My blog posting has been a little slow over the past few days – for good reason.  My daughter, Robin, was born ten days ago.  She is perfect.

I’ll be out of the office for much of this week, but I am readily available through e-mail (crouch@mbhb.com). 

– Dennis

I hope that everyone has a happy Thanksgiving. Even if you are not in the U.S., I suggest that you take the day off to celebrate.  Although I love turkey, I hope that you don’t deep-fat fry yours.

The U.S. Patent and Trademark Office Joins in the Celebration of Thanksgiving
Recognizes patents and trademarks related to Thanksgiving

The Department of Commerce’s United States Patent and Trademark Office joins in the celebration of Thanksgiving by recognizing some patents and trademarks associated with this festive holiday.

Food often takes center stage at Thanksgiving, and there are many well-known Thanksgiving-related products protected by patents and trademarks. One way to spend more time with family and less in the kitchen cleaning up is by using a disposable cooking pan (patent #5,628,427) or a cooking jacket (patent #4,942,809) for the turkey, ham or roast. One non-traditional, but increasingly popular, way to cook a turkey is deep-frying, and one type of equipment used in this preparation is protected by patent # 5,758,569.

Some well-known trademarks associated with turkey and dressing, must-haves at many Thanksgiving tables, are Butterball (registration #1151836) for turkey products and Stove Top (registration #0949459) for stuffing. What holiday feast would be complete without cranberry sauce such as Ocean Spray (registration #2150919)? Desserts are always the final complement to a Thanksgiving feast. For those that do not bake their own, Sara Lee’s slogan for its pies and cakes, "Nobody Doesn’t Like Sara Lee," is protected by trademark registration #1885156.

These patents and trademarks, as well as the more than six million patents issued since the first in 1790 and the 2.3 million trademarks registered since 1870, can be seen on the Department of Commerce’s U.S. Patent and Trademark Office web site at www.uspto.gov.

In May, I reported on the bill in Congress that would dramatically alter patent filing fees.  That bill has now passed both the House and Senate and is awaiting President Bush’s signature.  Here is a brief rundown:

Small entities retain 50% cut.

Patent office fee diversion has been a thorn in the side of all the major Intellectual Property Law Associations.  The associations agreed to support a major fee increase at the PTO if that fee increase was linked to an anti-diversion provision.  In March 2004, the House passed HR 1561 that included both the fee increase and an anti-diversion provision.  The Senate has not passed parallel legislation, and now looks likely to support the fee increase without the accompanying fiscally responsible anti-diversion provision.  This change is unacceptable to the Associations. 

As Congress began consideration of a 2005 omnibus appropriations bill yesterday, eight trade and professional associations including IPO wrote to House appropriators urging that any patent fee legislation include language to prevent fee diversion and that the fee increase not be limited to one year.  Associations included the National Association of Manufacturers and the U.S. Chamber of Commerce.  For the text of the letter, click here.

For more information, read the article by Sarah Lai Stirland of the National Journal.

By Dennis Crouch

Under the rules of the Court of Appeals for the Federal Circuit (CAFC), non-precedential opinions may not be cited in briefs submitted to the Court.  Federal Circuit Rule 47.6(b) provides that an opinion designated as non-precedential “must not be employed or cited as precedent.”  The CAFC reasons that these opinions are essentially throw-away judgments that do not “significantly [add] to the body of law.”  Noted attorney Hal Wegner has gone so far as to say that non-precedential opinions are “not worth reading or studying as a routine matter.”

Despite the rule, attorneys sometimes cannot resist citing to an unpublished opinion that is directly on-point.  In a recent opinion, the Court drew a line in the sand and issued a stern warning to any attorney contemplating whether to use a non-precedential opinion in a brief.  In the order titled In re violation of Rule 28(c), ___ F.3d ____ (Misc. No. 774) (Fed. Cir. Nov 5, 2004), the CAFC pronounced that in the future, “violations of the Federal Rules of Appellate Procedure, or of our Local Rules of Practice, will likely result in sanctions”  regardless of whether or not the violations are “inadvertent.”  Although the case involved Rule 28 rather than Rule 47, in its opinion, the Court specifically indicated its disapproval of the citation of non-precedential opinions:

Violations of . . . Rule 47.6 which prohibits the citation of nonprecedential opinions . . . are all too frequent. In addition to imposing an unfair burden on opposing parties, violations of our rules also burden the court. The court must consider a large number of appeals each year. It can only conduct its work fairly and efficiently if counsel cooperate by abiding by the pertinent rules.

Federal Circuit Judges have previously spoken out against the citation of unpublished opinions.  Although notorious for its split opinions, a unanimous appellate body argued in an open letter that allowing citation of unpublished opinion may “adversely affect the administration of justice by skewing the allocation of judicial resources, delaying issuance of precedential opinions, increasing the issuance of judgments without an accompanying opinion, and harming litigants.” 

In the background of the CAFC’s firm stance is a movement to change the Rules of Appellate Procedure to allow the citation of unpublished opinions.  Earlier this year, a U.S. Judicial Conference advisory committee endorsed a proposed rule that would allow citation of unpublished appellate decisions.  So far, nine of the thirteen appellate courts allow some citation of unpublished opinions.  If enacted, the new rule would allow such citations in all the appellate courts.

In re violation of Rule 28(c) arose as a side issue in a patent litigation suit between Esab Group and Centricut.  At the district court, Esab Group won a multi-million dollar judgment against Centricut for infringement of Esab’s patent relating to plasma welding products.  Centricut appealed the judgment and the measurement of damages.  Esab cross-appealed, asking for a modification of the judgment on damages.

Rule 28(c) and its associated Practice Notes limit the content of cross-appeal reply briefs to issues presented by the cross-appeal.  However, Esab’s reply brief consisted of 23 pages, about 20 of which related only to the main appeal and not the cross appeal. 

The appellate panel declined to impose monetary sanctions against the offending attorney, but noted that “we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not ‘inadvertent,’ will potentially subject counsel to sanctions.”

I continue to read unpublished opinions for a couple of reasons. (i) First, I have found that these opinions are occasionally ground-breaking and important.  For instance, recently the Federal Circuit supported the use of articles downloaded from the Internet as evidence that a mark was merely descriptive.  In re DSS Environmental, Inc., (04-1041) (Fed. Cir. October 20, 2004) (unpublished opinion).  Even though the decision cannot be cited as precedent, it is still an important landmark.  (ii) In addition, the day may come when these opinions suddenly become good law.  When that day comes, I will be ready.

Dennis Crouch (crouch@mbhb.com) is an attorney at the intellectual property law firm of McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  He is also author of the popular Patently-O Blog (patentlyo.com).

MedPointe Healthcare v. Hi-Tech Pharmacal (Fed. Cir. November 17, 2004) (unpublished opinion).

MedPointe was awarded a preliminary injunction against Hi-Tech to prevent Hi-Tech from manufacturing or selling cough medicine in violation of MedPointe’s patent.  (U.S. Patent No. 6,417,206).  The patent covers MedPointe’s oral medicine known as Tussi-12D

Hi-Tech conceded infringement, but argued that the district court erred in concluding that it had not raised a substantial question of validity.  Hi-Tech produced some evidence indicating that compositions similar to the MedPointe’s patent have been in use since 1938 (Candettes Throat Lozenges).

Preliminary Injunction Rule: Issuance of a preliminary injunction rests on an overall process of balancing, a preliminary injunction cannot be granted if the movant is unable to show a reasonable likelihood of success on the merits. 

In this case, MedPointe “must present a ‘clear case’ supporting the validity of the patents in suit, thus showing that Hi-Tech’s invalidity defense lacks substantial merit.” 

Holding: The court found that Hi-Tech’s uncontroverted testimony showing the similarity between the patent and Candettes to be sufficient to prevent an issuance of a PI.

Dissent by C.J. Mayer: “Because I cannot join in the court’s de novo review of the district court’s findings of fact, I respectfully dissent.”

The case is now remanded to the New Jersey District Court for trial. 

The USPTO has released the transcripts of its most recent inventor chat.  In the chat session, the PTO gathers several of its patent procedure experts and answers questions that are posted in an on-line forum.  Here are excerpts of several interesting question/answer series.

Inventor: When a patent is accepted by the patent office for reexam, how long does it take to finish and or what is the full time process window?

USPTO Expert: All re-exams are handled with special dispatch, i.e. the examiner takes them out-of turn. It is difficult to put a time frame on it, since it depending on the complexity of the prosecution and the number of actions. We are not familiar with the term, “full time process window.”  Hope this answers your question.

Inventor: I am having trouble finding answers to my questions on the USPTO’s website. I find it a little perplexing. Perhaps I need an “Idiot’s guide to the USPTO.”

USPTO Expert: You should contact the Inventors Assistance Center and speak to one of the representatives there for answers to specific questions. Contact them at 1-800-786-9199.

Inventor: What is the average time between paying issue fee and being published?

USPTO Expert: The average time is 3-4 months.

Inventor: If I file a design patent application, do I place “patent pending” or design patent pending on the product? Also, is shading still necessary on design patents?

USPTO Expert: Once a design patent application is filed with the USPTO “patent pending” may be included on the commercial product in which the design is embodied. Also, while surface shading is no longer required by 37 CFR 1.152, applicants are encouraged to include surface shading on the claimed design shown in the drawing so as to clearly understand its shape and contour.

Inventor: Does the 20-year clock on patent duration begins at the priority date?

USPTO Expert: The twenty year patent term is not measured from the filing date of a provisional application. See 35 U.S.C. 154(a)(3) which states that “[p]riority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent.” The basis for relying upon a provisional application in a subsequently filed non-provisional application is 35 U.S.C. 119(e), which is specifically excluded in calculating the patent term under 35 U.S.C. 154(a)(3).

For all utility and plant applications filed on or after June 8, 1995, the twenty year term is measured from the filing date of the non-provisional application. If the non-provisional application claims benefit under 35 U.S.C. 102, 121 or 365(c) to an earlier filed application, then the twenty year patent term is measured from the earliest effective U.S. filing date for which benefit is claimed.

The PTO has granted an interim term extension for U.S. patent No. 4,603,123.  The patent claims the active ingredient piroxicam betadex that is used in Brexidol (R).  A New Drug Application (NDA) for Brexidol (R) has been filed with the FDA and is currently undergoing regulatory review. 

Brexidol (R) is an NSAID that is believed to work by blocking the production of a prostaglandin which the body produces in response to injury or certain diseases. This prostaglandin would otherwise go on to cause swelling, pain and inflammation.

Interim Patent Extension

The term of a patent is extendable if delays in production were caused by delays in a regulatory approval process.  35 U.S.C. 156(d)(5) provides for an interim extension if a patent is about to expire and the patentee believes that the regulatory review period will exceed the term of the patent. The application for an interim extension may not be filed until the six month period prior to the expiration of the patent, but must be filed at least 15 days before the expiration of the patent.  An applicant may not apply for more than four interim extensions and each extension may be for no more than one year.