In order to become a US Patent Attorney or Patent Agent, an otherwise qualified individual must pass the PTO’s registration examination — often termed the patent bar exam. Since July 2004, the examination has been offered on computer in centers throughout the country. The computer-based examination continues the tradition of a fairly low passage rate:

• 2,113 individuals took the exam between July 2004 and June 2005. Of those, 56.4% passed the exam.
• 4165 individuals took the exam between June 2005 and October 2006. Of those, 58.2% passed the exam.

Since 2000, the paper based exam passage rate has ranged from a low of 37% to a high of 70%. 

• USPTO Office of Enrollment and Discipline

The chart shows the average number of total claims and independent claims for each year of issuance. The sample is drawn from 28,000 randomly selected patents that issued from 1977 and 2005. (For those who want data, the following table shows the average claim numbers by filing date.)

(more…)

Wynn W. Coggins — the PTO’s Chief Examiner of eCommerce patent applications — recently published a useful article about how her art unit deals with electronic prior art. The following are some highlights.

Internal documents:

Internal documents intended to be confidential are not “printed publications” and are unavailable for use as prior art. This is regardless of how many copies are distributed. Additionally, note that “[w]hile distribution to government agencies and personnel alone may not constitute publication…distribution to commercial companies without restriction on use clearly does.” Garrett v. US., 422 F.2d 874 (Ct. Cl. 1970).

Electronic Publications:

An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. Thus, “whether information is printed, handwritten, or on microfilm or magnetic disk or tape, etc., the individual who wishes to characterize the information as a printed publication…should produce sufficient evidence of its dissemination or that it has been otherwise available and accessible to persons concerned with the art to which the document relates…” Wyer, 655 F.2d 227, Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228 (W.D. Wash. 1999).

Web Pages Must Be Static:

Prior art disclosures on the Internet or in an on-line database are considered to be publicly available as of the date the item was publicly posted. This is provided that the item is dated and not temporal, and can be indexed for subsequent retrieval. An example of a temporal item is a web broadcast that cannot be saved, retrieved or printed, e.g., a live simulcast feed that is not archived, and a “streaming” audio or video that “flashes” across the screen.

Read the Article. (Via Michael White)

19 USC 1337 (Section 337) authorizes the International Trade Commission (ITC) to investigate complaints filed by owners of US patents against allegedly infringing imports. The ITC is run by a panel of six commissioners each serving a nine-year term.

One of the benefits of filing suit in the ITC is speed. Another benefit is its en rem jurisdiction used to block imports regardless of the location of the maker of the infringing product.  Similarly, the ITC can issue broad exclusion orders against an entire product line even if some of the importers were not parties to the litigation. Finally, 271(g) is not a defense to patent infringement in ITC cases.

That said, the number of ITC cases filed each year is relatively small compared with the number of federal district cases. In 2007, for instance, 33 ITC investigations were initiated under Section 337. This number has been on the rise over the past decade.

ITC appeals to the CAFC have also been on the rise. The table below shows both the number of ITC appeals and the number of parties appealing (a single ITC action may investigate multiple accused infringers).

Notes:

• OSRAM v. ITC
• USITC Section 337

The proposed IDS rule changes is expected to reduce the number of references submitted to the patent office with each patent application. Although not yet public, the rules are expected to include, inter alia, a 20 reference barrier. If more than 20 references are submitted, they must be accompanied with an extensive explanation. [More details] The patent office can point to several patents as examples of why, in its view, a rule is needed. Ronald A. Katz’s Patent No. 6,678,360 is a prime example. That patent cites over 1,500 references. 

Using a group of 80,000 patents issued in 2006, I looked at how the rules might impact the various art units and the PTO as a whole.

From my sample, 25.1% of issued patents list more than 20 references. Patents listing more than 20 references have an average of 28 references.  Some of these references may be cited by the PTO — However, the vast majority of references in patents citing 20+ are cited by the applicant.  Running the numbers — this means that the PTO could review 720,000 fewer references next year. (Assuming that the new rules eliminated 8 reference from each application citing 20+ references and that the PTO again examined 360,000+ applications). 

The rules will almost certainly have a disparate impact on various art units within the PTO because some art units typically receive more cited references than others. Semiconductor patents, for instance, rarely have 20+ references, while most molecular biology patents cite 20+ references.  There is also some correlation with the number of references cited and the expected examination delay within the PTO. The following table provides more detail.

The Chicago based firm of McAndrews, Held & Malloy recently announced the “McAndrews Diversity in Patent Law Fellowship.”  The law firm will award a $5,000 fellowship and a paid summer clerkship position to a qualified first-year law student of a diverse background who is committed to pursuing a career in patent law.  The $5,000 fellowship for law school tuition and expenses will be awarded on or about Sept. 1, 2008, upon completion of the 10- to 12-week summer clerkship at the Chicago-based firm.  The Diversity Fellow also will have the opportunity to receive an offer to return for a second summer.  The fellowship was created to further the firm’s goal of promoting diversity in intellectual property law. 

To be eligible for the fellowship, an applicant must be a first-year law student at an ABA-accredited law school, have a diverse background that, in the firm’s view, would help to improve diversity in the field of intellectual property law, possess a degree in science or engineering, and intend to practice patent law in Chicago.  Applications are being accepted through Jan. 7, 2008.  In-person interviews with finalists are being conducted on a rolling basis through Jan. 27, 2008.  Any fellowship awarded will be announced on or about Jan. 27, 2008.  Applications must include the following components:

• Resume, including description of science or engineering educational credentials;
• Undergraduate transcript (with GPA);
• Legal writing sample;
• At least one letter of recommendation; and
• A 500-word personal statement including information about why the candidate wishes to pursue a career in patent law, why he or she is interested in the McAndrews firm as a place to work, and how the candidate’s background and/or life experiences would improve diversity in the field of intellectual property law.

The fellowship position will be administered as part of McAndrews’ Summer Clerkship program.  As a summer associate in the McAndrews office, the Diversity Fellow will gain experience in a wide range of intellectual property law and be mentored by a member of the firm’s Diversity Committee while establishing relationships with other members of the firm. 

To access the application and other fellowship information, visit the McAndrews’ Web site at www.mcandrews-ip.com/diversity_fellowship.

MTP v. Marathon Labels (Fed. Cir. 2007) (Non-precedential)

A jury found that the defendants were contributory infringers; had induced infringement of the claims; and were willful infringers. The district court overturned the willfulness finding but then issued a permanent injunction barring the defendants from using, selling, offering to sell, or importing the Smart Surface Placard that was used to re-label reusable containers in violation of the method claims.

On appeal, the CAFC quickly reversed the injunction finding it over-broad. In particular, because the products themselves do not infringe, the injunction should not prohibit sales for export.

Given the parties’ admissions, the district court’s injunction is overly broad and therefore an abuse of discretion. Given the parties’ admissions, the district court should not enjoin sales of the SSP to locations outside the United States, and should not enjoin sales of the SSP to resellers who sell to locations outside the United States.

This case again raises the general issue of how injunctive relief should be formulated against contributory infringers of a method claim.

Notes:

• Read the lower court decision.
• Cite Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993) (standard of reviewing injunctive relief)

The White House has now approved the PTO’s proposed changes to the Information Disclosure Statement Requirements “and other related matters.”  The final rules have not been made public, however, the rules are expected to:

• impose a requirement for the personal review of, and to provide information about, certain citations;
• permit only timely IDS submissions;
• only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted
• permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;
• no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE);
• permit certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and
• revise the protest rule for dealing with unsolicited information received from third parties.

The continuation rules were finally published about six-weeks after OMB approval. If the PTO follows a similar schedule, expect a notice in later January 2008 regarding additional implementation of IDS requirements. 

Links:

• http://www.reginfo.gov/public/do/eoReviewSearch (Search for recent DOC reviews)
• Patently-O: Prepare for new IDS rules
• Noonan on IDS Rules
• Moatz on Ethical Duty to Read IDS Submissions

New York University v. Autodesk, 495 F. Supp. 2d 369 (S.D.N.Y. 2007)

NYU sued the software manufacturer Autodesk for infringement of two of the University’s gesture synthesizer software patents. Both patents stemmed from an original non-provisional application. (Serial No. 08/284,799). That application received a final office action in the Spring of 1997, but the PTO did not receive any response until November 1998 – 18 months later.

Most medical errors arise during transfer of care. Orders and other knowledge are lost when doctors and nurses go off-shift and are replaced by a new staff. A similar issue arose here. As the court spells out the facts: NYU transferred its prosecution from the Wyatt Gerber firm to Kenyon & Kenyon; After transfer, Wyatt Gerber received the the Final OA and forwarded it to both Kenyon and NYU; Soon thereafter, the Kenyon attorney assigned the case left the firm. By the six-month deadline, the application was still caught in a hot-potato game and no response was filed. In December 1997, the Examiner duly issued a notice of abandonment and (as evidenced in the prosecution history) even telephoned the Kenyon attorney who acknowledged the abandonment.

Months later, a newly assigned Kenyon attorney filed a petition to revive based on unintentional abandonment, which was granted by the PTO.

On summary judgment, the district court agreed with Autodesk that the revival was contrary to law.

Under the APA, PTO petition decisions will be upheld unless “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.” Thus, the PTO decision will be upheld so long as there is a “rational connection between the facts found and the choice made.” APA challenges are generally reviewed on the administrative record — here that is the prosecution history.

Here, the court found that NYU was clearly on notice of the abandonment (based on the telephone call to Kenyon’s attorney); that NYU offered no justification for the delay in its petition for revival; and that the PTO offered no reasons for its revival. Consequently, the revival was an “arbitrary and capricious” act and was therefor set aside.

Case dismissed. This is no appeal.

• HOLMAN BIOTECH IP: Professor Chris Holman has just begun a blog on Biotech IP Law. In his initial post, Holman takes a global perspective on late claiming and thinks about how the PTO’s proposed continuation rules fit into that mesh. Prior to becoming a professor, Holman was, among other things, in-house patent counsel at a biotech startup.
• First Page Reports: Longtime patent blogger Matt Buchanan is headding up the project as part of his PatentFizz project.
• File Server Needed: As you know, I like to post original documents for readers to download and study. I have been running into some technical issues with the current service. Any suggestions for a service that allows me to do this both cheaply and easily?
• Ray Niro vs. Patent Troll Tracker: This could be a movie. [Read the Story][Troll Tracker]. One bottom line is that Patent No. 5,253,341 (covering online use of JPEG images) is once again being asserted. Greg Aharonian and the Green Bay Packers were also sued on the patent in 2000…
• Blog Sponsor: I am very happy that the law firm of McDonnell Boehnen Hulbert & Berghoff has agreed to stay-on as the blog’s exclusive sponsor until May 2008.  I’m attempting to make any advertising as non-obtrusive as possible. Please send me an e-mail with specific comments on the blog design & layout. (dcrouch@patentlyo.com).
• Patent Agent Jobs: Twenty-Five Jobs Listings for Patent Agents.