On April 19, 2018, the U.S. Patent and Trademark Office released a Memorandum to the Patent Examining Corps regarding changes in examination procedure pertaining to subject matter eligibility in view of the Federal Circuit’s Berkheimer v. HP Inc. decision. Berkheimer held that when a claim is directed to an abstract idea, the question of whether a claim element or combination of elements is “well-understood, routine and conventional to a skilled artisan in the relevant field”—which bears on whether a claimed abstract idea can be transformed into a patent-eligible application—is a question of fact.
Continue Reading How You Can Utilize the USPTO’s Berkheimer Memorandum During Application Drafting, Prosecution and Appeal

On April 2, 2018, the U.S. Patent and Trademark Office released a memorandum to the Patent Examining Corps regarding recent subject matter eligibility decisions issued by the Federal Circuit. The memorandum discusses two recent decisions that found claims that improve computer technology are directed to patent-eligible subject matter rather than to an ineligible abstract idea. The memorandum and decisions are instructive for practitioners who draft patent applications, confront subject matter eligibility challenges or respond to USPTO rejections under 35 U.S.C. § 101.

In Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the Court (Dyk, Linn, Hughes) found no error in the district court’s subject matter eligibility determination and unanimously held that the claims were patent-eligible under § 101 because they improved computer technology by protecting users against previously unknown viruses and enabled more flexible virus filtering. The invention recited specific steps to accomplish the desired result, and was a non-abstract improvement over traditional computer functionality and virus scanning techniques which only recognized the presence of previously-identified viruses.

Relying on recent Federal Circuit precedent, the Court stated that in cases involving software inventions, the inquiry into whether the claims are directed to an abstract idea often turns on whether the claims focus on a specific asserted improvement in computer capabilities. The claims at issue in Finjan are directed to a method of providing computer security by scanning a downloadable program for suspicious code such as viruses, and attaching the results of the scan to the downloadable program in the form of a security profile. The Court adopted a district court claim construction in finding that the behavior-based virus scan approach improved computer functionality because it determines whether the program performs hostile or potentially hostile operations.Continue Reading U.S. Patent and Trademark Office Releases Memorandum on Recent Subject Matter Eligibility Decisions

The United States Court of Appeals for the Second Circuit ruled recently that the United States Polo Association (USPA) cannot use its “Double Horsemen” logo on men’s fragrances, affirming the district court’s finding of trademark infringement and entry of a permanent injunction in favor of PRL USA Holdings, Inc. (PRL).  PRL is the owner and licensor of Polo Ralph Lauren Corporation’s trademarks, including the POLO and Polo Player Logo marks, registered in connection with fragrances.  The USPA, the governing body for the sport of polo in the United States, and Ralph Lauren have been at odds over USPA’s use of a mounted polo player design mark, including its Double Horsemen logo, for nearly 30 years.

Continue Reading Second Circuit Upholds Ruling in Favor of Ralph Lauren in Trademark Dispute

By Morag Peberdy and Jacqueline Clover

Yesterday, judgment was delivered by the Court of Justice of the European Union (“CJEU”) in the ONEL case on what constitutes genuine use of a Community Trade Mark (“CTM”).  A CTM can be revoked if there has been no genuine use in the Community for 5 years.  The conventional wisdom was that use in a single country, as long as it was more than de minimis use, validates a CTM across the EU.  This was called into question by the Benelux first instance decision in ONEL.  Many had hoped that the CJEU would confirm that use in only one European country constitutes genuine use in the Community.  However, the CJEU ruled that the territorial extent of the use is just one factor to be taken into account when assessing genuine use.  Other relevant factors include the specific market for the relevant goods and services, the nature of those goods and services and the frequency and regularity of the use.  Consequently, in some cases, use in one country alone will constitute real commercial exploitation, but on other fact patterns use across a number of countries may not suffice.Continue Reading European Court of Justice Rules on What Constitutes Genuine Use of a Trade Mark