NAPP eNews™ for January 2017

Dear NAPP Members,

Here’s wishing all a successful 2017!

It seems we are all discussing “eligibility” under 35 USC 101 these days. I can recall when the only inquiry under 101 was whether there was “utility” to the claimed invention, and questions of whether the claimed invention fit one of the 35 USC 101 categories of process, machine, article of manufacture, composition of matter, or any improvement thereof.

In conjunction with this, I encourage you to read about the 2016 Nobel Prize winners, and take the quiz posted on the Nobel Prize website, and ask if any of these would pass muster under the current Mayo/Alice analysis. http://www.nobelprize.org/nobel_prizes/nobelquiz/nquiz.php?quiz=13

The prize in physics involved studying phases of matter, for example, superfluidity. Superfluidity is not new. The earliest patent I found with “superfluid” in the title was granted to NASA in the 1960s for purifying helium, so I think there is plenty of non-101 ammunition to invalidate a claim. But what if the Nobel Prize winners claimed “superfluid helium”, and this phase of helium had not been known? It is a composition of matter, and it has utility. Should this not be enough to pass 101? I’m not an expert, but I do not think there is any way to make superfluid helium without some interference by a human to produce the correct conditions of extremely low pressure and temperatures. Interesting to think about!

For those that do not wish to take the quiz, here is a summary of the awards relevant to patent practitioners. I would argue that 3 of the 4 would probably be judged ineligible under today’s case law. 

Physics: David J. Thouless, F. Duncan M. Haldane, and J. Michael Kosterlitz, “for theoretical discoveries of topological phase transitions and topological phases of matter.” (Probably ineligible “law of nature” today under 101.)

Chemistry: Jean-Pierre Sauvage, Sir J, Fraser Stoddart, and Bernard L. Feringa, “for the design and synthesis of molecular machines.” (Probably eligible today under 101.)

Physiology or Medicine: Yoshinori Ohsumi, “for his discoveries of mechanisms for autophagy.” (Probably ineligible “law of nature” today under 101.)

Economics: Oliver Hart and Bengt Holmstrom, “for their contributions to contract theory”, the main idea being that a contract that cannot explicitly specify what the parties should do in future eventualities, must instead specify who has the right to decide what to do when the parties cannot agree. The party with this “decision right” will have more bargaining power, and will be able to get a better deal once output has materialized. In turn, this will strengthen incentives for the party with more decision rights to take certain decisions, such as investing, while weakening incentives for the party with fewer decision rights. In complex contracting situations, allocating decision rights therefore becomes an alternative to paying for performance. In patentese, a method of determining the best contract structure for a given set of circumstances. (Probably ineligible “long-standing business practice” today under 101.)

Bob Dylan was awarded the Nobel Prize in Literature, “for having created new poetic expressions within the great American song tradition.”

Annual Meeting and Conference

We are happy to report that the dates, site, and theme for the 2017 AMC have been decided! The 2017 AMC will be held in San Jose July 27-29, 2017. The theme will be “Uncharted Frontiers”, reflecting that we will soon be under the new Trump administration, as well as 35 USC 101, 112, and the written description requirement, especially for design patents. Thanks to Lisa Adelson and her Committee and to the work of the board of directors in taking the time to consider these questions. If you have contacts for speakers on these or other interesting topics, please let us know. Thanks to Alex Pokot and Guy Letourneau for their committee work in seeking hotels and possible events.

NAPP News

The budget for 2017 was passed at our December board meeting. Thanks to all involved for their hard work and input into this important process!

Thanks to all who responded to the recent membership survey. It is important to hear your thoughts as we move forward. NAPP strategy depends on what the membership would like the board and committees to consider and ultimately implement. 

Current NAPP eNews™ and past editions are now available on the NAPP website at http://www.napp.org/napp-enews-. Thanks to our Executive Director John Meidl for making this happen!

On this date in history….

If you or a client are thinking of patenting a combination of a step ladder and an ironing board, 100 years ago, January 2, 1917, a patent application was filed for a “Combination Step Ladder and Ironing Board” by Jacob Abbess and Samuel Brisker, of Montreal, Canada, which issued as US Patent 1,229,698. You can find it and others filed 100 years ago here, courtesy of Acclaim IP’s Free Patents Online:
http://www.freepatentsonline.com/result.html

We hope you enjoy this and future editions of NAPP eNews! If you have content you would like share, such as interesting patents, inventors, and other matters of general interest, especially patenting tips, please forward them to our Executive Director John Meidl at [email protected], or the board at [email protected].

Respectfully,

Jeffrey L. Wendt
President

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DID YOU KNOW?

NAPP has been adding patent related events to our online calendar. Looking for patent related CLE, networking events or wondering when NAPP committee's meet? This is the place to look. If you know of events that would be of interest to your fellow members send them to [email protected] and we will post them. Check it out here

VENDOR ACCESS PROGRAM

As a member benefit, NAPP includes a list of vendors related to the patent prosecution industry and asks for discounts on your behalf. Check out our current list of vendors here (you must login to the site to view). Know of a vendor that would be a good fit? Let us know. Send contact information to [email protected]