, to be entitled to the filing date of the original application, the missing descriptive matter must necessarily be present in the original application’s specification. PowerOasis provided, as evidence, the Original Application and the declaration of its expert witness, after analysis of which, the district court held that the asserted claims of the patents in question are only entitled to the filing date of the CIP application.

The original application disclosed a vending machine with a “user interface” as part of the vending machine. However, the 2000 CIP application introduced a vending machine with a “user interface” located remotely from the vending machine. All embodiments of the original application were directed to user interfaces which were part of the unitary vending machine apparatus without any disclosure of a user interface located separate from the vending machine itself. Since the Original Application did not support a “customer interface” located separate from the vending machine, the asserted claims were not entitled to the effective filing date of the original application. Because the asserted claims were limited to the filing date of the CIP application, they were found to be anticipated by the MobileStar Network. The Federal Circuit affirmed the judgment passed by the district court in favour of the defendant.

Issues associated with filing a CIP application

As it became evident from the case law cited above, benefits can be claimed only partially while filing a CIP application. Moreover, the later added subject matter has a new priority date which means that any application filed or published before the new priority date could be used as prior art to invalidate the new claims covered by the CIP application.

The term of 20 years, from the filing date of the earliest application for which a benefit is claimed, still remains the same. The new claims will not be entitled to the benefits of extended patent term despite having varying priority dates.

Another lesser known but important matter of concern might be using the CIP application to question the inadequacy in the written description of the parent application. If new matter is added in a CIP application, potential infringers, and Examiners may question the non fulfillment of the enablement requirement in the parent application by establishing that if the new matter in the CIP application includes information necessary to make and use the invention, such information should have been included in the main application. Since the main application failed to provide such information, the main application may not be an enabled disclosure.

Under the circumstances discussed above, a patentee has to wisely decide whether to file a CIP application or not.

Conclusion

Patents of addition in India and the CIP applications in the US are directed to protect improvements and modifications over an invention. However, both are different from one another in some aspects as discussed earlier. It is advisable to file a Patent of addition or CIP application in case the improvement over the main application does not qualify for an independent patent. However, if the improvement over the main application is patentably distinct enough to qualify for an independent patent, then the patentee may consider filing a new and separate application for that invention, which will at least ensure the usual term of 20 years.

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Patent Office India Published Patent and Design registration Information November 14th, 2014

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US Patent Cases Weekly Update November 4th November 11th, 2014

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

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