Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a recent opinion of out of the Southern District of New York that has received a lot of attention, the Court dismissed a complaint for copyright infringement with prejudice where a photographer posted a photograph on a public Instagram account, and the alleged infringer used the photograph and “embedded” it into an article on the web. Instagram’s terms and conditions, at least at the time, had a sublicense provision wherein content posted to a public Instagram account results in a non-exclusive, transferable license being granted to Instagram that allows other Instagram users to access the content and direct a web browser to retrieve the content for incorporation into, for example, an article the web. Thus, there was no copyright violation here because the photograph posted the photograph to a public Instagram account, which ultimately allowed others to use the content. There are a few takeaways here: (1) while this result may not seem fair, it is a product of the terms for Instagram use, and (2) while virtually no one reads terms and conditions on websites, perhaps we should to avoid situations such as the photographer experienced here.
2. Following up on my post from October 22, 2019 (Takeaway No. 2), the Federal Circuit recently held that the USPTO’s October 2019 Subject Matter Eligibility Guidance does not have the force of law, and is not binding on courts. In other words, the Rules in the Patent Office may make it more likely that one may secure a patent on a software invention subject to possible Section 101/Alice issues, but any patent granted may still be invalidated by the more stringent Section 101/Alice standards applied by the courts. The opinion is here. In somewhat of an interesting posture, the patent applicant appealed the rejection of his application on Section 101/Alice grounds (i.e., that the invention was nothing more than an “abstract idea”) to the Patent Trial and Appeal Board (PTAB). The PTAB reviewed the rejection under both the USPTO standard and the federal court standard and affirmed the rejection. The patent applicant appealed to the Federal Circuit claiming that the PTAB erred in applying the USPTO guidance (which is often thought to be more applicant friendly than the court standard). The Federal Circuit agreed that the USPTO standard did not have the force of law, stating that, “We agree with Mr. Rudy that the Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our patent eligibility analysis.” Slip Op. at 4. The Federal Circuit then affirmed the rejection as being accurate under the case law. The takeaway here is that patent applications to inventions that may face potential Section 101/Alice issues, in order to have the most value, should be written to ensure their validity under the case law, and not just the USPTO guidance.
3. In a press release on Friday, May 8, the United States Patent and Trademark Office announced that is offering a prioritized examination program for patent applications directed to inventions to prevent or treat COVID-10. The program applies to applicants having small or micro entity status, and does not require payment of any fees. The goal is to reach final disposition on applications within six (6) months, which is about 3-5 times faster than average. Therefore, for inventions related to the prevention and/or treatment of COVID-19, this program should substantially accelerate the process in the Patent Office.
