1. Global Intellectual Property – Where Are We Now?
Presented by:
Stanley Ference 1

2. Introduction Four Topics to Discuss today:
(1) Unitary Patent System contemplated by the European Union.
(2) U.S. Joined the Hague Agreement for Registration of Industrial Designs.
(3) With the advent of Alice and Section 101 Refusals, is the U.S. moving towards the European patent system.
(4) Trans Pacific Partnership Agreement? 2

3. EU -Unitary Patent Protection
3 ways to patent protection in Europe.
File for Patent Protection under each country’s national system.
File for a European Patent through the EPO – then go national.
File for a European Patent with Unitary Effect through the EPO. 3

4. Unitary Patent Protection
How? Once the patent is granted through the EPO, the owner can make a single request within one month of publication, for unitary effect and receive uniform protection in all 25 Member States For unitary effect, the European Patent must be granted with the same set of claims for every participating Member State; and all 25 Member States must be designated in the request. 4

5. Unitary Patent Protection
The owner of the unitary patent, may also
Seek national protection outside the 25 Member States; and
apply for validation in European Patent Organization (EPO). 5

6. Unitary Patent Protection
Costs
Translation and Publication.
Far less than paying for 38 separate Member States under the current system.
Renewal Fees are annual (not set yet). 6

7. Unitary Patent Protection
Final Thoughts…
Need to think strategically about where you want to protect your invention.
If there are only a few countries, than just file nationally in those countries.
If owner chooses Unified Patent, then exclusive jurisdiction over disputes will lie with the Unified Patent Court.
If owner choses national patent, then the court of that nation will have jurisdiction. 7

8. Unified Patent Court Goes hand-in-hand with Unified Patent Protection
This is single patent court covering 25 countries.
Currently every EU Member except Spain and Poland have signed the Agreement to create the UPC.
The UPC Preparatory Committee has completed most of the work to make the Court operational.
With UK Brexit, some of this was delayed.
UK has confirmed that will be move forward with ratification of UPC so a new timeline is promised soon.

9. Unified Patent Court What are some of the advantages?
Unified body of case law – precedent – predictability.
A UPC judgment has effect in the 25 Member States.
Supposedly quicker and more efficient than national litigation.

10. Unified Patent Court
Sunrise period for opt out of European patents is scheduled for early September 2017 providing a 3 month minimum to opt out before the Court becomes operational.
The Preparatory Committee is working towards an operational start date in December of 2017.
A final Preparatory Committee meeting is scheduled for March of 2017.
Judicial appointments to the court are planned soon.

11. Industrial Design The ornamental or aesthetic aspect of an article
May consist of 3D features (shape).
May consist of 2D features (patterns, lines, color).
Applied to packages, containers, household goods, electronic devices.
May also be graphic symbols such as graphical user interfaces (GUI) and logos.
In some countries (not the US), industrial designs may be registered as works of art under Copyright.

12. Industrial Design Owner of an Industrial Design has the right to:
Prevent others from making, selling or importing articles (for commercial purposes) embodying a design which is a copy, or substantially a copy, of a protected design.
In the U.S., we have Design Patents (they are published after they issue) so no chance for provisional protection.

13. US Design Patents Effective May 13, 2015 –
US Design Patents Receive a 15-year term (instead of 14-year term).
A Hague System filing now possible.

14. Hague System for Design Patents
The Hague System for International Registration of Industrial Designs
Through World Intellectual Property Organization (WIPO)
File one standard international application
Register up to 100 designs
In over 66 Territories
Provisional rights (from publishing date to issue)

15. Hague System for Design Patents
Provisional rights now possible if Design Patent Application published under the Hague Agreement.
Collect reasonable royalty from date of publication to date of issue if the party had actual notice of the publication.
Since U.S. design patents are not published until they issue, provisional rights not possible.
Now, filing under the Hague, you have publication of International Design Application conferring provisional rights.

16. US Patent Law Update
After the Supreme Court’s Alice decision, there is a two-step test to determine if a patent describes patentable subject matter.
Step 1 does the patent cover an excluded area from patents, such as abstract idea or law of nature.
If not, the test ends.
If yes, Step 2 – does the patent describe an inventive concept that applies the abstract idea or law of nature? (do the claims recite “something more” than what has been done conventionally).

17. Us Patent Law Update So, what is an inventive concept?
Can you find an inventive concept in a software implemented processes?
We have two recent cases that provide some guidance.
Bascom and McRo.

18. { Selected Claim is on the next slide }
US Patent Law Update
In Bascom, the claims involved a content filtering system for filtering content from an Internet computer network.
{ Selected Claim is on the next slide }

19. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
a local client computer generating network access requests for said individual controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and
a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

20. US Patent Law Update
In ruling on a motion to dismiss the patent infringement lawsuit filed by Bascom, the district determined that the claims were directed to the abstract idea of filtering content. In the court’s view, none of the limitations transformed the abstract idea into patent eligible subject matter because they merely recited routine and conventional activities performed by generic computer components.

21. US Patent Law Update
On appeal, the Federal Circuit reversed reasoning that
“An inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot be simply an instruction to implement or apply the abstract idea on a computer.”  Bascom
Thus, the court concluded that claim limitations themselves did not provide the inventive concept rather it was the novel arrangement of those limitations.

22. { Selected Claim is on the next slide }
US Patent Law Update
In McRo, the patent claims involved computer-implemented rules that directed the automation of matching audio with three dimensional computer animated lip synchronization.
{ Selected Claim is on the next slide }

23. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub- sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

24. US Patent Law Update
Overturning the district court’s finding of ineligible subject matter under Section 101, the Federal Circuit held that incorporating the new steps (new rules) which were explicitly recited in the claims when those new steps improved existing technology, though executed on a general purpose computer, made the subject matter patent eligible.

25. Compare with European Patent Standards
Basic requirements under EPO Guidelines for Examination
(1) Invention belonging to any field of technology
(2) must be “susceptible of industrial application” (useful)
(3) new (novel) ; and
(4) must involve an “inventive step” (US 101 cases)

26. European Patent Standards
An invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
The EPO denies protection to inventions that lack the inventive step (much like the USPTO Guidelines for Examination).

27. Trans-Pacific Partnership Agreement
The US was one of 12 countries involved in this Trade Agreement.
Countries: Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States (until January 23, 2017) and Vietnam.
The Agreement eliminated tariffs, requirement standards for environmental protection and human rights and standardized trading amongst the countries.
It also has some Intellectual Property Provisions.

28. Trans-Pacific Partnership Agreement
Intellectual Property Provisions
Provide minimum level of protection parties to the agreement must grant for trademarks, copyright, and patents
Did not require much in the way of substantive changes to US Intellectual Property Law, but required other countries to increase their protections, including civil and criminal provisions.

29. Trans-Pacific Partnership Agreement
Copyright is granted for a term of the life of the author plus 70 years.
Violating copyright provisions (including removing rights management information) carries criminal penalties.
Also, participating countries must be signatories of WIPO Internet treaties (domain name protection).
Trade secrets must be legally enforceable.

30. Trans-Pacific Partnership Agreement
Under Trademark Provisions
Trademark terms of protection of no less than 10 years.
Sound marks are protected as trademarks.
Trademark licenses need not be recorded.

31. Trans-Pacific Partnership Agreement
Under Patent Law Provisions
Undisclosed test data submitted for market approvals for chemicals is protected (at least 10 years for agricultural chemicals and 5-8 years for pharmaceuticals).
Provide explicit protection for new pharmaceutical products that are or contain a biologic.
Harmonizing the adjustment for patent office delays in granting patents.

32. Global Intellectual Property – Where Are We Now?
Presented by:
Stanley Ference