Switzerland and its Patent Irony

by Steve Reiss (stevenreiss@scienbizippc.com)

Swiss Flag

                                               
Interestingly, during the anti-patent speeches that were common to Europe in the mid 1860s and later, see e.g., Abolition of Patents: Recent Discussions in the United Kingdom and on the Continent (1869), Switzerland was often put up on a proud shelf for its lack of patent system:

the fact in Switzerland, where the absence of patents has not at all been found prejudicial to the public at large. The records of the latter country may dispel all apprehension lest the abolition of Patents should place national industry on an unequal and disadvantageous footing with foreign. 

Abolition of Patents, at 191.

So:

With such strong public feeling against patent protection it is no wonder that it took Switzerland...almost half a century to enact its first national patent law in 1888.The law was so limited in scope, however, that its usefulness for patent protection was at best dubious. Indeed, successful lobbying by the Swiss chemical industry resulted in the 1888 national patent law protecting only inventions that could be represented by mechanical models.

See e.g. Dominique S. Ritter, Switzerland’s Patent Law History, 14 Fordham Intellectual Property, Media and Entertainment Law Journal 463, 464 (2004).

 
This is where the irony begins:

• Switzerland would play such an important role in drafting the text of the Paris Convention, Berne was chosen as the headquarters for the Central Bureau of the Union, which was in charge of the administration and supervision of the convention.

• WIPO ("World Internation Property Organization") would be headquartered in Berne.

• Einstein worked at Swiss Patent Office.  We all know what happened during his less productive hours on the job, while he should have been working to "fully master[] machine technology", so he could be promoted to a senior examiner position.

Strangely, today, Switzerland, and its 8,000,000 people ranks eighth in the world in patents.

On a per-capita basis, Switzerland is number one (source: WIPO). 

A sample of a Swiss patent ("Brevet", in French), by my favorite Swiss company:

 

 

What happened to Rolex during 2003-2009? (data from PatentCloud.Com)

Another Troubling 35 USC 101 ("Abstract Idea") Case From the Federal Circuit.

by Steve Reiss (stevenreiss@scienbizippc.com) (image from PatentVue by Envision IP)

On October, 16, 2017, the Federal Circuit handed down Secured Mail Solutions v. Universal Wilde, Inc. (2017).

In this case, Secured Mail Solutions asserted, against Universal, several patents in several different technologies concerning "snail mail" handling.

Ultimately, the court found all the patents to contain ineligible subject matter according to Alice Corp. v. CLS Bank Int'l (2014) and the Alice 2 Part Test.

I am only going to discuss claim 1 of the 7,818,268 ('268) patent, which was deemed a representative claim for technologies called Intelligent Mail Barcode.

Claim 1 of the '268 patent, recites:

A method of verifying mail identification data, comprising:

affixing mail identification data to at least one mail object, said mail identification data comprising a single set of encoded data that includes at least a unique identifier, sender data, recipient data and shipping method data, wherein said unique identifier consists of a numeric value assigned by a sender of said at least one mail object;

storing at least a verifying portion of said mail identification data;

receiving by a computer at least an authenticating portion of said mail identification data from at least one reception device via a network, wherein said authenticating portion of said mail identification data comprises at least said sender data and said shipping method data; and

providing by said computer mail verification data via said network when said authenticating portion of said mail identification data corresponds with said verifying portion of said mail identification data.

The Federal Circuit opinion starts out with a review of the current state of American patent eligibility law:

The Patent Act defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The courts have created certain exceptions to the literal scope of §101, determining that laws of nature, natural phenomena, and abstract ideas are not patent-eligible. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).

The court summarized the 2-part Alice Corp. test and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), the significant post-Alice Federal Circuit decision holding a software-like claim contained eligible subject matter.


The court then went ahead to attack claim 1 of the '268 patent. Concerning Alice Test, part I, the court said (highlights are mine): 

Secured Mail argues that the claims are specifically directed to a sender generated unique identifier, which improved on the existing process both by reliably identifying the sender of the mail object and by permitting the sender to create a bi-directional communication channel between the sender and recipient of the mail object. The fact that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract.

The claims of the Intelligent Mail Barcode patents are not directed to specific details of the barcode or the equipment for generating and processing it. The claims generically provide for the encoding of various data onto a mail object but do not set out how this is to be performed.

The claims state that various identifiers are affixed to a mail object, stored in a database, scanned from the mail object, and retrieved from the database. No special rules or details of the computers, databases, printers, or scanners are recited. Cf. McRO, 837 F.3d at 1315 (finding patent eligibility where the “claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results”); Thales, 850 F.3d at 1349 (finding patent eligibility where the “claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors”). There is no description of how the unique identifier is generated or how a unique identifier is different from a personal name, or return address. Rather, the claim language cited by Secured Mail merely recites that the unique identifier is generated by the sender. The fact that the sender generates a barcode, which itself is not claimed, does not render the idea any less abstract.

Concerning Alice Test, part II ("something more"), the court was no more merciful, saying (highlights again are mine):

In the Intelligent Mail Barcode patents, the sender-generated identifier is created by combining various pieces of data, such as a unique identifier, sender data,recipient data and shipping method data. The data need not even be in the form of a barcode, much less a specific new type of barcode. The claim language does not explain how the sender generates the information, only that the information itself is unique or new. The claim language does not provide any specific showing of what is inventive about the identifier or about the technology used to generate and process it. The district court is correct that the sender-generated identifier is not a sufficiently inventive concept. Id.at 1051–53.

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In software/computer tech patents, if a claim is going to recite a result, it is looking more and more like you must specifically claim how that result is achieved.

The problem with where these Alice Corp.-test cases are taking us is, all these requirements of specific showings and claim limitations, are totally severed from scope of the prior art. It ultimately feels like the courts are going to be requiring applicants to start out with a claim potentially far narrower than the prior art may actually require if you are going to get passed Section 101. So, even if the claims pass the Alice Corp. test and are deemed eligible, the resulting claims may not be as valuable as originally hoped.
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The Biting Rabid Whippet of Boston (1935)

by Steve Reiss (stevenreiss@scienbizippc.com)

Us whippet owners can never picture our quiet and far from aggressive whippets causing harm other than ripping cloth toys and shows to shreds.

Well, in 1935 or so, a rabid whippet managed to make its way onto a Boston elevated railroad car. Apparently, neither passengers or train staff had seen the whippet get on the train.

Mrs. Fiske was was bitten by the unattended whippet.The whippet, which was lying on the floor before the time when it bit the plaintiff, was in sight of the defendant's employees, for the first time.

Because the dog was stray, with no identifiable owner, Fiske tried to sue the railway. The Supreme Judicial Court of Mass, decided the case as follows:

There was evidence tending to show that the plaintiff boarded a west bound center entrance car owned and operated by the defendant at Park Street and paid her fare.

Thereafter while a passenger on said car she was bitten by a medium sized unattended whippet dog, which had boarded the street car at the defendant's subway station at Scollay Square. The defendant's agents and servants in charge of said car did not know of the presence of this dog in the car until the time when the plaintiff was bitten. The defendant had a rule which provided that small dogs were allowed on cars provided they were not permitted to annoy passengers. At the time of the injury the dog was lying on the floor of the car near the plaintiff and suddenly, while she was looking at the dog, he jumped at her face. She put out her hand to protect herself and the dog bit her finger. It later turned out that the dog was rabid. The evidence was contradictory as to how many passengers were on the street car at the time of the accident.

Even if we assume, as we do not decide, that the defendant's rule in regard to dogs was some evidence that the presence of this dog in the car was a probable source of harm to passengers, though its dangerous propensities were unknown, its presence in the car without the knowledge or fault of the defendant's agents or servants would not warrant a finding of negligence. It does not appear that any of the defendant's agents or servants knew before the plaintiff was bitten that the dog was in the car. And there was no evidence from which it could have been inferred that, in the exercise of the requisite degree of care, they should have known. Neither the presence of the dog nor common knowledge of the way the defendant's cars were operated in the subway warranted such an inference. And there was no evidence of the circumstances attending the stopping of the car at the Scollay Square station, where the dog entered the car. Furthermore, though the report recites that the evidence was contradictory in regard to the number of passengers on the car at the time of the accident, nothing in the evidence reported — which is all the material evidence — tends to show that there were so few passengers that the dog when lying on the floor of the car was in sight of the defendant's agents or servants. Negligence of the defendant, therefore, was not shown to be the reasonably probable explanation of the plaintiff's injury.

The case is FISKE v. BOSTON ELEVATED RAILWAY, 289 Mass. 598, 194 N.E. 835 (1935)

Dog Breeders and Trademarks (Part III)

by Steve Reiss (stevenreiss@scienbizippc.com)

Need for Trademark Protections...

It is far easier for brand new kennels, without a history, to receive a US trademark registration than register with the AKC. A US trademark can be applied for as early as when you have an intent to use the kennel name in commerce. That is, you can file for a US trademark before you are actually in business so long as the breeder has a bona fide intent to use the mark in commerce. Therefore, a US trademark can provide some protection for the kennel owner before the kennel is eligible for AKC registration. It is quite possible that if the new kennel files and receives its trademark early in the kennel's life, by the time the kennel name can be AKC registered in five or so years, the kennel's trademark may become incontestable.

So, new kennel owners should strongly consider whether acquiring a US trademark is a good investment for a business that is strongly dependent upon name recognition and good will. Reliance upon AKC registration, common law trademarks, or state trademarks, is simply not enough, especially for the critical first years in which the kennel is trying to establish the value of its dogs.

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Best of luck in the canine competition and exhibition world.

We are there if you need us...

This post is advertising material and not legal advice.

Dog Breeders and Trademarks (Part II)

by Steve Reiss (stevenreiss@scienbizippc.com)

In our previous post, we discussed the value of kennel names and the limited trademark-like protection provided to kennel's registered with the American Kennel Club (AKC).

We ended that post by raising the question of whether this AKC protection is enough?

The answer to that question can be "no".

First, the AKC protection does not give the kennel owner any protection outside AKC events or the registration of dogs with the AKC. With a registered US trademark, the kennel owner is protected nationwide against any unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. In other words, the US trademark will give its owner both wider territorial coverage and wider range of potential infringers. Indeed, a business' trademark is often considering that business' most valuable asset.

While admittedly an inability to be able to register a dog with a confusingly similar name with the AKC is a powerful tool. An inability to register the puppies with the AKC can make the puppies valueless. After all, it is the AKC chain of pedigree is what evidences value of a puppy.

Second, the AKC requires potential registrants to have a history with the AKC and a history of breeding or studing. This can mean a minimum of 5 years to be eligible to register with AKC. Accordingly, brand new kennels, without a history with the AKC, will be unable to register their kennel name and therefore potential shady kennels are free to have dogs with potentially confusing names registered with the AKC.

More to come...

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Best of luck in the canine competition and exhibition world.

We are there if you need us...

This post is advertising material and not legal advice.