Category: Intellectual Property

The Batching Games: ICANN’s Plan to Process New gTLD Applications

The National Law Review recently published an article by Jamison B. Arterton of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding ICANN’s gTLD Applications process:

On March 29, 2012, the user registration window closed for anyone planning to apply for a new generic top level domain (gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.  As of March 25th, ICANN had 839 registered users in the system.  Given the number of registered users, ICANN has announced that if it receives significantly more than 500 applications, it will begin processing those applications in batches.  Under this “batching process,” applications will be divided into groups of 500 applications to be evaluated at a time.

If batching is required, applicants will need to obtain a time-stamp through the designation process that will begin after the April 12th close of the application submission period.   Applications will be batched and reviewed according to this time-stamp and not based on when the application was actually received.(gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.  As of March 25th, ICANN had 839 registered users in the system.  Given the number of registered users, ICANN has announced that if it receives significantly more than 500 applications, it will begin processing those applications in batches.  Under this “batching process,” applications will be divided into groups of 500 applications to be evaluated at a time.

Now for the fun part.  If the batching process is activated, applicants will be notified that they are required to select a future time target for the processing of their application.  On the date and time selected, the applicant must return to the online system and click “submit” as close as possible to the selected time as possible.  How close the applicant comes to the their target time will determine the applicant’s batch placement.  ICANN refers to this as “a game of digital archery.”  What fun!  All this for $185,000 filing fee.  Applicants who do not have a preference for when their application is processed can affirmatively opt-out of the process.

In the event that more than one applicant applies for a similar top-level domain, all applications for the contending strings will be placed into the earliest batch designated.  If batching is necessary, ICANN has indicated that it will post a video demonstration of the batching process after the close of the application process.  For now, additional information about the batching process can be found at ICANN’s website under “Batching Basics” (click here).

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

USPTO Preliminary Guidelines Spread Mayo on Patent-Eligibility

The National Law Review recently published an article by Christopher L. Drymalla, Jeffrey B. Swartz, Jeffrey S. Whittle and Michael R. Samardzija, Ph.D. of Bracewell & Giuliani LLP regarding Patent-Eligibilty:

A day after the United States Supreme Court delivered its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,1 the United States Patent and Trademark Office issued preliminary guidance2 instructing examiners to reject process claims that invoke laws of nature and only add steps which constitute “well-understood, routine, conventional activity” that is described in the most general of terms regardless of whether there is a transformation involved.

According to the Patent Office, although the “machine or transformation test” remains an “important and useful clue,” it is not to be considered “the sole or a determinative test” for eligibility as it does not “trump the ‘law of nature’ exclusion.” Moreover, the Mayo decision reinforces the need for a patent applicant whose claims include a law of nature, a natural phenomenon, or an abstract idea to ensure the “claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.” (emphasis in original). Although the guidelines put special importance on process claims as were at stake in Mayo, the guidelines appear to indicate this analysis may apply to all claims related to laws of nature, natural phenomena, or abstract ideas.

Neither the guidelines nor Mayo provide specific guidance for what would make a product or process significantly more than a law of nature, a natural phenomenon, or an abstract idea. Nevertheless, the Patent Office sees the claim at issue inMayo as a prime example of one which merely includes a highly general and conventional step of which patent examiners are expected to be more cautious.  As explained in the guidelines, the claims in Mayo emphasize the “law of nature” correlation between the concentration of the drug and its threshold limits for therapeutic effects and harmful side effects.

Simply adding the well-understood, routine, conventional actions of administering the drug and checking its blood concentration in the most general of terms, however, does not confer patent eligibility as the claims themselves are “effectively directed to the [law of nature] exception itself.” Based on the new guidelines, an examiner confronting a similar claim set is directed to reject the claim as non-statutory subject matter under 35 U.S.C. § 101 (utility or patent-eligibility requirement section). The guidelines do specifically note that the applicant in such a case will then have the opportunity to defend the claim and show why it is not drawn to the patentability exception itself. The applicant will have to rely on other claim limitations to support the argument.

The Patent Office’s guidelines suggest that the Mayo decision should be viewed as a cautionary tale for applicants who intend to direct claims to inventions which arguably incorporate the use of laws of nature, natural phenomena, or abstract ideas.

Should you have any questions, please contact your Bracewell & Giuliani LLP patent attorneys. We will, of course, keep you advised as to any new developments in this area.

_______________________________________

1No. 10-1150, 566 U.S. ___, 2012 WL 912952 (S. Ct. Mar. 20, 2012) (for a more thorough discussion of Mayo and the particular facts and determinations involved,see Update: Can’t Touch This – Supreme Court Finds Personalized Medicine Patent Claims Invalid, Bracewell & Giuliani LLP (Mar. 20, 2012).

2See Memorandum: Supreme Court Decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Mar. 21, 2012).

© 2012 Bracewell & Giuliani LLP

Inside Counsel presents the 12th Annual Super Conference in Chicago

The National Law Review  is pleased to bring you information about the upcoming 12th Annual Super Conference in Chicago sponsored by Inside Counsel.

Reasons why you should Attend This Year’s Event:

  1. Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.
  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Handbook of Quality Procedures Before the EPO

Recently The National Law Review published an article by Warren Woessner of Schwegman, Lundberg & Woessner, P.A. regarding EPO Quality Procedures:

The ECP, epi and Business Europe have collaborated to produce a downloadable, fifty page guide to practice before the EPO. While not binding on Examiners, it was issued under the authority of the EPO and is a sort of mini-MPEP, intended for use by both applicants and Examiners. A copy is provided at the end of this post. You can obtain a copy of the guide and read more about it here.

© 2012 Schwegman, Lundberg & Woessner, P.A.

Supreme Court Invalidates Biotech Method Patent in Mayo v. Prometheus

Recently an article by Richard G. Gervase, Jr. and Daniel W. Clarke, Ph.D. of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding Biotech Patents recently appeared in The National Law Review:

On March 20, 2012, the United States Supreme Court handed down a groundbreaking decision in the field of biotechnology; however, the repercussions of this decision will be felt throughout the patent community. In a highly anticipated decision, the Court reversed the United States Court of Appeals for the Federal Circuit in Mayo Collaborative Services and Mayo Clinic Rochester v. Prometheus Laboratories, Inc., unanimously finding that process claims directed to optimizing the dosage of a drug for treatment of an immune-mediated gastrointestinal disorder are invalid because they effectively claim no more than an underlying law of nature.

The two patents at issue are exclusively licensed to Prometheus, who sells diagnostic tests that employ the patented processes. At first, Mayo bought and used these diagnostic tests; however, in 2004, Mayo decided to use and sell a slightly different diagnostic test. Prometheus responded by bringing an infringement action in the United States District Court for the Southern District of California, which found that although Mayo infringed a claim of a Prometheus-licensed patent, the asserted claims were invalid for being drawn to non-statutory subject matter. The District Court reasoned that the patents claimed “natural laws or natural phenomena,” which are not entitled to patent protection. Specifically, the District Court opined that the correlations between metabolite levels and the toxicity and efficacy of drug dosages are patent-ineligible laws of nature. The Federal Circuit reversed, and held that the claims were directed to patent-eligible subject matter because they “transform an article into a different state or thing,” and the transformation was “central to the purpose of the claimed process.” The Federal Circuit subsequently reaffirmed this decision on remand from the Supreme Court for reconsideration in view ofBilski v. Kappos.

The question presented to the Supreme Court in Mayo v. Prometheus was “whether the claimed processes have transformed unpatentable natural laws into patent-eligible applications of those laws.” The Court recognized that the threshold inquiry to determine whether a claim is directed to patent-eligible subject matter is governed by 35 U.S.C. § 101, which provides “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

The representative claim analyzed by the Court was directed to methods of calibrating the optimal dosage of a thiopurine drug by administering the drug, and determining the level of subsequent metabolites, where certain metabolite levels correlate with certain results. The Court relied on case precedent, including Diamond v. Diehr and Gottschalk v. Benson, for the proposition that the meaning of “process” in § 101 has been limited to exclude fundamental principles, such as “laws of nature, natural phenomena, and abstract ideas,” but noted that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” The Court concluded that the claims were not patent eligible, reasoning that the claims were merely instructions to apply a natural law, i.e., a natural correlation.

Specifically, the Court stated that the additional steps of “administering” and “determining,” along with the “wherein” clauses, “add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”

Although the Court recognized that in determining whether additional claim steps are routine or conventional, a § 102 novelty inquiry and a § 101 statutory subject matter inquiry “might sometimes overlap,” Justice Breyer repeatedly emphasized that from a policy perspective, a patent should not preempt natural correlations, thereby improperly inhibiting future innovation. The Court also warned that a non-statutory law of nature cannot be transformed into subject matter that is eligible for patent protection by mere clever claim drafting that amounts to no more than “insignificant post-solution activity.”

How the Supreme Court’s decision will impact medical diagnostic patents and patent applications in the future remains to be seen. We note that the Court declined to opine on the desirability of increased protection for diagnostic correlations, inviting Congress to develop “more finely tailored rules” for patent eligibility should the legislature disagree with the Court’s conclusion.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Custom Software and Technology Development. Do You Actually Own the Deliverable(s)?

The National Law Review recently published an article by Ivan T. Kirchev and Derek C. Stettner of Michael Best & Friedrich LLP regarding Custom Software Ownership:

I.  Introduction

When a business “hires” a vendor and pays for the development of custom code or another deliverable, a common belief is that the business or customer “owns” the deliverable provided by the vendor. After all, if a business pays for office equipment, furniture, an automobile and a myriad of other items, a transfer of ownership is part of the transaction. However, every-day experience is not an appropriate guide when dealing with intangible property. This article provides an overview of the ownership rights of customers that purchase information technology development services.

II.  Default Ownership Rules

Intangible property (such as patents or copyrights) is not transferred merely because possession of an item changes hands. Software and other deliverables are protectable under intellectual property laws and these laws govern the ownership and right to use such items. While other laws can be important, copyright law is the focus of this discussion.

As a general rule, ownership of a copyright initially vests in the “author” of a work. Copyrightable works include works of art, novels, screen plays, music, marketing materials, technical drawings, specifications and software code. Copyright exists as soon as an author reduces the work to a tangible form (such as creating a file with source code). In other words, when a work is written down or otherwise set in tangible form, the copyright immediately becomes the property of the author of the work. Only the author or those deriving rights from the author can rightfully claim copyright. To transfer ownership, the author must sign a written agreement that expressly transfers or assigns his or her rights to another person or entity.

 III.  Works Made For Hire

There is an important exception to the general ownership principles discussed above. Certain works are classified as works “made for hire.” Works made for hire are defined by federal law in the Copyright Act. If a work is properly classified as a work made for hire, then ownership does NOT vest with the author. Depending on the circumstances, the author’s employer or the entity that has contracted with the author, owns the copyright in the work. The statutory definition of the term “work for hire” does not cover “hand shake” or other informal transactions where a vendor is paid money to create a work.

The statutory definition of a “work for hire” is as follows:

  1. a work prepared by an employee within the scope of his or her employment; or
  2. a work specially ordered or commissioned that falls into one of nine classes: (1) a contribution to a collective work, (2) a part of a motion picture or other audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test, or (9) an atlas, provided the parties expressly agree in a written agreement that the work will be considered a work made for hire.

In cases where a business hires a vendor to create a deliverable, the vendor is an independent contractor and not an employee. As a consequence, the deliverables of the vendor will not qualify as a work prepared by an employee. In such circumstances, statutory work for hire rule applies only if the work falls into one of the nine classes and the parties enter into a written contract. While “software” is not explicitly listed in the statute, certain software might be classified as audiovisual works. However, other software may not qualify for any of the statutory classes. So, reliance on the work for hire exception is unwise.

IV.  Suggestions

Because default ownership rules favor authors (not buyers) and work for hire exceptions to ownership may not apply when purchasing technology services, it is critical that buyers enter into a written contract with their vendors. The contract must include a specific provision that addresses ownership of any deliverables that the buyer expects to own. The contract should also include license provisions that specify the rights of the buyer to use any deliverables that are provided by the vendor. In the absence of such an agreement, the buyer will most likely end up with no ownership rights and only an implied license of uncertain scope to use the deliverables. Since the ownership and license provisions can be complex, consulting an experienced lawyer can help ensure that a buyer receives appropriate rights in exchange for the remuneration paid to the vendor.

© MICHAEL BEST & FRIEDRICH LLP

Inside Counsel presents the 12th Annual Super Conference in Chicago

The National Law Review  is pleased to bring you information about the upcoming 12th Annual Super Conference in Chicago sponsored by Inside Counsel.

Reasons why you should Attend This Year’s Event:

  1. Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.
  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Inside Counsel presents the 12th Annual Super Conference in Chicago

The National Law Review  is pleased to bring you information about the upcoming 12th Annual Super Conference in Chicago sponsored by Inside Counsel.

Reasons why you should Attend This Year’s Event:


  1. Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:    Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.
  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Inside Counsel presents the 12th Annual Super Conference in Chicago

The National Law Review  is pleased to bring you information about the upcoming 12th Annual Super Conference in Chicago sponsored by Inside Counsel.

Reasons why you should Attend This Year’s Event:


  1. Who Should Attend – General Counsel and Other Senior Legal Executives from Top Companies Attend SuperConference:    Meet with Decision Makers: You’ll meet face-to-face with senior-level in-house counsel
  2. Networking Opportunities: SuperConference offers several networking opportunities, including a cocktail reception, refreshment breaks, and a networking lunch.
  3. Gain Industry Knowledge: You will hear the latest issues facing the industry today with your complimentary full-conference passes.
  • Chief Legal Officers
  • General Counsel
  • Corporate Counsel
  • Associate General Counsel
  • CEOs
  • Senior Counsel
  • Corporate Compliance Officers

The 12th Annual IC SuperConference will be held at the NEW Radisson Blu Chicago.
Radisson Blu Aqua Hotel

221 N. Columbus Drive

Chicago, IL 60601

Don’t forget – The early discount deadline using the NLR discount code is February 24th!

Google Maps and iPad Maps App Challenged in the Middle District of Florida

Recently The National Law Review published an article regarding Google Maps and iPad Maps Apps written by Richard S. Dellinger of Lowndes, Drosdick, Doster, Kantor & Reed, P.A.:

Panomap Technologies, LLC has filed a patent infringement claim in the Orlando federal court. The lawsuit, filed on February 24, 2012, alleges that Panomap owns exclusive rights to mapping technology used by Google Maps and by Apple on its iPhone and iPad devices. Both Google and Apple have not yet been served and have not yet had an opportunity to present their defenses to the patent infringement claims.

The Middle District of Florida is widely known as a favorable jurisdiction for patent infringement lawsuits. An article by Professor Mark Lemley of the Stanford Law School ranked the Orlando Division to be the highest based on length of time to resolution and success rates for patent holders. Annual reports by Price Waterhouse regularly rank the Middle District of Florida among the top jurisdictions for patent holders seeking a resolution of disputes.

The lawsuit lists Panomap’s corporate headquarters in Orlando, Florida.

© Lowndes, Drosdick, Doster, Kantor & Reed, PA, 2012.