USPTO Bills Applicant $1,249,075 in Excess Claim Fees

Thanks to the Patently-O Blog for posting this Notice to File Missing Parts requesting payment of $1,249,075 for the 13,305 claims in U.S. Patent Application Serial No. 11/006,891 entitled Electrical Devices and Anti-Scarring Agents. "As would be expected," writes Dennis Crouch, "the patentee quickly submitted an amended specification that cut the disclosure to three independent claims and 96 dependent ones — thus reducing its PTO bill to only two grand."

The EEJD Blog points out that "The 'Pre-Exam Formalities Notice' indicates a $999,600 fee for 9,996 independent claims over 3, and a $249,475 fee for 9,979 total claims over 20. Apparently, either the PTO system is unable to process more than 9,999 claims, or the PTO stops charging for claims greater than 9,999," writes Brandon Rash.

With just 453 pages of written description, "there were 1441 pages worth of claims," writes Canadian Patent Attorney Sander Gelsing at the Now, Why Didn’t I Think of That Blog:

I do note that all the inventors are Canadian and that the first-listed inventor is Dr. William Hunter - President and CEO of Canadian based Angiotech Pharmaceuticals, Inc.

Unfortunately I wasn’t able to find an exact corresponding Canadian application
(it may not have been published yet). The closes one I did find was CA 2,388,844, with only 354 claims.

However, had they filed an application with 13,305 claims in Canada, the filing fee would have been a mere $200 for a small entity; and that’s Canadian dollars. Unlike the USPTO, our Patent Office does not charge an additional fee based on the number of claims.

U.S. Proposes New Tax Regulations for Valuation of Intangibles

On August 24, 2005, the U.S. Treasury Department and Internal revenue Service announced proposed regulations regarding methods to determine taxable income in connection with "cost sharing arrangements" between controlled taxpayers. "The regulations take aim at how related companies value so-called 'intangibles,' such as research and development, patents and other inputs," writes Edward Alden in The Financial Times
on August 25, 2005.The proposals would limit cost-sharing arrangements that allow companies to undervalue patents, licenses, trademarks and other intellectual property rights that are transferred to a subsidiary company. According to WebCPA, "The changes could mean a big difference to the bottom lines of companies whose main asset is their intellectual property."

Under such cost sharing arrangements, related parties will agree to share the costs and risks of intangible development in proportion to their reasonable expectations of benefit from the separate exploitation of the developed intangibles. The second sentence of 26 U.S.C. Section 482 enunciates a "commensurate with income" standard for transfer or licensing of the developed intangible property and requires that the income from the agreement be commensurate with the income attributable to the intangible. The proposed regulations are intended to provide further guidance under the "arms-length standard" in 26 CFR §1.482-1(b)(1) regarding “the results that would have been realized if uncontrolled taxpayers had engaged in the same transaction under the same circumstances.”

U.S. tax authorities have now proposed an "investor model" in which each controlled participant may be viewed as making an aggregate investment, attributable to both cost contributions
(ongoing share of intangible development costs) and external contributions (the preexisting advantages which the parties bring into the arrangement), in order to achieve an anticipated return appropriate to the risks of the arrangement. Valuations are not appropriate if an investor would not undertake to invest in the arrangement because its total anticipated return is less than the total anticipated return that could have been achieved through an alternative investment. The appropriate “price” of undertaking a risky investment is typically determined
at the time the investment is undertaken, based on the ex ante expectations of the investors. According to the proposal:

Given the uncertainty about whether and to what extent intangibles will be successfully developed under a cost sharing arrangement, ex post interpretations of ex ante expectations are inherently unreliable and susceptible to abuse. Accordingly, an important implication of determining the arm’s length result under the investor model, reflected in the methods, is that compensation for external contributions is analyzed and valued ex ante. The ex ante perspective is fundamental to achieving arm’s length results.

Under-priced transfer agreements for intangible assets such as intellectual property have long been a target of tax collectors for allowing companies to stash income in overseas tax havens while still providing their U.S. parent companies with deductions for research and development expenses. For example, Ireland has a corporate tax rate of 12.5 percent, while the U.S. has a 35 percent federal rate plus additional amounts charged by states. According to the American Shareholders Association, this year's one-time discount for such tax liabilities under the Invest
in USA Act has repatriated about $200 billion from multinational corprations at an effective
U.S. tax rate of about 5.25 percent.

"This Treasury development makes it even more clear that patent holders must have a strategy for managing their intellectual property that includes a mechanism for measuring value, says Bill Black, a CPA and valuation consultant in Atlanta. "Like FAS 141/142, which required IP valuation in acquisitions, this means that you need to be able to segregate the prospective cash flows from the various components of your intangible assets, and be
prepared to defend the methodology you use to measure that which cannot be seen, touched, or
tasted."

Written or electronic comments must be received on or before November 28, 2005. Requests to speak and outlines of topics to be discussed at the public hearing scheduled for November 16, 2005, at 10:00 a.m. must be received by October 26, 2005.

Click here for more informationon "Technology Pricing Through Risk Allocation."

U.S. Trademark Official Gazette Searchable Via TESS

The United States Patent and Trademark Office (USPTO) Trademark Electronic Search System (TESS) now features a new Trademark Official Gazette (TMOG) "search line." By entering the publication date of a particular TMOG into the new search line, users can generate a list of all marks published for opposition in that TMOG, or a list of all new registrations published in that TMOG. Additionally, users can refine those lists so that they include only marks published in a particular TMOG that have particular characteristics.

While the TMOG is published each Tuesday, the TESS records for particular marks generally do not include the TMOG publication date for the mark until the following Wednesday. Hence, a search of a particular TMOG issue that is conducted on the day that issue is published may not yield any results.

Design Inventorship Contributions Must Be Substantial

In Sunbeam Products, Inc. v. Wing Shing Products (BVI) LTD. (Fed. Cir., August 24, 2005; nonprecedential) the court affirmed that changes suggested by Sunbeam's Mr. Coffee employees were not sufficient to rise to the level of joint inventorship for the Wing Shing coffeemaker claimed in Design Patent No. 348,585 (right).

Between August 1991 and early 1992, employees of Mr. Coffee had a series of communications with representatives of Wing Shing regarding the coffeemaker design. In the course of those communications, Mr. Coffee employees asked that the design be changed by (1) eliminating grooves on the brew basket; (2) eliminating ridges on the reservoir cover; (3) moving the power switch from the base to the left column; (4) opening the brew basket from the left to right; (5) moving the water-level gauge from the right column to the left column; (6) inserting a metal plate on the bottom of the base; and (7) adding a shroud around the power switch. Wing Shing incorporated those changes into the design, which became known as the "AD10" model design.

The court concluded that the changes suggested by Mr. Coffee were no more significant than those made by the party claiming inventorship in Hoop:

Sunbeam argues that the district court applied the wrong test when it ruled
that the "improved design must contain an inventive concept." We disagree. In
Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2004), we stated that "minor
differences between the prior art and the new claim will not suffice" to make
the person who suggested the changes that resulted in the differences an
inventor. We added that the differences "must be substantial and not just superficial; the new design must contain an inventive concept." Id. (citations omitted). In particular, as a result of the changes to the design of an eagle-shaped motorcycle fairing guard made by the party claiming inventorship, the new fairing design had a noticeably different visual appearance. "must be substantial and not just superficial; the new design must contain an inventive concept." Id. The district court therefore
did not err by employing the "inventive concept" test. Furthermore, the bankruptcy court found that the Mr. Coffee employees’ contributions were not significant, considering the overall appearance of the coffeemaker as well as the limited and mainly functional nature of the suggested changes. In Hoop, we also articulated the ultimate test for design patent inventorship to be "whether the second asserted invention is ‘substantially similar’ to the first." In that case, we agreed with the trial court that the party claiming inventorship was likely not an inventor because the new fairing design had "strong similarities" to the drawings provided to that party by the inventor. Id. at 1008. In the present case, the changes suggested by Mr. Coffee are no more significant than those made by the party claiming inventorship in Hoop. Accordingly, we affirm the bankruptcy court’s ruling that Mr. Coffee was not a joint inventor of the ’585 patent.

CIPO Limits Subject Mastter of International Patent Searches

Rule 39.1 of the Patent Cooperation Treaty lists subject matter for which an International Searching Authority (ISA) shall not be required to conduct a search of an international application. It includes "methods of treatment of the human or animal body by surgery or therapy." In light of this rule the Canadian Intellectual Property Office ("CIPO") has taken the position that

An international search will be conducted on all subject matter which would
normally be searched and examined in a domestically filed patent application.
Therefore, the following subject matter will be excluded from the search:

• methods of medical treatment of living humans and non-humans intended to
  improve the function or health of a living part of a body which include the
  manipulation of the body or its organs or tissues using electrical or mechanical
  means for the prevention or treatment of pathological conditions;
• surgical methods (invasive procedures); and
• methods of use claims and use claims including manipulative steps.

A search will be carried out for the following subject matter, provided that
they do not include surgical steps:

• diagnostic methods;
• cosmetic methods; and
• methods of treatment of animals to derive an economic benefit;

and the CIPO will interpret the following subject matter:

• methods of use claims directed to medicinal use which do not include
  manipulative steps as a use claim, without any manipulative steps. A search will
  be carried out based on this interpretation.

80% of UK Businesses Not Registering Marks

According to the UK Patent Office, more than 80% of small and medium-sized enterprises have not registered the name of their business as a trade mark. Of the entrepreneurs surveyed, 55% believe that they have protected their name enough, 44% think that they do not have enough protection and the remainder do not know. Many mistakenly believe that registering their name at Companies House alone is enough. The research was conducted as part of the Patent Office’s intellectual property awareness campaign for businesses called "What is the Key?"

Search the U.S. Manual of Patent Examination Procedure

Scott E. Kamholz has created an Internet portal that allows users to perform a full-text search of the electronic USPTO Manual of Patent Examination Procedure. The site also offers access to the USPTO Patent and Patent Application Publication Databases and other resources.

WIPO Comes to UCLA to Discuss the International Patent System

The International Patent System: WIPO Comes to UCLA
UCLA School of Law, Los Angeles, California USA
Friday, September 16, 2005

This one-day symposium brings together practitioners and intellectual property experts from the international, national and academic spheres to consider the International Patent System with particular focus on:

• The Current State of the Global Patent System
• Patent Portfolio Management: Strategies, Considerations and Best Practices
  Resolution of Global Patent Disputes
• Bridging the Gaps: North-South; North-North
• Looking East/Looking West
• The PCT, Patent Law Harmonization, and the Future of International Patenting

Read the program here, then regsiter here.

Community Design Registrations for Packaging?

In "European Union: Eight out of Ten Cats Prefer," (free subscription) Howrey's David Stone discusses a decision of the High Court of England & Wales, refusing an injunction sought by cat food manufacturers Masterfoods. According to Stone,

"The case demonstrates some of the difficulties of proving passing off, particularly at an interim stage of proceedings. Proving a likelihood of deception (or, preferably, actual deception) based merely on colours and slogans is difficult, especially where the allegedly infringing product is also branded with dissimilar word trade marks.
Masterfoods' case may have been easier if its registered rights were more solid, rather than having to rely on packaging registrations from 1995.

Producers of consumer goods may therefore wish to consider:

• Registering Community Designs, which now provide a quick and cost effective method of obtaining registered rights (including in colour) for each year's range of new packaging. The "overall impression" test for infringement of amRegistered Community Design may well provide additional protection against copycat or look- alike products;
• Applying to register as colour per se marks the key colour/s of their
  product packaging. These registrations have been affirmed by the European Court of Justice in limited circumstances; and
• Reviewing their IP portfolio, to ensure that trade mark and design
  registrations for logos and packaging are up to date: there is little point to
  maintaining old trade mark registrations for packaging that has not been used
  for five years, as the marks will be vulnerable to revocation for
  non-use."

NAPA Report Recommends USPTO Incorporation and More

On August 25, 2005 the National Academy of Public Administration released its report entitled "U.S. Patent and Trademark Office: Transforming to Meet the Challenges of the 21st Century" (PDF, HTML) recommending that

1. Congress create the U.S. Patent and Trademark Corporation (USPTC) as a wholly owned government corporation under the policy direction of the Secretary of Commerce, with the appropriate authority to borrow, set fees (within parameters Congress would set), and issue its own regulations
2. Congress take steps to ensure that all fees USPTO collects during future fiscal years are available for its use without fiscal year limitation
3. USPTO examine the potential to outsource the search function to a federally funded research and development center that would work exclusively for USPTO
4. Congress amend patent law by establishing a specific maximum number of continuations that will be allowed for any patent application
5. USPTO monitor the results of quality reviews to (1) ensure that their implementation does not result in denying or seriously delaying patents to deserving inventors, and (2) identify the appropriate number of reviews needed to sustain quality without adversely affecting pendency.
6. Congress amend patent law to allow post-grant review that provides for (1) administrative patent judges conducting the process and (2) an appeals option to the Court of Appeals of the Federal Circuit. With regard to the other elements of a post-grant review process:

The grounds for a challenge be limited to patentability and not
enforceability.

Discovery be limited to cross examination on matters relevant to the grounds for review.

Estoppel from further litigation be limited to those issues raised and
resolved in the proceeding.

The patent owner be permitted a single narrowing of any claims, with the addition of dependent claims on good cause shown

Wiuth regard to Examiner workforce availability and skills, the Panel also recommended that the USPTO

1. Develop strategies to make theirs a more positive, collaborative organizational culture
2. Work with Congress and OPM to develop an impasse resolution system that permits prompt renegotiation of work processes and pay rates
3. Systematically determine why patent examiners are likely to leave within their first three years with the office and determine if it can make accommodations to retain them
4. Develop competitive recruitment programs (a “patent scholars program”) to raise USPTO visibility on campuses and attract more of the best graduates
5. Use more of the hiring flexibilities now permitted under its status as a performance-based organization and general federal personnel regulations

The National Academy of Public Administration is an independent, non-partisan organization chartered by Congress to assist federal, state, and local governments in improving their effectiveness, efficiency, and accountability. Learn about the Academy's vision, mission, and values.

USPTO Reminds Applicants to Remove Personal Information from Filings

According to Tom Ramstack writing for the Wshington Time on August 23, 2005, U.S. Patent and Trademark Office records allow nearly unlimited access to the Social Security numbers, credit card numbers and bank account numbers of hundreds of individual inventors who petition to reclaim their patent rights each year.

In response to a lawsuit filed by David Brown, who noticed the identity-theft vulnerability when he petitoined to reinstate one of his patents in 2003, the Office agreed to publish Privacy Act statements on patent forms telling inventors their personal information could be disclosed in public records. The following an advisory appeared on Aug. 10 at http://www.uspto.gov

To Our USPTO Customers:

When filing documentation in support of applications or petitions, please take steps to protect all personal information. “Personal information” includes social security, credit card and banking account numbers. This type of personal data is never required by the USPTO to support a petition or application.

To protect your privacy, we suggest that you delete such information from any documentation you send the office. Alternatively, you may request that the submissions be kept out of the public file, if appropriate. (See MPEP
Sections 724. 02 to 724.06.)

Please remember that all patent application files are published and made available to the public 18 months from the filing date, unless a non-publication request is made in the application. Additionally, all patented application files will become available to the public upon the grant of the patent.

If you have questions about what information may be published and how to remove the material from documents you plan to submit to the USPTO, please call the Inventors Assistance Center at 1-800-786-9199 or 571-272-1000 TTY: 571-272-9950.

TGIF for Technology Pricing through Risk Allocation

Tradition has it that the rationale behind the 2-10% patent royalty rate "rule-of-thumb" starts with an a 25% gross profit margin on sales of a patented product before application of the "Goldscheider 25% Rule:"

"All things being equal, a licensee will pay 25 percent of profits as a reasonable royalty."

According to an August 4, 2004 article in IP Law & Business, Robert Goldscheider arrived at this now-famous calculation in 1959 when one of his clients, Philco Corporation, had about 18 European licensees for its radio and phonograph patents. Goldscheider calculated that Philco's licensees assumed the major risk of commercializing their products, about 75 percent. That left 25 percent of the risk to licensor Philco, reflected in a 25/75 percent split of pretax profits. Probably the best-known economic damages expert in the nation, the 75-year-old Goldscheider is reputed to have testified in more than 100 IP cases. "I have three homes, am worth several million dollars," he told Victoria Slind-Flor, "I don't have to work unless I want to."

And while you're out earning your next million, you may want to allocate some time to read "Technology Pricing in Joint Ventures," (PLI 2005) by Mark Petersen who writes that "pricing technology effectively is often more a means of extracting a fair share of the technology's value than one of putting a fixed dollar sum today on the potential future benefits to be derived from the technology. Techniques of finding means to fairly split the value given a range of potential risks and possible outcomes are those that will produce the best long term results." Instead of using Goldscheider's a rule-of-thumb, Petersen suggests a market-based financial analysis for quantifying each party's knowledge and assumptions relating to value in order to allocate risks and apportion the ultimate cash flow from the technology.

Thank Goodness It's Friday (and I don't have to work this weekend, unless I want to. . . ),

--Bill Heinze

PCT File Histories Now Online

As part of its PatentScope Portal, the World Intellectual Property Organization has made its PCT Online File Inspection System available for testing and comments. The new system includes the complete collection of published PCT International Applications from 1978 to the present, including access to selected documents of the PCT international phase file.

This prototype has been developed with the aim of publication in electronic form only of international applications and of the PCT Gazette, and includes changes which make the data more complete, usable, and searchable. More information on the content of the database is available. WIPO welcomes any comments you may have on this new prototype.

CRS Reports Available from Franklin Pierce Law Center

The Franklin Pierce Law Center IP Mall now offers the full text of intellectual property, cyberlaw, and electronic commerce publications of the Congressional Research Service (CRS), the 741-person, $68 million-per-year "think tank" that works exclusively for Members and committees of the United States Congress. CRS is a department of the Library of Congress works exclusively as a nonpartisan analytical, research, and reference arm for Congress. According to the FPLC,

The availability of CRS Reports has become controversial in recent sessions
of Congress. Currently, Members of Congress are permitted to provide
constituents with copies of CRS reports and issue briefs upon request. Several commercial and noncommercial services make attempts to fill the need for public access to this information. Penny Hill Press http://www.pennyhill.com/ has a topically arranged bibliography of recent CRS reports available at modest prices. The reports presented at this [FPLC] site were purchased from Penny Hill Press which has created a customized profile for the IP Mall and ships all current CRS reports on a standing order basis.

Llinks to other "U.S. Government IP Resources" are available from the FPLC here. For more, check out their "IP Links - Topical Index Sitemap" here.

Improved Copyright Searching Coming Soon

The U.S. Copyright Office has announced that an improved copyright searching system called "eCO Search" will be available on the Copyright Office website about October 1, 2005. eCO Search will offer new features, including keyword searching and the use of a single database containing records since 1978 for monographs, serials, and recorded documents. All of the approximately 20 million records for registrations and recorded documents in the current system will be migrated to the new eCO Search database.

Until then, search U.S. Copyright Office records here. To find out more about searching Copyright Office records and on services provided by the Reference & Bibliography Section, see:

• How to Investigate the Copyright Status of a Work (Circular 22)
• Have the Copyright Office Conduct a Search for You
• The Copyright Card Catalog and the Online Files of the Copyright Office (Circular 23)

Time to Retool Your Legal Research Toolkit?

In "Blend Your Legal Research," (Law Technology News, July 2005), David Whelan explains why now may be a terrific time to retool your legal research toolkit with "mid-tier" legal research services:

"They include Fastcase Inc. (http://www.fastcase.com/); Loislaw.com Inc. (Wolters Kluwer) (http://www.loislaw.com/); VersusLaw Inc. (www.versuslaw.com); and the bar association consortium product, Casemaker (http://www.lawriter.net/). What unites these products is inexpensive access to primary case and statutory law. In some cases, the service is free with a bar association membership. . . ."

"Casemaker boasts more than 20 state bar associations using its product — and four more on the way — with each state bar paying for, and selecting, the jurisdictions they want included. . . . Fastcase, Loislaw, and VersusLaw all offer 50 state case law and statutes, and federal case law and statutes. But just as with Casemaker, a firm can access just the parts they want."

Chinese I/P Strategy Directed by Deng Theory and the Three Represents

The State Intellectual Property Office of the P.R.C. ("SIPO") has announced the start of work on a new national intellectual property strategy. In an introductory speech, the recently-appointed commissioner of the SIPO, Tian Lipu, reportedly said that "The strategy-making work should be directed by Deng Theory and the important conceptions of the Three Representatives. At the same time, it should follow the following basic principles, such as government-oriented, innovation-based, coordination-emphasized, etc."

Deng Xiaoping (1904-1997) theorized that China was in the primary stage of socialism and that the duty of the Communist Party of China was to perfect "socialism with Chinese characteristics." The goals of Deng's reforms were summed up by the Four Modernizations -- agriculture, industry, science and technology, and the military -- to be achieved through a socialist market economy.

Deng selected Jiang Zemin as a compromise replacement for Party General Secretary Zhao Ziyang after opposition to the military crackdown of the Tiananmen Square protests in 1989. Unlike Deng, Jiang was a neo-conservative, beleiving that social progress is best accomplished through gradual reform of society. His Three Represent[ative]s speech at the 16th Communist Party Congress was credited with legitimizing the inclusion of capitalists and private entrepreneurs in the Party with the phrase "the Party must always represent the requirements of the development of China's advanced productive forces."

As with the SIPO press release, some of the vagueries in interpreting the Three Represents may be due to translational difficulties. Even so, many Chinese, including members of the Party, found Jiang's original speech to be incomprehensible. Although open criticism of the theory is taboo, there have been reports of private unease about its implications from inside the Party. Many have disliked the equation of businessmen with "advanced productive forces," believing that this approach ignores the widening social gap between the rich and poor. Others have feared that promotion of the Three Represents could lead to another cult of personality.

Although his term was supposed to last until 2007, in March 2005, Jiang was succeeded in his last official post by Hu Jintao. Signs of a widening split between Jiang and Hu had appeared weeks before, including publication of a photograph of Hu and Deng, with the image of Jiang washed out. Nonetheless, this latest transition of power was the first peaceful one since the formation of the People's Republic in 1949.

Hu and Premier Wen Jiabao have attempted to move China away from a policy of favoring economic growth at all costs, toward a more balanced view of growth that factors in social inequality and environmental damage. Unlike Jiang and his "Shanghai Clique," both Wen and Hu hail from, and have cultivated their political bases in, the vast Chinese interior. Their policies have so far appeared to focus on the plight of The Three Nongs: nongmin (peasants), nongye (agriculture) and nongcun (rural communities).

Nonetheless, it appears unlikely that there will be any sudden shifts in China's intellectual property policy under the new Chinese leadership. As Commissioner Tian also pointed out in the SIPO press release, "strategy-making work is a glorious but hard task. There is a lot of research work and coordination work need to be done."

In the meantime, you can do your own research work on "Chinese numbered polices" here.

Experts Still Testifying after Phillips Decision

Did the Federal Circuit's decision in Phillips v. AWH Corporation sound the death knell for expert testimony in Markman hearings? Not likely, sources tell Robert Ambrogi writing for the "Bullseye" bulletin from IMS ExpertServices:

"While lawyers agree Phillips is unlikely to have much impact on the use of expert testimony in claims construction, they also agree that both the trial and appellate courts have broad discretion in this regard. Perhaps the Federal Circuit in Phillips said it best: '[T]here is no magic formula or catechism for
conducting claim construction. Nor is the court barred from considering any
particular sources or required to analyze sources in any specific sequence, as
long as those sources are not used to contradict claim meaning that is
unambiguous in light of the intrinsic evidence.'"

Is Practicing Law a 'Sexy' Job?

According to Carl Jones writing for the Daily Business Review on July 25, 2005, a recent survey of 5,000 people by Salary.com found that lawyers ranked second to last on a list of the top "sexiest" jobs. The top three "hot jobs" were firefighter, flight attendant and chief executive officer. Lawyers ranked just below doctors (#9) and just above veterinarians(#10). News reporters ranked third, in a three-way tie with interior designers and event planners. "That seems preposterous enough to invalidate the whole survey," writes Jones, who obviously never practiced law.

Myhrvold on Invention without Production

Microsoft's former Chief Technologist and current CEO of Intellectual Ventures, Nathan Myhrvold, reportedly told told the Progress & Freedom Foundation's annual conference on Tuesday that "before you get worked up about this gigantic [patent troll] problem, you ought to see what the facts are."

According to Declan McCullagh, writing for CNET News.com in ZDNet News on August 23, 2005, Myhrvold also said that "Almost everything you have heard about patent litigation statistics is not true. Patents are the least litigious part of intellectual property law. There isn't any hard data to support [the view that this is a problem]. This is a great example of people having a bunch of anecdotes . . . I don't see that it's wrong to invent without making products."

Read more about "patent trolls" and other such "patent Foolishness."

USPTO Information Now Available by RSS Feeds

The good folks at ReThink(ip) have launched four RSS feeds that mimic the categories used by the Office:

• Official Gazette and Federal Register Announcements (feed: http://feeds.feedburner.com/RethinkIP_USPTO_OG )
• General news items (feed: http://feeds.feedburner.com/RethinkIP_USPTO_GEN )
• Patent news items (feed: http://feeds.feedburner.com/RethinkIP_USPTO_PAT )
• Trademark news items (feed: http://feeds.feedburner.com/RethinkIP_USPTO_TM )

They also offer a fifth feed includes ALL items for each of the four categories listed above (feed: http://feeds.feedburner.com/RethinkIP_USPTO_ALL )

"Go ahead and subscribe," they write. "Who knows, you might find yourself actually reading PTO news and notices on a regular basis!"

Hey guys, nice work! Don't forget to add the European Patent Office feed at http://www.european-patent-office.org/_data/update/rss.xml and the various WIPO feeds at http://www.wipo.int/news/en/newsfeed.jsp.

Free Telephone Seminar on Antitrust Limits to IPR

Teleconference
"Antitrust Limits to Intellectual Property Rights Teleconference"
Thursday, September 08, 20051:00 PM EDT to 2:00 PM EDT

This session will address the antitrust limits to intellectual property rights and federal government enforcement of antitrust laws in the intellectual property arena. The following will be discussed:

• Antitrust counterclaims based on invalidity, unenforceability, and non-infringement of utility patents;
• Antitrust issues arising from allegedly exceeding the scope of an otherwise valid and enforceable patent; and
• Recent developments at federal agencies regarding IP.

Kilpatrick Stockton Partners Peter Boyle, Connie Robinson, and Russ Wofford will address these and related issues during the session.

Register here. Kilpatrick Stockton will apply for CLE credit from Virginia, North Carolina and Georgia. If you are interested in credit from one of these states, please provide State and Bar Number at the time of registration. If you have any questions regarding CLE credit, please contact either your state bar association or Caroline Hayden (CHayden@KilpatrickStockton.com).

European Patent Examiner Prevents Inadvertent Estoppel

In Tap Pharmaceutical Prods. v. Owl Pharmaceuticals (Fed. Cir. August 18, 2005), a patent examiner inadvertently saved TAP's European counsel from creating a signifcant estoppel against the corresponding U.S. patent. In this case, TAP had stated to the European examiner that the invention did not include a polymer made from lactide or glycolide:

"As the district court explained, however, while the applicant for the European patent characterized the claims in that manner, the European patent examiner rejected that characterization, stating that the applicant "does not appear to be correct in saying that the polymer of the present application is different from polymerized glycolide and/or lactide." In light of the European examiner’s rejection, it is reasonable to conclude that TAP receded from that characterization of its claims, which it did not repeat in the course of the prosecution of its U.S. patents. It was therefore proper for the district court to attribute little weight to the statements made to the European examiner."

Knowledge of Importation of Product Sold Overseas Not Infringement under §271(a)

In Memc Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., et al. (Fed Cir., August 19, 2005) , the court considered whether certain of SUMCO’s activities in the United States, as would be construed by a reasonable jury, are sufficient to establish an "offer for sale" or "sale" within the meaning of 35 U.S.C. § 271(a). Section 271(a) provides as follows:

Except as otherwise provided in this title, whoever without authority makes,
uses, offers to sell, or sells any patented invention, within the United States
or imports into the United States any patented invention during the term of the
patent therefor, infringes the patent.

In this case, the court did not think that MEMC presented any relevant evidence to support its claim that SUMCO offered to sell the accused wafers to Sumsung Austin in the United States:

MEMC points to no evidence of negotiations occurring in the United States
between SUMCO and Samsung Austin. At the same time, transmittal of e-mails
containing technical data from SUMCO to Samsung Austin cannot constitute an
"offer for sale."

First, unlike the price quotation letters in 3D Systems, the e-mails, while containing a description of the allegedly infringing wafers, do not contain any price terms. Accordingly, on their face, the e-mails cannot be construed as an "offer" which Samsung Austin could make into a binding contract by simple acceptance. See Rotec Indus., 215 F.3d at 1251. MEMC contends that the e-mails contain an implicit price term—one that has been previously agreed upon by Samsung Japan and SUMCO. However, in the circumstances of this case (where the e-mails did not incorporate a price term), any negotiations that may have occurred between Samsung Japan and SUMCO outside of the United States are irrelevant to the inquiry of whether, in the United States, SUMCO has offered to sell the accused wafers.

Turning to the question of actual sale, the undisputed evidence is as follows: (1) Samsung Japan alone controls when SUMCO receives an electronic purchase order and how many wafers are ordered; (2) Samsung Japan designates a third party packaging company to transport the wafers to Samsung Austin; (3) Samsung Japan arranges for the packaging, labeling, and shipping of the wafers; and (4) Samsung Japan pays SUMCO electronically for the wafers after they are delivered by the packaging company. Significantly, as far as the sale is concerned, MEMC points to no additional evidence. Thus, any "sale" of the wafers took place between SUMCO and Samsung Japan, and the sale occurred in Japan where all of the essential activities took place.

However, as noted above, MEMC presents no evidence that SUMCO entered into
any negotiations with Samsung Austin in the United States concerning the accused
wafers and no evidence that title of the wafers passed directly from SUMCO to
Samsung Austin. Mere knowledge that a product sold overseas will ultimately be
imported into the United States is insufficient to establish liability under section 271(a). See Rotec Indus., 215 F.3d at 1251 (finding that the only activities that are relevant to direct infringement are those activities that take place within the borders of the United States). In short, MEMC has presented no evidence demonstrating that SUMCO sold the accused wafers to Samsung Austin in the United States. Based upon the foregoing, we see no error in the district court’s grant of summary judgment of no direct infringement under 35 U.S.C. § 271(a).

Disclosed Embodiment Limits Flotation Units to Being Hollow and Airtight

In Ocean Innovations, Inc. v. Rick Archer (Fed. Cir., August 18, 2005, nonprecedential), the court concluded that one skilled in the art would understand the term "flotation units" in claim one of U.S. Patent No. 5,682,833 (left) to be referring to units that are "hollow as well as airtight:"

1. A method of placing a floating craft having a hull with an upwardly curved
bow onto a dry dock comprising the steps of:
selecting a plurality of
floatation units from a first group of floatation units having a first buoyancy
and a second group having a second buoyancy . . .

The court began by quoting from Phillips v. AWH Corp., Nos. 03-1269, -1286, __ F.3d __ (Fed. Cir. 2005) (en banc) that "the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms:"

We further noted that, "[i]n the end, there will still remain some cases in
which it will be hard to determine whether a person of skill in the art would
understand the embodiments to define the outer limits of the claim term or
merely be exemplary in nature." Id. slip op. at 30. However, we stated that "we
nonetheless believe that attempting to resolve [the] problem in the context of
the particular patent is likely to capture the scope of the actual invention
more accurately than either strictly limiting the scope of the claims to the
embodiments disclosed in the specification or divorcing the claim language from
the specification." Id. slip op. at 30 (emphasis added).

With those principles in mind, we turn to the term "floatation units" in the
’833 patent. Doing so, we conclude that one skilled in the art would understand
the term to be referring to units that are hollow as well as airtight.

The very first sentence of the patent [abstract] characterizes the overall invention of the ’833 patent as a "floating, drive-on dry dock assembly for small craft [that] is
assembled from two kinds of hollow floatation units." This communicates to one skilled in the art that a characteristic of a "floatation unit" in the invention of the ’833 patent is that it is hollow.

Continuing, the ’833 patent’s specification describes the claimed floatation units with reference to prior art devices that also contain hollow units. The "Background of the Invention" section of the patent describes the prior art with reference to U.S. Pat. Nos. 3,824,664 and 4,603,962. According to the ’833 patent’s specification, "[t]hese patents describe hollow cubical units[.]" In particular, the prior art units were "provided with bungholes so that the units could be partially flooded to lower the water line of some or all of the units."

Most importantly, the "Summary of the Invention" section of the patent states: The dock is "assembled from a combination of tall and short, hollow, air-tight floatation units." Finally, in the preferred embodiment "all of the floatation units 12a-l and 14a-g are hollow and air tight." In the preferred embodiment, the tall floatation units
(12a-l) are described as being "substantially similar to that shown in U.S. Pat.
Nos. 3,824,644 and 4,604, 962[.]" These are the same two patents previously described in the Background of the Invention section as containing "hollow" units that can be flooded with water.

We think that one skilled in the art reading the ’833 patent claims, in light of the ’833 patents’ disclosure, would understand that the "floatation units" in the claimed invention are hollow. See C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 863-864 (Fed. Cir. 2004) (where a patentee had "globally" defined a "plug" for an implantable prosthesis as having a pleated surface, the term "plug" was so construed); Scimed Life Sys. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) ("[T]he characterization of the coaxial configuration as ‘part of the
present invention’ is strong evidence that the claims should not be read to
encompass the opposite structure.").

Jet Dock’s argument to the contrary presumes the conclusion that it seeks. To assert that "hollow" is improperly importing a limitation into "floatation units" is to presume that the "floatation units," as claimed in the ’833 patent, are not characteristically hollow. That argument, however, presumes to know the meaning of "floatation units" to one skilled in the art—which is the very issue at hand. We do not think that to construe the "floatation units" as hollow is importing a limitation into the claims when the specification makes clear that hollowness is an inherent characteristic of the "floatation units" in the claimed invention. In sum, we construe claim 1 of the ’833 patent as directed to floatation units that are airtight and hollow.

Argument-Based Estoppel Avoided by Simultaneous Unrelated Amendment

In Aquatex Industries, Inc. v. Techniche Solutions (Fed. Cir.; August 19, 2005) the court did not find the "clear and unmistakable surrender of subject matter required to invoke argument-based prosecution history estoppel." In this case, the dispute centered on whether the term "fiberfill batting material" in U.S. Patent No. 6,371,977 (left) should be construed to encompass only synthetic fibers in the following claim:

A method of cooling a person by evaporation, comprising:
providing a multi-layered, liquid-retaining composite material comprising a fiberfill batting material, and hydrophilic polymeric fibers that absorb at least about 2.5 times the fiber’s weight in water;
soaking said multi-layered composite in a liquid;
employing said multi-layered, liquid-retaining composite material as a garment or a flat sheet and evaporatively cooling said person.

The specification stated "[t]he particular fiberfill is not known to be critical. That is, any commercial fiberfill may be used as long as it does not adversely affect the performance of the end composite." However, all of the cited examples were comprised entirely of synthetic materials. The extrinsic evidence of record, in the form of technical dictionaries, also supported construing "fiberfill" as a purely synthetic fiber because it is consistently defined as such.

The claim was also rejected for lack of novelty over U.S. Patent No. 4,897,297 ("the ’297 patent") where the examiner noted that the disclosed fiberfill batting material was a "mixture of synthetic polymer pulp or wood pulp, which is a fiber." However, in response to the rejection, AquaTex amende the claim to include the "evaporatively cooling" limitation and stated that "the ’297 Patent fails to disclose or suggest the fiberfill batting and polymeric fibers and/or particles of the composite material in the claimed method."

Nonetheless, the Federal Circuit did not find a clear disavowel of claim scope:

Techniche and the trial court believe this argument limited claim coverage of fiberfill to only synthetic fibers. The argument, however, does not address or even relate to the composition of the fiberfill batting. Rather, it was based on the ’297 patent not teaching or suggesting the overall composition of materials, or the use of the disclosed compress to cool a person through evaporation. The compress of the ’297 patent was designed to retain much of its liquid over long periods of time, thus giving the material a high heat capacity and a high insulative value. ’297 patent, col. 6, ll. 24-55. The claimed invention of the ’977 patent achieves
cooling through evaporation.

The arguments made during prosecution, and the corresponding addition of the claim limitation "by evaporation," indicate that AquaTex was distinguishing the overall method of cooling of its claimed invention from that of the ’297 patent. The subject matter surrendered by the narrowing amendment bears no relation to the composition of the fiberfill batting material. There is no indication in the prosecution history whether or not AquaTex agreed or disagreed with the examiner’s statement that the fiberfill found in the prior art comprised natural fibers. Thus, the trial court erred in holding that prosecution history estoppel barred AquaTex from asserting infringement under the doctrine of equivalents. Upon remand the trial court must consider whether or not each limitation of the claims in dispute, or its equivalent, is present in the accused Techniche products. See Graver Tank, 339 U.S. at 608.

Overargument Leads to Prosecution History Estoppel

Terlep v. The Brinkmann Corp., et al. (Fed. Cir., August 16, 2005) "provides another good example of the need for careful focusing of arguments to the Patent Examiner to points actually needed to establish patentability," writes Professor Hal Wegner:

Patentee Terlep claimed a combination that originally include a plastic
tubular "holder" - which during prosecution was amended to a "clear plastic
tubular holder": The "clear" feature was unnecessary to establish
patentability; wherefore, the patentee argued infringement under the doctrine of
equivalents against an accused embodiment that did not have a "clear" holder.
Because of overargument of patentability keyed to this unnecessary feature, the
court denied waiver of the Festo prosecution history estoppel bar.

In fact, Terlep argued to the Federal Circuit that the equivalent in question was tangential to the purpose of the amendment. However, Judge Linn was not persuaded:

The primary consideration in determining when an amendment bears only a tangential relation to the equivalent in question is "whether the reason for the amendment is peripheral, or not directly relevant, to the alleged equivalent." Insituform Techs., Inc. v. Cat Constr., Inc., 385 F.3d 1360, 1370 (Fed. Cir. 2004) (citing Festo Corp. v. Sheketsu Kinzoku Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1365 (Fed. Cir. 2003) (en banc)). Terlep asserts that the prosecution history shows that the addition of the term "clear" was merely to describe the plastic used for the claimed "plastic holder," and thus the addition of that term is not directly relevant to the accused equivalent. However, as discussed supra, Terlep amended claim 1 and argued patentability based on the diffusion characteristics of prior art LED devices and the absence of diffusion in the clear plastic tubular holder of the claimed invention. Thus, it cannot be said that the reason for adding "clear" was tangential to the accused equivalents, which are holders that are ribbed and diffuse light. See Festo, 344 F.3d at 1369 (noting that "the inquiry into whether a patentee can rebut the Festo presumption under the ‘tangantial’ criterion focuses on the patentee’s objectively apparent reason for the narrowing amendment"). Thus, Terlep has failed to rebut the Festo presumption, and we affirm the district court's grant of summary judgment of non-infringement under the doctrine of equivalents as a matter of law.

BUMA and SABAM Renounce Economic Residency Requirement

The European Commission has opened a public consultation on commitments from BUMA and SABAM (the Dutch and Belgian collecting societies that manage music copyrights for authors) not to be party to any cross-licening agreement with other collecting societies that contains a “economic residency clause” for the licensors of online music.

In May 2004, the European Commission warned the sixteen organisations that collect royalties on behalf of music authors that their so-called "Santiago Agreement" is potentially in breach of European Union competition rules. The purpose of the agreement was to allow each of the participating societies to grant to online commercial users "one-stop shop" copyright licenses which include the music repertoires of all societies and which are valid in all their territories. The structure put in place by the parties to the Agreement results in commercial users being limited in their choice to the monopolistic collecting society established in their own Member State.

In its latest statement, the Commission announed that it is "continuing the formal proceedings as regards the other collecting societies that received the statement of objections with a view to adopt a formal negative decision. However, it will examine carefully any proposal on commitments that other collecting societies may submit to lift the restrictions, so that the procedure in respect of them could likewise be terminated with a commitments decision."

Bavarian Nordic Requests Investigation of Imports by Acambis

On August 19, 2005, Bavarian Nordic A/S of Denmark, Texas filed a "Section 337" unfair import complaint at the U.S. International Trade Commission requesting that an unfair import investigation be instituted involving "Certain Modified Vaccinia Ankara Viruses." The proposed respondent Acambis Plc of the United Kingdom.

The complaint has been designated as confidential and assigned Docket No. 337-2444 for indexing in the Commission's database. However, such complaints typically involve allegations of intellectual property infringement.

The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations, and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."

For the latest details on a particular Section 337 investigation, or to arrange a free, in-person presentation on these (and/or other) intellectual property topics, contact Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

Priority Claim to National Stage Application Receives Benefit of PCT Filing Date

In Broadcast Innovation, L.L.C., et al. v. Charter Communications, Inc., et al. (Fed. Cir., August 19, 2005) the court held that the absence of a specific reference to a parent PCT application in the priority claim did not prevent the applicant from receiving the benefit of the PCT filing date where the applicant properly claimed priority to the national stage application that resulted from the PCT application.

In this case, the applicant filed the ’595 patent on July 18, 1995, as the U.S. national stage application of the original PCT application. "However," the court noted, "July 18, 1995 is not the "U.S. filing date" of the ’595 patent":

Specifically, under 35 U.S.C. § 363, the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application. 35 U.S.C. § 363 (1984); see also Manual of Patent Examining Procedure (MPEP) § 1893.03(b) (8th Ed. including May 2004 revisions) ("It should be borne in mind that the filing date of the international application is also the filing date for the national stage application."). Thus, the ’595 patent’s U.S. filing date is November 26, 1993, the filing date of the PCT application. Because the ’094 patent is entitled to priority back to the ’595 patent’s U.S. filing date, the ’094 patent’s priority date under 35 U.S.C. § 120 as well as its term calculation date under 35 U.S.C. § 154(a)(2) is at least November 26, 1993. In other words, the ’094 patent, which specifically references the ’595 patent and thus satisfies the requirements of 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a), is entitled to effectively the same date as the original PCT
application.

* * *

Where proper reference to a national stage application exists, no reference
to the corresponding PCT application is required because the national stage
application effectively has the same U.S. filing date as the PCT application.
Therefore, under either version of the statute or the regulation, the reference
in the ’094 patent to the ’595 and ’934 patents meets the statutory and
regulatory requirements.

U.S. Trademark Backlog Now Being Published

The August though November 2005 issues of the Trademark Official Gazette (TMOG) are expected to feature as many as 10,000 marks. These large volumes are the result of a processing backlog that the USPTO accumulated when it moved its offices to its current facility in Alexandria, Va. The USPTO deeply regrets any inconvenience.

In light of this development, the USPTO wants you to know that the on-line Trademark Electronic Search System (TESS) can be used to search an individual volume or volumes of the TMOG. For example, parties can conduct a search that will generate a list of all marks published for opposition in a particular TMOG volume that include a particular word or a particular design, or that are owned by particular parties, or whose associated goods or services are classified in a particular class.

Examples of possible TESS searches of individual TMOG volumes are set forth below. Note that whereas the TMOG is published each Tuesday, the TESS records for particular marks generally do not include the TMOG publication date for the mark until the following Wednesday. Hence, a search of a particular TMOG issue that is conducted on the day that issue is published may not yield any results.

Example #1: Search for all marks published for opposition in the TMOG of August 9, 2005 that are comprised of or feature the term DOG, using the “structured form search” option:

1. Enter 20050809 as the first search term;
2. Select “Published for Opposition Date” as the field within which the term
   identified above should be searched for;
3. Select AND as the Boolean operator;
4. Enter *DOG* as the second search term; and
5. Select “Basic Index” as the field within which the second term identified
   above should be searched.

Example #2: Search for all marks published for opposition in the TMOG of August 2, 2005 that feature a design of either a dog or the head of a dog, using the “free form search” option. Enter the following into the search field:

20050802[po] and (030108 OR 030116)[DC]

Example #3: Conduct a sequence of searches, each of which builds on the previous search, using the “free form” search option.

1. Generate a list of all marks published for opposition in the TMOG of August 2, 2005 by entering the following in the search field:

   20050802[po]

2. After generating the list referred to above, generate a list of all
   marks published for opposition in the TMOG of August 2, 2005 that identify goods classified in international class 9 by entering the following in the search field:

   s1 and 009[ic]

3. After generating the second referred to above, generate a list of all
   marks published for opposition in the TMOG of August 2, 2005 that identify goods classified in international class 9, AND that include the word “software” in the identification of goods, by entering the following in the search field:
   

   s2 software[gs]

Learn more about TESS here.

UTBMS I/P Workgroup Initiative Needs Your Help

The I/P Working Group of the UTBMS Update Initiative (at http://www.utbms.com) is looking for volunteers to help develop a standard set of patent, trademark, and copyright billing code sets for adoption as part of the American Bar Association's Uniform Task-Based Management System (or "UTBMS").

The UTBMS is a budgeting and billing system designed to provide clients and law firms with meaningful cost information on legal services. It currently includes a Litigation Code Set that was released in 1995 and has since been widely adpoted for contested matters, including judicial litigation, binding arbitration and regulatory/administrative proceedings. More-recently, the ABA has also released Counseling, Project, and Bankruptcy Code Sets. However, the ABA's Steering Committee concluded that "it would not be practicable to develop practice-specific task codes."

This has led various consumers of intellectual property services to adopt inconsistent and/or proprietary code sets that have frustrated consumers and service providers alike. The UTBMS Intellectual Property Workgroup has therefore been charged with building upon those legacy code sets in order to develope a baseline model code set for patent, trademark, and copyright services.

We invite you to join this effort by volunteering to serve on one oy our patent, trademark, and copyright subcommittees. Our next telephone conference meeting is set for Friday, September 2, 2005, at 10:00 am. To attend, just send a short e-mail message to I/P WorkGroup Chair Domenic Leo at domenic.leo@datacert.com with your subcommitee choice. Though we have received support from firms with significant interests in the IP community, participation by you and your firm would help us insure that this initiative is a successful one.

And, as always, please feel free to contact me for additional information, including a copy of the legacy I/P codes sets that are currently before the I/P WorkGroup.

Doll Sworn in as U.S. Commissioner for Patents

John J. Doll, Acting Commissioner for Patents since April 2005, was sworn in as Commissioner for Patents at the U.S. Patent and Trademark Office on August 17, 2005. As Commissioner for Patents, Doll is responsible for the productivity and quality of the work done by more than 4,000 patent examiners, paralegals and other support professionals, for patent examination policy, budget decisions, and for patent-related Information Technology (IT) decisions.

From January – April 2005, Doll served as the Deputy Commissioner for Patent Resources and Planning directing information processing and technology, and budget formulation and execution for patent operations. He previously served as Special Assistant to the Under Secretary. Doll was a group director from 1995 - 2004 in the technology center responsible for examination of biotechnology, organic chemistry, and pharmaceutical patent applications. He was an integral part of the team responsible for last year's implementation of the Image File Wrapper (IFW), the USPTO's electronic patent application processing system.

Doll has received numerous awards throughout his USPTO career, including the Vice Presidential Hammer Award for his work in establishing the Biotech Customer Partnership; a Department of Commerce Gold Medal for his work on the team that implemented IFW; and a Silver Medal for his work on automating patent examiner tools.

During his tenure as a group director, Doll managed the development and implementation of training materials used by patent examiners to apply the enablement provisions of the patent statute in reviewing applications. He also helped develop and implement the guidelines and training materials used by examiners evaluating patent applications for compliance with the utility and written description provisions of patent law.

Doll holds a Bachelor of Science degree from Bowling Green State University in chemistry and physics and a Master of Science degree in physical chemistry from Penn State University. He joined the USPTO in 1974 as a patent examiner and was promoted to Primary Examiner in 1979 examining patent applications encompassing pharmaceuticals, herbicides, pesticides and dyestuffs.

As a Supervisory Patent Examiner in Groups 1100 and 1800, he was responsible for the examination of applications drawn to a variety of arts including inorganic chemistry, hydrometallurgy, zeolite catalysts, buckministerfullerenes, proteins and peptides. In 1992, he was promoted to be the Deputy Director of Group 1100/2900 that examined chemical, chemical engineering and design patent applications. In 1995, he became the Director of Group 1800 which examined biotechnology patent applications. He was then one of the Directors of the Chemical Matrix that transitioned into Technology Center 1600.

"The creation of a “supergroup” for reexamination – something that eluded every PTO leader for a quarter-century (!) – is directly attributable to Doll’s leadership," writes Professor Wegner.

Free Seminar on the FDA Process for Approving Generic Drugs

Click here for the U.S. Food and Drug Administration's free, December 2004 video, online training seminar on "The FDA Process for Approving Generic Drugs," from the Center for Drug Evaluation and Research.

The seminar provides viewers with an overview of the Food and Drug Administration's role in the generic drug process, including various aspects of the Abbreviated New Drug Application (ANDA) process, the "Orange Book," and the complexities of the patent certification process and its impact on the approval of generic drug products.

The estimated completion time for this video is 60 minutes.

TGIF for the .XXX Domain, or Not

"As you know, the Board is scheduled to consider approval of a contract for a new top level domain intended to be used for adult content. I am omitting the specific TLD here because experience shows that some email systems filter out anything containing the three letters associated with the TLD. You may recall that during the session between the GAC and the Board in Luxembourg that some countries had expressed strong positions to the Board on this issue. In other GAC sessions, a number of other governments also expressed some concern with the potential introduction of this TLD. . . . I believe there remains a strong sense of discomfort in the GAC about the TLD, notwithstanding the explanations to date. . . . In this regard, I would like to bring to the Board's attention the possibility that several governments will choose to take this course of action. I would like to request that in any further debate that we may have with regard to this TLD that we keep this background in mind. Based on the foregoing, I believe the Board should allow time for additional governmental and public policy concerns to be expressed before reaching a final decision on this TLD." -- Correspondence from Mohd Sharil Tarmizi, Chairman of International Corporation for Assigned Names and Numbers' Government Affairs Committee to the ICANN Board of Directors on August 12, 2005.


"Since the ICANN Board voted to negotiate a contact with ICM Registry for the .xxx TLD in June 2005, this issue has garnered widespread public attention and concern outside of the ICANN community. The Department of Commerce has received nearly 6,000 letters and emails from individuals expressing concern about the impact of pornography on families and children and opposing the creation of a new top level domain devoted to adult content. We also understand that other countries have significant reservations regarding the crcation of a xxx TLD I beleive that ICANN has also received many of these concerned comments. The volume of correspondence opposed to creation eta .xxx TLD is unprecedented. Given the extent of the negative reaction, I request that the Board will provide a proper process and adequate additional time for these concerns to be voiced and addressed before any additional action takes place on this issue." -- Letter from Michael D. Gallagher, Assistant Secretary, U.S. Department of Commerce, to ICANN Chairman Vinton Cerf on August 15, 2005.


". . . We are, to say the very least, disappointed that concerns that should have been raised and addressed weeks and months ago are being raised in the final days before the Board is scheduled to approve the agreement negotiated with staff. . ." -- Letter from Stuart Lawley, CEO of ICM Registry for the .XXX domain, to Paul Twomey, ICANN CEO on August 15, 2005.


"All sites using ".xxx" would be required to follow yet-to-be-written "best practices" guidelines, such as prohibitions against trickery through spamming and malicious scripts. Skeptics note that porn sites are likely to keep their existing ".com" storefronts, even as they set up shop in the new ".xxx" domain name, reducing the effectiveness of any software filters set up to simply block all ".xxx" names. Conservative groups such as the Family Research Council also expressed worries that creating a ".xxx" suffix would also legitimize pornographers." -- Anick Jesdanun writing for The Associated Press on Tuesday, August 16, 2005.

Patent Worksharing Could Save Billions

"The most important reform is "patent worksharing" that could shave 100,000 examinations per year," writes Professor Hal Wegner. "Altogether, the system could save two to five billion dollars over the coming decade by implementing these procedural changes."

The Good Professor's worksharing model is spelled out in "Patent Law Simplification and the Geneva Patent Convention," 14 AIPLA Q.J. 154, 198-201 (1986). He also notes that other changes, "including an end to 'churning' applications through refiling that merely generates statistics," could also have a significant impact:

In addition to true harmonization substantive patent law, it is necessary that
the United States introduce (a) a true deferred examination system that permits
up to three years deferral of a request for examination – to permit foreign-based applications to be examined prior to the U.S. examination; (b) a very high examination fee with a very high discount for any foreign applicant who submits a completed search and examination from the "home country" (or other first office) at the time of request of the U.S. examination; and (c) an easy to use opposition system that encourages industry to weed out invalid patents at the earliest possible date.

Contact me for more of The Good Professor's writings on this topic.

A Methodical Approach to Patent Claiming

Here is an outline of a methodical approach to patent claim drafting for any area of technology, as discussed in my on-line presentation entitled "Structure, Function, and the Spectrum of Patent Claiming:"

• Carefully identify the advantageous "effect" of the invention
• Identify the fewest "elements" that will create that effect
• Start with "structure plus function" claim type format to link the elements and effects, e.g. "element A for effecting (a, to, with, of, in, on, over) element B"
• Use dependent claims to "structurally" define elements and/or "functionally" define effects
• Use "claim-type differentiation" to diversify the same elements and effects in parallel claim groupings (see slide #7)
• Use even uncommon claim types for your area of technology
• Avoid unnecessary "hybrid structural/functional" recitations
• Appeal rejections that are merely demands for additional structure

Please feel free to contact me for a more-detailed presentation of these ideas to your patent organization, practice group, or class.

FedEx Frowns on Free Furniture

The creator of FedExFurniture(.com) wants you to know that it's "o.k. to be ghetto." However, after FedEx terminated his shipping account over an infringement spat, Jose Avila is "really going to be considering other shipping methods pretty soon." According to the PHOSITA Blog, Fedex is fuming over his apartment filled entirely with furniture made from Fedex boxes:

"FedEx has sent a letter insisting that the furniture itself, along with the
internet website and the pictures violate the copyright and trademark rights
held by FedEx. The letter even claims that the actions fall within the
purview of the DMCA. Luckily, the creator is represented by the Stanford Law
School Center for Internet and Society who sent this letter in response."

"One thing I’ve always stood behind is I'm pro-FedEx," Avila told Wired News. "I ship stuff with FedEx all the time and I feel more comfortable shipping with FedEx because their boxes are stable and sturdy."

And apparently they make for some pretty darn good free furniture too. "The couch is standing/sleeping approved, I sleep on the bed every night, I eat at the dining table, and I work at the desk almost 20 hours a day," writes Avila on his website.

I expect that Jose is going to need a (media/patent) agent, while FedEx is going to need to print up a few more boxes. Send your donations here and here.

Time for a Sensory Trademark Audit?

In "Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks" (INTA Members only), Jerome Gilson and Anne Gilson LaLonde discuss the protection of colors, sounds, smells and other "sensory" trademarks. In a nod to the work of branding guru Martin Lindstrom, the authors likewise urge brand owners to conduct a sensory trademark audit:

As a means of strengthening their intellectual property rights and enlarging their trademark portfolios, businesses would do well to scour their products, services and advertising and marketing programs for nontraditional marks to be registered. They might also follow the Lindstrom admonition and encourage their marketing teams to explore the cutting edge world of multisensory branding. And even though few at present use scent, flavor or color alone as marketing tools, they often use musical themes or jingles in advertising. Why not register?

Nontraditional marks can stir the imagination, and many (like marching ducks, duck calls and scented exhaust fumes) are just plain funny. If consumers in fact see these as trademarks they are registrable and protectable, although future courts and the Trademark Trial and Appeal Board will have to agree. Such marks can be or can become strong, memorable and long-lasting. Moreover, the difficulties of proving that consumers do not view them simply as unusual product features or as marketing gimmicks may be overcome as the public becomes more trademark-educated over time.

Click here for a (less-ambitious) "Low-Cost, Trademark Portfolio Management Policy."

Click here for examples of sensory trademark registrations, courtesy of the PHOSITA Blog.

Inventors' Incorrect Claim Construction Shows Lack of Deceptive Intent for Unenforcability

In Warner-Lambert Company, et al. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. August 11, 2005), the court affirmed denial of summary judgment of unenforceability based upon the inventor's lack of intent to deceive. In this case, the court noted that Claim 16, at least on its face, appeared to read on much of the Vasotec® formulation:

However, after hearing all the evidence and, specifically, the testimony of Dr. Murthy and Dr. Harris, the trial court concluded that the inventors acted with subjective good faith in not disclosing Vasotec®. The court found that they did not disclose Vasotec® because, at the time of filing for the ’450 patent, they simply did not think it had any relevance to their application. In other words, they did not appreciate its materiality. See Molins, 48 F.3d at 1178 (holding that the patentee must be aware of both the reference and its materiality).

They knew Vasotec® contained sodium bicarbonate, but they did not know how sodium bicarbonate functioned in Vasotec® or that the "alkali or alkaline earth metal carbonate" recited in claim 16 included bicarbonate. Bench Trial Opinion, 2004 WL 1498162, at *11-12 (finding Dr. Murthy and Dr. Harris "completely credible" witnesses). We cannot say that the district court committed clear error in assessing the credibility of these witnesses and finding an absence of deceitful intent.

Teva argues that, even assuming the Warner-Lambert scientists did not know how to stabilize Vasotec®, the patentees still committed inequitable conduct because claims 16 and 17 nevertheless read on Vasotec®. This, according to Teva, is because the claims simply require "contacting" an ACE inhibitor with a metal carbonate and a saccharide. Teva also points out that the originally filed claims were not limited to carbonates, but merely referred to "alkali and alkaline earth metal salts," and that this court’s decision in Schwarz Pharma construed "carbonate" to include "bicarbonate."

The problem with this argument is that the district court, after hearing testimony and making credibility determinations, found that the Warner-Lambert scientists did not use sodium bicarbonate for anything other than adjusting the pH of quinapril during the stage one investigations, and that their subsequent failure to disclose Vasotec® was the result of their good-faith belief that Vasotec® did not relate to their claimed invention. Id. at *12.

Dr. Murthy specifically testified to the fact that he did not think claims 16 or 17 included sodium bicarbonate:

Because I took ["[a] suitable amount of an alkali or alkaline earth metal salt"] to mean mostly carbonates because those are the ones that worked. There was no bicarbonate that has worked for us in our efforts to stabilize the product, so we did not have any bicarbonate in mind.
. . . .
We do not--we did not have in mind sodium bicarbonate, otherwise we would have been very specific about it. Because our experiments with sodium bicarbonate did not help us in the stabilizing of quinapril. So we didn’t --at least I did not have in mind sodium bicarbonate and to prevent cyclization of quinapril.

In short, based on the testimony presented at trial, the court concluded that the Warner-Lambert inventors were concerned only with carbonate ions, had no intention of claiming bicarbonates, and consequently had no intent to deceive the PTO in not disclosing Vasotec®. Id.

In keeping within our role as an appellate court of review, we cannot say that the district court committed clear error in making these findings. See Anderson v. Bessemer City, 470 U.S. 564, 575 (1985) ("[W]hen a trial judge’s finding is based on his decision to credit the testimony of one of two or more witnesses, each of whom has told a coherent and facially plausible story that is not contradicted by extrinsic evidence, that finding, if not internally inconsistent, can virtually never be clear error."); LNP Eng’g Plastics, Inc. v. Miller Waste, Inc., 275 F.3d 1347, 1361 (Fed. Cir. 2001) ("[T]he district court’s determination on intent in this case depends heavily on the assessment of witness testimony at trial. This court may not reassess, and indeed is incapable of reassessing, witness credibility and motive issues on review.").

. . . [T]he district court’s findings do not suggest that the patentees were "intimately familiar" with Vasotec® or knew of its potential relevance to the PTO. On the contrary, the evidence, particularly with respect to Warner-Lambert’s abandonment of Vasotec® after the failed pH studies, suggests that the patentees had only limited familiarity with the Vasotec® formulation. This is not surprising considering that Merck maintained its sodium bicarbonate stabilization process as a trade secret. Perhaps most importantly though, unlike the situation in Critikon, Warner-Lambert, through Dr. Murthy and Dr. Harris, offered a plausible, good faith explanation for why Vasotec® was not cited to the PTO. Accordingly, given the district court’s view of the evidence, we do not think the facts of this case necessarily require a finding of intent to deceive.

Guides to U.S. Legal Research Databases

"A Guide to Fee-Based U. S. Legal Research Databases," August 2005, by Mary Rumsey describes several providers of legal research databases, focusing on fee-based sources. For an excellent guide to free sources of federal legal materials, see the GlobaLex guide by Gretchen Feltes, A Guide to the U. S. Federal Legal System: Web-based Public Accessible Sources, April 2005.

MIP: Taiwan Proposes I/P Court

According to Managing Intellectual Property on August 15, 2005, Taiwan's Judicial Yuan is the latest Asian government agency to propose setting up a specialized IP court. "Japan's specialist IP High Court began work in April, Malaysian politicians are considering whether to set up a court that would hear only IP cases, and the head of the Philippines IP Office last month called for a specialized IP court to be established," writes the author.

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Moral Rights for Performers in the UK

The UK Patent Office has published its "Guidance on moral rights for performers" in connection with the Statutory Instrument that will come into force on February 1, 2006 and introduce moral rights for performers.

Although it is possible that Parliament may change some aspects, regulations are being introduced that will provide a legal basis for performers’ moral rights in the United Kingdom for the first time in a manner similar to the moral rights for authors that were introduced in the Copyright, Designs and Patents Act 1988. The Regulations provide for two rights for performers: the right to be identified as the performer in a performance (subject to asserting the right) and the right to object to modifications made to performances that are prejudicial to the performer’s reputation. The right to object to modifications arises automatically and covers the whole or any part of a performance. The right to be identified must be asserted in an instrument in writing signed by or on behalf of the performer and then any person is bound by the assertion once it has been brought to their notice. It applies to the whole or any significant part of a performance.

The background to these Regulations and rights can be found in the consultation document issued by the Patent Office.