Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a recent denial of rehearing en banc (sort of), the Federal Circuit modified an earlier opinion that reversed the Northern District of California’s determination that a generic diagnostic patent was invalid under Section 101 for claiming a natural phenomena. We have previously written about the first Federal Circuit opinion – Takeaway No. 1. The modified opinion emphasizes the use of a natural phenomena as part of a process potentially being patentable, as opposed to claiming the natural phenomena itself. Basically, the Federal Circuit reaffirmed that claiming a method of enriching the content of fetal DNA in a sample taken from a pregnant mother by applying the principles of a natural phenomena (i.e., the relative sizes of the fetal versus maternal DNA) was patent eligible, and was “human-engineered.” The dissent focused on the natural phenomena, not the claim language. It seems like the Federal Circuit is finally realizing how broadly some have construed the strictures of Section 101/Alice. The takeaway is that patent claims for diagnostic kits that use natural phenomena to achieve the diagnostic result may be patent eligible.
2. In another recent Federal Circuit denial of rehearing en banc (sort of), the Court voted 6-6 to allow a panel decision finding a vehicle driveshaft patent invalid under Section 101 as also claiming a natural law. The fractured approach of the Court can be seen in a 46 page denial of rehearing document. In fact, one of the judges said that an approach that resulted in Section 101 invalidation of a mechanical invention would “lead to insanity.” The Court also issued a revised panel majority opinion with dissents included remanding one of the claims that had been invalidated for further consideration. This issue has been previously discussed in this blog – Takeaway No. 1. The author’s concerns remain based on the Federal Circuit’s muddled and divided approach. The author also has concerns about the notion of drawing enablement concepts into the Section 101 analysis, which the revised majority opinion and the dissent also discuss. It makes for lively academic discussion, but uncertainty for stakeholders on both sides of the “v.” The Supreme Court could take this up next term, which would be nice.
3. It is not an uncommon practice for non-U.S. trademark applications to list every good or service under the sun in an attempt to reserve future rights to use the mark in connection with various goods or services. There is no requirement of use to secure registration in most countries other than the U.S, or to secure an international registration. Such applicants can then file for a U.S. trademark registration based on these non-U.S. counterpart registrations. If, however, the goods and services in the non-U.S. registration are listed in an overbroad way and not in use in commerce, the lack of a bona fide intent to use the mark in commerce in the U.S. in connection with some of the goods and services may doom the U.S. application. In a recent Trademark Trial and Appeal Board (TTAB) decision on a Notice of Opposition, registration was refused because the Opposer demonstrated that the applicant did not have a bona fide intent to use the mark in commerce in connection with at least some of the goods at the time of the original application. Thus, if representing trademark applicants attempting to leverage a non-U.S. registration into a broad U.S. registration, pay special attention to the applicant’s good faith intent to use the mark on all goods listed in the U.S. application, lest registration be refused.
