INTRODUCTION -

Enactment of the America Invents Act was the biggest patent news of 2011, but its most comprehensive provisions were implemented September 16, 2012, and March 16, 2013. For example, one of its biggest components – the move to a first-inventor-to-file system – began on March 16th. Some of the major provisions which took effect on September 16th give patent challengers opportunities to make their cases at the Patent Office instead of in court.

Four different procedures were implemented:

- Preissuance submission of prior art

- Supplemental examination

- Interpartes review

- Special attack on business method patents.

In a significant en banc ruling, in the CLS Bank case, the U.S. Court of Appeals for the Federal Circuit ruled in May of this year that computer method and computer-readable medium claims on the formulation and trading of risk management contracts are not eligible for patent protection under 35 U.S.C. § 101 as drawn to mere “abstract ideas.” The court is divided 5-5 as to whether the computer system claims at issue are patent eligible.

The Supreme Court issued a ruling in a case involving a clash between two provisions of the Copyright Act, the first sale doctrine, 17 U.S.C. § 109(a), which gives the owner of a lawful copy of a creative work permission to dispose of the copy without interference from the copyright owner and Section 602(a)(1), which gives a copyright holder the right to block imports of a copy made overseas. In a 6-3 ruling, the Supreme Court held that the first sale doctrine applies to copies of works legally made overseas and imported into the United States without permission of the copyright holder.

Finally, just in time for the 2013 college football season, in the Hart case, the Third Circuit held in a right of publicity case that a video game maker’s “realistic representation[]” of a Rutgers University quarterback is not transformative, and therefore the use of the player’s likeness is not protectable expression under the First Amendment.