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Intellectual Property Bulletin - Fall 2018


 

Gender Diversity in Patenting: Current Landscape and Recommendations

By Caroline Greenwood and Antonia L. Sequeira

A bipartisan group of U.S. representatives in July introduced a little-noticed but ultimately popular piece of legislation in response to reports that point to a gender, race and income gap in patent filing and grant rates. A 2018 report, published by researchers at the Yale School of Management, indicates that only 10 percent of U.S. patent inventors are female, and that more than 80 percent of patents list no female inventors. Aiming to identify best practices for increasing patent filing and grant rates for women and other underrepresented individuals, representatives led by Barbara Comstock (R-VA) introduced H.R. 6390, the Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act.

Goal of the SUCCESS Act

The SUCCESS Act would instruct the Small Business Administration to conduct a study and provide recommendations for promoting the participation of women, as well as socially and economically disadvantaged individuals, in entrepreneurship and patenting activities. Such a study, particularly if conducted jointly with the U.S. Patent and Trademark Office, would provide suggestions for how the USPTO and private sector could work together to increase the reported social, economic and gender gaps in patent filing and grant rates.

Although the SUCCESS Act did not make headlines, it quickly attracted significant support. By the end of August, the American Association of Medical Colleges, the Association of American Universities, the Association of Public and Land-grant Universities, the Association of University Technology Managers and the Council on Governmental Relations had all endorsed the act.

Evidence of a Gender Gap in Patenting Rates

In their study, published in April 2018, Kyle Jensen, Balázs Kovács and Olav Sorenson at the Yale School of Management took a closer look at the impact of gender on several stages in the patent process. The study examined 2.7 million patent applications filed between 2001 and 2014 and identified the probable gender of each inventor based on Social Security information and other databases.

The study found that much of the gender-based variation in patent prosecution outcomes could be attributed to the technology category. Female inventors are more prevalent within technology classes that have overall lower patent acceptance rates. Previous studies have confirmed this, noting that women continue to be underrepresented in patent-heavy fields like electrical and mechanical engineering and in patent-focused roles like development and design. By contrast, women are better represented in fields with fewer patent filings, such as the life sciences industry.

The authors of the report conducted a second analysis designed to take into account variations in outcomes across different technology fields, and they still found significant differences in patent prosecution outcomes by gender. This suggests that there are other factors reducing female involvement in the patenting process that cannot be accounted for by lower female representation in certain fields and roles.

Comparing various outcomes for patent applications by all-female teams to those by all-male teams, taking into account the variation in outcomes between different technology fields, the study found that patent applications for all-female teams:

  • Were 7 percent less likely to be granted
  • Were 2.5 percent less likely to be appealed after rejection
  • Had 2.5 percent more words added to their claims during prosecution, indicating that these patents had been narrowed more during prosecution
  • Were 4.3 percent less likely to be maintained by their assignee
  • Received 11 percent fewer citations from other patent applicants, suggesting a lower perceived importance, scope or value
  • Received 3.5 percent fewer citations from patent examiners

The authors further broke down these results by attempting to isolate USPTO bias from that of other actors. The researchers examined results for inventors with relatively common names, such as Mary or Robert — where examiners would have been able to easily infer gender — and inventors with relatively rare names like Jameire and Kunnath. The gendered difference in patent prosecution outcomes between female inventors with common names and male inventors with common names was similar to the difference for all-female and all-male teams, about 8 percent.

Patent applications for female inventors with rare names — that are not strongly associated with gender — were only 2.8 percent less likely to be granted (compared to the 8 percent less likely for inventors with common female names) than patent applications by rare-named male inventors, and rare-named female inventors had a significantly higher number of forward citations by other applications.

Since examiners commonly do not have direct contact with inventors, they are often less able to discern the inventors’ gender. The improvement in outcomes when inventors’ genders are not known to examiners (but are known to other participants) suggests that at least part of the gender bias may be introduced at the USPTO.

Steps Companies Can Take to Bridge the Patenting Gender Gap

Companies and lawyers can take important steps to support female inventors and reduce bias in the patenting process.

A key first step in reducing bias is being cognizant of the reported gender disparity in patents, but companies can also take proactive measures to minimize the chance of bias in patent filing decisions and their ongoing patent programs.

1. Educate Women about Patenting
As the numbers indicate, many female engineers and scientists have not engaged in the patent process, so they are not familiar with how it works. Fenwick runs periodic informational sessions about the patent process to groups of engineers at clients’ offices, and these events are typically well-attended by women, who are eager to learn more about the process. Short informational sessions can bring a lot more first-time female inventors, as well as other first-time inventors, to the table.

To increase submissions by women, companies can also make sure the invention disclosure process is easily accessible to all employees, rather than just employees who have patented ideas already. For example, companies can provide all employees with an invention disclosure form with clear instructions for how to fill out and submit the form.

2. Implement a Blind Disclosure Process
In-house counsel or patent review boards within companies often receive written submissions of invention disclosures and review these disclosures for potential value and patentability. A blind disclosure process, where inventor names are hidden during review, can reduce any bias that might exist in the initial assessment. For example, companies can use a submission system that stores inventors’ names but hides the names from decision makers until after they have decided whether to pursue the invention.

3. Create a Blind Prosecution Process
Companies can also make prosecution decisions, such as whether to file an appeal, continue prosecution, narrow the claims or pay maintenance fees, without referencing or considering the inventors’ identities.

One easy way patent practitioners can implement a blind prosecution process involves a small adjustment in their client communications. When requesting input from in-house counsel, outside counsel often list inventors’ names in their emails. By removing the inventors from the email templates, in-house counsel can make decisions without the inventors’ genders unconsciously impacting their decisions.

During prosecution, it is often helpful to confer with inventors, so a completely inventor-blind prosecution could do more harm than good. One solution is to remove inventors’ identities from only some key decisions made by the legal team, such as whether to abandon a case for financial reasons. This process can reduce bias without reducing the role of the inventor in key parts of the process.

The Benefits for Companies and Inventors

Increasing female involvement in the patent process can benefit female inventors as well as companies in all stages of growth. At the startup level, decreasing gender bias in patenting rates can help bridge the gender gap in startup financing. Studies have shown that women-run startups typically receive less funding than startups led by men, and patents can be an important quality signal to investors when considering whether to fund a company. Beyond early-stage companies, businesses of all sizes gain value by protecting more innovations—whether they are created by female or male employees. Tackling this larger structural and cultural issue requires action from both the public and private sectors—and the changes companies can make, along with tips and insights potentially available through the SUCCESS Act, are a good place to start.


 

Is ‘Zero’ Generic or Descriptive? Coca-Cola Loses Battle on Appeal to Federal Circuit

By Randall Collins and Jeffrey H. Greene

If you have ever had a Coke Zero, what do you understand ZERO to mean – “zero calories,” “zero sugar,” “zero carbohydrates” or some combination of each? If your friend who never had a Coke Zero asked you what the difference between it and a regular Coke was, how would you explain it? You might say that it is similar to a Coke, except without the sugar or carbohydrates or calories. Would you even mention the phrase “zero sugar,” “zero carbohydrates” or “zero calories?” What is understood by ZERO when used in the context of Coke Zero and other soft drink products with the term ZERO?

That critical word “understand” is part of what the Trademark Trial and Appeal Board will need to consider after the U.S. Court of Appeals for the Federal Circuit’s June 2018 decision in Royal Crown Company v. The Coca-Cola Company. In reversing the TTAB, the Federal Circuit ruled that the TTAB applied the wrong test when it decided that ZERO was not generic for soft drinks, sports drinks and energy drinks. Royal Crown Company, the owner of Dr. Pepper, 7UP sodas, RC Cola and Snapple, among others, argued that ZERO was generic or impermissibly descriptive of Coca-Cola’s products.

The overarching question the TTAB will need to decide on remand is: What does the relevant public understand ZERO to mean in connection with soft drinks that have few or no calories, carbohydrates or sugar—regardless of whether the public actually uses or says “zero” to describe those drinks?

Procedural History

Coca-Cola filed 17 trademark applications in the mid-2000s for various soft drink and sports drink products with the term ZERO, such as COCA-COLA ZERO and COKE ZERO, SPRITE ZERO, FANTA ZERO and POWERADE ZERO, all of which it had been using in the United States during that same period. The trademark examiner assigned to the applications initially refused to register the marks, asking Coca-Cola to disclaim the term ZERO, because ZERO described an intrinsic feature of the drink, specifically, the number of calories or its carbohydrate or sugar content.

In response, Coca-Cola argued that even if the term ZERO was descriptive, the mark COKE ZERO (and Coca-Cola’s other ZERO-based marks) was capable of registration without a disclaimer. According to Coca-Cola, the term ZERO had acquired distinctiveness in the context of Coca-Cola’s products, giving the company the exclusive right to ZERO in connection with such beverages.

The Trademark Office agreed with Coca-Cola and published its ZERO-based applications without requiring Coca-Cola to disclaim ZERO.

Royal Crown originally applied for DIET RITE PURE ZERO and PURE ZERO in 2005, claiming first use of those marks in commerce in that same year. The Trademark Office granted registrations for DIET RITE PURE ZERO and PURE ZERO in 2017, but it required Royal Crown to disclaim ZERO. Royal Crown did not object to the disclaimer and includes the disclaimer as part of its registrations.

Royal Crown filed oppositions with the TTAB against Coca-Cola’s various ZERO applications between 2007 and 2009, arguing that ZERO was descriptive, if not generic, when applied to beverages with no calories, carbohydrates or sugar. The TTAB disagreed and ruled that ZERO was not generic and, despite finding that ZERO was descriptive, determined that it had acquired distinctiveness, giving Coca-Cola the exclusive right to use and register its ZERO-based marks in connection with beverages. Royal Crown appealed those rulings to the Federal Circuit.

Generic Marks – Legal Background and the Federal Circuit’s Ruling

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used,” according to the Trademark Manual of Examining Procedure. To decide whether a mark is generic, the Trademark Office evaluates the following under the test set forth in H. Marvin Ginn v. International Association of Fire Chiefs: 1) What is the genus of the goods or services at issue; and 2) Does the relevant public understand that the mark refers primarily to that genus of goods or services?

A mark can be generic for a genus of products or services if the relevant public understands that the term refers to a key aspect, quality or characteristic of that genus. Evidence of the public’s understanding can come from, among other things, consumer surveys, purchaser testimony, dictionary listings, trade journals and news publications. In an opposition proceeding, the opposer has the burden of proving genericness.

The Federal Circuit ruled that the TTAB failed to consider that ZERO can be generic for a key aspect, or subcategory, of soft drinks, sports drinks or energy drinks, specifically, beverages with few or no calories, carbohydrates or sugar. It doesn’t matter if the relevant public uses or says “zero” when referring to such beverages, according the court. The key is whether the relevant public understands the meaning of ZERO when used in combination with the word COKE to refer to drinks that have zero calories, zero carbohydrates or zero sugar. If the public understands that ZERO refers to those kinds of drinks, then ZERO is generic.

On remand, the Federal Circuit instructed the TTAB, in determining the genericness of ZERO, to consider the public’s understanding of the term ZERO in the context of soft drinks with zero calories, carbohydrates or sugar, as opposed to soft drinks generally—a test the TTAB incorrectly failed to resolve. If ZERO is deemed generic, then Coca-Cola will need to disclaim its right to use the term ZERO, except as used with COKE ZERO or its other brand-formative ZERO marks.

Descriptive Marks – Legal Background

Descriptive marks, which describe an ingredient, quality, characteristic, function, feature, purpose or use of the applied-for goods or services, are only protectable upon a showing of acquired distinctiveness. Such a showing requires the applicant to prove that the mark has become distinctive through use in commerce.

Case law has distinguished between generic terms and marks that are “so highly descriptive as to be incapable of exclusive appropriation as a trademark.” Although the “highly descriptive” designation is not a statutory ground for refusal, the examiner may consider whether a mark is highly descriptive when evaluating whether a mark may be registered based on acquired distinctiveness.

In the opposition proceeding Royal Crown brought against Coca-Cola, Coca-Cola needed to demonstrate that ZERO had acquired distinctiveness in order to obtain a registration without a disclaimer. Coca-Cola’s burden of proof increased with the level of descriptiveness deemed by the TTAB; the more descriptive the term, the more evidence of acquired distinctiveness required.

The Federal Circuit’s Ruling on the Descriptiveness of ZERO

The Federal Circuit found that the TTAB never made a ruling as to the degree of descriptiveness of ZERO and vacated the TTAB’s finding that Coca-Cola had acquired distinctiveness in the term ZERO as a result. On remand, the court instructed the TTAB to make an express finding that ZERO was descriptive and explain how the evidence supports that conclusion. Notably, during the appeal, Coca-Cola conceded that ZERO was at least merely descriptive, meaning that the only issue was whether ZERO had acquired distinctiveness.

To summarize, the TTAB will have to make findings according to the following process:

  1. Is ZERO generic for a “key aspect” of soft drinks or the genus of soft drinks with few or no calories, carbohydrates or sugar? Framed another way, does the public understand ZERO to refer to these types of soft drinks, making ZERO generic? If yes, then COKE ZERO and Coca-Cola’s other ZERO-based applications cannot be registered as trademarks without a disclaimer, and there’s nothing else for the board to decide.
  2. Is ZERO highly descriptive? If yes, then Coca-Cola’s burden to submit evidence of acquired distinctiveness must be “elevated” or “exacting.”
  3. Is ZERO merely descriptive? If yes (and the TTAB must answer “yes” because Coca-Cola conceded this on appeal), Coca-Cola has a lesser burden to prove acquired distinctiveness. The TTAB won’t even reach this question if it answers “yes” to either of the first two questions.
  4. Has ZERO acquired distinctiveness? If yes, then Coca-Cola’s ZERO-based applications can be registered as trademarks without a disclaimer, and Royal Crown loses.

The Federal Circuit’s Ruling on the TTAB’s Evidentiary Findings

The Federal Circuit determined that the TTAB incorrectly required Royal Crown to provide direct evidence of consumer perception to support its genericness challenge. The TTAB deemed insufficient Royal Crown’s evidence that other companies used ZERO combined with their own soft drink names or marks, other registrations and applications of those names or marks, and third-party and even Coca-Cola’s descriptive use of “zero” and “0” on packaging and marketing materials. The Federal Circuit disagreed and ruled that such evidence is never categorically insufficient to support a finding of genericness.

The Federal Circuit also found that the TTAB mistakenly favored Coca-Cola’s evidence of its billions of dollars of sales of products bearing the term ZERO. Such evidence cannot be considered for generic terms. The TTAB could have allowed the evidence as probative of acquired distinctiveness only if ZERO was deemed non-generic and had gained recognition among consumers. Sales and advertising figures, the Federal Circuit ruled, cannot be used to show whether a mark is used or understood by the public to refer to a genus or subgroup of goods.

Takeaways from the Case

  • Coca-Cola illustrates that generic marks are never registrable. The Federal Circuit clarified the importance of consumers’ understanding of a term, not the mere use of a term in everyday language, in evaluating whether a mark is generic. The opposer must identify the particular sub-class of goods or services at issue, as the burden of proving genericness is on the opposer.
  • In opposition disputes involving generic or descriptive marks, the TTAB will consider any competent evidence, such as consumer surveys, purchaser testimony, dictionary listings, trade journals and news publications, to prove genericness or descriptiveness.
  • Examiners can refuse an application based on genericness or if the mark is merely descriptive, but they cannot reject the application solely on the basis that a mark is highly descriptive. On the other hand, if the application is based on acquired distinctiveness, more evidence of distinctiveness is required for highly descriptive marks compared to merely descriptive marks. Examiners can consider whether a mark is highly descriptive when issuing a refusal based on acquired distinctiveness.
  • The TTAB can never consider evidence of acquired distinctiveness for generic marks. Even billions of dollars of sales over a number of years cannot overcome a genericness refusal.
  • Regardless of the outcome on remand, Coca-Cola will still end up with registrations for COKE ZERO and its other ZERO-based applications, but what rights will it have in those marks? It will only retain rights in the distinctive term COKE, as Coca-Cola will need to disclaim ZERO if it loses, similar to Royal Crown and its PURE ZERO and DIET RITE PURE ZERO registrations.

 

Quick Updates

European Parliament Endorses Upload Filters

By Diana Lock
In September 2016, the European Commission, which is the executive cabinet for the European Union, issued a Proposal for a Directive of the European Parliament and of the Council on Copyright in the Digital Single Market . On September 12, 2018, after protests by internet activists and votes by the EC’s Legal Affairs Committee and members of the European Parliament, the full European Parliament voted to adopt the proposed directive with minor revisions.

The current draft of Article 13 of the proposed directive would introduce an obligation for “online content sharing service providers” that host and provide access to user-generated content either to negotiate licenses with content owners to allow use of the UGC or use measures that include “effective content recognition technologies,” known colloquially as upload filters that are “appropriate and proportionate.” The obligation would not apply to (1) small companies that employ fewer than 50 people or have an annual revenue of 10 million euros or less; (2) non-commercial services such as online encyclopedias like Wikipedia; (3) educational and scientific repositories that upload content with the permission of copyright owners, cloud service providers for individuals that do not give the public access to the content; (4) open source software development platforms like GitHub; and (5) online marketplaces that mainly engage in online retail of physical goods.

The battle over Article 13 is being waged on one side by authors, artists and other copyright owners who want to increase their ability to control and receive remuneration for the use of their content by forcing online service providers to obtain licenses for the content or to use upload filters. Content owners argue that Article 13 would restore the balance between Europe’s creative industries and U.S. technology giants like Facebook and Google, which owns YouTube.

On the other side, online service providers want to secure their protection under the safe harbor provisions of the EU Directive on Electronic Commerce, while avoiding potentially onerous obligations to obtain licenses for or to filter UGC. Given the transaction costs of negotiating and purchasing licenses for UGC, online service providers may opt to implement upload filters; however, some existing filtering technologies either over-block content that is lawful under doctrines such as fair use, satire and parody, under-block content that infringes works identified by content owners, or both. Internet activists have decried the imposition of censorship by upload filters on platforms and services that rely on UGC, including blogging, discussion and social media services that allow users to share content such as memes, parodies and livestreams.

A key part of the debate rests on the apparent conflict between Article 13 and the safe harbor provisions of the Directive on Electronic Commerce. Article 14 of the directive, similar to one of the safe harbor provisions of the U.S. Digital Millennium Copyright Act, offers online service providers protection from liability for copyright infringement in UGC if the service provider lacks actual knowledge of the infringement and awareness of facts or circumstances that make the infringement apparent, or expeditiously removes or disables access to the content upon obtaining such knowledge or awareness. Requiring online content sharing service providers to implement upload filters arguably conflicts with Article 15 of the directive, which holds that EU member states may not impose an obligation on service providers either to monitor the content that they transmit or store or to actively seek facts or circumstances indicating infringement.

Article 13 attempts to resolve the problem by stating that online service providers are not eligible for protection under the Directive on Electronic Commerce safe harbors if one of their main purposes is to store, give public access to or stream significant amounts of copyright-protected UGC and to optimize and promote such content for profit, including through display, tagging, curating and sequencing the UGC. Such online service providers, according to the proposed directive, “act in an active way,” and therefore cannot benefit from the safe harbors, presumably because they have actual knowledge of infringement or awareness of facts or circumstances that make infringement apparent.

The fight over Article 13, and the opportunity for content owners and internet activists to lobby European Parliament members will continue at least until next spring. The proposed directive has now entered closed-door trialogue negotiations between the EC, the European Parliament and the European Council, which is primarily composed of the leaders of EU member states, in order to reach agreement on the entire text of the directive. Next spring, the European Parliament will vote on the agreed upon text and may vote on whether or not to pass the proposed directive at all, but defeat of the directive at that stage is unlikely. The various EU member states will then debate and enact their own versions of the legislation.

Fake Specimens: USPTO Pilot Program Helps Tackle Fraudulent Filings

By Mark Jansen and Anne Marie Longobucco

The U.S. Patent and Trademark Office recently launched a pilot program to address an increasing number of altered or fabricated specimens submitted with use-based trademark applications. Fake specimens can now be reported via email to TMSpecimenProtest@uspto.gov during the examination phase, but no later than 30 days from the date the application publishes (i.e., the first deadline to oppose or request an extension of time to oppose).

As background, to obtain a registration, most U.S. applicants are required to submit proof of use of their marks, along with a verification or declaration confirming the use under penalty of perjury. There are exceptions, including filings based on foreign registration or extensions of protections of international registrations via WIPO, but applicants typically submit this proof (commonly called specimens) with use-based applications or post-publication for intent-to-use applications. For many products, the owner can simply fulfill the specimen requirement with a photograph of the product or its packaging, provided the mark is clearly visible, but some applicants, who may not be able to prove use, manipulate the system by digitally altering photos or creating mock-ups in which they add or change marks or logos. This is a problem for legitimate brand owners who are blocked from registering their own marks by prior registrations obtained fraudulently through the use of fake specimens.

To lodge a complaint through the new program, a brand owner must identify the serial number of the application in question in the subject line of an email and include evidence showing the specimen is fake. The evidence can take the form of (1) the source of the image used, such as a screenshot of the product without the trademark; or (2) other applications or registrations where the same image was used as a specimen for different marks. Those who submit protests will not receive any notice of the outcome, only an acknowledgment that the protest was received; however, anyone interested in finding the status of an application can access the relevant record through the USPTO’s website.

The program has its limitations. It only covers applications based on use, not intent-to-use, and even assuming that the USPTO takes the complaint under consideration and rejects an application on the basis of a bad specimen, in all likelihood, the applicant gets another bite at the apple. In other words, the USPTO will likely object and give the applicant six months to submit an acceptable substitute specimen or to amend the basis of the application (from use-based to intent-to-use). 

The pilot’s impact remains to be seen. No data is yet available on the number of applications rejected based on specimen protests under the program, but anecdotal evidence so far suggests that applications have continued to publish, even where the specimen appears doctored and a protest is submitted in a timely manner.

The pilot does give brand owners an opportunity to flag fraudulent specimens without having to go through the time and expense of filing a formal opposition, but, given the limited information on the program’s efficacy, brand owners should plan to oppose or take an extension of time to oppose the application once it publishes. If possible, brand owners should consider appending a copy of the specimen protest to the opposition. The bar for fraud in the U.S. is high and requires a showing of clear and convincing evidence, but it may be worth asserting, especially if an altered or fabricated specimen helps show a willful intent to deceive the USPTO.

Storage of Confidential Information on Executive’s Personal Devices Impedes Trade Secret Protection

By Sapna S. Mehta

The U.S. Court of Appeals for the Eleventh Circuit considered the oft-litigated issue of what constitutes reasonable efforts to maintain secrecy of a claimed trade secret in Yellowfin Yachts v. Barker Boatworks, a case involving claims against a former executive turned competitor. The Eleventh Circuit found implied confidentiality of customer information that an employee was allowed to store on his cellphone and laptop insufficient to claim a trade secret.

Yellowfin Yachts, a boat manufacturer, sued its former vice president of sales and the competing company he founded, Barker Boatworks, for trade secret misappropriation, among other claims. Yellowfin claimed misappropriation of two trade secrets after Barker downloaded “hundreds” of files upon his departure from Yellowfin: (1) the sources of its boat materials and components, including its contractual terms with each source; and (2) customer information, including names, contact information and order specifications. The district court granted summary judgment to the defendants on both categories of information and the Eleventh Circuit affirmed.

In affirming the lower court decision, the Eleventh Circuit bypassed whether the customer information could qualify as a trade secret and affirmed the district court’s ruling on the ground that Yellowfin failed to reasonably protect the information. Defending its secrecy efforts before the district court, Yellowfin maintained that it password-protected the information on a server that was only accessible to Yellowfin’s executives and verbally told its employees that the information should not be shared outside the company; however, to facilitate round-the-clock, “white-glove” customer service, the company permitted—and encouraged—Barker to store customer information on his cellphone, which it paid for. Barker was also allowed to store customer information on his personal laptop for use at trade shows. When he left Yellowfin, the company did not instruct him to return or delete the information, and, critically, while Barker’s proposed employment agreement included a confidentiality provision, he never executed it.

The Eleventh Circuit rejected Yellowfin’s reliance on these measures and an “implicit understanding” with Barker, communicated through verbal warnings, that the customer information was confidential. The court found “mere verbal statements” combined with “no instruction... as to how to secure the information on his cellphone or personal laptop” insufficient to claim a trade secret, admonishing that “Yellowfin effectively abandoned all oversight in the security” of the information. It thus agreed with the district court that no reasonable jury could find that Yellowfin took reasonable efforts to maintain the secrecy of the information for which it claimed trade secret protection.

Given the realities of increased use of personal devices for work, the Yellowfin decision highlights the importance of implementing formal safeguards, such as written use policies, employee training, periodic reminders and employee confidentiality agreements that explicitly address restrictions on access to and storage of the company’s valuable information by employees on their devices.

Seven Questions for the USPTO Following the Berkheimer Memorandum

By Christopher P. King

Hot on the heels of the Federal Circuit’s April ruling in Berkheimer v. HP, the U.S. Patent and Trademark Office issued a memorandum that, if adopted as part of the Manual of Patent Examination Procedures, would provide detailed guidance on how examiners are to decide Step 2 of the Alice analysis, and determine whether an element or elements of the claim separate it from the abstract idea and thus cover patentable subject matter. The Berkheimer decision itself is the subject of a petition by HP for further review by the Supreme Court.

In addition, following the memorandum, the USPTO also issued a Request for Comments, and in late August the office published the 32 comments submitted by a wide variety of entities, including IP organizations, law firms, corporations and associations, and individuals.

While the comments included a wealth of different suggestions, a number of common issues emerged.

First, there were concerns that the memorandum, which focused on “the limited question” of how to determine whether claim elements or a combination of elements “represents well-understood, routine, conventional activity” is confusing in its focus on specific elements. These concerns included: 

Combinations of Elements. Several commenters expressed concern that examiners will fail to consider the claims as a whole, and instead just consider elements individually. However, the Supreme Court in Alice v. CLS explained that either “an element or a combination of elements” may provide the requisite patentable subject matter.

Dependent Elements.  A number of commenters also stressed the importance of reminding the examiner to similarly analyze dependent claims as a whole, not by element. 

Second, there were comments directed to providing further clarity so examiners do not conflate the section 101 analysis of what is patentable subject matter with the other analyses the examiners conduct.

112 Conflation. The memorandum recites that “the analysis as to whether an element (or combination of elements) is widely prevalent… is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well know that it need not be described in detail in the patent specification.” Many entities were concerned that this would lead examiners to confuse the section 101 and 112 written description and enablement analyses.

102/103 Conflation.  Commenters expressed concern that examiners not confuse the section 101 and section 102 or section 103 prior art analyses. The memorandum emphasizes that there is a difference between what is in the prior art and what is “conventional.” Commenters variously suggested separate explanations be provided of 101 and 102 or 103 rejections, and that section 101 rejections be more detailed than 102 or 103 rejections.

Third, comments addressed the sources of proof outlined in the memorandum for what constitutes “conventional” technology. 

Citation of cases.  Commenters were concerned that the memorandum provisions permitting examiners to cite to court decision would lead to reliance on decisions that did not address the particular claim element or combinations of elements at issue in the prosecution file before them. 

Use of official notice.  Another common theme was concern that permitting an examiner to take official notice of what is “well-understood, routine, and conventional” could result in rejections that were not adequately open to scrutiny, unless the basis for that conclusion was provided. 

Admissions.  There were also multiple requests for clarification regarding whether specification statements about prior art to, or commercial availability of, claim elements—or silence about the elements—constitute admissions that the elements are “well-understood, routine, and conventional.”

The USPTO will hopefully provide additional clarity of some of these issues, and provide a clear framework for prosecution of eligibility.

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