IP Happenings – March 2017


By Lawrence Hoffman

35 U.S.C. 101 In the News:

Proposals are afoot to amend §101 of the Patent Act to address the horrendous state of the law on patent eligibility. Both proposals are enormously good, but flawed in that they fail to take account of constitutional requirements. A forthcoming two-part article will address the proposals, their strengths and weaknesses and will offer suggestions for improvement which put the “useful arts” which we now call technology back into the law.

Technology also snuck into a recent CAFC decision, also on eligibility, in which the court observed that “patent does not claim the technical manner in which financial data is gathered, analyzed, or output.”  It’s not much, but, to me, it’s a “giant step”, to coin a phrase. B

But the Court missed a great opportunity to say that it’s patent eligible if the claim recites a “technical solution” to a technical problem and give a reasonably clear definition of “technical solution”, or even a way for examiners and judges to determine if the claims contain a technical solution. Well, anyway it was nice to see the reference to technology.

Then we have an example of the Patent Trial and Appeal Board going off track on a novelty case (Nydek v. Broad Ocean). Don’t scratch your head too hard when you read about this one.

Also, we have a brief mention of the Supreme Court arguments last month in a patent exhaustion case (Lexmark) and a venue case (Heartland). Sorry, no predictions as to the outcome in either.

And a note from the UK suggesting a way to sue a currency counterfeiter for patent infringement.

Finally, on trademarks, we have a report from India that the internationally well-known Subway® sandwich franchise, has a pending application to register FOOTLONG as a trademark for – you guessed it – 12 inch long sandwiches. Can you think of anything more descriptive? It’s even reported that several cease and desist letters have been sent, but it’s not clear if that is in India or elsewhere. I’m not optimistic about this one.





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