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Archived updates for Thursday, November 29, 2007

TGIF for Good Hair Days

(Expired) U.S. Patent No. 4,022,227
"Method of Concealing Partial Baldness"
Frank J. Smith and Donald J. Smith
Orlando, Florida USA


What is claimed is:

1. A method for styling hair to cover bald areas using only the individual's own
hair, comprising separating the hair on the head into several substantially equal sections, taking the hair on one section and placing it over the bald area, then taking the hair on another section and placing it over the first section, and finally taking the hair on the remaining sections and placing it over the other sections whereby the bald area will be completely covered.

2. A method as in claim 1 wherein the hair on a person's head is folded over the bald area beginning with the hair from the back of the head, and then from first one side and then the other.

3. A method as in claim 2 wherein after the hair from the back of the head is folded over the bald area, an object is placed over the hair and hair from a first of the sides is brushed over the object, and after the hair from said first side is folded into place
the object is placed over the hair and the hair from the second side is folded over the object.

4. A method as in claim 3, wherein said object is a person's hand the hair spray is applied after the hair from said first side is folded into place and again after said second side being folded into place.

5. A method as in claim 3 wherein the hair from said first side and said second side is given a final styling.

Thank Goodness It's Friday (and "The American Tribal Love-Rock Musical" is alive and well),
-Bill Heinze
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TTAB: No Dilution of Famous Mark through Projection of Generic Meaning

In Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (November 21, 2007, not precedent) the U.S. Trademark Trial and Appeal Board considered "the dichotomy between the fame of petitioner’s trademark and the generic meaning of that same
term:"


While we have given great weight to the fame of petitioner’s mark, that fame does not extend to computer software for filtering spam. Simply put, the scope of protection of petitioner’s mark, while extremely broad, does not extend to prevent the use of SPAM ARREST for spam filtering software, since consumers will understand SPAM as used in respondent’s mark in its generic sense
rather than as referring to petitioner’s mark(s). . . .

[Furthermore, with regard to dilution,] when a trademark has an alternative generic meaning, and it is being used in a second mark to project that generic meaning, there can be no dilution of the original mark under the statute because that mark is not distinctive with respect to the goods which the generic term describes. This would be the case whether the trademark owner invented a mark and the mark subsequently became a generic term, as is the case here, or the trademark owner chose an ordinary word that is arbitrary for its goods and through its efforts caused the mark to become distinctive for those goods.
Leran more about "where the SPAM meets the road," here.
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No Prosecution Disclaimer for Inoperable and Unsupported Remarks

In Elbex Video v. Sensormatic Electronics (November 28, 2007), the U.S. Court of Appeals for the Federal Circuit concluded that "the inventor’s statement that the monitor received the first code signals and, 'based upon' that code, transmits a second code signal 'back to the camera' was not a clear and unmistakable surrender of claim scope."

According to the opinion by Circuit Judge Moore:

. . . This prosecution statement if taken literally would result in an inoperable system. Even if the monitor contained the necessary hardware to receive and generate a second code signal corresponding to the first code signal to be sent back to the cameras (a technological concept not at all supported by the specification), the second code signals would not reach the cameras. The low pass filter is positioned between the monitor and the cameras. The sole purpose of that filter is to "prevent the high frequency output signals [i.e., the "second code signals"] of the controller device 14 from passing." ’085 patent, col.5 ll.55-58. Hence, the second code signal would be filtered out before it ever reached the camera. Even Sensormatic’s own technical witness testified that he "ha[d] trouble figuring out how [transmitting the code signals to and from the monitor] would work."

For a prosecution statement to prevail over the plain language of the claim, the statement must be clear and unmistakable such that the public should be entitled to rely on any "definitive statements made during prosecution." Omega, 334 F.3d at 1324. On this unique amalgamation of facts, including (1) the absence of support in the specification or drawings for a monitor that receives code signals from and returns code signals to the cameras; (2) the ambiguity created by other statements in the same prosecution document; (3) the fact that Sensormatic’s own technical witness did not understand how the system would operate consistent with the erroneous statement; and (4) the inoperability of a device constructed in accordance with the incorrect statement, we conclude that this is not a case of prosecution disclaimer. One of skill in the art would understand the claim to cover a receiving means (not limited to a monitor) for receiving the video signals and the first code signals.

. . . In the present case, the district court found that the inventor limited the "receiving means" that receives the first code signal to a "monitor" that receives the first code signal. Implicit in its determination is a finding that the inventor clearly and unmistakably surrendered any claim scope between the "receiving means" that receives first code signals as expressly recited in the claims, and a "monitor" that receives first code signals. We cannot agree. The statements to the effect that the code signal is received by the monitor did not amount to a clear and unmistakable surrender of claim scope.

First, the statement in the prosecution history is unsupported by even a shred of evidence from the specification. The specification never suggests that the monitor of the receiving means receives first code signals and returns a corresponding code to the cameras. Figure 1 above shows that the first code signal would be received by the receiving means 16 on an input line from the transmitter and then would travel to the controlling means 14. After receiving the first code signal, the controlling means decodes and manipulates the first code signal and then generates the second code signal which is transmitted back to the camera along with the control signals via the receiving means. See, e.g., ’085 patent, col.1 ll.62-67; col.2 ll.32-36; col.2 ll.39-42. As Figure 1 shows, the receiving means receives the first code signal, but the monitor does not. There is nothing in the specification to suggest that the first code signal ever reaches the monitor.

Second, read in isolation, the statement in the prosecution history could be argued to be a disclaimer. . . In this case, two paragraphs after the alleged disclaimer, the inventor also included the following statement to distinguish a reference relied on by the PTO examiner:

The Bellman reference fails to suggest that the code received by a display device is sent back to the camera along with the control signal and that the camera is operated by control signals only upon the coincidence of the original camera code with the code returned to the camera.

The specification equates the "display device" and the "receiving device." See ’085 patent, col.3 l.4 (". . . a displaying device or receiving device 16 . . ."). This statement, unlike the alleged disclaimer, is fully supported by the written description and provides further indication that the earlier statement in the same document was not a clear and unmistakable surrender.

Third, reading the specification and remainder of the intrinsic record as a whole would lead those skilled in the art to the conclusion that the inventor’s statement that the monitor received the first code signals and, "based upon" that code, transmits a second code signal "back to the camera" was not a clear and unmistakable surrender of claim scope. Amendment & Remarks at 5-6. This prosecution statement if taken literally would result in an inoperable system. Even if the monitor contained the necessary hardware to receive and generate a second code signal corresponding to the first code signal to be sent back to the cameras (a technological concept not at all supported by the specification), the second code signals would not reach the cameras. The low pass filter is positioned between the monitor and the cameras. The sole purpose of that filter is to "prevent the high frequency output signals [i.e., the "second code signals"] of the controller device 14 from passing." ’085 patent, col.5 ll.55-58. Hence, the second code signal would be filtered out before it ever reached the camera. Even Sensormatic’s own technical witness testified that he "ha[d] trouble figuring out how [transmitting the code signals to and from the monitor] would work."

But dissenting District Judge Cote (sitting by designation) was unconvinced:
I respectfully dissent. I believe that when the prosecution history and the patent are considered together, the evidence is clear and unambiguous that Elbex’s reference to a “monitor” in its response to the PTO Office Action was a strategic choice and an unmistakable surrender of claim scope. Elbex made significant revisions to Claim 1 in what became the ‘085 patent in order to obtain the patent, and is now trying to recapture what it chose to abandon in the proceedings before the PTO. I would affirm.
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March-In Rights, Domestic Manufacture, and Inventor Royalties under Bayh-Dole

According to Stephen P. Rothman in "Investing in university spin-out companies," the U.S. Bayh-Dole Act allows a federal agency that funded an invention to require the patent holder to grant a license to a responsible applicant on reasonable terms. If the patent holder refuses, then the federal agency can grant a license itself under what are referred to as "march-in rights." However, "march-in rights have never been exercised and appear unlikely to be exercised in any realistic scenario,"writes Rothman, partly because the law directs federal agencies not to exercise march-in rights unless the action is necessary:
  • "Because the patent holder is not taking effective steps to achieve practical application of the invention,
  • "To alleviate health or safety needs which are not reasonably satisfied by the patent holder,
  • "To meet requirements for public use specified by federal regulations not reasonably satisfied by the patent holder; or
  • "Because an exclusive licensee has failed to give preference to U.S. manufacturing where that would be required."

Rothman goes on to concisely summarize several written decisions of the NIH that he says "display a keen awareness that exercise of march-in rights could disrupt the incentive for commercialization of federally funded research, and thereby undermine attainment of the principal purpose of the Bayh-Dole Act."

His artcle also sheds light on the law's preference for exclusive licensees to manufacture in the United States:

An exception applies if domestic manufacture is not commercially feasible, or if the university tried unsuccessfully to find a licensee that was likely to manufacture in the U.S. To take advantage of one of these exceptions, a waiver must be obtained from the agency that funded the research.

. . . There is some difference between the federal agencies, with NIH having a reputation for a streamlined waiver process, and a willingness to grant waivers fairly freely, particularly if there is reason to believe that foreign manufacturing will allow a medical product to be made available to patients at a lower cost. The Department of Defense, not surprisingly, may be somewhat less quick to agree to foreign manufacture, particularly for a sensitive military product.

. . . One could take the position that this is not an exclusive license, though the issue is not free from doubt. Another approach involves interpretation of the requirement to manufacture "substantially in the United States." There is no clear percentage requirement, nor is there guidance from the Department of Commerce or other sources on what "substantially" means. . . . [However, t]he two approaches described above leave some risk of challenge . . . .

Bayh-Dole further requires patent owners to share a portion of any royalty payments with the inventor or inventors. "The amount of the inventor's share is not set by law, and varies from one institution to the next." But Rothman cautions, "If the inventor is an officer of the spin-out company, there is a potential conflict between the interests of the inventor and the investors that needs to be managed."

Finally, Rothman gives his insight as to why universities typically will not agree to trade secret license terms that would prohibit publication of research findings:
A typical university license or joint development agreement provides a limited delay of publication (30 - 60 days) during which the licensee can determine whether to file for patent protection. Even if universities were willing to adopt restrictions on information flow (which they are not), university laboratories are generally not set up with the kind of procedures that commercial enterprises routinely use to establish trade secret status, such as: preparing and following a written trade secret protection policy; limiting access to the portion of the facility where trade secrets are stored; requiring visitors to sign in and out; requiring all participants to sign confidentiality
agreements, etc.
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Archived updates for Wednesday, November 28, 2007

EuroParl Committee Approves End to Design Protection for Spare Parts

Thanks to the IPR HelpDesk for reporting that members of the Legal Affairs Committee of the European Parliament have "approved a Report in favor of the approval in first reading of the Commission proposal for a Directive amending Directive 98/71 on the legal protection of designs":

The Proposal implies the end of the protection for spare car parts and other machinery components under industrial designs. The main consequence of the new
Directive will be that the secondary market in spare parts -e.g. cars and industrial machinery - will be opened to competition and suppliers will be able to produce motor vehicle components which are identical to the original parts without infringing design protection. None the less, the Committee proposes a five year transitional period before full liberalisation of the market takes effect.
For more background, see "Spare parts protection under the design law."
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Federal Circuit to Reconsider Point of Novelty Test for Design Patent Infringement

Thanks to the folks at Filewrapper for posting a copy of the Federal Circuit's rehearing en banc order vacating the panel decision in Egyptian Goddess, Inc., et al. v. Swisa, Inc., et al. and requesting the parties to file briefs that address the following questions:
    1. Should "point of novelty" be a test for infringement of design patent?
    2. If so,
      (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case;
      (b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense;
      (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design;
      (d) should it be permissible to find more than one "point of novelty" in a patented design; and
      (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int'l, LLC, 449 F.3d 1190 (Fed. Cir. 2006).
    3. Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)

Briefs of amici curiae "will be entertained in accordance with Federal Rules of Appellate Procedure 29 and Federal Circuit Rule 29."

"Hopefully, the en banc court will take this opportunity to return some sanity to design patent law," quips Professor Crouch with links to all of the supporting documents in the case. "Perhaps Egyptian Goddess will be remembered as the fairy godmother of design patents."

Choose your favorite Egyptian Goddess here.

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Archived updates for Tuesday, November 27, 2007

Using HotDocs for USPTO ".PDF" Patent Forms

Many practitioners have considered using the "HotDocs" document assembly software package to prepare patent forms for filing with the USPTO. The naysayers always seem to point out the USPTO patent forms are available only in Adobe ".PDF" format, while HotDocs prefers to use Word ".DOC" format. Consequently, they say that it is too difficult to create HotDocs tempaltes that
  1. match the appearance of of the USPTO forms (for ease of use by the USPTO), and
  2. accomodate the data capturing capabilities of the USPTO's EFS-Web filing system for some (five?) of the fillable PDF forms (for ease of use by practitioners).

Which leads me to ask four simple questions about using HotDocs for USPTO patents forms:

Has anyone has figured out a way to use HotDocs to complete fillable pdf forms?

Has anyone carefully converted the current USPTO PDF forms into a replica Word ".DOC" format for use with HotDocs?

Do any of such "HotDocs-compatible" patent form templates accomodate the USPTO's data capturing capabilities in EFS Web?

Are there other document assembly packages that are better suited for this task?

According to Alan Soudakoff of Capstone Practice Systems,

HotDocs offers "PDF Advantage," an add-on product allows HotDocs developers to add HotDocs fields and interviews to a PDF form. The interview presented to the user looks like any other HotDocs interview, and answer files can be saved as with HotDocs Word templates but the output is one or more PDF documents. See http://www.hotdocs.com/products/pdfadvantage/professional.asp. We have automated hundreds of such HotDocs PDF forms for our clients for both
HotDocs desktop and HotDocs Server. One of our clients has a custom set of
USPTO HotDocs PDF forms that work very nicely and that we help him update when there are updated USPTO forms.

I don't know if anyone has created replica HotDocs Word templates for USPTO forms, but with HotDocs PDF Advantage, described above, this is probably not necessary.

Lexis itself offers a set of HotDocs patent forms in pdf format. See http://www.lexisone.com/lx1/store/catalog?action=product&id=5. It is probably worth your while to investigate this published set first. I don't know whether it interfaces with the USPTO's EFS web. We resell HotDocs itself but not Lexis' automated forms, so you'll need to contact them for more information. If you find that it does not meet your needs, we are happy to work with you to develop a custom set of automated HotDocs PDF forms that would address your specific needs.

In fact, a Software Solutions Specialist for LexisNexis confirmed that his company created their automatic, graphical USPTO HotDocs Lexis forms using the "PDF Advantage" software.

I have also heard that it may be possible to address these issues using the "HotDocs Automator and Filler" $60 add-on to HotDocs. According to Storm Evans, a Practice Support Consultant in Philadelphia:

HotDocs Automator is used to convert government, court, banking, and other
"static" forms into interactive templates.

I think of the process as something like laying a transparency over a form
and then writing on it. Then, when it is assembled, the user sees exactly what
they would see if they were merging a Word document. The completed process
produces a document that comes out printed exactly where you would want it to
print on the pdf form.

"Unfortunately, the PDF Advantage product does not currently address Acrobat's PDF Fields," adds Seth Rowland, President of Basha Systems LLC. "Rather, it overlays in the HPT (HotDocs PDF Templates) its own field structure which is incompatable with the Acrobat field structure. The form's look good, and can be saved into a PDF image file, but they are not PDF compliant data fields. Perhaps you could push LexisNexis to add true PDF compatability, but I have not been able to make that business case to them."

How about it Lexis/Nexis?
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Gattari on What Inventorship Is Not

According to "Determining Inventorship for US Patent Applications," by Patrick Gattari, the following points should help in an inventorship determination:

An inventor is:

• A person who conceives the subject matter of at least one claim of the patent.
• Two or more persons who collaborate to produce the invention through aggregate efforts.


An inventor is not:

• Someone whose only contribution is reducing an invention to practice by exercising ordinary skill in theart.
• A technician who simply performs experiments or assembles the invention.
• The supervisor or department manager of the person who conceived the invention.
• Someone whose only contribution is an obvious element to the invention.
• Someone whose only contribution is participation in consultations about the invention before or after conception of the invention.
• A person who only conceives of the result to be obtained but not the idea of how to achieve it.
• A person who only discovers the problem (unless he contributes to the solution).
• A person who merely provides a suggestion or improvement but who does not
work to fit the suggestion or improvement into the invention.
• A second inventor of the subject matter of the invention who did not collaborate with a first inventor ofthe subject matter of the invention.

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Norway Joins EPC on January 1, 2008

The European Patent Convention will enter into force for Norway on January 1, 2008.
European patent applications filed on or after 1 January 2008 will include the designation of the new contracting state. It will not be possible to designate Norway retroactively in applications filed before that date. The designation of Norway at the time a PCT international application with a filing date prior to 1 January 2008 enters the European phase is also legally invalid.

To allow the new contracting state to be designated, however, the EPO will accord European patent applications filed in December 2007 the filing date of 1 January 2008 if the applicant expressly requests that filing date when filing the application.

Nationals of Norway and persons having their principal place of business or residence in Norway will also be entitled, as from 1 January 2008, to file international applications with the European Patent Office as receiving Office.
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Archived updates for Monday, November 26, 2007

ASEAN Patent Applications filed in 2005


Source: Kenan Institute Asia
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Free 2008 Calender of Bizarre Patents

The PATSCAN Calendar of Bizarre Patents for 2008 is brought to you by PATEX Research and Consulting Ltd, a research company providing the intellectual property community with professional patent and trademark search services, operating under the PATSCAN trademark. According to the foreward to this year's edition:

To start off the New Year, the traditional PATSCAN calendar of bizarre patents presents some of the world’s most wonderful inventions, celebrating the human creativity that began when the first hominids banged rocks together to make tools. From the Stone Age to the Nuclear Age, some of the greatest advances in technology were weapons of war; possibly in this millennium we may see sustainable technologies turned towards survival of the planet and ourselves. Successful technologies are rare; even scientists in the great research corporations base a small percentage of successful inventions on a large number of failures. Often the most profitable inventions were accidents, such as "post-it" notes.

I salute the inventors of the world who have the courage to hitch their wagon to a star.

Ron Simmer
President,
PATEX Research and Consulting Ltd.

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Presumption of Mark Ownership by Manufacturer Over Distributor

According to the U.S. Trademark Trial and Appeal Board in Compevo AB v. Taylor Associates Communications, Inc., Opposition No. 91161524 (October 24, 2007) [not precedential]:

The ownership of a mark as between the manufacturer of the product to which the mark is applied and the exclusive distributor of the product is a matter of agreement between them, and in the absence of an agreement, there is a legal presumption that the manufacturer is the owner of the mark. Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., supra; Audioson Vertreibs-GmbH v. Kirksaeter Audiosonics, Inc., 196 UPSQ 453, 456 (TTAB 1977). However, that principle of law is not applicable in
cases where the exclusive distributor had pre-existing rights in the mark (Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., supra), or where the manufacturer
was placing the mark on the product pursuant to the distributor’s instructions (In re Bee Pollen from England Ltd., 219 USPQ 163, 166 (TTAB 1983)). Moreover, it has also been held that a party need not be a manufacturer of goods in order to own and register a trademark.

The following facts clearly establish that applicant is the owner of the VISIGRAPH trademark:

  1. Applicant had preexisting rights to the VISIGRAPH mark before it contracted with opposer to purchase opposer’s eye movement recording device. Thus,
    applicant had established goodwill in the VISIGRAPH trademark before purchasing productsfrom opposer;
  2. Opposer affixed the VISIGRAPH mark to the eye movement recording device at the request of applicant;
  3. Opposer sold the VISIGRAPH eye movement recording device in the United States solely to applicant; and,
  4. Applicant markets the VISIGRAPH eye movement recording device under its own trademark as applicant’s VISIGRAPH eye movement recording
    device.

Thus, the relevant consumers associate the VISIGRAPH eye movement recording device with applicant. The statement on the packaging that identify opposer as the manufacturer and applicant as the distributor does not overcome applicant’s
marketing efforts to identify applicant as the source of the VISIGRAPH eye movement recording device.

Although there is no written agreement between the parties regarding the ownership of the VISIGRAPH trademark, the testimony of Stanford Taylor
regarding the relationship between applicant and opposer, and opposer’s
November 2, 2003 e-mail (“You have allowed us to use the name Visigraph
since 1995”), convince us that the parties were operating with the understanding that applicant was the owner of the VISIGRAPH trademark.

In view of the foregoing, we are in full agreement with applicant that it is, and has been, the owner of the VISIGRAPH trademark.

For a comprehensive discussion of the issue of ownership of a trademark in various scenarios, John Welch at the TTABlog reccomends Pamela S. Chestek's article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes," in the May-June 2006 Trademark Reporter.
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USCO Updates Copyright Law Site

The Copyright Office has made available on its website an updated version of “Copyright Law of the United States and Related Laws Contained in Title 17 of the United States Code.” This edition contains the text of title 17 U.S.C., including all amendments enacted through the end of the second session of the 109th Congress in 2006, in pdf and html formats. It includes the Copyright Act of 1976 and all subsequent amendments to copyright law; the Semiconductor Chip Protection Act of 1984, as amended; and the Vessel Hull Design Protection Act, as amended. In addition, the appendix includes transitional and supplementary copyright provisions that do not amend title 17. (Go to
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Archived updates for Thursday, November 22, 2007

TGIF for The Lawtunes: Live at Blackacre


Thanks to Legal Blog Watch for pointing to Lawrence Savell, the New York lawyer who has produced and recorded three classic holiday humor albums mocking everything from billable hours to bar exams:
Savell writes and records these songs himself in a home studio. You can buy
his latest CD and any of his earlier recordings through his LawTunes Web site ($14.95 plus shipping). You can even buy the boxed set of all four Savell CDs, sure to be a collector's item someday.

Hear a sample here, or record your own version of "Ode to the Patent Code" and "Patent Prosecution Assistant."

More gifts for your favorite patent attorney here, here, and here.

Thank Goodness It's (Black) Friday,

--Bill Heinze
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Archived updates for Wednesday, November 21, 2007

Searching for the In-House IP Attorney Career Path

"There’s almost no way to win for general counsel when it comes to assuring the members of their department satisfying career paths at the pace they desire," writes Rees Morrison at Law Department Management. "Developmental initiatives mentioned by respondents to a recent law department survey, in Legal Week, Sept. 28, 2006 at 10, included 'establishing a career development review process for high-achieving lawyers, introducing new areas of legal expertise and rotating lawyers around the department.'"

Those comments have become much more salient now that I have now found myself assigned to a corporate team that has been delegated with
  • Identifying ways to enrich the careers for IP professionals within the company, and
  • Establishing career pathways within the company's IP framework.

While the process and deliverables for acheiving these formidable goals are still not entirely well-defined, at this point, our all-attorney team seems likely to be focusssing its efforts on identifying

  • Skill set definitions
  • Training opportunities
  • Bubble opportunities
  • Advancement paths
  • Compensation/Rewards & Recognition
  • Titling
I would therefore greatly appreciate any information and/or insights that readers can offer about other organizations' experiences on searching for the elusive "in-house IP attorney career path." And, in the meantime, I also wanted to pass along a few links to some of Morrison's other "talent management" ideas for enriching law department careers, including
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Archived updates for Tuesday, November 20, 2007

USPTO Presentation on Obviousness Examination Guidelines

A PowerPoint presentation by the USPTO on the new "Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc., 550 U.S. —, 82 USPQ2d 1385 (2007)" is avialable at http://patent.googlepages.com/KSRGuidelinesOctober1.pdf.
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Not All Patent Counts are Created Equal Under the USPTO's Proposed Continuation Rules

As discussed by Just A Patent Examiner on October 20, 2007, Examiners are graded on the number of applications they process. Each time an application is taken up for examination, they get credit for that, called a 'count'. When that application reaches some final resolution, either through abandonment, allowance, or appeal, the examiner gets a second count. For anything that happens between those two events, the examiner gets no count:

Not all counts are created equal. Some counts are easy, and some are hard.
In general, the hard count is the first action on the merits. Any count after
that is what I would call, to varying degrees, easy. . . . New examiners do not get any easy counts. This means that they must cut off their search when the production timer goes off. They pay for that down the line when they sometimes must do additional searching on subsequent actions, but they have no choice.

Which brings me to the new continuations rules.

I'm not going to bother going into the details. Suffice it say that, as we all know, there are going to be fewer RCEs and continuations filed in the future (assuming that the challenges to the new rules are unsuccessful).

Fewer RCEs and continuations means fewer easy counts. This will certainly make it tougher to make up the time spent doing those hard counts.

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Archived updates for Monday, November 19, 2007

USPTO Requiring Dual Use Export Control Affirmation on Electronic Filings

Thanks to the anonymous readers who recently pointed out that the USPTO is now requiring acceptance of the following "Dual Use Export License Text" before submitting documents for electronic filing that were saved in "My Workspace" on EFS Web:


I understand that technology and/or software included in patent applications may be subject to U.S. dual-use export controls, which are set out in the Export Administration Regulations (15 C.F.R. parts 730-774). Access to such technology and/or software by any person located outside the United States or by a foreign national inside the United States constitutes an export that may require a license from the U.S. Commerce Department's Bureau of Industry and Security ("BIS"). I affirm that I am not accessing or permitting access by others to technology or software in a manner that would violate or circumvent the Export Administration Regulations.

Information regarding U.S. dual-use export controls and their application to technology and software included in patent applications is available from BIS. Please see BIS's website, available at http://www.bis.doc.gov/, or contact BIS's Office of Exporter Services at 202-482-4811.

Will someone at the USPTO please explain this?

Isn't this exactly what a foreign filing license is designed to accomplish?

Perhaps the USPTO's parent agency, the U.S. Department of Commerce, is concerned that a registered practitioner under the same customer number might imrpoperly view an application on Private PAIR before the foreign filing license is granted? If so, then couldn't this Notice be revised to reflect any such actual concerns, rather than "hiding the pickle" behind volumunous and nearly impregnable export control regulations?

The patent community can't very well address a problem that it can't understand.
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New PCT International Fees Effective November 15, 2007

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office, that due to an adjustment in the exchange rate of the U.S. dollar with regard to the Swiss franc, the dollar amount of the international filing fee for international applications filed in the United States Receiving Office will increase, effective 15 November 2007, as follows
  • $1163.00 - International filing fee (first thirty pages)
  • $1080.00 - International filing fee (first thirty pages - filed in paper with PCT-EASY file on diskette, CD-R or DVD-R or filed electronically without PCT-EASY zip file)
  • $ 997.00 - International filing fee (first thirty pages - filed electronically with PCT-EASY zip file)

The new amounts will be posted at http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm.

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Wind Turbine Nacelle Shape Not Registrable as European Trademark

Thanks to the IP Kat, here and here, for poitning out Rechtssache T‑71/06 (Enercon GmbH v Harmonisierungsamt für den Binnenmarkt) where

Enercon applied to register as a Community trade mark a shape (left)consisting of an American football-shaped wind turbine. The pplication was for registration in respect of "Windenergiekonverter und deren Teile, insbesondere Gondelverkleidungen" in Class 7 (per Babel Fish, "Wind energy converter and their parts, in particular car linings"). The application was rejected, as were Enercon's appeals to the Board of Appeal and now the CFI. Today, thanks to scholarly friend Tibor Gold, he can tell you the real story.

Says Tibor, summarising the decision:

"1. It is well established by case law (eg Mag Instruments) that shape/3D marks are in principle no different from other marks, but the average consumer is not used seeing shapes as indicators of origin, ie as TMs.

2. It is also well established by case law that the more a shape TM resembles the actual shape of the goods the more difficult it is to establish its distinctive character under Art 7(1)(b) CTMR (Mag).3. It is accepted by all both below and at the CFI that the average consumer in this case is a highly attentive professional person. Such a person would perceive the sign as a possible shape of the goods even if it is not the conventional shape. (The nacelle was apparently designed by Sir Norman Foster but that per se was not considered persuasive, nor the other testimonies of distinctiveness). The mere departure from a standard shape does not lead to the conclusion that the average consumer who is reasonably observant etc would perceive the sign/shape as being capable, without having to undertake detailed analysis, of distinguishing this product from products of other undertakings.

4. It is irrelevant that the shape has been registered eg in Germany as a design.

5. Arguments based on alleged violation of various aspects of Art. 73 CTMR and principles of legitimate expectation and loyal cooperation were also rejected".

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USPTO 2007 Fiscal Year-End Report Touts Improved Patent Quality

According to the USPTO's press release on its 2007 Annual Report available at http://www.uspto.gov/web/offices/com/speeches/07-46.htm:

Of particular note is the relationship among USPTO's quality initiatives, fewer granted patents, and higher affirmance rates on appeal.

  • Patent examiner decisions were upheld by the USPTO's patent appeals board 69 percent of the time, up from 51 percent in 2005.
  • 51 percent of patent applications were granted in FY 2007. The allowance rate is a function of many aspects, including the quality of the applications received. (In 2000, a record high of 72 percent of all patent applications became patents.)
  • The USPTO's focus on internal quality controls is primarily responsible for the lowered grant rate over the past several years.
  • Looking forward, the USPTO expects that its various applicant-centered initiatives to focus examination will result in clearer applications and thus an increased grant rate - - while maintaining a high affirmance rate from the patent appeals board.
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Myths and Realities of the USPTO's 2007 Annual Report

Although the financial success of the USPTO is undisputed in its 2007 Annual Report, there is clearly more to the story. Professor Wegner has been quick to capture the patent community's imagination with his usually frank review in "The 2007 PTO Report: myths and realities" and "The 2007 PTO Report: myths and realities Part II: quality and pendency," where he notes that
  • "While [some] have assured Congress that full funding and adding more examiners would shorten pendency and backlogs, in fact there is now a 400+ % increase in the backlog that has taken place in just the past ten years."
  • "Any organization that can achieve a 96.5 % quality success rate based upon a workforce that includes more than 1000 in-training professionals [and where fully one-third of the new Examiners resign each year] has, indeed, achieved a remarkable and unbeatable achievement. . . . [But t]he 96.5 % success rate was not judged by real judges, but rather by personnel largely comprised of non-lawyers who are divorced from the real world of patent validity determinations. . . . If there were truly a 96.5 % quality rate in terms of the important metric of validity, then it must be pondered why there is such a high affirmance rate of rejections in reexamination proceedings."
  • "The one best measure of patent quality is found in the results of reexamination, as the public provides prior art and arguments to assess the value of what the examining corps
    has achieved. . . . [However], the failure of the PTO to provide prompt and efficient resolution of patent reexaminations which do provide a means to second guess original examinations is legendary. . . . [O]ne of the most colossal failings of the PTO which is not mentioned in the 2007 PTO Report is the failure to promptly dispose of reexaminations, a totally unnecessary failure that is 100 % curable based upon a small reallocation of resources within the PTO."
  • "[T]he PTO has [also] not been able to implement the important goal of “patent worksharing” that would permit reliance upon foreign search and examination results for U.S. examination of foreign-based applications (and permit Americans to gain foreign rights based upon a prompt U.S. examination)."
  • "Another area for improvement is a better backloading of user fees, both in terms of final years maintenance fees and a backloaded split in search and examination fees as part of deferred examination. . . . . Europe has led the way with very high maintenance fees in the terminal years of a patent which has led to patentees themselves culling out patents of lesser importance. The failure of the United States to emulate this model leaves late stage, fallow patents ripe for the plucking by patent trolls, to the great detriment of society. . . . Japan successfully weeds out an enormous number of patent applications prior to examination through the split application fee system of a very small fee for filing a patent application followed by a heftier fee up to three years later to examine the application."
  • "It is not the Dudas Administration that is to blame for the fiasco of false metrics, but rather AIPLA and IPOA that have so stridently opposed patent worksharing in terms of a blanket opposition to any deferred examination and any meaningful steps to patent worksharing. What worked in the 1980’s – a political mantra to get more funding for the PTO – is an out of date concept."
Can we really afford a patent system where all applications are treated equally? Perhaps these and other ideas can help us to begin focussing our resources on the patents that really matter.
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Adler on Patent Quality: Corporate Filers Should Conduct Pre-Filing Search

According to a presentation by IPO President and Rohm and Haas Chief IP Counsel Marc Alder to the Trilateral Users Conference in Washington, DC, on "Quality Patent Examination and Prosecution," in order to ensure quality examination corporate filers should start with a quality search
  • Corporate filers should conduct a pre-filing search citing the most relevant art to the examiner. Applicants should avoid flooding the examiner with cumulative prior art references.
  • Office should fully evaluate this and any other prior art brought to its attention to build a reliable and complete record of examination.

and "end with quality claims:"

  • Corporate filers will measure the quality of granted claims based on claims that:
    – clearly and thoroughly protect all aspects of invention embodied in newly commercialized product or process and defend strategic goals.
    – recite the uses of invention in all appropriate streams of commerce.

Alder also asserts that "patent offices will grant high-quality patents if they:"

  • Insure an independent search and examination
  • Do not depend solely on applicant’s search or analysis
  • Share results with other patent offices in real time
  • Shift examiner incentives toward quality and away from goals based purely on production
  • Encourage pre- and post-first action interviews between examiners and applicants
  • Apply improved quality metrics
  • Rely on meaningful measures that can improve the end result. Share measures with other offices and the public
  • Develop resources to manage new technologies
  • Train examiners in new technologies with the aid of private industry Patent

Call me skeptical, but I would rather know what percentage of Rohm and Haas's patent budget is actually dedicated to comprehensive prior art searching, and how those search results are presented to the persons who actually make the initial decision on whether to file the patent application.

  • Does Rohm and Haas utilize a dedicted patent searching process or organization?
  • Are invention disclosures and search results reviewed in detail by those who will actually have to write the resulting patent applications, before a decision is made on whether to file?
  • Does that anlaysis go so far as to prepare a draft caim for business value justification before the disclosure is sent (to an outside law firm) for preparation and prosecution?
  • Or is the process mostly left to attorneys with other obligations, who, in turn, carefully avoid these significant up-front commitments of time and resources by relying hapless inventors for their information?
  • How does his organization draw the line on such "analysis paralysis" over these relatively small and discrete expenditures, without simply foisting the same problems onto outside counsel and/or the USPTO later in the process, where the issues are much more resource-intensive to address at both the individual and systemic levels?
  • What meaningful measures does his organization use to improve the end result?
  • Is there accountability for failure to obtain the initially justified scope of protection?
  • And just how does Adler prevent his own business organization from obsessing over the same two internal production metrics (numbers filed and cost) as everyone else?

Now those are some questions that would would make for an interesting presentation, and a lightning rod for debate!

Get more of Adler's dos and dont's for patent quality here.

Where is the IPO's "Patent Quality Metrics Task Force" on this?

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Trends in Triadic Patent Families

Click to enlarge the image above, from the OECD Compendium of Patent Statistics for 2007:

Patent families are commonly constructed on the basis of information from a single patent office. While patents filed at a given patent office represent a rich source of data, these data show certain weaknesses. The “home” advantage bias is one of them, since, proportionate to their inventive activity, domestic applicants tend to file more patents in their home country than non-resident applicants. Furthermore, indicators based on a single patent office are influenced by factors other than technology, such as patenting procedures, trade flows, proximity, etc. In addition, the value distribution of patents within a single patent office is skewed: many patents are of low value and few are of extremely high value. Simple patent counts would therefore give an equal weight to all patent applications.

The OECD has developed triadic patent families in order to reduce the major weaknesses of the traditional patent indicators described above. Triadic patent families are defined at the OECD as a set of patents taken at the European Patent
Office (EPO), the Japan Patent Office (JPO) and US Patent and Trademark Office
(USPTO)* that protect a same invention. In terms of statistical analysis, they improve the international comparability of patent-based indicators, as only patents applied for in the same set of countries are included in the family: home advantage and influence of geographical location are therefore eliminated. Second, patents included in the family are typically of higher value: patentees only take on the additional costs and delays of extending protection to other countries if they deem it worthwhile.

The criteria for counting triadic patent families are the earliest priority date (first
application of the patent worldwide), the inventor’s country of residence, and fractional counts. Owing to time lag between the priority date and the availability of information, 1998 is the latest year for which triadic patent families data is almost completely available. Data from 1998 onwards are OECD estimates based on more recent patent series (“nowcasting” – see Annex A).

* USPTO patents refer to the granted patents: prior to the change in rules regarding the publication of patent applications at the USPTO, only patent grants were published. For further reading Dernis, H. and M. Khan (2004), "Triadic Patent Families Methodology", STI Working Paper 2004/2, OECD, Paris.

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Triadic Patent Family Shares by Country


Click to enlarge the image above, from the OECD Compendium of Patent Statistics for 2007.


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AltLaw Free Federal Appellate Opinion Search Engine

AltLaw "is a small effort to to make the common law a bit more common." It provides the first free, full-text searchable database of Supreme Court and Federal Appellate case reports, with
AltLaw is a joint project of Columbia Law School’s Program on Law and Technology, and the Silicon Flatirons Program at the University of Colorado Law School. AltLaw was written by Stuart Sierra and Paul Ohm, with help from Luis Villa, and produced by Tim Wu.
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Archived updates for Thursday, November 08, 2007

TGIF for Hyphenated Domain Names

Thanks to David Dawsey, "The Golf Intellectual Property Attorney," for reminding me why I hyphenated www.ip-updates.com.

Thank Goodness It's Friday,

--Bill Heinze
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Free International Opposition Guide

INTA's International Opposition Guide peuports to be "a searchable database of basic, practical information on the structure of trademark opposition and related practices in approximately 100 jurisdictions worldwide, enabling practitioners to quickly assess the availability, feasibility and merits of pursuing opposition before incurring costs or retaining a local representative."

View a sample jurisdication profile
Access the complete publication with your INTA username and password and don't miss INTA's other online publications Country Guides and Practitioner's Guide to the Madrid Agreement and Madrid Protocol.
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New Judicial Tightrope for Partial Incorpration by Reference

In Zenon Environmental, Inc. v. U.S. Filter Corp. (November 7, 2007), the Federal Circuit held that the following statement was only a partial incorporation by reference of less than the entire reference, regardless of factual findings to the contrary by the lower court:

The vertical skein is not the subject matter of this invention and any prior art vertical skein may be used. Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No.
5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which
are included by reference thereto as if fully set forth herein.
According to the opinion of the court by Circuit Judge Lourie,
Incorporation by reference "provides a method for integrating material from
various documents into a host document . . . by citing such material in a manner
that makes clear that the material is effectively part of the host document as if it were explicitly contained therein." Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir. 2006) (quoting Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). "To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents." Id. (emphases added). Whether material has been incorporated by reference into a host document, and the extent to which it has been incorporated, is a question of law. Cook, 460 F.3d at 1376. In making that determination, "the standard of one reasonably skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity." Advanced Display, 212 F.3d at 1282.

. . . We are not persuaded by Zenon’s assertion, which the trial court accepted, that that language incorporates by reference the entire disclosures of the ’373 and ’083 patents. Such an interpretation is inconsistent with the plain language of the statement. The plain language expressly limits the incorporation to only relevant disclosures of the patents, indicating that the disclosures are not being incorporated in their entirety. Moreover, the plain language indicates that the subject matter that is being incorporated by reference pertains to the details relating to the construction and deployment of a vertical skein. Thus, we must look, as one reasonably skilled in the art would, to the grandparent patents to determine what the patentees meant by details relating to the construction and deployment of a vertical skein.

However, as noted in the dissenting opinion of Circuit Judge Newman,

The '319 patent sets forth the chain of copending applications back to the '373 patent; the specification of the '319 patent stating, in the "Cross-Reference to Related Applications":
This application is a continuation of Ser. No. 09/507,438, filed Feb. 19, 2000 issued as U.S. Pat. No. 6,294,039; which is a division of Ser. No. 09/258,999, filed Fed. 26, 1999, issued as U.S. Pat. No. 6,042,677; which is a division of Ser. No. 08/896,517, filed Jun. 16, 1997, issued as U.S. Pat. No. 5,910,250; which is a continuation-in-part application of Ser. No. 08/690,045, filed Jul. 31, 1996, issued as U.S. Pat. No. 5,783,083 which is a non-provisional of provisional application Ser. No. 60/012,921 filed Mar. 5, 1996 and a continuation-in-part of Ser. No. 08/514,119, filed Aug. 11, 1995, issued as U.S. Pat. No. 5,639,373. The disclosure of all the patents and applications listed above are hereby incorporated by reference thereto as if fully set forth herein.

'319 patent, col. 1, lines 8-21. The intervening '250 patent contains the specific incorporation by reference clause here at issue:

The vertical skein is not the subject matter of this invention and any prior art vertical skein may be used. Further details relating to the
construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein.

'250 patent, col. 2, lines 30-36. The district court concentrated on the "construction and deployment" portion of this clause, in response to the defendant's argument that continuity of disclosure was lost by that clause of the '250 patent.

. . . Contrary to the findings of fact of the district court, the panel majority finds that the incorporation clause in the '250 patent, supra, broke the continuity of disclosure.

This defense was presented to the district court, the defendant arguing that it was not sufficiently clear whether the words of incorporation embraced all of the elements of the grandparent '373 patent and the grandchild '319 patent, and particularly the gas distribution through the skein. The district court held an evidentiary hearing to determine what a person of ordinary skill in the field of the invention would understand from the clause incorporating the "details relating to the construction and deployment of a most preferred skein. . . ."

The question of what material would be understood as incorporated is a question of fact, on which the district court made extensive findings . . . .

The district court referred to the burden of proof, as the court found that continuity of disclosure was preserved from the '373 patent to the '319 patent:

[A]lthough not plaintiff's burden, the Court finds the incorporations by reference are fully informative to a person of ordinary skill, and that they permit the transfer of all disclosures of the '373 patent which cover claim 7 of the '319 patent to flow through all intermediary patents to the '319. [Id. at 5.]

The court also observed that the incorporation was reviewed by the patent examiner. This administrative finding carries the deference required by the Administrative Procedure Act. See Dickinson v. Zurko, 527 U.S. 150, 152 (1999). My colleagues ignore the administrative findings, as they ignore the district court.

. . . The panel majority does not review the district court's findings, and instead announces that this is a matter of "law." However, the question of what would be "reasonably conveyed to a person skilled in the relevant art," is a classical question of fact. Bilstad v. Wakalopulos, 386 F.3d 1116, 1126 (Fed. Cir. 2004).

My colleagues also criticize the specificity of the incorporation clause in the '250 patent. However, this clause is not distinguishable in specificity from that ratified in Cook Biotech, Inc. v. Acell, Inc., 460 F.3d 1365 (Fed. Cir. 2006), where the incorporation clause was as follows:

The preparation of UBS from a segment of urinary bladder is similar to the procedure for preparing intestinal submucosa detailed in U.S. Patent No. 4,902,508 the disclosure of which is expressly incorporated herein by reference. Id. at 1376.

The only difference in the specificity of the incorporation in the '250 patent, and the traditional incorporation text, is the uncertainty brought by the court to this routine practice. Incorporation by reference is a routine expedient of patent drafting. The district court's finding that a person of ordinary skill in the field of the invention would understand what is included in the incorporated subject matter, ends the inquiry.

. . . The panel majority's holding casts doubt on the reliable use of this expedient, lest an earlier patent become an invalidating reference against its successors in the chain of filings. The majority's rejection of the factual foundations of incorporation by reference and creation of a new area of de novo appellate authority, raise new risks of patent drafting. The apparent requirement that all subject matter must be reproduced in all continuing applications adds nothing to the knowledge disclosed to the public, adds nothing to the information provided to the patent examiner, and adds nothing to compliance with 35 U.S.C. '120; it simply adds costs and pitfalls to inventors, as they attempt to walk new judicial tightropes.

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Archived updates for Wednesday, November 07, 2007

"PerfumeBay" Enjoined, "Perfume Bay" Continues

In PERFUMEBAY.COM, INC. V EBAY INC. (November 5, 2007), the U.S. Court of Appeals for the Ninth Circuit concluded that the district court did not clearly err in declining to enjoin uses of the non-conjoined versions of Perfume Bay:

. . . The district court’s injunction maintained an equitable balance with respect to the disputed marks. The injunction reduces consumer confusion by eliminating the conjoined forms of “perfumebay.” The conjoined forms encompass all of eBay’s trademark, thus creating confusion when utilized in domain names, online advertising, and search engine results. Although eBay’s argument is persuasive, given the common suffix “Bay,” eBay failed to establish clear error. The separated
forms of “perfume” and “bay” do not include eBay’s entire mark. Unlike the conjoined forms, the non-conjoined forms do not resemble one another in the same manner. The district court’s more limited injunction, therefore, “balanced the conflicting interests both parties have in the unimpaired continuation of their trademark use.” Interstellar Starship Servs., 304 F.3d at 948 (citation omitted). This is particularly true in view of the fact that non-conjoined forms, such as “Perfume Bay,” cannot be utilized as domain names.

{Footnote 11: Although there was no clear error in the district court’s finding that the non-conjoined forms did not create a likelihood of confusion in this case, non-conjoined forms may nevertheless have a dilutive effect. “Dilution . . . protects the distinctiveness of a particular mark whether or not the products compete or consumer confusion exists. Because dilution and likelihood of confusion tests are directed at different actions, it does not make sense to import the relatively subjective similarity of the marks test from the likelihood of confusion context into the dilution context.” Thane, 305 F.3d at 906 (citations omitted).}

IV. CONCLUSION

The district court did not clearly err in finding that conjoined forms of “perfumebay” created a likelihood of consumer confusion. The district court, therefore, properly
enjoined Perfumebay from utilizing such infringing marks.

The district court also did not clearly err in finding that the non-conjoined forms of Perfumebay’s mark, such as Perfume Bay, did not create a likelihood of confusion.
However, the district court erred in holding that Perfumebay’s marks did not produce a likelihood of dilution, as the marks are nearly identical to eBay’s mark.

The district court also erred in finding that eBay acted with unclean hands in its advertising, as the record did not affirmatively demonstrate the requisite intent to deceive. The district court did not abuse its discretion by declining to award attorneys’ fees to Perfumebay, and correctly rejected eBay’s breach of contract claim.

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Abolishing Continuations (and More?) at the USPTO

Cecil Quillen writes for Technological Innovation and Intellectual Property that

There is a strong and unresolvable inconsistency between a concern about patent quality at the USPTO and opposition to limiting or abolishing continuing applications. People concerned about “patent quality” should want the USPTO to be able to obtain final decisions as to the patentability of applications it has examined. But the USPTO will continue to be unable to obtain such final decisions so long as applicants (or their attorneys) can avoid final decisions by refiling their applications. Thus the “patent quality” problem will persist so long as the USPTO remains unable to obtain final decisions as to the patentability of applications it has examined, and can rid itself of persistent applicants only by allowing their applications.

Hopefully the USPTO will change direction, and, rather than persisting in a problematic lawsuit, will seek discrete legislation to abolish all continuing applications except for divisionals filed pursuant to a Sec. 121 Requirement for Restriction, as the
writer has proposed elsewhere. (see this) Such continuing applications comprised about 25% of the applications filed in 2006, whereas the proposed Rule would have affected only 2.7% of filed applications, and, thus, even if finally permitted, will have only a negligible effect.

Abolition would, in addition, increase USPTO resources available for the examination of original applications by about 1/3, without any increase in staff or budget, which should further enhance patent quality. And, of perhaps even greater importance, abolition would eliminate the abuses made possible by continuing applications that were identified by Professor Lemley and Judge Moore in their Boston University Law Review article (84 BU Law Review 63). Such discrete legislation to abolish continuing applications, uncoupled from the patent reform morass presently in the Congress, would enable (force?) the “patent crowd” to face their contradiction and decide whether to resolve the inconsistency in favor of patent quality (and innovation), or in favor of their own convenience.


But Cecil, why stop at continuations? Why not simply abolish the initial examination of patentability altogether, much like the UK Intellectual property Office has abolished relative grounds for refusal of trademark applications. Instead, let's focus our resources on the patents that really matter (say those under threat of enforcement) in a speedy inter-partes reexamination/opposition system (perhaps with the USPTO as a party representing "the public interest," similar to Section 337 investigations before the ITC) where those with greatest commercial interest in the technology will be highly motivated to conduct a complete patentability search and present the best legal arguments. Can we really afford a patent system where all (continuing) applications are treated equally?
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IPO Calls for Trilateral Patent Format Changes

According to a paper prepared by J. Jeffrey Hawley and circulated by the Intellectual Property Owner's Association, overall patenting costs could be significantly reduced by harmonizing the formal requirements for patent applications in different jusrisdictions, including:

  • Changing U.S. practice to allow “National Legends” to be cited by applicants in a paper that is seperate from the specification. Thanks to Chriostopher Singer at Patent Docs for explaining that
    This refers to the requirement in the U.S. that applications must contain
    sections such as "Cross-Reference to Related Applications" and "Statements of Federal Sponsored Research." Since these sections are particular to the U.S. and need to be removed upon filing in Europe and Japan (and must be added to original EP and JP applications when filed in the US), these sections would not be required in the filed patent specification.
  • Changing U.S. practice to preclude any claim scope limiting effect based on the presence of reference numbers in the abstract or claims.
  • Changing European practice to preclude requiring conformance of the specification and allowed claims.
  • Changing European practice to preclude requiring the insertion of a description of the prior art applied during the examination into the description.
  • Changing Japanese practice to provide for the citation of specific prior art references in a separate paper rather than in the description of the application.

The Trilateral Patent Offices (USPTO, EPO and JPO) have reportedly agreed to consider a working group to consider these five issues, while WIPO has been conspicuously left on the sidelines.

And while we're at it, how about

  • Changing U.S. practice to abolish the Declaration and get rid of the inventor/applicant distinction
  • Changing U.S. practice to abolish the mutiple dependent claiming surcharge, per commenary from Bob Lelkes.
  • Agreeing on a universal incorporation by reference practice
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Archived updates for Monday, November 05, 2007

Dicta on the Importance of Significant Digits in Patent Claims

Dicta in U.S. Philips Corporation v. Iwasaki Electric Company LTD. (Federal Circuit, November 2, 2007) recognized the importance of significant digits for ranges in claimed ranges.

According to Circuit Judge Linn:

In some scientific contexts, "1" represents a less precise quantity than "1.0," and "1" may encompass values such as 1.1 that "1.0" may not. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1320–21 (Fed. Cir. 2001) (discussing distinction between "0.91 g/cm3" and "0.910 g/cm3"). In other words, "1.0" may be said to have more significant digits than "1" with no decimal point. Because "10-6" and "10-4" are simply the numbers 0.000001 and 0.0001 expressed as powers of ten, the claim language provides no basis for inferring any level of precision beyond the single digit "1." The way that power-of-ten quantities are used in the specification, discussed supra, confirms that the quantities of halogen described by the claims are not intended to be more precise. Thus, it is technically incorrect to assert, as Iwasaki does in its brief before this court, e.g., Br. for Appellee at 35, that "10-x" should be construed to mean "1.0 × 10-x." It means, simply, "1 × 10-x." "1.0 × 10-x" expresses a quantity with greater precision, reflected in the recitation of a significant digit following the decimal point. The claim construction that we affirm today is "between 1 × 10-6 and 1 × 10-4 μmol/mm3," not "between 1.0 × 10-6 and 1.0 × 10-4 μmol/mm3." We leave for another day the question of whether this claim construction is sufficient to answer the infringement questions presented by a future record. See E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1219 (Fed. Cir. 2007)
("[A]ny articulated definition of a claim term ultimately must relate to the infringement questions that it is intended to answer.").
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Listed Assignee Sufficiently Identifies Owner for Infringement Notification Letter

In U.S. Philips Corporation v. Iwasaki Electric Company LTD. (November 2, 2007), the Federal Circuit held that "when the information printed on the patent is correct, it is enough to put an accused infringer on notice of the patentee’s identity" for an infringement notification letter. According to the opinion by Circuit Judge Linn:
Iwasaki argued before the district court and reiterates here that the Rolfes letter was deficient under Lans because it was not sent by, and did not reference, the patent owner U.S. Philips. The district court held in Iwasaki’s favor on both of these grounds. We disagree. Lans is distinguishable and does not support Iwasaki’s position. First, unlike the facts in Lans, the front page of the ’181 patent, which was enclosed with the Rolfes letter, correctly identifies "U.S. Philips Corporation, New York, N.Y." as the assignee. Although the assignation printed on the face of a patent is not a conclusive indication of the patent’s current ownership, we hold that when the information printed on the patent is correct, it is enough to put an accused infringer on notice of the patentee’s identity. Second, although the Rolfes letter did not purport to come from U.S. Philips Corporation, it is undisputed that Philips International B.V. had the ultimate responsibility for licensing and enforcement of the ’181 patent. Thus, the reasons we articulated in Lans for strictly enforcing the notice requirement were all fulfilled: Philips International B.V.—the sender of the letter—was the party "to contact . . . about an amicable and early resolution of the potential dispute," "to consult with . . . about design changes to avoid infringement," and with whom "to negotiate a valid license." Lans, 252 F.3d at 1327. Under the facts of this case, the Rolfes letter constituted notice under § 287(a), and Iwasaki is liable for any acts of infringement that U.S. Philips can demonstrate took place after the June 7, 2000, date of the letter. The district court’s contrary ruling is reversed.
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Archived updates for Thursday, November 01, 2007

TGIF for Doing the Impossible

In honor of GSK accomplishing what many patent practitioners thought was impossible earlier this week, I couldn't resist pointing to the latest announcement from the U.S. Copyright Office on making the impossible, possible:

Under the 1909 copyright law, works copyrighted in the United States before January 1, 1978, were subject to a renewal system in which the term of copyright was divided into two consecutive 28-year terms. To secure the renewal protection, the claimant had to file a renewal registration within strict time limits. However, since January 1, 2006, all applications for renewal have necessarily related to works which, due to automatic renewal, are already in their renewal terms, making impossible any renewal in the 28th year. . . .
Consequently, the Office issued a final rule revising CFR 202.17 (read further information) so that copyright practioners too can now "do the impossible," with the latest USCO forms:

Any applications for registration of claims to the renewal term must be filed using the newly revised forms. The previously used forms are obsolete, and the new forms must be used to file renewal claims. The new forms are Form RE for renewal, Form RE/CON for additional information, and Form RE/Addendum for works not registered during the original term.
Thank Goodness It's Friday (and "Anything's possible for a Possible"),

--Bill Heinze
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