With the passage and signing into law of the America Invents Act on September 16th of 2011, many business method patents will have, in one year, the possibility to be invalidated through an administrative process. According to the new law, covered business method patents include “data processing or other operations used in the practice, administration, or management of a financial product or service.” However, ATM patents are exempt. Read the remainder of this entry »
Patentable Subject Matter Archive
Business Method Patents in Crosshairs
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patent Litigation, Patentable Subject MatterAdvanced Patent Searching: Techniques, Efficiencies & Validity
By Dominic A. Frisina JD, MA | Filed in Patent, Patent Licensing, Patent Prosecution, Patentable Subject MatterFrisina, LLCin collaboration with the Akron-Summit County Public Library will provide a FREE Advanced Patent Search program on June 15, 2011 at 6:30 PM.
This program is designed to build on the already popular Akron Summit County Library Patent Search Class for innovators, entrepreneurs and businesses. Frisina will present:
- Advanced patent searching techniques
- Patentability searching
- Freedom to Operate and validity searching
- Practical techniques for an efficient search
- Using free patent databases
Location: Akron-Summit County Public Library, 60 S. High Street – Meeting Room 2
Register NOW Seating is limited: Call 330-643-9075 or email stdiv@akronlibrary.org.
Attorney Frisina has been involved in innovation for nearly 15 years combined as a scientist and attorney. Spanning several sectors of industry, his technical and legal expertise includes small molecule drug candidates, fine chemicals, biomaterials, polymers, robotics, semiconductors, and biotechnology. Particularly, he has worked as a chemist in the combinatorial drug discovery industry, where he developed and patented parallel batch reactor technology. During that time he also worked in combinatorial instrument research and related chemical applications. Mr. Frisina also has significant hands-on scientific experience with photovoltaic, fuel cell, and materials technologies, and has drafted and prosecuted patent cases in each of these areas, as well as numerous others.
Mr. Frisina is also deeply involved in helping clients to build brands through obtaining and enforcing domestic and foreign trademarks. This includes preparation and prosecution of trademark applications, as well as opposition proceedings, infringement matters, and licensing
The firm adds value for innovators through its IP Owl Blog which provides short articles streamlining information to help them better digest IP issues – from the simple naming of their business to deciphering complex portfolio management issues.
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Kit Claims Found Invalid
By Robert H. Bejcek II | Filed in CAFC, IP Litigation, Patent, Patent Litigation, Patentable Subject MatterRecently, the Federal Circuit decided a case concerning the registration of a generic drug by Apotex, Inc. in light of AstraZeneca LP’s registration of their brand-name drug.[i] Both drugs contain an anti-inflammatory corticosteroid that treats respiratory diseases, namely asthma.[ii] Of particular interest in this case were the kit claims contained in the two patents Read the remainder of this entry »
Business Methods in the Wake of Bilski
By Dominic A. Frisina JD, MA | Filed in Patentable Subject MatterOn June 28, 2010 the Supreme Court of the United States rendered its much anticipated opinion in Bilski v. Kappos affirming the Federal Circuit after an unusually long delay. More precisely, To the contrary, the Supreme Court concludes that the machine-or-transformation test is “a useful and important clue, an investigatory tool, for determining whether some claimed inventions are [patentable],” but that it “is not the sole test for determining whether an invention is a patent-eligible process.”[1] Read the remainder of this entry »
U.S. Supreme Court Issues Bilski Decision
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patentable Subject Matter, SCOTUSThe long awaited U.S. Supreme Court decision on Bilski v. Kappos was issued on Monday, June 28th, 2010.[1] This case was closely followed and the decision eagerly anticipated because it had the potential to limit patent-eligible subject matter regarding processes, which could negatively impact numerous industries. Bilski was seeking to patent a process for hedging risk in trading on the energy commodities market.[2] After a rejection by both the patent examiner and the Board of Patent Appeals and Inferences based on finding the process merely an abstract idea, the Court of Appeals for the Federal Circuit held that since the process was neither coupled with a machine nor transformed an article into another state or thing (i.e. it failed the machine-or-transformation test) the process was not patent-eligible subject matter. Further, the Federal Circuit took the bold step of holding that the machine-or-transformation test is the sole test to determine whether a process is patent-eligible.[3]
With regard to the machine-or-transformation test, the Supreme Court reiterated the standard practice in statutory construction that unless otherwise specifically defined, words must be accorded their “ordinary, contemporary, common meaning.”[4] The Court stated that it was unaware of any “ordinary, contemporary, common meaning” of the word “process” to support tying its meaning to the machine-or-transformation test.[5] Therefore, they rejected the machine-or-transformation test as the sole test for determining the patent-eligibility of a process.[6] However, the Court did state that the machine-or-transformation test can be a useful tool in determining process patent-eligibility.[7]
