Is Coronavirus Patentable?

Human created Coronavirus is patentable.  

For example, the CDC patented a newly isolated human coronavirus (SARS-CoV),

https://patents.google.com/patent/US7776521B1/en 

https://patents.google.com/patent/US7220852B1/en

Naturally occurring, isolated DNA sequences are not patentable since they are a natural phenomenon.  Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013)

Thus, the phrasing of the claim is important.   

1. An isolated nucleic acid molecule consisting of the nucleotide sequence as set forth in SEQ ID NO: 1. 

Requirement for Patent Filing Date in the United States

 In the United States, a patent application must meet certain requirements to obtain a filing date, which is the date on which the United States Patent and Trademark Office (USPTO) receives a complete patent application. The filing date is important because it determines the priority date of the patent application and the start of the patent term. To obtain a filing date, the following elements are necessary:

1.           A written description of the invention: The patent application must include a written description of the invention that is clear and complete enough to enable a person skilled in the art to make and use the invention. 35 U.S.C. § 112(a).

2.           A clear and concise specification: The patent application must include a clear and concise specification that concludes with one or more claims that define the scope of the invention. 35 U.S.C. § 112(b).

3.           Drawings (if necessary): If the invention is capable of being illustrated, the patent application must include drawings that show the invention in detail. 37 C.F.R. § 1.84.

4.           Filing fee: The patent application must be accompanied by the appropriate filing fee. 35 U.S.C. § 41.

5.           A patent application cover sheet: The USPTO requires that a patent application cover sheet be submitted with the patent application to identify the inventor(s), the title of the invention, and other relevant information. 37 C.F.R. § 1.51.

It is important to note that the application must be filed by the inventor or inventors, or by an authorized representative on their behalf. Additionally, the application must be filed before any public disclosure of the invention, as public disclosure may affect the patentability of the invention.

The above elements are provided in the United States Code Title 35, section 111, which states that an application for a patent shall include a specification, a claim or claims, and a drawing (when required) and the Code of Federal Regulations (CFR) Title 37, section 1.51, which outlines the requirements for a patent application cover sheet.

 

AI Generated Art Not Copyrightable

In the "A Recent Entrance to Paradise" case SR # 1-7100387071, the Copyright Review Board reiterated that copyright authorship must be human.  

"The Court has continued to articulate the nexus between the human mind and creative expression as a prerequisite for copyright protection. In Mazer v. Stein, the Court cited Burrow-Giles for the proposition that a work “must be original, that is, the author’s tangible expression of his ideas.” 347 U.S. 201, 214 (1954). And in Goldstein v. California, the Court again cited Burrow-Giles for the proposition that “[w]hile an ‘author’ may be viewed as an individual who writes an original composition, the term in its constitutional sense, has been construed to mean an ‘originator,’ ‘he to whom anything owes its origin.’” 412 U.S. 546, 561 (1973). The Office is compelled to follow Supreme Court precedent, which makes human authorship an essential element of copyright protection."  

See https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf

An example of AI generated art that is in the public domain.  

Thus, the copyright office is treating AI art the same as "monkey with camera" which is also in the public domain.  See Naruto v. David Slater et al.  https://en.wikipedia.org/wiki/Monkey_selfie_copyright_dispute

The 9th Circuit held that although monkeys have Constitutional standing under Article III, they do not have standing under the copyright act.  

https://cdn.ca9.uscourts.gov/datastore/opinions/2018/04/23/16-15469.pdf

Foreign Priority Under the Paris Convention

 

For patent applications, Paris Convention foreign priority allows an earlier filing date than the actual filing date based on an earlier application.  According to the Paris Convention for the Protection of Industrial Property, by international treaty, patent applicants from different countries can claim priority to an earlier filing if the earlier filing was within a certain time. 

1.       A patent applicant that first filed an application in the United States, can claim foreign priority from the United States to file in another country.  The deadline is the same 12 months from the filing date for utility patent applications, and 6 months from the filing date for design patents. 

Deadline:  This means that after you file in the United States, you have 12 months or 6 months to file in all of the other countries that you need to file in, or you are giving up your rights in that country. 

 2.       A patent applicant that first filed an application in another country, can claim foreign priority in the United States within the same time.  This is codified under 37 CFR 1.55  Claim for foreign priority.  

(a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b) and this section.

(b) Time for filing subsequent application. The nonprovisional application must be:

(1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); 

There are two requirements. First, the filing date must be timely, and then the claim for priority must be timely.  “The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section.” 37 CFR 1.55 (d)  Usually, the priority claim is made with the application. 

Deadline:  This means that after you file in another Paris Convention country, you have 12 months or 6 months to file in the United States, or you are giving up your rights in the United States.  

Patent Marking

 

Patent marking is described in the United States Code.  

Limitation on damages and other remedies; marking and notice 35 U.S.C. § 287(a)

(a) Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or by fixing thereon the word "patent" or the abbreviation "pat." together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.  

General Best Practices 

1. Before a patent application is issued as a patent, the article to be patented should be marked as PATENT PENDING.  The marking should be as permanent as practically possible.  If it is not practical to mark the product, then the patent marking can be on the package.  
2. After a patent is issued, the patented article should be marked.  If the product is plastic, then  PATENT ########  should be embossed or debossed on the mold, where ######## is the patent number.  Laser engraving or screenprinting could be appropriate for wood or metal.  
3. The company product website and other advertising media should also be marked.  Typically, every product has a company website with product descriptions with a photo.  Although this is not strictly in accordance with the constructive notice provisions of 35 U.S.C. § 287(a), it is helpful for giving actual notice.  
4. Because patent rights change frequently, it may not be practical to constantly be modifying the marking on the article.  Because of this, 35 U.S.C. § 287(a) allows an online list of patents where the marking on the product and/or package is a website link.  The best practice would be to have a chart showing the patent number, product name, model numbers and sku's.   Example:   For patent information https://www.zippo.com/pages/product-patents-1
5. The patent marking relating to the above four best practices should be updated to reflect each new patent or patent application.  

Preserving Absolute Novelty Via Attorney Client Privilege

Before filing a patent, an inventor cannot commercialize the invention and needs to keep it secret.  Discussion of a patent with a patent attorney is attorney-client privileged.  Therefore, the disclosure of an invention to a patent attorney does not make the invention unpatentable.  

California evidence code has an expansive view of the attorney-client privilege that begins before the retainer agreement is actually signed. 

Cal. Evid. Code 950.  As used in this article, "lawyer" means a person authorized, or reasonably believed by the client to be authorized, to practice law in any state or nation.

Cal. Evid. Code 951.  As used in this article, "client" means a person who, directly or through an authorized representative, consults a lawyer for the purpose of retaining the lawyer or securing legal service or advice from him in his professional capacity

Cal. Evid. Code 954.  Subject to Section 912 and except as otherwise provided in this article, the client, whether or not a party, has a privilege to refuse to disclose, and to prevent another from disclosing, a confidential communication between client and lawyer...

Commercializing an invention before filing the patent makes the patent invalid. 

Reexamination

Reexamination

Sometimes a patent is obvious but was granted.  The USPTO grants many patents are are invalid, obvious or otherwise ridiculously funny. 

For example, the USPTO granted a patent on swinging sideways on a swing to a 5 year old applicant.  http://www.google.com/patents/US6368227

This seems somewhat obvious as swings are probably neolithic, and prior art such as Tarzan could teach such a technique.  What if your competitor has a patent on swinging sideways?  Should you and all other five-year-old children stop swinging sideways on the playground? 

Fortunately, re-examination is available for anyone during the period of enforceability of the patent.
https://www.uspto.gov/web/offices/pac/mpep/s2209.html

The filing fee is $3000 for a streamlined re-examination request, and $6000 for a regular re-examination request.   One benefit of the re-examination request is that it can filed anonymously.  Although, many five-year-old kids don't have $3000 to file re-examination requests, if your factory is making products commercially, the cost is much lower than for federal court. 

Strengthen the Protection of Intellectual Property Rights (IPR) in China

Latest IP News in China, Updated on November 24, 2019

Based on the document of “The Guideline on Strengthening Intellectual Property Rights Protection”, China issues a guideline for improving intellectual property rights (IPR).

The document strives to put decisions and plans of the IPR protection into effect because Xinhua News reported that “The general offices of the Communist Party of China (CPC) Central Committee and the State Council have jointly issued a directive calling for intensified protection of intellectual property rights (IPR).”  

The document states that "Strengthening IPR protection is the most important content of improving the IPR protection system and also the biggest incentive to boost China's economic competitiveness."

Chinese government will improve a judicial procedure for mediation agreements on disputes regarding intellectual property. The central government will make the following procedures by stepping up IPR protection: establish and improve the "blacklist" system of economic entities' with integrity files; implement market classification credit supervision, establish a system of public announcement of repeated infringement and intentional infringement of the directory of enterprises; and improve the joint disciplinary mechanism for dishonesty. 

According to the document, the government will establish a guidance mechanism for IPR protection cases in all fields and a public trial procedures for major cases. The government will strengthen the supervision and inspection of case execution in different areas, and promote the formation of a unified and fair legal environment.

By 2022, Chinese government will effectively keep IPR infringement within limits, and overcome high costs and low compensations in IPR protection.

By 2025, the government aims to reach and maintain a significant level of IPR protection in China.  

The document states that Chinese government will spare no effort to establish a system of rewarding punitive damages for patents and copyrights’ infringements, and improve the protection of trade secrets, corporation information, and relevant sources.

Last but not least, the government will contribute to intensify international cooperation in IPR protection by promoting connections between domestic and foreign IP rights holders, and by offering legal support regarding overseas IPR disputes.

Source:  Xinhua| 2019-11-24 20:42:47 

Document Name: China Issues Guideline for enhancing IPR Protection

Website:

http://english.www.gov.cn/policies/latestreleases/201911/24/content_WS5dda789bc6d0bcf8c4c17bd4.html 

No More Business Method Patents

The USPTO is no longer allowing business method patents.

In 2010, the Supreme Court denied patent protection for a system for processing how "commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes".  Business method patents are no longer eligible under the United States Patent Act, 35 U. S. C. §101.

Purely abstract ideas such as business methods are not patentable.

Read the full decision
Bilski v. Kappos, 561 U.S. 593 (2010) 
https://www.supremecourt.gov/opinions/09pdf/08-964.pdf

edit: 

The Manual of Patent Examining Procedure 2106 has been updated to include guidance on patent subject matter eligibility.  

  I. TWO CRITERIA FOR SUBJECT MATTER ELIGIBILITY

First, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) ("The term ‘process’ means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material."). See MPEP § 2106.03 for detailed information on the four categories.

Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013). See MPEP § 2106.04 for detailed information on the judicial exceptions.

The Federal Circuit plurality opinion's four step test in Alice is also noteworthy: 

1. determine whether the claimed invention fits within one of the four classes in the statute: process, machine, manufacture, or composition of matter;  

2. determine whether the claim poses a risk of "preempting an abstract idea"; 

3. identify the idea supposedly at risk of preemption by defining "whatever fundamental concept appears wrapped up in the claim"; 

4. in a final step called "inventive concept" analysis, determine whether there is genuine, human contribution to the claimed subject matter. The "balance of the claim," or the human contribution, must "contain additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself."  

Steps 2-4 of the Federal Circuit plurality opinion may explain the second MPEP criteria.   

United States is a first to file country

Patent News: As of March 2013, the United States is a first to file country.  There is no more grace period.  FIRST TO FILE WINS
USPTO says some of the key provisions of the AIA include:
· Transitioning the U.S. to a first-to-file system.
· Providing an enhanced grace period for inventors to safeguard patent rights against disclosures made by inventors made one year or less before the effective filing date, which allows inventors to engage in crucial negotiations with potential buyers or investors without fear of losing their right to a patent. (true only for publications)
· Consistent with international norms, the definition of prior art now includes non-printed disclosures, including oral disclosures, made available to the public anywhere in the world.
· Providing prior art effect to US patent applications as of their foreign priority dates, thus eliminating the Hilmer doctrine.
· Eliminating the requirement for inventors to set forth the best mode to carry out the invention as a defense in infringement actions or in post grant review.
· Providing 75% discount for patent fees to all applicants that qualify as micro entities.

Because the United States was a first to invent country for hundreds of years, many people became accustomed to the grace period of one year.  In a radical departure from tradition, the United States is no longer a first to invent country.  

Under MPEP 2155 an inventor can file affidavits or declarations Under 37 CFR 1.130 to overcome prior art rejections, but these can be discredited if shown to be false:

• An affidavit or declaration can be submitted by the inventor, joint inventor, or someone who obtained the subject matter from them, to show that the disclosure was made by them or derived from them before the effective filing date of the claimed invention.
• An affidavit or declaration can also be submitted to show that the subject matter disclosed had been publicly disclosed by the inventor, joint inventor, or someone who obtained the subject matter from them, before the disclosure was made or effectively filed.
• An affidavit or declaration must be filed by a party having authority to take action in the application or patent under reexamination, and must be accompanied by evidence corroborating the statements made in the affidavit or declaration.
• An affidavit or declaration must identify the disclosure to be disqualified as prior art and explain how it is related to the claimed invention