Marking Not Required for Notice in Process or Method Claims

In Crown Packaging Technology, Inc. v.  Reexam Beverage Can Co. (March 17, 2009) the Federal Circuit reiterated that the notice provisions of §287 do not apply where the patent is directed to a process or method. 

[A] party that does not mark a patented article is not entitled to damages for infringement prior to actual notice. Although Rexam asserted only the method claims of the '839 patent against Crown, the district court dismissed Rexam's counterclaim because the '839 patent also includes unasserted apparatus claims. The district court erred.

The law is clear that the notice provisions of §287 do not apply where the patent is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed.Cir.1983). In Hanson, 718 F.2d at 1082-83, we held that 35 U.S.C. §287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.

 

In American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523 (Fed.Cir.1993), we explained:

 

The purpose behind the marking statute is to encourage the patentee to give notice to the public of the patent. The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).

 

Id. at 1538-39. As the American Medical opinion goes on to explain:

 

In this case, both apparatus and method claims of the '765 patent were asserted and there was a physical device produced by the claimed method that was capable of being marked. Therefore, we conclude that AMS was required to mark its product pursuant to section 287(a) in order to recover damages under its method claims prior to actual or constructive notice being given to MEC.

 

Id. at 1539 (emphasis added). In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims. In American Medical, in contrast, "both apparatus and method claims of the '765 patent were asserted." American Medical, 6 F.3d at 1523. Because Rexam asserted only the method claims of the '839 patent, the marking requirement of 35 U.S.C. § 287(a) does not apply Consequently, we reverse the district court's grant of Crown's motion for summary judgment dismissing Rexam's counterclaim for infringement of the ' 839 patent.

 

 

Fair Use Doctrine Under U.S. Copyright Law

Authors rights under copyright law are subject to certain limitations, including the doctrine of “fair use” that was developed through a substantial number of court decisions over the years and has been codified in section 107 of the copyright law.   In the U.S., the Fair Use doctrine allows limited use of copyrighted material without requiring permission from the rights holders under a four-factor balancing test considering:

Purpose and character

Whether the use in question helps fulfill the intention of copyright law to stimulate creativity for the enrichment of the general public, or whether it aims to only "supersede the objects" of the original for reasons of personal profit. 

 

Nature of the copied work

Courts are more likely to find fair use where the work is factually-oriented, facts and ideas are separate from copyright—only their particular expression or fixation merits such protection.

 

Amount and substantiality

In general, the less that is used in relation to the whole, e.g., a few sentences of a text for a book review, the more likely that the sample will be considered fair use.

 

Effect upon work's value

Courts often consider two kinds of harm to the potential market of the original work.  First, courts consider whether the use in question acts as a direct market substitute for the original work. Second, courts also consider whether potential market harm might exist beyond that of direct substitution, such as in the potential existence of a licensing market.

As noted by the U.S. Copyright Office, the distinction between fair use and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission and acknowledging the source of the copyrighted material does not substitute for obtaining permission.

The 1961 Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law cites examples of activities that courts have regarded as fair use: “quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use in a parody of some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report; reproduction by a library of a portion of a work to replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a lesson; reproduction of a work in legislative or judicial proceedings or reports; incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported.”

USPTO Interim Procedure for Patent Term Adjustment Recalculation

The U.S. Patent and Trademark Office expects to complete by March 2, 2010, the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit's recent decision in Wyeth v. Kappos regarding the overlapping delay provision of 35 USC 154(b)(2)(A).   In the meantime, the USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who request it no later than 180 days after the issue date.  This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth.   A copy of the notice submitted to the Federal Register for publication and the form for patentees to use in requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.

 

An applicant is entitled, subject to certain conditions and limitations, to patent term adjustment if (1) the USPTO fails to take certain actions during the examination and issue process within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; and (3) for delays due to interference, secrecy order, or successful appellate review. 

 

The guidance does not address patents that have issued more than 180 days ago, nor has the USPTO provided any indication that it will address this issue in the future. 

 

USPTO Rules on Special Status Petitions for Green Technology Patent Applications

In a Federal Register notice published and effective on December 8, 2009, the U.S. Patent and Trademark Office announced rules for implementing its previously-announced pilot program in which an applicant may petition to have an application involving green technologies advanced out of turn without meeting all of the requirements of the existing accelerated examination program such as examination support documents. The Green Technology Pilot Program will run for twelve months from its effective date. The USPTO may extend the pilot program (with or without modifications) depending on the feedback from the participants and the effectiveness of the pilot program.

Once a petition is granted, the special status applications will be placed on an examiner's special docket prior to the first Office action, on the examiner's amended docket after the first Office action, and will also have special status in any appeal to the BPAI and in the patent publication process.  However, petitions to make special under the Green Technology Pilot Program must be filed before December 8, 2010 and the USPTO will accept only the first 3,000 petitions, provided that the petitions meet several requirements, including:

• The non-fee petition must be in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009), and at least one day before a first office action is mailed (which may be a restriction requirement) or appears in the Patent Application Information Retrieval (PAIR) system. Continuing applications will not automatically be accorded special status based on papers filed with a petition in a parent application. Each continuing application must on its own meet all requirements for special status.
• The petition to make special must be accompanied by a request for early publication in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18(d).
• The application must be classified in one of the may classes identified Section V of the Federal Register notice copied below.
• The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds.  Applicants may file a preliminary amendment to cancel the excess claims and/or the multiple dependent claims at the time the petition to make special is filed.
• The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements 
• The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met

If applicant files a petition to make special under the Green Technology Pilot Program that does not comply with the requirements set forth in the notice, the USPTO will notify the applicant of the deficiency by issuing a notice and applicant will be given only one opportunity to correct the deficiency within the longer of one month or thirty days.  Otherwise, tithe application will not be eligible for the Green Technology Program.  The time period for reply is not extendable under 37 CFR 1.136(a).

For applications pertaining to environmental quality, the petition to make special must state that special status is sought because the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements. If the application does not clearly disclose that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life sustaining natural elements, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, in explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment. See MPEP § 708.02 (item V).

 

For patent applications pertaining to: (1) The discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions, the term ''renewable energy resources'' includes hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources. The second category would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances. The third category listed above would include, but is not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies).

 

The petition to make special for an application directed to development of renewable energy or energy conservation, or directed to greenhouse gas emission reduction, must state the basis for the special status (i.e., whether the invention materially contributes to (1) development of renewable energy resources or energy conservation, or (2) greenhouse gas emission reduction). If the application disclosure is not clear on its face that the claimed invention materially contributes to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, nor does the standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction. See MPEP § 708.02 (item VI).

 

For USPTO the press release, click here.  For the Federal Register notice with more details of the program and the requirements to participate, click here.  USPTO Director Kappos also provides this entry on his official blog on the subject with links to his remarks from the press conference, as well as press accounts of the announcement in NYTimes.com and WSJ.com.

 

 

The following is a list of the eligible classifications:

A. Alternative Energy Production

1. Agricultural waste (USPC 44/589).

2. Biofuel (USPC 44/605; 44/589).

3. Chemical waste (USPC 110/235–259, 346).

4. For domestic hot water systems (USPC 126/634–680).

5. For passive space heating (USPC 52/173.3).

6. For swimming pools (USPC 126/ 561–568).

7. Fuel cell (USPC 429/12–46).

8. Fuel from animal waste and crop residues (USPC 44/605).

9. Gasification (USPC 48/197R, 197A).

10. Genetically engineered organism (USPC 435/252.3–252.35, 254.11–254.9,257.2, 325–408, 410–431).

11. Geothermal (USPC 60/641.2–641.5; 436/25–33).

12. Harnessing energy from man-made waste (USPC 75/958; 431/5).

13. Hospital waste (USPC 110/235– 259, 346).

14. Hydroelectric (USPC 405/76–78; 60/495–507; 415/25).

15. Industrial waste (USPC 110/235–259, 346).

16. Industrial waste anaerobic digestion (USPC 210/605).

17. Industrial wood waste (USPC 44/589; 44/606).

18. Inertial (e.g., turbine) (USPC 290/51, 54; 60/495–507).

19. Landfill gas (USPC 431/5).

20. Municipal waste (USPC 44/552).

21. Nuclear power—induced nuclear reactions: processes, systems, and elements (USPC 376/all).

22. Nuclear power—reaction motor with electric, nuclear, or radiated energy fluid heating means (USPC 60/203.1).

23. Nuclear power—heating motive fluid by nuclear energy (USPC 60/644.1) Photovoltaic (USPC 136/243–265).

24. Refuse-derived fuel (USPC 44/552).

25. Solar cells (USPC 438/57, 82, 84,85, 86, 90, 93, 94, 96, 97).

26. Solar energy (USPC 126/561–714; 320/101).

27. Solar thermal energy (USPC 126/561–713; 60/641.8–641.15).

28. Water level (e.g., wave or tide) (USPC 405/76–78; 60/495–507).

29. Wind (USPC 290/44, 55; 307/64–66, 82–87; 415/2.1).

B. Energy Conservation

1. Alternative-power vehicle (e.g.,hydrogen) (USPC 180/2.1–2.2, 54.1).

2. Cathode ray tube circuits (USPC 315/150, 151, 199).

3. Commuting, e.g., HOV, teleworking (USPC 705/13).

4. Drag reduction (USPC 105/1.1–1.3; 296/180.1–180.5; 296/181.5).

5. Electric lamp and discharge devices (USPC 313/498–512, 567–643).

6. Electric vehicle (USPC 180/65.1;180/65.21; 320/109; 701/22; 310/1–310).

7. Emission trading, e.g., pollution credits (USPC 705/35–45).

8. Energy storage or distribution (USPC 307/38–41; 700/295–298; 713/300–340).

9. Fuel cell-powered vehicles (USPC 180/65.21; 180/65.31).

10. Human-powered vehicle (USPC 180/205; 280/200–304.5).

11. Hybrid-powered vehicle (USPC 180/65.21–65.29; 73/35.01–35.13, 112–115, 116–119A, 121–132).

12. Incoherent light emitter structure (USPC 257/79, 82, 88–90, 93, 99–103).

13. Land vehicle (USPC 105/49–61 (electric trains); 180/65.1–65.8 (electric cars)).

14. Optical systems and elements (USPC 359/591–598).

15. Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/32–46).

16. Static structures (USPC 52/309.1–309.17, 404.1–404.5, 424–442, 783.1–795.1).

17. Thermal (USPC 702/130–136).

18. Transportation (USPC 361/19, 20, 141, 152, 218).

19. Watercraft drive (electric powered) (USPC 440/6–7).

20. Watercraft drive (human powered) (USPC 440/21–32).

21. Wave-powered boat motors (USPC 440/9).

22. Wind-powered boat motors (USPC 440/8).

23. Wind-powered ships (USPC 114/ 102.1–115).

C. Environmentally Friendly Farming

1. Alternative irrigation technique (USPC 405/36–51).

2. Animal waste disposal or recycling (USPC 210/610–611; 71/11–30).

3. Fertilizer alternative, e.g., composting (USPC 71/8–30).

4. Pollution abatement, soil conservation (USPC 405/15).

5. Water conservation (USPC 137/78.2–78.3; 137/115.01–115.28).

6. Yield enhancement (USPC 504).

D. Environmental Purification, Protection, or Remediation

1. Biodegradable (USPC 383/1; 523/124–128; 525/938; 526/914).

2. Bio-hazard, Disease (permanent containment of malicious virus, bacteria, prion) (USPC 588/249–249.5).

3. Bio-hazard, Disease (destruction of malicious virus, bacteria, prion) (USPC 588/299).

4. Carbon capture or sequestration (USPC 95/139–140; 405/129.1–129.95; 423/220–234).

5. Disaster (e.g., spill, explosion, containment, or cleanup) (USPC 405/129.1–129.95).

6. Environmentally friendly coolants, refrigerants, etc. (USPC 252/71–79).

7. Genetic contamination (USPC 422/1–43).

8. Hazardous or Toxic waste destruction or containment (USPC 588/1–261).

9. In atmosphere (USPC 95/57–81, 149–240).

10. In water (USPC 210/600–808; 405/60).

11. Landfill (USPC 405/129.95).

12. Nuclear waste containment or disposal (USPC 588/1–20, 400).

13. Plants and plant breeding (USPC 800/260–323.3).

14. Post-consumer material (USPC 264/36.1–36.22, 911–921; 521/40–49.8).

15. Recovery of excess process materials or regeneration from waste stream (USPC 162/29, 189–191; 164/5; 521/40–49.8; 562/513).

16. Recycling (USPC 29/403.1–403.4; 75/401–403; 156/94; 264/37.1–37.33).

17. Smokestack (USPC 110/345; 422/900).

18. Soil (USPC 405/128.1–128.9, 129.1–129.95).

19. Toxic material cleanup (USPC 435/626–282).

20. Toxic material permanent containment or destruction (USPC 588/ all).

21. Using microbes or enzymes (USPC 435/262.5).

USPTO Expands and "Enhances" First Action Interview Pilot Program

Effective October 1, 2009, the United States Patent and Trademark Office (USPTO) is expanding and "enhancing" the original First Action Interview Pilot Program which ended on June 28, 2009.   

Under the Enhanced First Action Interview Pilot Program ending April 1, 2010, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims.  Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).  The response period to reply to this pre-interview communication can be extended by 30 days.

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply.  If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims.  If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action to which the applicant will be given one month to reply with limited extensions of time and this First Action Interview office action will be considered the first action on the merits.  The applicant can also waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment, and proceed directly to the second substantive examination. 

Other aspects of the program include:

• Expanding the pilot across more art units in the Technology Centers, depending upon the filing date of the application. New utility nonprovisional applications that fall within one of the following groups may be eligible for the Enhanced First Action Interview Pilot Program:
  1. Applications filed on or before November 1, 2006, and assigned to workgroup 1610 (art units 161X).
  2. Applications filed on or before October 1, 2006, and assigned to art unit 1795.
  3. Applications filed on or before February 1, 2008, and assigned to workgroups 2150 and 2160 (art units 215X and 216X).
  4. Applications filed on or before July 1, 2008, and assigned to workgroups 2440 and 2450 (art units 244X and 245X).
  5. Applications filed on or before June 1, 2007, and assigned to art unit 2617.
  6. Applications filed on or before May 1, 2008, and assigned to art units 2811-2815, 2818, 2822-23, 2826, 2891-2895.
  7. Applications filed on or before December 1, 2007, and assigned to art unit 3671.
  8. Applications filed on or before January 1, 2008, and assigned to art unit 3672.
  9. Applications filed on or before November 1, 2007, and assigned to art unit 3673.
  10. Applications filed on or before February 1, 2008, and assigned to art unit 3676.
  11. Applications filed on or before July 1, 2007, and assigned to art units 3677.
  12. Applications filed on or before November 1, 2007, and assigned to art units 3679.
  13. Applications filed on or before May 1, 2006, and assigned to art unit 3735.
  14. Applications filed on or before April 1, 2007, and assigned to art unit 3736.
  15. Applications filed on or before December 1, 2006, and assigned to art units 3737.
  16. Applications filed on or before August 1, 2006, and assigned to art units 3768.
  17. Applications filed on or before December 1, 2006, and assigned to art unit 3739.
  18. Applications filed on or before September 1, 2007, and assigned to art units 3762 and 3766.
  19. Applications filed on or before September 1, 2006, and assigned to art unit 3769.
• Previously, all applicants had to go through all phases of the pilot’s procedure. After receiving a Pre-interview communication that contains the results of the examiner’s prior art search, applicants may now choose from the following:

  a. The full pilot procedure (Pre-interview communication, interview and first action).

  b. Waiver of the interview (Pre-interview communication and first action only).

  c. Waiver of the interview and first action (by filing a reply in compliance with 37 CFR 1.111(b) in response to the Pre-interview communication).

  d. Waiver of the first action (by requesting entry of a proposed amendment during the interview).

• The time period to reply set forth in the Pre-Interview Communication will be extendable by one additional month. (Previously, the time period for reply was non-extendable.)
• The time period within which to conduct the interview will be two months from the date of filing the interview request form. (Previously, the time period was two months from the Office notice date for the Pre-interview communication.)
• Failure to timely reply to the Pre-Interview Communication or to timely conduct the interview will not result in abandonment of the application. Instead, a first action will be provided, similar to waiving the interview.

• Applicant's request to participate in the program must be filed during the six month life of the program and at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system.  The request to enter the Pilot Program must be made via EFS-Web which can be accessed at: http://www.uspto.gov/ebc/index.html

 

More Information:

Original Pilot Program (04/28/08 - 06/28/08) (click for eligibility)

Enhanced Pilot Program (10/01/09 - 04/01/10) (click for eligibility)

For more information about the Enhanced Pilot Program, click here

Changes Between the Original and Enhanced Pilot Programs 

Forms:

• Request For First Action Interview (Pilot Program) [PDF]
• Applicant Initiated Interview Request Form (PTOL-413A) [PDF]
• First Action Interview Pre-Interview Communication [PDF]
• First Action Interview Office Action Summary [PDF]

Examples:

• Pre-Interview Communication Example 1 [PDF]
• Pre-Interview Communication Example 2 [PDF]

Tips to Consider When Preparing for Interview:

• Interview Talking Points [PDF]

Slide Presentation:

• First Action Interview Pilot Program: Overview [PPT]

Contacts:

• RE: EFS-Web or PAIR system - contact the Electronic Business Center at 866-217-9197.
• RE: a specific application - contact John Follansbee at (571) 272-3964.
• RE: the First-Action Interview Pilot Program Notice - contact Joseph Weiss ((571) 272-7759), Legal Advisor, Office of Patent Legal Administration, or e-mail first.action.interview@uspto.gov.

Press Release:

----- Forwarded Message ----
From: Karen Sewell <karen.sewell@uspto.gov>
To: BillHeinze@yahoo.com
Sent: Thursday, October 1, 2009 2:23:31 PM
Subject: USPTO Expands Pilot Program to Reduce Pendency and Improve Patent Quality

PRESS RELEASE                CONTACT: Jennifer Rankin Byrne or Ruth Nyblod
October 1, 2009                                                                      Phone:  571/272-8400 or
#09-20                                                                                            Jennifer.Rankin_Byrne@uspto.gov
                                                                                            Ruth.Nyblod@uspto.gov
                   
USPTO Expands Pilot Program to Reduce Pendency and Improve Patent Quality
First Action Interview Pilot enhances information exchange between applicant and examiner and promotes early resolution of outstanding issues

Washington – The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is expanding its First Action Interview Pilot Program in which an applicant is entitled to an interview with the patent examiner prior to the first office action on the merits in a new utility application.  The program will expand to additional technology areas for a six-month period beginning on October 1, 2009.  The initial pilot program was limited to two computer-related technology areas.

The initial six-month pilot program, which began April 28, 2008, has shown that the patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one.  For the applications involved in the initial pilot, the First-Action Allowance rate increased six-fold when compared to applications from the same technology area not involved in the pilot.

“When people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real-time,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.  “Initial results from this pilot are very impressive and show that interviews present a clear path to resolve issues and move prosecution forward quickly.”

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the expanded pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims.  Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments). 

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply.  If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims.  In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance and fees due will be issued.  If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, to reply, with limited extensions of time.  It is this First Action Interview office action that is considered the first action on the merits in the application.

There have been several improvements made to the program since the initial pilot. For example, the response period to reply to the pre-interview communication can now be extended by 30 days.  Also, the applicant can now waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment and proceed directly to the second substantive examination.  This may be preferable to those who would prefer not to wait for the First Action Interview office action and refile the proposed amendment formally.

The USPTO will continue to survey applicants during the expanded pilot to make further improvements to the program.

For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.

### 

 

FTC Revises Guides Governing Endorsements and Testimonials

The Federal Trade Commission has issued revisions to its Guides Concerning the Use of Endorsements and Testimonials, which will take effect on December 1, 2009 under16 C.F.R. Part 255: Guides Concerning the Use of Endorsements and Testimonials in Advertising: Notice Announcing Adoption of Revised Guides

TGIF for Religion and Intellectual Property

On July 7, 2009, Pope Benedict XVI published his third encyclical letter titled "Caritas in veritate" (Charity in Truth) which, among other things, states that "On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care.  At the same time, in some poor countries, cultural models and social norms of behaviour persist which hinder the process of development." 

 

In response, the Intellectual Property Owners Association announced that it and others "are working to educate on the incentives that IP rights provide for advancing knowledge and creating jobs."

 

Good luck in bringing some of that same religious fervor to your organization.

Evidence of Intent to Use Before the US Trademark Office

The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009).

 

According to the TTABlog, the U.S. Trademark Trial and Appeal Board's recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], brought the bona fide intent issue to the forefront for many trademark practitioners. There the Board sustained Honda's opposition to Herr Winkelmann's Section 44(e) application to register the mark V.I.C. for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the USA.

According to Edelman,"registration applicants should be very careful about including too many products or services in their intent-to-use based applications, and should maintain some minimal level of contemporaneous documentation and provable business rationale for the products or services listed in the application." 

The affirmative activities that have been deemed indicative of the presence of a bona fide intent to use a trademark in commerce include:

• conducting a trademark availability search
• performing preparatory graphic design work or labeling on sales material for a product;
• using a mark in international jurisdictions
• using a mark in test marketing
• testimony regarding informal, unwritten business plans or market research
• obtaining necessary regulatory permits
• obtaining a correlative domain name for the mark or setting up a website
• making contacts with individuals who might help develop a business;
• correspondence mentioning the planned use of the mark
• attempts to find licensees, including ones outside of the U.S.
• obtaining commercial space in which to perform the services

The factual circumstances that have been deemed indicative of a lack of a bona fide intent to use include:

·     an unrealistically broad listing of goods and services;

• a defensive intent to prevent others from using the mark;
• the filing of numerous intent-to-use applications without ever using them or subsequently abandoning them;
• the absence of any steps or planning to use the mark;
• lack of industry-relevant experience;
• misrepresentation of goods or services in order to reserve a mark

Website "Means" Requires Algorithm Disclosure

In Ex parte Catlin, __ Westlaw __ (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C.  Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:

 

According to Administrative Patent Judge Horner,

. . . we have thoroughly reviewed the Appellants' Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. Accordingly, the Specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the disclosed functions of the first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.

UKIPO "Green Channel" for Expedited Searching and Examination of Eco-Friendly Technology; SIPO to Follow

The UK Intellectual Property Office has initiated a "Green Channel" where applicants will be able to request accelerated processing of their application if the invention relates to a 'green' or environmentally-friendly technology.  To enter the Green Channel, the applicant must make a request in writing, indicating:

• that their application relates to a ‘green’ or environmentally-friendly technology and
• which actions they wish to accelerate: Search, Combined Search and Examination, Publication, and/or Examination.

The Office will require no further reasons for accelerated processing.  This service will apply to existing applications as well as to applications filed after May 12, 2009. You can find further information about the various accelerated services in the patents fast grant guidance.

According to the press release, "the ‘green’ patents initiative was one of the key deliverables announced at the UK/China Economic and Financial Dialogue on May 11, with China already agreeing to adopt the proposal.  The Intellectual Property Office is working with other major trading partners to get them to sign-up to the green patents fast-track system."

In the U.S., so-called "petitions to make special" (except those based on applicant’s health, age, or the PPH pilot program), are required to comply with the detailed requirements for the accelerated examination program as set forth in this notice.

Federal Circuit Standard of Review for ITC Decisions

In Erbe Elektromedizin GMBH v. International Trade Commission (Fed. Cir. 2009; May 19, 2009), the court restated its standard of review for decisions of the U.S. International Trade Commission:

We review the rulings of the ITC under the Administrative Procedure Act, 5 U.S.C. § 706. 19 U.S.C. § 1337(c); Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1355 (Fed. Cir. 2007). "Rulings of law by the ITC are reviewed for correctness, and findings of fact are reviewed to ascertain whether they were supported by substantial evidence on the record as a whole." Osram, 505 F.3d at 1355. . . . 

We review claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). We generally do not construe claim language to be inconsistent with the clear language of the specification; "[u]sually, it is dispositive." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). . . .

. . . the fundamental disagreement between the parties boils down to whether fixed optics are a "working channel." . . . the parties agree that infringement requires the accused devices to be used with an endoscope having at least two "working channels" and that the accused devices have only a single "working channel" if the fixed optics are not a "working channel." Based on our claim construction, the ITC correctly concluded that ERBE presented no evidence that any accused device had been used with an endoscope that had at least two "working channels" and, therefore, that there was no evidence of direct infringement and thus no basis for finding induced or contributory infringement. In light of this holding, we need not address the other arguments raised on appeal. Accordingly, we affirm.

Federal Circuit Clarifies Materiality Test for Geographically Deceptively Misdescriptive Marks

In In re Spirits International, N.V., (April 29, 2009), the U.S. Court of Appeals for the Federal Circuit vacated the TTAB's decision in which the Board found the mark MOSKOVSKAYA to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here  via the TTABlog). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived:

In this case, as in every case, in order to establish a prima facie case of materiality there must be some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark. Here the Board properly recognized that in order to be deceptive, foreign language marks must meet the requirement that “an appreciable number of consumers for the goods or services at issue will be deceived.” In re Spirits, 86 USPQ2d at 1085.

The problem with the Board’s decision is that it elsewhere rejected a requirement of proportionality, and discussed instead the fact that Russian is a “common, modern language[] of the world [that] will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue,” such number being in this case 706,000 people, according to the 2000 Census. Id. The Board, however, failed to consider whether Russian speakers were a “substantial portion of the intended audience.” Because the Board applied an incorrect test, a remand is required.

We express no opinion on the ultimate question of whether a substantial portion of the intended audience would be materially deceived. We note that only 0.25% of the U.S. population speaks Russian. Appellant’s Br. 26. If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.

We remand to the Board for a determination of whether there is a prima facie case of material deception under the correct legal test in the first instance. Because of our disposition on the question of the prima facie case, we do not reach the questions raised by the appellant as to the Board’s rejection of the survey as rebutting the prima facie case, though we note that the Board’s holding as to this issue was heavily influenced by its incorrect view of materiality.