The Smart Phone Patent Wars: What the FRAND is Going On?

Please see my guest post — “The Smart Phone Patent Wars:  What the FRAND is Going On?” – on IPWatchdog.com.

Written by Raymond Millien

U.S. Supreme Court Strike Down another Patent... Stay Calm Folks

On March 20, 2012, in an opinion written by Justice Breyer, the United States Supreme Court issued a unanimous decision in Mayo v. Prometheus holding the claimed medical diagnostic methods were ineligible for patent protection under Section 101 of the Patent Act.

First, some quick legal background. U.S. Patent Law recognizes four broad categories of inventions eligible for patent protection: processes; machines; article of manufacture; and compositions of matter.  The U.S. Supreme Court, however, has long recognized that there are three exceptions to these four broad patent-eligibility categories: laws of nature; physical phenomena; and abstract ideas.

The popular press (and a lot of the legal press) reporting this latest Supreme Court case has used sensational headlines announcing the death of medical diagnostic and personalized medicine patents.  This reminds me of the press frenzy following the Supreme Court’s June 2010 decision in Bilski, where the press prematurely announced the demise of software and business method patents.  To all this, I say “stay calm folks!”

Novelty and obviousness aside for a minute, consider the following hypothetical:

A method for treating the hair of a human subject, comprising the steps of:

(a) applying water to the subject hair until it is completely saturated;

(b) applying a shampoo solution to the subject hair in a vigorous manner until said shampoo solution completely covers the subject hair;

(c) rinsing the subject hair with water until said shampoo solution is no longer visibly present in the subject hair; and

(d) repeating steps (a)-(c) until the subject hair is clean.

Does this claim recite patentable subject matter?  Well, the answer is an obvious “no!”  (Pun intended.)  As the Europeans would say, this claim has no “technical effect!”  Similarly, the patent involved in the Mayo v. Prometheus  case – U.S. Patent No. 6,355,623, entitled “Method of Treating IBD/Crohn’s Disease and Related Conditions Wherein Drug Metabolite Levels in Host Blood Cells Determine Subsequent Dosage,” issued in March of 2002 – had no technical effect.  Representative Claim 1 of that patent is as (un)remarkable as my hypothetical claim above:

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b)determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

I don’t think I would have been so bold as to submit such a claim to the USPTO in an application – these steps, to me, are pure mental steps capable of being performed by a doctor, with not even any software, computer or other system components recited!

The Supreme Court’s defined its task in the Mayo case as follows: “[T]he question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of correlations to allow the processes they describe to qualify as patent eligible processes that apply natural laws?”  In answering this question negatively, Justice Breyer stated:  “If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a [patent attorney’s claims] drafting effort designed to monopolize the law of nature itself.”

IMHO, I don’t see much new law here … just some common sense application of well-established patent law.  Stay calm.

Written by Raymond Millien

Inequitable Treatment In Severance Packages May Lead to a Discrimination Claim

Although not contractually required to do so, many employers offer their management-level employees aseverance package in the event of a reduction-in-force or some other non-disciplinary event which requires an employer to terminate a relationship with a managerial employee. The terms and compensation contained in severance packages usually depend upon salary, years of service, and work performance and/or value of the employee to the employer. However, if an employee can show that the terms of a severance package offered to them are less favorable than those offered to other, similarly situated employees, the employee may be able to state a claim for discrimination.

In the case of Gerner v. City of Chesterfield, Virginia (2012), the United States Court of Appeals for the Fourth Circuit reversed a lower court ruling from the Eastern District of Virginia and found that although a severance agreement is offered upon employment termination and is not a contractual right, it is nevertheless an employment benefit upon which a discrimination claim may lie. Finding that the district court judge (Hudson, J.) erred in his analysis of the legal standard, the appellate court held Title VII protects current and former employees from discrimination, as well as those who have not been hired and have been discriminated against in the hiring process. Further, the Court found that Ms. Gerner's allegations that she was offered a less favorable severance package than her male counter-parts under the City’s reduction-in-force plan, were sufficient to allege an adverse employment action for a gender discrimination claim. In making its ruling, the Court relied upon U.S. Supreme Court precedent and decisions from other Circuit Courts.

This decision by the Fourth Circuit, which is the highest federal appellate court for Virginia, Maryland, West Virginia, and the Carolinas, is a reminder to employers that they must be vigilant in making sure that employment benefits (even severance packages which are often viewed as “voluntary” or “discretionary”) are provided on an equitable basis. Alternatively, employers must make sure that they have a strong, non-discriminatory, reason for any difference in the provision of such benefits among similarly situated employees.

© Copyright, PCT Law Group 2012, all rights reserved.

Written by Malik Cutlar

SME Trademark Applicants Should Beware of Scams

Many of my small- and medium-sized enterprise (SME) clients who have filed U.S. trademark applications have been contacting me lately about “invoices” they have received in the mail.  All of these official-looking “invoices,” however, have turned about to be scams.

Trademark-related solicitation (“trademark spam,” if you will) has become an increasing concern of the US Patent and Trademark Office (USPTO).  In fact, the USPTO added a warning notice last month to its trademarks homepage.  Why is this happening?  Well, the USPTO’s databases are public.  Thus, solicitors have been using trademark registration and application data to send letters and emails to applicants offering phony legal and registration services.  In order to fool even the most spam-conscious applicants, such solicitors adopt corporate names that include “United States” or “U.S.” in an attempt to fool their targets.  Unlike the spam we are all accustomed to, however, trademark spammers format their misleading messages to resemble official government notices.  With an emphasis on application data and filing dates instead of a smiling monkey and congratulatory balloons, many trademark applicants are paying the requested fees before realizing they are being scammed.

What do you do?  Read all your mail and emails carefully.  Be especially wary of those that ask for money.  All official USPTO mail will be sent from Alexandria, Virginia, and emails will be sent from the “uspto.gov” domain.  If you do mistakenly fall victim to trademark spam, file a report with the Federal Trade Commission at www.FTC.gov.  The USPTO would also like to hear about such trickery.  Thus, also send an email to TMfeedback@uspto.gov detailing the spammer and whether the requested fees were paid for the phony, offered legal and registration services.

A global museum of such scam notices (both patent and trademark) can be found here.  Stay vigilant!

Written By Raymond Millien

Are the Smart Phone Patent Wars Giving Patents a Bad Rap?

Please see my guest post — “Are the Smartphone Patent Wars Giving Patents a Bad Rap?” – on IPWatchdog.com.

Written by Raymond Millien