The United States is a popular and frequently important country in which to pursue patent protection. For that reason, internationally based attorneys and agents should be aware of some important information regarding prosecuting PCT applications in the United States.
When working with a client who has a pending PCT application and wishes to secure protection in the United States, there are two primary strategies: file a "bypass" application directly with the USPTO; or enter the United States National Phase. Fish & Tsang can provide you with the expertise and knowledge required to successfully leverage a PCT application into United States patent protection.
In this blog you will learn about:
(1) Filing a "bypass" application directly in the United States.
(2) Entering the United States National Phase.
(3) Basic claim strategy.
What the Supreme Court appears to be doing in relation to Alice is applying copyright principles to patent subject matter eligibility analysis. Whether or not this was the intent, it has the effect of "promoting the Progress of Science and useful Arts" by enforcing proportionality between contribution to society on the one hand, and scope of patent protection on the other.
One immediate takeaway is that clever wordsmithing will no longer carry the day. The courts, and hopefully the patent office, will now focus on the underlying inventive subject matter. Under Alice, if the underlying idea being claimed is old or well-known, or the claims are worded to cover essentially all embodiments of the idea, then the claims should be deemed to recite ineligible subject matter.
Another takeaway is that we have a further rationale for ignoring recitation of post-solution activity. Claiming the computerization of a known process, and then adding a limitation such as "displaying to a user" will not convert patent ineligible subject matter into patent eligible subject matter.
What can be done to comply with Alice?
After the Supreme Court's recent decision in Alice v. CLS Bank, blog posts, articles, and web forums exploded with criticism and confusion. What is the Court doing? Doesn't the Court know the difference between subject matter eligibility and novelty or non-obviousness analysis? Can't the Court see it is killing the software industry?
The short answer is that the Alice decision is actually a very positive step in the evolution of patent law. What the Supreme Court has done in Alice, Myriad and other recent cases, is to give the patent office and the courts much needed tools to enforce proportionality between contribution to society and scope of protection.
"Pigs get fat, hogs get slaughtered."
For more than 20 years, many patent attorneys and agents have been using clever wordsmithing to lock up vast areas of technology based on what are arguably only small contributions to society. Unfortunately, while those strategies have been perfectly legal, they have seriously upended the constitutional mandate to promote "the Progress of Science and useful Arts" and actually stifle this progress, especially in the areas of computer software, business methods and genetics.
Fish & Tsang Senior Associate Lindy M. Herman was recently named to the Southern California Super Lawyers 2014 Rising Stars list. The list recognizes no more than 2.5 percent of lawyers in the state, and this is Lindy's second consecutive year being honored. Everyone at F&T congratulates her for this accomplishment and recognition on such a prestigious list!
In her practice, Lindy counsels clients in copyright infringement, trademark disputes and related business manners. She has more than seven years of experience and has represented clients in state and federal cases, as well as international disputes. She graduated from Whittier Law School and holds certificates in Intellectual Property Law and International & Comparative Law.