Thought Leadership

Intellectual Property Report: February 2017

Client Updates

Developments in the Federal Circuit’s § 101 Jurisprudence in 2016
Melissa Butler
More than two years have passed since the United States Supreme Court issued its landmark decision, Alice Corporation Pty. Ltd. v. CLS Bank International, on the patent-eligibility of abstract ideas under 35 U.S.C. § 101. For almost one and a half years, DDR Holdings, LLC v. Hotels.com, L.P., represented the primary Federal Circuit decision finding claims patent-eligible under the Alice standard. In 2016, the Federal Circuit issued several key decisions reversing the invalidation of patents under § 101, thereby shedding additional light on what types of claims might survive a challenge to patentable subject matter.

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Where is Wonderland? China May Eliminate Hurdles to Software and Business Method Patents
Jonathan D. Cocks
In late 2016, the Chinese State Intellectual Property Office (SIPO) published an official notice which included a draft of proposed amendments to the Patent Examination Guidelines (the “Guidelines”) utilized by Chinese patent examiners.1 As in the United States, the Chinese Patent Examination Guidelines are not law, but rather are rules for instructing examiners on how to properly examine patent applications. In particular, the proposed amendments to the Guidelines significantly revise the rules relating to software and business method patents, which will likely make it easier to obtain software and business method patents in China—a difficult task recently in the United States. The proposed amendments also include changes which ease the standard for amending granted patent claims, which should benefit patent holders and patent assertion entities. Overall, the proposed amendments to the Guidelines evidence China’s maturing and improving environment for intellectual property owners as the software eligibility pendulum continues to swing in favor of inventors and owners. While there is no official timeline for when the Guidelines will be finalized and formally issued, many expect that could happen sometime this year.2

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All Online Service Providers Must Re-Register Agents with Copyright Office by December 31, 2017 to Continue to Enjoy DMCA Safe Harbor Protection
Lauren Emerson, Dr. Zichao Zhang
Section 512(c) of the Digital Millennium Copyright Act (“DMCA”) imposes certain obligations on online service providers who wish to take advantage of the Act’s safe harbor protection from liability for copyright infringement stemming from storage of a material at the direction of a user. For purposes of 512(c), a service provider is broadly defined as a “provider of online services or network access, or the operator of facilities therefor.” This includes, but is not limited to, “an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.” As such, if you host or operate a website to which members of the public or subscribers can upload material, you could qualify as a service provider and take advantage of the safe harbor provisions. As one prerequisite, service providers must register with the Copyright Office an agent to whom copyright holders may direct takedown notices flagging allegedly infringing material. The purpose of this requirement is to ensure that the public is able to readily identify the proper individual or entity to whom to report claims of infringement.

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