The IEEE's 2011 Patent Power Scorecard ranks two Fogg & Powers' clients as having among the world’s most valuable patent portfolios. The survey, based on patent quality rather than sheer numbers of patents, considered 1027 companies to identify those with the most influential and potentially most lucrative portfolios. Fogg and Powers client Honeywell International Inc., U.S. was rated as having the top portfolio in the field of Aerospace and Defense. For the field of communications/internet equipment, Fogg and Powers client ADC Telecommunications Inc., U.S. (TE Connectivity Ltd.) was ranked tenth. We congratulate our clients on this recognition and are proud of the contributions we have made to these portfolios.
After the Supreme Court decision in Bilski v. Kappos was handed down, the USPTO issued a memo to the examining corp regarding application of the Bilski decision. The instructions in the memo follow the Bilski decision in directing the examining corp that the Machine or Transformation test is not the sole test for determining wether a claim is directed to an abstract idea. In particular, a list of factors are set forth in the memo. As indicated by the memo, no factor is conclusive by itself and the applicable factors will vary by case. The memo also suggests that there may be patent-eligible claims that do not pass the Machine or Transformation test as well as patent-ineligible claims that do pass the Machine or Transformation test. However, no examples of such claims are provided in the memo.
Although the memo and some decisions rendered by the Board of Patent Appeals and Interferences discuss other factors, the Machine or Transformation factors were still predominantly used. Indeed, none of the Board decisions studied found that a method claim was not directed at an abstract idea without finding that the method claim met at least one of the prongs of the Machine or Transformation test. Furthermore, none of the Board decisions found a claim that at least implicitly met one of the prongs of the Machine or Transformation test to be directed to an abstract idea. Thus, in applying Bilski at the Board, it appears that the Machine or Transformation test remains the primary tool for analyzing whether a method claim is directed at an abstract idea.
Emily Reller has been named the newest paralegal at Fogg & Powers. Previously Emily worked as an administrative assistant and receptionist for the firm.
April 4, 2011: We are pleased to announce that Aaron Peterson has returned to Fogg & Powers. Aaron brings over 5 years of prosecution experience to his practice which focuses on electrical, software, and mechanical technologies.
January 1, 2011: Fogg & Powers is pleased to announce the promotion of attorney J. Patrick Kendrick to Senior Associate Attorney. Pat has been with the firm for seven years, prosecuting patents over a wide range of technical fields.
The Board of Patent Appeals and Interferences (BPAI) and the Patent Examining Corps apply different standards to identify meansplus-function claims under 35 U.S.C. 112, 6th paragraph. In particular, the most recent memorandum1 to the Patent Examining Corps regarding means-plus-function language was issued in September 2008 by the Deputy Commissioner for Patent Examination Policy. The memorandum addressed both when claims invoke 35 U.S.C. 112, 6th paragraph as means-plus-function claims as well as analysis of such means-plus-function claims under 35 U.S.C. 112, 2nd paragraph.With respect to invoking 35 U.S.C. 112, 6th paragraph, the memorandum reiterated the 3-prong test set forth in MPEP 2181 which requires the use of “means for” or “step for” language to invoke 35 U.S.C. 112, 6th paragraph. Although the Patent Examining Corps has been given direction regarding when to interpret a limitation as a mean-plus-function limitation, the BPAI is under no obligation to adhere to the instructions in the memorandum. Indeed, our review of recent decisions of the BPAI revealed that the BPAI continues to take a broader view of when to invoke 35 U.S.C. 112, 6th paragraph. For example, the list provided to the left summarizes some general terms which the BPAI has deemed invoke 35 U.S.C. 112, 6th paragraph without the use of ‘means for’ or “step for’ language. In determining whether to appeal a rejection to the BPAI, it may be beneficial to analyze rejected claims for such claim terms even if the examiner has not invoked 35 U.S.C. 112, 6th paragraph.
1 Memorandum to Patent Examining Corps, Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph, September 2, 2008.
The United States Supreme Court handed down the much anticipated decision in Bilksi v. Kappos1on June 28, 2010. The Bilski decision concluded that the “Machine or Transformation” test is not the only test for patent eligibility. The question now facing a patent applicant is what other tests is the USPTO going to apply? The first substantive answer to that question was provided by the USPTO on July 27, 2010 in a memo to the examining corp2. The memo provides a list of factors to consider in determining patent eligibility. The factors can be grouped into two tests: the Bilski “Machine or Transformation” test and a modified version of the “Useful, Concrete and Tangible” test3. We will continue to monitor Board decisions to gain further insight into how the USPTO is applying the Bilski decision. Our findings will be published in the near future.
1 Bilski v. Kappos, No. 08-964, slip op. (U.S. June 28, 2010)
2 Memo to Patent Examining Corps, Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos, July 27, 2010.