Wednesday, November 30, 2016

One thing website operators MUST do under new DMCA rule

My colleague Melissa Kern wrote an advisory about the copyright office's final rule regarding designating a DMCA agent. I thought it was important enough to repost (with permission) here.

Beginning December 1, 2016, the Copyright Office is rolling out its new online filing system for designating an agent to receive notices of copyright infringement. Website operators and other online service providers who store user content must submit new designated agent information electronically before the deadline to continue to take advantage of the Digital Millennium Copyright Act’s (DMCA’s) safe harbor from copyright infringement liability.

The new online filing system replaces the interim, paper-based system that had been used since the DMCA was first enacted in 1998. Under the old system, service providers could designate agents by sending in paper forms to the Copyright Office, which the Copyright Office then scanned and publicly posted in its directory of agents. Previous filings made under the old, paper-based system will continue to meet the DMCA’s requirements until they are phased out on December 31, 2017.

In connection with its new online filing system, the Copyright Office has issued its Final Rule relating to designating an agent with the Copyright Office. Highlights are as follows:

  • Beginning December 1, 2016, the Copyright Office will no longer accept paper agent designations. All new filings must be made electronically using the online filing system.
  • All service providers who have previously filed with the U.S. Copyright Office for DMCA safe-harbor protection under the old, paper-based system will have until December 31, 2017 to refile using the online filing system or lose the safe harbor protection. To do this, the service provider, or its designee, must establish an account that will be used to log into the system and register.
  • The DMCA filings will expire every three years, so they will need to be renewed. The Copyright Office’s new system will send out email reminders.
  • Filing fees are significantly lower ($6 per entity). There is no limit to the number of alternative names, URLs, service names, software names, and other commonly used names that can be listed on a service provider’s filing for this fee. All alternative names that the public would be likely to use to search for the service provider’s designated agent must be provided. However, separate legal entities must file separately and are not considered alternative names.
  • The designated agent does not have to be a natural person. Service providers now have the option to designate a specific person (e.g., Jane Doe), specific position or title of an individual (e.g., Copyright Manager), a department within the service provider’s organization or within a third-party entity (e.g., Copyright Compliance Department), or the service provider or third-party entity generally (e.g., ACME Takedown Service).
  • The designated agent’s physical mail address, telephone number and email address must be provided to the Copyright Office, and a designated agent may now provide a post office box to be displayed as its physical address. However, in a nod to technological obsolescence, a fax number is no longer required.

Melissa's original advisory can be found here.

Photo credit from

Thursday, November 17, 2016

One Weird Trick to Beat Alice Rejections (Examiners HATE This)

Alice v. CLS Bank has had a tremendous impact on how the patent office treats applications for business method inventions. Indeed, since the Supreme Court’s decision in Alice, the allowance rate for class 705 (Data Processing: Financial, Business Practice, Management, or Cost/Price Determination) dropped from a pre-Alice high of 31.2% in 2013, to 23.5% in 2014, 9.4% in 2015, and 4.7% in 2016. In a previous article I explained that one way to try and deal with this was to avoid claims which described something which sounded like a business method, even if doing so meant that the claims had to be somewhat vague. However, that may not be possible in all cases, and so the question becomes what to do when you’ve already been pigeonholed as a business method and need to overcome a rejection based on Alice.

The allowance rate statistics for class 705 reflect how difficult it is for a patent applicant to overcome an Alice rejection, but a close reading of the Federal Circuit’s opinion in Enfish, LLC v. Microsoft Corporation suggests a way forward. In that case, the Federal Circuit reversed a determination that a claim was directed to ineligible subject matter because “the district court oversimplified the self-referential component of the claims and downplayed the invention’s benefits.” However, the “self-referential component” wasn’t explicitly recited in the claim in question. Instead, it was incorporated as part of the supporting structure for a “means for configuring” that the claim actually did recite. Given that how a claim’s limitations should be treated when determining what it is “directed to” is often a point of contention when analyzing subject matter eligibility, the fact that means + function limitations are required by statute to be construed as covering the supporting structure described in the specification and its equivalents could provide a useful tool for responding to Alice rejections.

So can using means + function language in this way actually overcome Alice rejections? Yes, but examiners hate it. In one example from my practice, we were able to overcome an Alice rejection using a pre-appeal brief by pointing out that the rejection relied on improperly interpreting a software implemented means + function limitation as simply “a computer configured to perform processes.” Unfortunately, rather than this leading to the application being allowed, the result was that prosecution was re-opened with an 89 page long office action that attacked the means + function language at length for (allegedly) being both indefinite and not properly supported. Ultimately, we were able to overcome those rejections as well, but it required submission of a declaration walking through the corresponding structure in the specification and explaining how it would be understood by one of ordinary skill in the art. I believe the fact that we got the rejections in the first place and had to make such a submission to overcome them reflects a significant level discomfort on the part of the examiner (which I believe is much less the exception than the rule within the PTO) with software implemented means plus function limitations. Nevertheless, despite the fact that it might require dealing with an unfamiliar mode of analysis, if you’re faced with an Alice rejection, means + function language might just be the one weird trick you need to get a patent.

For a version of this post with supporting citations, see here.