Thought Leadership

Intellectual Property Report: January 2018

Client Updates

Crafting Definite Functional Claim Language After MasterMine
Paul Weinand*, Elizabeth Durham Flannery
Section 101 of the Patent Act allows inventors to patent new and useful processes, machines, manufactures, or compositions of matter. However, the Court of Appeals for the Federal Circuit has held that because of the requirement that patent claims particularly point out the subject matter r*Paul Weinand, a Baker Botts law clerk, assisted in the preparation of this article.egarded as the invention, a patent claim that recites both a system and a method of using that system as a functional limitation is indefinite. However, the Federal Circuit also has held that system claims that include functional language are not indefinite per se. In its recent MasterMine v. Microsoft decision, the Federal Circuit further addressed how to determine whether a claim that includes functional language is definite.

To read the full article, click here.

*Paul Weinand, a Baker Botts law clerk, assisted in the preparation of this article.

Why and How Europe's New General Data Protection Regulation Impacts US Companies*
Cynthia J. Cole, Neil Coulson
In the first of a series of two articles, Baker Botts’ attorneys Cynthia J. Cole and Neil Coulson set out why Europe’s new General Data Protection Regulation will impact domestic business. In Part 2, they will provide practical guidance to businesses on steps they can take to ensure compliance.

Data privacy experts see a troubling trend among American companies that collect, store and analyze personal data: there is a lack of knowledge about how Europe’s General Data Protection Regulation (“GDPR”) will affect them.

Few US companies are making the big changes required to comply with this new law and many do not realize how GDPR may affect them and what happens if they are not compliant. GDPR goes into effect on May 25, 2018, and, to the surprise of many American corporations, it will dramatically impact how they handle the personal data of their customers.

To read the full article, click here.

*This article first appeared in Wolters Kluwer Securities Regulation Daily on December 18, 2017.

Will Any Software Patents Survive?*

Robert Maier
In recent weeks, the Federal Circuit has continued to affirm district court decisions finding software-related patents invalid for failure to meet the patentable subject matter requirement of 35 U.S.C. §101. Indeed, since the Supreme Court decided Alice v. CLS Bank in 2014, over 250 district court opinions have been issued invalidating patent claims under §101—based on an invalidation rate that is reportedly well over 60 percent. See, e.g., Robert Sachs, “Alicestorm: April Update and the Impact of TC Heartland on Patent Eligibility,” Bilski Blog (last accessed Nov. 12, 2017). That trend continues through a series of recent Federal Circuit decisions. At the same time, a petition for certiorari to the Supreme Court was filed seeking to challenge the availability of this very defense—a petition that, if heard by the Supreme Court, could have dramatic implications for U.S. patent litigation.

To read the full article, click here.

*This article first appeared in New York Law Journal, November 2017.

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