The Top 10 Trademark Rulings Of 2017

The year 2017 has been an exciting twelve months for rulings in trademark law. Below are the top 10 most important cases you need to know.

10. In re General Mills IP Holdings II LLC

In August 2017, The Trademark Trial and Appeal Board ruled that General Mills would not be allowed to register the yellow Cheerios box as a trademark. General Mills attempted to trademark “the color yellow appearing as the predominant uniform background color” for boxes of “toroidal-shaped, oat-based breakfast cereal”. This rejection was mainly due to the yellow color being widely used by other competitor brands. General Mills chose not to appeal the ruling.

The Trademark Trial and Appeal Board wrote that customers would not likely associate the yellow colored packaging as a “unique source”, as there are multiple cereal brands with the color yellow being the main color on the box.

The case number in the U.S. Patent and Trademark Office’s Trial and Appeal Board is 86757390.

9. Deere & Co. v. FIMCO Inc.

In October 2017, there was a ruling made by a Kentucky federal judge who said that the green-and-yellow colors of John Deere tractors is a famous trademark, and that the similar colors used on a pesticide spray qualified as infringement.

Although many other companies use the same scheme of colors, the Kentucky federal judge said that customers will most likely be confused by other competitive companies who also use this color scheme.

The case number in the U.S. District Court for the Western District of Kentucky is 5:15-cv-00105.

8. Twentieth Century Fox Television et al. v. Empire Distribution Inc.

In November 2017, the Ninth Circuit ruled that Fox did not violate trademark infringement law. The show “Empire” which runs on Fox network, was sued by a record label company that bears the same name.

The First Amendment protects many similar lawsuits like this case. To qualify for trademark infringement, Fox would have had to use “Empire” for a completely irrelevant reason, as well as mislead consumers.

In addition, the court rejected the argument that Fox had subjected itself to liability by using the name for promotional reasons, such as advertising. The court held that the First Amendment protects marks in artistic works as well as any promoting of those works.

This case is number 16-55577 in the U.S. Court of Appeals for the Ninth Circuit.

7. Allstate Insurance Co. v. Kia Motors America Inc.

In November 2017, A federal jury in California ruled that Kia Motor Corp. infringed Allstate Insurance Co. Allstate Insurance Co. uses the name “Driverwise” as a program to reward good drivers., and Kia Motor Corp had a line of vehicle add-ons that they called “Drive Wise”.

The trial lasted 3 days. Jurors concluded that consumers would most likely confuse the two names. Kia first came out with their high-tech vehicle add-ons to 2017 model vehicles. Allstate has been using their reward program “Driverwise” for seven years.

Although the two products are completely different, Kia argues, jurors were in favor of Allstates closing argument. Allstate closes their argument with “They should pick their own name. It’s as simple as that.”

The case number in the U.S. District Court for the Central District of California is 2:16-cv-06108.

 6. Black & Decker Corp. et al. v. Positec USA Inc.

In September 2017, a federal judge from Illinois took away a fifty-four million trade dress infringement verdict won by Black & Decker Corp. against toolmaker Positec USA Inc.

The originally verdict took place in 2015.

In the U.S. District Court for the Northern District of Illinois this is case number 1:11-cv-05426.

5. Booking.com BV v. Matal

In August 2017, A Virginia federal judge reversed a decision made by the Trademark Trial and Appeal Board. The original decision was that “Booking.com” could not be a trademark. In precedent, the “.com” added to any generic term makes it likely to be protected under the Lanham Act.

The Federal Circuit has long been rejecting trademark registrations for URLs like Mattress.com and Hotels.com

In this case, U.S. District Judge Leonie M. Brinkema, ruled that the addition of a TLD (top-level domain) can change a generic term into a descriptive one. Brinkema concludes that Booking.com meets the standard and therefore can be registered as a trademark.

In the U.S. District Court for the Eastern District of Virginia the case number is 1:16-cv-00425.

4. Elliott et al. v. Google

In May 2017, the Ninth Circuit shot down a case which tried to show “google” had become a generic verb. Chris Gillespie and David Elliot aimed to prove that google could not be protected under trademark law. The main question for this case was whether “google” had become a generic name consumer’s use for internet search engines.

In October 2017, the U.S. Supreme Court denied certiorari as Gillespie and Elliott appealed their case, urging the justices to offer “clarity” on the trademark implications of the “increasingly common” use of brand names as verbs.

The case number is 15-15809 in the U.S. Court of Appeals for the Ninth Circuit.

3. Tiffany & Co. v. Costco Wholesale Corp.

In August 2017, A federal judge from New York awarded Tiffany & Co. Twenty-one-million-dollar in damages.  Costco Wholesale Corp and Tiffany & Co. have had an ongoing trademark battle for four years.

Costco was using the name “Tiffany” on diamond engagement rings. Although, Costco claims it was using it as shorthand for “Tiffany setting”. The District Judge Laura Taylor Swain ruled it as trademark infringement and counterfeiting in 2015.

Judge Swain’s August damages award was merely a last major step for the case at the district court level. This is only just setting the stage for what will likely be a greatly anticipated appeal by Costco to the Second Circuit.

The case number is 1:13-cv-01041, in the U.S. District Court for the Southern District of New York.

2. NantKwest Inc. v. Matal

In June 2017, The Federal Circuit upheld the U.S. Patent and Trademark Office’s win-or-lose attorney fee policy. The case is about the Patent Act and the Lanham Act. It states that applicants who unsuccessfully file a “de novo” appeal to a district court, must pay the full cost amount of the proceeding, no matter who wins the case.

Critics argue that this is extremely expensive, and will only be affordable for wealthy applicants. Back in June, challenges to this policy were rejected by the Federal Circuit panel such as the “American rule” against fee-shifting.

In August 2017, without request from the parties, the appeals court agreed to rehear the case en banc.

The case number is 16-1794 in the U.S. Court of Appeals for the Federal Circuit.

1. Matal v. Tam

It was in June 2017 that The U.S. Supreme Court ruled the Lanham Act’s ban on offensive trademark registration was unconstitutional. This put an end to a ten-year effort on using the rule against the NFL’s Washington Redskins.

Every justice in the high court’s decision agreed in the finding. Among several occurrences in a thirty-nine-page opinion, one justice concluded that this amounts to unconstitutional discrimination against unpopular speech. Justice Alito continues to say, “this provision violates the Free Speech Clause of the First Amendment.” Justice Alito also writes about how this provision offends one of the First Amendment principles. That principle being “Speech may not be banned on the ground that it expresses ideas that offend”.

The case number 15-1293 in the Supreme Court of the United States.

Cascades Projection LLC v. Epson America, Inc

On June 19th, 2017 patent holder, Cascades Projection LLC, urged a Federal Circuit panel to decide whether the America Invents Act’s inter partes reviews are constitutional.  An Inter partes review is an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents. Cascades Projection LLC argued that the United States Supreme Court’s decision in June 2017 to decide the question means that the panel can decide the question as well. The Supreme Court granted writ of certiorari last week for the separate case of Oil States Energy Services v. Greene’s Energy Group, on whether inter partes review violates the United States Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cascades states that the America Invents Act is in violation of separation of powers under the United States Constitution by granting the Patent Trial and Appeal Board the authority to find patents invalid. Back in February of 2017, Cascades attempted to appeal to the Federal Circuit in hopes they would reconsider the precedent ruling in MCM Portfolio v. Hewlett-Packard, which states patents are public rights. Three months later, the court denied to hear the case. In response to denying the case, three United States Circuit Judges agreed that the ruling in MCM Portfolio v. Hewlett-Packard was valid.

Oil States Energy Services v. Greene’s Energy Group is arguing that federal courts only, and not executive branch tribunals, can decide whether a patent is valid or not. They continue to argue that patents are private property rights and not public rights, which under Article III of the United States Constitution, can only be revoked by a federal court. We will post an update when the case is decided by the United States Supreme Court.

Patent Venue Rules Tested

The U.S. Supreme Court has made a ruling in May 2017 limiting the places a U.S. company can be sued. This could generate a myriad of legal conflicts in the future, while creating various limitations for patent owners. According to federal law, patent venue laws state that lawsuits can be filed at either the location where the defendant lives or where the defendant performs business at. In TC Heartland v. Kraft Food Brands Group, the Supreme Court determined in May 2017, deciding the word “resides” means the place of incorporation. Supreme Court justices also announced that their finding is only applicable to domestic corporations.

Nothing should change for foreign defendants as of now, but in the long run, challenges may arise for venue rules concerning foreign defendants. Experts are speculating that plaintiffs may attempt to target only the foreign parent of a company when a foreign potential defendant has a subsidiary in the United States.

Due to venue controversies, impacts on company decisions are highly anticipated. It is recommended that all growing businesses in the U.S. have a set place of business. The Federal law pertaining to patent venue says that wherever a defendant resides, a lawsuit can be filed. As well as anywhere an infringement has taken place, and a business has an established and regular place of operation. Now that U.S. companies are limited on where they can be sued, there may be many challenges to come for non- U.S. defendants.

The Supreme Court Delivers Opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC

In an 8-0 opinion regarding the case TC Heartland LLC v. Kraft Foods Group Brands LLC, on May 22, 2017 Justice Thomas delivered the opinion of the Supreme Court. The judgment was reversed and the case was remanded. All members joined, except Justice Gorsuch, who took no part in the decision of this case. The Supreme Court issued this highly-anticipated decision and reversed the Federal Circuit. The Supreme Court ruled that 28 U.S.C. 1400(b) remains the only applicable patent venue statute. Secondly, that 28 U.S.C. 1391(c) did not modify or amend 1400(b) or the Court’s 1957 ruling in Fourco Glass Co. V. Transmirra Products Corp. The Supreme Court also ruled that the term “residence” in 28 U.S.C. 1400(b) means only the state in which a company is incorporated.

Patent owners will no longer be able to sue an infringing defendant in a district court where the defendant is subject to personal jurisdiction. Patent infringement lawsuits will only be able to be filed in districts within states where the infringing defendant is incorporated. As well as in districts where there has been an act of infringement and the defendant has an established place of business.

The Supreme Court also determined In TC Heartland, that Congress did not intend to change the meaning of 1400(b), or to overrule the decision in Fourco Glass. The Supreme Court relied and referred to the 2011 changes that added “otherwise provided by law” as some evidence that Congress must have wanted 1400(b) to apply.

Foreign corporations and other types of domestic entities can still presumably be sued mostly anywhere. The Supreme Court’s decision did not directly address this, but it was clearly stated in footnotes 1 and 2. While this decision is not favorable to patent owners, patent venue has been the target of patent reform debates in Congress for many years. This ruling is expected to increase cost, complexity and continue to create uncertainty for small entities.

A Karaoke Publisher’s _“Trademark”_ Claim Dismissed By Texas Judge destroyed

A karaoke music publisher brought a suit against several Houston bars that played its karaoke tracks without permission, but a Texas federal judge tossed part of the trademark suit. The infringement suit of Phoenix Entertainment Partners LLC’s is one of several hundred the company has filed around the country over its Sound Choice brand of karaoke tracks. The court admonished Phoenix’s repeated attempts to argue that the unauthorized copying and performance of its karaoke files constitutes a form of trademark infringement. U.S. District Judge Lee H. Rosenthal ruled, that this argument could not stand because allegation should properly be styled as a copyright claim, a differentiation that several appellate courts recently established in “well-reasoned opinions.” “Phoenix alleged that the defendants infringe its goods marks when they illicitly download and play Sound Choice-branded karaoke tracks,” the judge noted. “That is trademark lipstick on a copyright pig.”

The Texas Judge ruled claims as to the company’s “goods” trademark for the songs themselves are dismissed. However the karaoke music publisher may still proceed with claims that the Houston bars infringed its service marks by displaying Sound Choice name and logo during the performance of the tracks at their establishments. The ruling of Judge Rosenthal comes three month after the Ninth Circuit shot down a similar suit filed by Step-Tone (now Phoenix) against an Arizona karaoke provider. Phoenix’s primary argument is that the accused offenders played those tracks for their patrons without paying for a license and that the accused offenders have ripped the popular Sound Choice lyric-accompanied tracks to their own digital hard drives. Phoenix selected to go with a trademark infringement, instead of suing for copyright infringement under the theory that the consumers are misled into thinking they are getting a song off a Step-stone/Phoenix CD when in actual fact they are really getting it from a karaoke bar’s hard drive, the publisher contends.

But the argument of the publisher hasn’t held up well in the appellate courts. The Seventh Circuit similarly held last July that the company couldn’t sue under the Lanham Act, because the claims dealt with intangible expressive content, not actual market goods that might confuse consumers Both the Seventh and Ninth Circuit decisions heavily cited the U.S. Supreme Court’s 2003 Dastar v. Fox ruling, which provides clear limits between the source-designating scope of trademark law and the expression-protecting scope copyright law. Every one of those decisions came into play by the Texas court decision. Consumers cannot possibly be confused by the Sound Choice goods marks, Judge Rosenthal said, because bar patrons don’t actually see the digital files, only the performance of the digital files, which, for all they know, may have been derived from any number of sources, be it a hard drive or internet streaming source, she said. Indeed virtually identical attempts to assert a trademark-infringement claim based on the goods marks, the Supreme Court and two appellate courts has these firmly rebuffed. However on Phoenix’s trademark claims regarding the display of the Sound Choice name and logo during the performance of the karaoke songs, the judge eased up. “Unauthorized use of Sound Choice’s service marks in karaoke shows could plausibly confuse the bar patrons by unfairly trading on Sound Choice Entertainment’s brand identity and impairing Sound Choice Entertainment’s ability to differentiate its services from the competition,” she wrote, allowing those claims to move forward.

On Parking Meter Patent The Patent Trial And Appeal Board Arrives At An ‘Unusual’ Decision

In a decision the Patent Trial and Appeal Board acknowledged was ‘unusual’ the PTAB upheld several claims of an IPS Group Inc. electronic parking meter patent while at the same time invalidated a couple of the patent’s other claims. The final decision in inter parts review found that petitioner Duncan Parking Technologies had shown that two of the patent’s claims were anticipated by an earlier IPS Group patent, while seven other claims had not been shown to be invalid. A mixed conclusion it not unusual for the board, when a number of claims in a patent are challenged.

But the parts of the patent that was held to be invalid, compared to the parts that were not made for a strange situation. Some of the claims upheld by the board are what are known as independent claims, broader claims that are able to stand alone. The two claims held to be invalid however, are known as dependent claims, which depend upon another claim and are therefore a more narrow claim. “We are cognized that, at first glance, it is logically difficult to reconcile a simultaneous determination that while an independent claim is patentable, a claim dependent therefrom is not, “the board wrote. “Nevertheless, after reviewing the relevant facts and law, we determine that this outcome, while admittedly unusual, is correct for the reasons set forth herein.” wrote the PTAB

Duncan’s invalidity position at trial were based entirely on an earlier IPS Group patent, which Duncan argued described the exact same parking meter. The key question, was whether the earlier patent could be considered prior art. There are several Inventors on both IP Group patents, but David King, who is the founder and CEO of the San Diego-based company is named as an inventor on both patents. The IPS Group argued that David King’s own invention could not be used against him. However, Duncan countered, in part, that another man helped conceive of aspects in the earlier patent – U.S. Patent No. 8,595,054 – that anticipated much of the newer one. The more recent patent is U.S. Patent No. 7,854,310. The [King’054] anticipatory disclosure is ‘by another’… and thus invalidates claims 1-5 and 7-10 of the ‘310 patent,” said the PTAB. As to all seven of the challenged claims however, the board was not convinced. The PTAB found little reason to disbelieves that Mr. King was the sole inventor of the applied portions of King ‘054 patent on which Duncan are relied on to argue that claims 1 – 5, 7, and 9 of the ‘310 patent were allegedly anticipated. However, the PTAB found that the parking meter patent’s two invalidated claims relate to aspects of the face of the parking meter. With respect to those claims, the PTAB said it had a “clearer picture” of who was responsible for the invention. And it was “unquestionably different than the inventive entity of all portions” of the earlier patent, the board said. “In that respect, King’ 054 is clearly ‘by another’ when it comes to claims 8 and 10, the board wrote. “As such after considering the record at hand, we are persuaded by DPT that claims 8 and 10 are considered appropriately as unpatentable. Our locksmiths have years of hands-on technical training and a vehicle full of all the equipment that’s necessary to deliver fast and precise car key duplication and replacement car keys services to you, no matter where your vehicle is located.

‘Big Bang Theory’ Wins Lawsuit Against ‘Warm Kitty’ Lyrics

A federal court in New York ruled, that the daughters of a writer whose nursery-rhyme appeared in the TV sitcom “The Big Bang Theory” won’t be able to bring copyright infringement claims against the show over its use of the ditty “Warm Kitty”. The court held that Ellen Newlin Chase and Margaret Chase Perry can’t prove their late mother held the copyright to the song, which TV character Sheldon taught a friend to sing when he was ill in an episode of the sitcom.

In December 2015 Chase and Perry brought an action against Warner Bros. Entertainment Inc., CBS Corp., Fox Television Stations Inc. and other associated companies, alleging “the show used their mother’s work without proper permission”. Edith Newlin, a nursery school teacher and writer, had penned “Warm Kitty” for a 1930 s song book that was covered by a blanket copyright notice, according to the opinion. The defendants used the lyrics in a little modified form, including on the television show ‘The Big Bang Theory’, the opinion said.

The court held it is governed by the Copyright Act of 1909, because of of the song’s publication date. And under the Copyright Act of 1909, authors were granted an initial 28-year copyright term, and if the owner dis not renew the term, the work become public domain. There is not any evidence that Newlin did renewed the owner term. After the 28-year copyright term the work went in into the public domain. Still, the opinion said, the owner of the songbook, “Songs for the nursery School”, had renewed the copyright for the book in 1964.However, Copyright Law “granted the owner the right to renew composite elements and the individual author the right to renew his contributions,” said the opinion. Meaning the holder of a collective work could only renew the rights to the contributed parts he or she had collected from the individual contributors, said the court. And the court found that Chase and Perry couldn’t prove that Newlin had assigned the song rights to the book owner and that it was covered by the copyright renewal. Furthermore they could not prove they had a valid claim to the work, according to the opinion. The court shot down the arguments that Newlin had assigned the songbook a “common law copyright” while retaining a personal “copyright” and “other rights”

In Unified Patent Court The United Kingdom Has A Uncertain Post-Brexit Role

 

As the process to leaving the European Union starts for the United Kingdom, attorneys expect Britain to be part of the EU’s new Unified Patent Court, while the separation is finalized. However, questions linger regarding whether the United Kingdom can participate in the court after leaving the EU. The British Prime Minister’s signaling of its intention to leave the EU officially begins two years of negotiations over the terms of the departure, which will include the U.K.’s role in the patent court. In November the British government said, it still plans to ratify the agreement establishing the long-planned Unified Patent Court, the court should adjudicate about patent disputes across the EU in the future. Attorneys expect the British Parliament will approve ratification in the coming weeks.

The United Kingdom will still be a member of the EU and will participate in the court, when the agreement is ratified and the court gets up and running as planned later this year. The U.K. might be able to remain a part of the court once it is no longer part of the EU but attorneys say both political and legal considerations make that far from certain. Under these premises the issues that will remain unresolved include whether British politicians will accept being part of a court made up of EU members that makes decisions outside the U.K., whether the other countries will want a non-EU country to participate in the court, and whether it will be even legally permissible for the U.K. to be involved.

Right now, Patent owners can get either a national patent that the offers protection in only one country, or a European patent, which is essentially a bundle of national patents that must be enforced with individual litigation in each country. After ratification, the EU unitary patent will offer protections in more than 25 EU countries and infringement disputes regarding a EU unitary patent can be adjudicated at the Unified Patent Court, in one case and the system was expected to take effect last year, but the Brexit election outcome slowed the process. The agreement establishing the Unified Patent Court requires ratification by 13 EU members, including the U.K. although it had been unclear if the UK would ratify the agreement after its Brexit vote. But the government of the U.K. said last year that it would do so and would “play a full and active role” for as long as it is part of the EU. John Pegram of Fish & Richardson PC’s New York office said” There have been no indications that Parliament won’t ratify the agreement. Once the U.K. does ratify the next step will be for Germany the final required country to ratify the agreement. After the approval would be begin the process for the UPC to begin operations in December.

Complicating matters are issues such as the Brexit proponents argument that the U.K. should not be subject to rulings by European courts like Luxemburg-based Court of Justices of the European Union, which will have a role in reviewing some aspects of the UPC’s. In other words, the U.K.’s continued participation after it departs the EU will be subject to negotiation over the next two years. Especially what the U.K.’s role would be in a European court with judges from countries all over the continent making decision’s on patent matters in the U.K. An agreement to give the British the possibility the participation in the UPC could be reached between the U.K. and the EU. However, the current agreement would require a modification, as it currently refers to all the participants as EU members states.

Questions remain on whether UPC participation could be used as a bargaining chip by the EU during Brexit negotiations, and whether British politicians who promised to end the CJEU’s, jurisdiction over the U.K. will be on board with a patent system where decisions can still be reviewed by that court, although only on narrow issues.

However even if a deal could be made for Britain to be part of the UPC post-Brexit, the CJEU could still potentially pose a legal hurdle to the U.K.’s participation. The court could rule that only EU members can be participate in the court, as it held in an earlier case over the formation of the court.

The Unified Patent Court will hear disputes over traditional European patents as well as the new unitary patent, but there is also a question of whether unitary patents would be enforceable in the U.K. post-Brexit. Still, despite all the potential complications for patents that could arise once the U.K. leaves the EU, attorneys said it appears that the Brexit vote has not derailed the new system and that it should be able to roll out in the coming months.

The Judge Reconsiders Alice Order, Saves Part Of Security Patents

In a previous order by a federal judge invalidated all of the claims of two security system patents for claiming abstract ideas. However in a following decision, judge concluded that she only had jurisdiction to rule on the claims asserted by plaintiff Joao Control & Monitoring Systems.

Judge Rebecca R. Pallmeyer of the Northern District of Illinois granted some parts of Joao Control & Monitoring Systems LLC’s motion to reconsider her March ruling in a suit against Telular Corporation where Judge Pallmeyer found all 200 claims of the patents were invalid under the Supreme Court’s Alice decision. She held under the revised order that she could only rule that the 12 claims Joao asserted were invalid. The infringement allegations were by Joao narrowed to cover those 12 claims under the district’s local patent rules. The Judge held that the company “effectively withdrew the portion of its complaint addressing the unasserted claims.”

Joao alleged in its complaint that Telular infringed two patents on security systems that monitor vehicles and buildings through a network connected to the internet, asserted Joao in the filed suit from 2014. Telular infringed one or more claims of the patent, one of which has 112 claims, the other of which has 88 claims, the complaint initially alleged. The numbers of asserted claims was later to 12.

Previously, the judge granted Telular’s motion for judgement on the pleadings. There the judge ruled that the judge patents cover only the abstract idea of monitoring and controlling property using generic computer functions like the internet. “Law enforcement officials have used several forms of electronic video and audio recording devices to monitor potential criminal activity on or around property since the mid-20 th century,” she noted. In the judge’s subsequent decision on reconsideration the judge rejected Joao’s argument that the invalidity findings should be limited to only the single claim. The other claims a very similar and “it benefits no one to have the court simply repeat its analysis 12 times,” the judge noted.

American Bar Association Proposal To Change Patent-Eligibility Law

Proposed legislation to clarify what is and is not patent-eligible has been advanced by the American Bar Association Section of Intellectual Property Law. This is now the second major IP group sent to the U.S. Patent and Trademark Office Director Michelle Lee such a proposal. The proposal includes revisions to Section 101 of the Patent Act. The Patent Act Section 101, includes provisions regarding eligibility. The proposed revisions emphasize that claims should be patent-eligible so long as they not preempt the use by others of laws of nature, natural phenomena, or abstract ideas. The proposed revisions also recite that in determining whether an invention is patent-eligible, the issues like novelty and obviousness should not be considered.

The Group said it believes its proposal “is an important first step toward a politically palatable solution to the unworkable and detrimental state of current 101 jurisprudence.”

Another group, the intellectual Property Owners Association released a different proposed legislation earlier this year. The USPTO has received comments from several industry groups for a legislative revision of Section 101.

Many are concerned that the, high-profile Supreme court decisions on patent eligibility, including Prometheus and Alice have made it unclear what is eligible for a patent. The ABA and IPO suggest the best way to solve the issue is for Congress to revise the patent eligibility statue.

The ABA argues that the high court’s rulings “have injected ambiguity into the eligibility determination” by requiring courts and the USPTO to determine if the claimed invention is “well-known” or “routine”, issues the ABA says should only be relevant when determining if an invention is anticipated or obvious.

The ABA further maintains that in the past, the main concern from the Supreme Court’s, in its patent-eligibility decisions has been avoiding patent that “preempt” others from using basic building blocks like abstract ideas. The ABA said that cases such as Alice has “led the lower courts to lose sight of the fundamental preemption concern that has driven patent eligibility jurisprudence”.

The ABA stated that an example of that was, the Federal Circuit’s 2015 Sequenom decision in which the court found that Sequenom Inc.’s fetal DNA test is not patent-eligible, because it is directed to a natural phenomenon, despite the fact that the court also said it was a groundbreaking innovation that did not preempt the use of a scientific discovery.

The ABA argues that is proposed legislation “directly applies the long-standing fundamental concern of Supreme Court precedent” and “at least substantially mitigates if not resolves newly injected ambiguity and confusion into the eligibility determination” by the use of factors relevant only to anticipation and obviousness.

The proposal specifies conditions under which inventions would not be patent-eligible. And under this section patent eligibility will not be negated when a practical application of a law of nature, natural phenomenon or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored.

The proposal further states that patent eligibility shall not be negated based on considerations of patentability like novelty and obviousness.

The released proposed legislation from IPO’s in January is similar to the ABA’s in some ways. Where the ABA’s proposal focuses on prohibiting patents that preempt the use of natural phenomena and abstract ideas, the IPO’s seeks to define what types of inventions are not patent-eligible.