Patent Law Blog (Patently-O)

Bits and Bytes: Patentability shall not be negatived by the manner in which the invention was made.

Upcoming Conferences:

• World Research Group, a Patently-O job board sponsor, will be holding a TechNet Patents Forum in New York on November 5-6. Patently-O readers will receive a $300 discount by using the promo code EAG476.

Federal Circuit En Banc:

• On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
• Nebraska Public Power v. US:
  • The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government's failure to begin removing spent nuclear fuel.
  • Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep't of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the "unavoidable delay" defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
• Henderson v. Dep't of Veteran Affairs:
  • Equitable tolling of claims for veteran's benefits
  • Question: Does the Supreme Court's decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.

Relevance of the “manner in which the invention was made:”

• 35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.”  That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
• Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).

Patently-O Bits and Bytes

• Oral arguments for the Bilski case have been set for November 9, 2009. (via Vobach)
• Ryan Durham of Novak Druce has created a Google Maps application (mash-up) to locate registered patent attorneys and patent agents. The software is still in Beta, but is pretty cool. [link]

Bits and Bytes: Hot News

Today's Posts that may have been lost in the shuffle:

• Proof of Actual Fraud on the Patent Office
• En Banc: Methods do not have Exportable Components and Therefore Method Claims Cannot be Infringed Under Section 271(f)
• Judge versus Jury: Who Should Decide the Question of Obviousness?
• Top Patently-O Posts from the Past Year

Let's meet up:

• The MBHB law firm has been a longtime sponsor of Patently-O. (Thanks!) The firm is co-sponsoring a reception and dinner at the newly constructed wing of the Art Institute of Chicago on Monday, September 14, 2009 as part of the part of the Intellectual Property Owners Ass'n (IPO) annual meeting. I hope to see you there. [IPO]

Examining:    

• IPBiz has an interesting headline about rejection rates: Examiners: "We're the ones who put 'no' in innovation". The post is a discussion of this newspaper article.

Patent Backlog

Yesterday, I posted data about patent application pendency at the US Patent Office. The following comment came from an a longtime partner at a midsized IP botique in DC:

I suppose I’m something of a lone wolf in thinking that the backlog in applications we have now is not much worse (certainly not DRAMATICALLY) worse than the backlog we’ve had all along, or at least since I’ve been in patent law. Your chart shows that 50% of application were disposed of in about 3.5 years and about 90% in roughly 6 years. When I was an examiner, back in 1990 or thereabouts, there was a lot of verbiage given to getting average pendency to 3 years – so it must have been higher than that at the time. It would be interesting, I think, to see the same analysis done for application filed one and two decades earlier then those in these charts, plotting all the data normalized to the starting date. Maybe someone has done this in a meaningful way already; but, I haven’t seen it. If the curves are the curves are substantially the same, it would put the lie to oft heard cries about a burgeoning backlog that’s crushing competitiveness and the false impression given by quoting the raw number of applications now pending.

Office Actions

Although not necessarily any indication of quality, the length of non-final office actions has been increasing over time – shifting from an average of 7.5 pages in 2003 to 10.7 pages in 2009. The chart below – shows that the increase has been relatively steady over the past six years based on a sample of 8400 non-final office actions from patent applications filed 2001–2007. (Page count includes cover page and summary).

What is the cause of this rise?

Ranking of Patent Law Blogs

Gene Quinn – author of IP Watchdog – spent a good amount of time cataloging and ranking the various patent law focused blogs from around the world. His rankings are based on website popularity and popular influence with three primary inputs: (1) voting by readers; (2) Technorati.com ratings (based on links to the site); and (3) Alexa.com ranking of website popularity. I’m happy that Patently-O received the top rank. However, I encourage you to check-out the other blogs on the list. I read about 15 of them on a regular basis. Thanks Gene.

Quinn’s 2009 Patent Blog Ranking:

1. Patently-O
2. IPWatchdog.com
3. IP Kat
4. Spicy IP
5. Patent Baristas
6. Intellectual Property Watch
7. Patent Docs
8. 271 Patent Blog
9. BlawgIT
10. Patent Prospector
11. The Invent Blog
12. IP Think Tank and The Prior Art
13. -
    
14. Orange Book Blog
15. IPJUR and European Patent Caselaw
16. -
    
17. Promote the Progress
18. IP NewsFlash
19. Anticipate This!
20. Patentably Defined
21. India Patent
22. Intellectual Asset Management
23. Against Monopoly
24. Patent Circle
25. I/P Updates
26. PHOSITA
27. IP Spotlight
28. Chicago IP Litigation
29. The IP Factor
30. Patent Arcade and File Wrapper
31. -
    
32. Securing Innovation
33. Patents 101 and IP Estonia
34. -
    
35. PatLit
36. Just An Examiner
37. The Business of Patents
38. Patentability
39. Inventive Step
40. Holman’s Biotech IP
41. Washington State Patent Law
42. California Biotech Law
43. Patent Infringement Updates and Patent Assassins
44. -
    
45. Russian Patents
46. Georgia Patent Law
47. Patentnapsis
48. Honoring the Inventor
49. OC Patent Lawyer
50. Nanomedicine & IP

The Pope on Patents

In a recently published encyclical letter, Pope Benedict XVI has taken a stand against strong patent rights because of they way that the exclusive rights of patents tend to promote wealth inequality at the expense of development in the world's poorest countries.  

"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."

The intellectual property statements only make up a few lines in the 144-page letter. However, they fit with the overall theme - that relying solely on monetary greed as an incentive does not lead to the right kind of development and actually creates instability.

The letter does not edify official Church doctrine, but it is used by Church leaders around the world in setting priorities.

In response, the IPO released a statement that it is "working to educate on the incentives that IP rights provide for advancing knowledge and creating jobs."

• See “Encyclical Letter Caritas In Veritate Of The Supreme Pontiff Benedict XVI To The Bishops Priests And Deacons Men And Women Religious The Lay Faithful And All People Of Good Will On Integral Human Development In Charity And Truth,” June 29, 2009. [Link][Related Post]

Bits and Bytes: In the News

• PTO Funding Emergency: Andrew Noyes reports on an emergency funding bill for the PTO that would allow the agency to use surplus funds from its trademark budget to fund the growing shortfall on the patent side. Link. The current trademark budget surplus is estimated at $60 million. [Diane Bartz’s Reuters article on the same topic]
• John Duffy: Michael Orey of BusinessWeek has published an article recognizing the ongoing contributions of Professor Duffy: A Scholar-Activist Challenges U.S. Patent Law. 
• Todd Dickinson: Joff Wild of IAM recently interviewed former PTO Director Todd Dickinson and posted the 9 minute video on YouTube. [Watch the Video][IAM Blog]. Dickinson walks through the three major priorities for the next director: Priority I: Reestablish the stakeholder relationship with the PTO; Priority II: Pendency & backlog (in the shadow of the financial shortfall); Priority III: Quality.
• False Marking: PUBPAT continues its campaign against false marking. Earlier, I reported on its false marking lawsuits against Cumberland (Sweet'N Low) and Iovate (Xenadrine). Last week, the nonprofit filed a false marking suit against McNeil (Tylenol) and filed an amici brief in Pequignot v. Solo Cup. In that brief, PUBPAT argues that damages should be based on "each falsely marked article." The brief also spells out some of the harms of falsely marked products:

  "The reason why companies mark and advertise their products as patented is because they expect doing so will provide them some benefit in the marketplace, such as by winning over consumers, building a superior brand associated with innovativeness, implying that their product has been reviewed and approved by the federal government, or implicitly threatening actual or potential competitors with allegations of patent infringement. Thus, when products are falsely marked or advertised as "patented" or with the numbers of expired, invalid, or inapplicable patents, such false marking provides these potential benefits to the false marker/advertiser without any commensurate justification and, as such, creates the potential to negatively impact the marketplace, the public interests, and the integrity of the patent system."

• File Attachment: SoloAmiciBrief.pdf (1100 KB)
• File Attachment: PUBPAT v McNeil - Complaint.pdf (321 KB)

 

Patently-O Bits and Bytes

• The AP on Hugo Chavez: Venezuelan officials plan to invalidate some pharmaceutical patents and allow domestic manufacturers to produce licensed medicines, an action that could cause shortages and scare off foreign investment, industry leaders said Sunday. [AP][via PatentHawk]
• BPAI Data: An updated version of yesterday’s paper on BPAI decision data is available online here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1423922. Comments are welcome.
• New Blog: Rocket Docket IP Litigation (E.D. Va. Patent Focus). The blog is edited by the folks at Williams Mullen. Their latest post is an update on the false marking litigation against Solo Cup.
• National Patent Jury Instructions: A comittee assembled by Chief Judge Michel has released its set of model jury instructions. Although Judge Michel assembled the committee, the introduction makes clear that the instructions “have not been endorsed by the Federal Circuit Court of Appeals, and are not “official” jury instructions.”  However, the instructions are likely to serve as the ongoing model. http://www.nationaljuryinstructions.org/.

Bits and Bytes: Kappos & Dudas

From Hal Wegner:

A few weeks ago Dave Kappos was involved in a webinar with Jon Dudas which provides some perspectives on the new Director’s views. It is available at http://www.foley.com/news/event_detail.aspx?eventid=2779. The webinar itself is available at http://www.foley.com/multimedia/multimedia_detail.aspx?multimediaid=58221724.

The May 8, 2009 webinar focuses on patent reform; technology issues; and reexamination.

A final version of the new Patent Case Management Judicial Guide is in print. It is also freely available on SSRN.

David Kappos: Next USPTO Director

Congratulations!

The White House has announced its intent to nominate David J. Kappos as Director of the United States Patent and Trademark Office (USPTO) with the official title of Under Secretary of Commerce for Intellectual Property. Mr. Kappos has spent his entire career with IBM – both as an electrical engineer and later as a patent attorney. Kappos ends his IBM career (at least for now) as Vice President and Assistant General Counsel, Intellectual Property Law. He is a board member of both AIPLA and IPO.

From the get-go, Mr. Kappos has been a rumored frontrunner to replace Director Jon Dudas and Interim Director John Doll.  In a May 2009 article, I announced my support for Mr. Kappos. In that article, I noted the value of having “a patent office director who understands patents and who has been fully involved with all aspects of the patent system for the past twenty years. I believe that Kappos will be a careful shepherd of the system - leaving it better off in six years than it is today.”

As someone who writes daily about US Patent Law, I am excited about the Kappos nomination because he is likely to open access to previously hidden data and information.  He will also work to create systems that work and measures that are meaningful.

I suspect that the biggest challenge for Mr. Kappos will be moving beyond the unique IBM perspective. Big Blue is an atypical patent owner in its internal systems, patenting volume, and licensing power. As I discussed earlier, it will be important for him to spend time understanding how the rest of the patent community operates.

Notes:

• White House Announcement
• Leahy Statement: “The USPTO faces serious challenges in this difficult economic environment, and the office requires strong leadership.  David Kappos is such a leader.  I look forward to working with him on issues confronting the USPTO, including reducing the backlog and pendency of patent applications and modernizing the patent system as Congress considers the Patent Reform Act.”
• EETimes Article: Quoting Mark Lemley: "The PTO is in crisis, and I think Dave Kappos understands that, and will work creatively to try to find ways out of the crisis, I also think he is sensitive to the need for patent reform, which is a good thing."
• March 2009 Testimony of Kappos
• IP Law Insights (Perkins Coie Blog) summarizes an earlier Kappos article: (1) Patent applicants are responsible for the quality and clarity of their patent applications. (2) Patent applications should be available for public examination. (3) Patent ownership should be transparent and easily discernable. (4) Pure business methods without technical merit should not be patentable.
• Patent Prospector on Kappos and the recent poorly researched WSJ Article.
• From the USPTO Website: “If he is confirmed by the U.S. Senate, Kappos will take control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.”

Bits and Bytes: Data, Damages & Deferred Examination

• Data.Gov: As part of the transparent government project, we now have the website Data.Gov with the purpose of "increas[ing]public access to high value, machine readable datasets generated by the Executive Branch of the Federal Government." So far, the PTO has only included two datasets -both of which were already available through the PTO website. Hopefully there will be more to come - including opening access to PAIR. [More here].
• IP Colloquium: Professor Lichtman has released a new edition of his audio-program IP Colloquium. This month's program focuses on reforms of the patent damages laws. [LINK] The program offers CLE Credit.
• Deferred Examination: Comments on a potential deferred examination program are here.
• Deferred Examination: Intel's comments are interesting. The company argues that the success of deferred examination in other countries is a facade. Rather, the high rate of drop-out during prosecution in countries such as Japan, Germany, and Korea is due to the inventor compensation schemes in those countries. So the story goes - companies in those countries tend to file more low-quality local patent applications for the purpose preempting inventors from asserting rights on their own.

"We actually believe that the reason that deferred examination has had little success in the United States is due to the inventor compensation schemes that exist in many countries such as Japan, Germany and Korea.

In essence, under the regimes in these countries, if the company fails to patent the invention, the inventor has the right to file on his or her own behalf. Having inventors file on their own behalf is generally viewed as undesirable. As a result, the companies file disproportionately more applications in their home jurisdictions than normal prudence would otherwise suggest. Since they are filing these in part to pre-empt the inventor’s rights and to avoid having additional inventor compensation issues, we believe that this contributes to an inclination to avoid paying the examination fee and then to abandon the patent application.   

However, outside their home jurisdictions, these companies have a tendency to file a fraction of the patents that they file in their home jurisdictions. Having filed in the home jurisdiction, they have little or no concern that the inventor has the right or will file the application overseas. Apparently, as a result, they do not appear to abandon nearly as high a percentage of the patent applications that they file outside their home jurisdictions as they file in their home jurisdictions.

Of course, the US does not have such inventor compensation statutes. Those foreign companies that file and abandon so heavily in their home jurisdictions exhibit radically different behavior in the US. They file less and abandon much less. Hence, we believe that this helps explain the disparate experience of deferred examination in other countries. It means that the practice in these other countries is not likely to be a good indicator for practice before the USPTO."

Bits and Bytes

• Comments on Patently-O: I have updated the commenting software. Now there are threaded comments, so it is easier to reply directly to a prior comment. If you sign-up for a free Typepad account then you can personalize the image associated with your moniker.
• Law Firms as Patent Owners: Photo site SmugMug recently filed a declaratory judgment action against the patent holding entity VPS, LLC. VPS previously settled with Pictage earning a "multi-million dollar fee" as well as with Kodak Gallery and Shutterfly. VPS's ownership is interesting. Its managing partners are all patent attorneys: Carl Moore (patent attorney at Marshall Gerstein); Timothy Vezeau (patent attorney at Katten Muchin); and Nate Sarpelli. The VPS patents were originally assigned to Monet, Inc. but subsequently assigned to the Marshall Gerstein firm. In 2002, the law firm assigned the rights to VPS. (See Pat. No. 6,321,231). SmugMug Complaint for Declaratory Judgment.pdf
• Design Patent Customs Registration: The IPO has voted to support a statutory change that would create a design patent registry within the Customs and Border Protection (CBP) bureau of the Department of Homeland Security. The CBP already keeps a registry of trademarks and copyrights to assist customs agents in preventing infringing importation through any of the 317 official ports of entry into the US. [CBP E-Recordation System] (No bill has been proposed.)
• Tivo v. DISH and EchoStar: $190 million.
• Update Your PTO Registration Data Online: Link. Before you can use the system, the OED will first send a letter to you with a User ID. After you respond, you will be sent a password.

Bits and Bytes

Feigelson has created an interesting graph of Jepson Claims.

Survey: Swearing behind prior art

Take the survey on a separate page Here.

Take the survey on a separate page Here.

Bits and Bytes: PTO Director Redux

• Andrew Noyes reported that Congressman Michael Honda is lobbying for Doug Luftman (IP chief at Palm) to become the next director of the USPTO. A photo of Luftman's daughter at President Obama's inauguration was printed in newspapers across the country.  
• There is also some possibility that the current acting PTO Director - John Doll could keep the position for a while. An examiner recently e-mailed saying "John Doll is Fantastic. I really like him." In addition to being well versed in patent law, Doll understands the operation of every part of the Patent Office.

Bits and Bytes: PTO Director

• Nothing to report on the quest for a new PTO director. Although the Obama administration's "fast start" has been reported by the media, he is now slower than President Clinton who nominated Bruce Lehman in April of his first year in office. President Bush nominated Jim Rogan in May of his first year in office. President Obama has two more days to match that benchmark. (My prediction of a May 8 nomination has come and gone...)
• Albritton v. Cisco: The Patent Troll Tracker case continues. Trial in the defamation case is set for September 14 in Tyler Texas. Defendants include Cisco, Richard Frenkel (the Patent Troll Tracker) Mallun Yen, and John Noh.
• Ward v. Cisco: Johnny Ward Jr. (son of Judge Ward) has a parallel case running against Cisco in Texarkana (Arkansas). Ward voluntarily dismissed Frenkel from the lawsuit after Cisco "admitted agency." Discovery is ongoing and the parties have asked for trial to begin December 30, 2009.
• Speaking of EDTX: Last week, the Canadian company i4i won a $200 million verdict for willful patent infringement against Microsoft. Apparently i4i's xml editing software was completely undercut when Microsoft included xml editing software in MSWord. The patent is here. Joe Mullin has more.
• Voting continues for the "best patent blog." (I don't like this survey, but it is still nice to make a good showing.)
• Singulair Patent Reexamination: Earlier this year, ArticleOne asked for prior art on Merck's Singlair patent and two of its "community members" offered seemingly important references. ArticleOne then filed for reexamination of the patent, which was granted on May 20. Today ArticleOne issued press releases related to the reexamination. Peter Ludwig (Darby & Darby) is representing ArticleOne before the PTO. Singulair garnered $4 billion+ in sales last year.
• Information Query: The Singulair patent's reexamination number is 90/009,432. If you were an investor, how would you go about closely following the prosecution history in that case?
• Patent Jobs:
  • Washida & Associates in Tokyo (US Prosecutor in Japan)
  • Cochlear (hearing company) in Sydney (Sr. Counsel)
    
  • Anonymous Big Firm in DC (EE with Prosecution Experience)
  • Akerman Senterfitt (VA or Florida) (EE with Prosecution Experience)

Patently-O Bits and Bytes: Legally Drawn

I am enjoying Vasanth Sarathy's new legal comics: LegallyDrawn. Sarathy is a patent agent and law student at Boston University.

Zuhn: A Model Patent Office for the Future

Dr. Zuhn has been covering patent happenings at the BIO Conference. His article discussing a panel on suggestions for fixing the USPTO is a great read. The theme presented by Sherry Knowles (from GSK) is one that many Patently-O readers understand - stakeholders cannot count on someone else to address problems at at the PTO.

John Duffy, who participated followed-up with a note about GSK's role in the case of Tafas v. Dudas.

GSK has been very well served by its attorneys, which includes an excellent team of lawyers from Kirkland & Ellis headed by John M. Desmarais. They've been successful in winning 99% of what GSK wanted. The rules still aren't in effect, and they are unlikely ever to go into effect without substantial revision. Moreover, as for the last 1% percent that GSK attorneys weren’t able to win, I don't think any attorneys could have won. The administrative law issues in the case were always very difficult for GSK’s position. I don’t think any set of attorneys could have produced a better result, and I don’t doub t that GSK’s lawyers recognize that Supreme Court review would have its risks.

Duffy also discussed the potential risks of a Supreme Court decision in Tafas v. Dudas.

Judge Prost did a masterful job on the administrative law issues in the Tafas case. If the case were appealed to the Supreme Court, I think the Court would largely affirm her opinion. The most difficult issue in the case has always been whether, giving the agency’s rules an appropriate amount of Chevron deference, a court should nonetheless hold Final Rule 78 inconsistent with the clear meaning of section 120 of the Patent Act. Judge Prost ruled against the agency on that issue, and her result seems to me to be one reasonable resolution of a difficult issue. But the issue is a close one, as even Judge Bryson’s concurrence suggests. If Tafas were to be heard by the Supreme Court, it is entirely possible that the Justices (a majority of whom either have taught ad law or have served on the ad law-heavy D.C. Circuit) might give the agency a bit more deference than the Federal Circuit panel did. Thus, if the case went to the Supreme Co urt, I think likely outcomes would be either a complete affirmance or a reversal limited to the one issue that GSK won at the Federal Circuit.

Other News:

• The White House has again recognized Peer-to-Patent as an example of "approachable government." http://www.whitehouse.gov/newmedia/. ("Improves the quality of issued patents").

Patently-O Bits and Bytes

• Tom Bakos and Mark Nowotarski have posted their own inventions on the Peer-to-Patent site. You can review them and add prior art: Invention 1, a Risk Assessment Company; Invention 2, SoberTeen Driving Insurance
• I am expecting an announcement of the next PTO director on Friday (May 8). Jim Pooley is being nominated as deputy director of WIPO and is apparently out of the running for the job of PTO director. The two leading candidates thus appear to be Todd Dickinson and David Kappos.
• If Kappos is nominated, the Peer-to-Patent system (originally funded by IBM) will receive a boost.
• Speaking of WIPO, the US has proposed "comprehensive" PCT Reform "which would result in the establishment of a new Patent Cooperation Treaty, PCT II. The new treaty would serve to better facilitate workload sharing between the patent offices.
• I just looked at Prof. Margo Bagley new article on First-to-Invent published in the Berkeley Technology Law Journal. Her conclusions: "The US First-to-Invent system may be unique in the world but it offers significant benefits to small entity entrepreneurs and others." Bagley sees these benefits as primarily coming through the "robust grace period." When should FITF be adopted? "Only when such a move will provide a clear advantage for small entities by facilitating the adoption of a one-year grace period outside of the US." See The Need for Speed (and Grace).
• Bagley's short article is well received. My one quibble is that she perpetuates the idea that a desire to end interferences is a major motivation in the debate. She says "Eliminating interferences and the uncertainty associated with them appears to be a prime motivation for the FITF legislation." Lets be clear, in the US, proponents of the first to file legislation want to make it easier to invalidate patents by creating more prior art.

The Economy and IP Law Practice

BTI consulting group recently released its the results of a survey of 370 corporate counsel at Fortune 1000 companies. The graph above shows the expected legal budget change over the next six months grouped by type of work. Notice "Intellectual Property" down 4.3% and in the basement "IP Litigation" down 7.7%.

Read more here.

Background: Economic Downturn => Downturn in Patent Filings

Patently-O Bits and Bytes

• Quote of the week: "Am I starting to grow nostalgic for Jon Dudas? At least he hated all applicants, big and small. Jon, Jon, Jon - should I have not doubted your wisdom?" Greg Aharonian, on contemplating the potential that Dave Kappos (IBM) will be the next PTO director.
• My Discussion of Kappos: Here.
• Section 2 of the Sherman Act: The Truth on the Market Blog is hosting a series of interesting articles on reforms of Section 2 (unilateral monopolization). Expect a post from IP/Antitrust leader Hovenkamp on Tuesday or Wednesday. [Link].

Bits and Bytes

• I am in San Antonio at the PIUG conference.
• INTA Conference: At the INTA conference in Seattle, my old law firm (MBHB) will host a "night of Irish merriment" at the Fado pub on First Ave (May 18, 6 - 11pm). RSVP at mbhb.com/irish. [The attorney list of MBHB includes McDonnell, McCarthy, Sullivan, and Sampson].
• The Patent Prospector describes David Simon's (Intel) testimony on NPE's here.
• New Patent Jobs:
  • CPA Global needs a new DBA for its IP database.
  • Continental (major automotive supplier) needs a patent agent.
  • Valence (high power batteries) needs a patent attorney.
  • Dalina Law Group needs a tech specialist in beautiful Pasadena.
  • University of Illinois needs a new IP counsel.

Bits and Bytes: Patent Reform

• [UPDATED] Hal Wegner Reports the Following:
• • Phil Kiko of Foley Public Affairs reports that Secretary of Commerce Gary Locke has announced that he has chosen the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. The chosen candidate, who is being vetted, was not named.
• Congress is Moving Forward with Patent Reform:
• • April 30, 2009 hearing of the House Judiciary Committee.
  • Here are some comments on the testimony:
  • • Jack Lasersohn (venture capitalist): Venture capital requires strong and certain patents. The damage reforms create potential problems because sometimes a relatively minor product innovation will dramatically change the market position. “A new coating on a solar cell , that increases it’s conversion efficiency just a little bit, can dramatically shift the market for entire multi-billion dollar solar energy plants. A better drug on a drug eluting stent can shift the entire stent market. In either case, the question is ‘who is entitled to the profits arising from the use of the invention, the inventor or the infringer’?”
    • Dean Kamen (Inventor & Businessman): patents should be strong and policy should be directed to support small innovative organizations.
    • David Simon (Intel): patents are meant to allow manufacturing companies to fight each other – not for non-manufacturing inventors or their assigns to slow-down manufacturers. [This is a very rough paraphrase of Simon’s 13 page rant against non-practising entities.]
    • Philip Johnson (J&J) on behalf of the 21st Century Patent Reformers wants money for the PTO, international harmonization (first-to-file), expanded post-grant review (12–month window), no change to the current damages system, only a codification of Seagate, no changes to venue law.
    • Jay Thomas (Georgetown) argues that patent infringement damages are too unpredictable and that additional rules of evidence and practice can help solve the problem.
    • Mark Chandler (Cisco) supports the reforms to halt the problem of non-practising entities who demand licenses.
    • Bernard Cassidy (Tessera): Please do not change the patent law in ways that hurt small companies. The courts have already done enough through eBay, KSR, Medimmune, Microsoft v. AT&T, Seagate, Bilski, and TS Tech.
    • [WRITTEN TESTIMONY.zip (3794 KB)]
• Absent from this testimony: Any representative from the Patent Office. At least three candidates are rumored to have been interviewed for the post of PTO Director – including former PTO Director Todd Dickinson and IP Hall of Fame member Mike Kirk. [See updated news above]

Bits and Bytes: Past and Future Events

In March, GW and the FCBA hosted a symposium on the Federal Circuit Court of Appeals. Video of the symposium can be seen on cSPAN:

• "The Court - Giving Texture to the Institution of the Court" Watch on C-SPAN
• "The Complexity - Views on the Circuit's Complex Subject Matter from the Solicitors General" Watch on C-SPAN

Upcoming Events:

• Patent Calendar: www.patentlyo.com/calendar
• May 1–3 – San Francisco IP Law Assn: http://www.sfipla.com/seminar.html

Top Patently-O Content for the past 12 months:

1. http://www.patentlyo.com/patent/2008/07/the-death-of-go.html
2. http://www.patentlyo.com/patent/2008/10/in-re-bilski.html
3. http://www.patentlyo.com/patent/2008/02/bilski-full-caf.html
4. http://www.patentlyo.com/patent/2008/06/supreme-court-d.html
5. http://www.patentlyo.com/patent/2008/04/ex-parte-bilski.html
6. http://www.patentlyo.com/patent/2005/04/how_should_a_fu.html
7. http://www.patentlyo.com/patent/2009/03/tafas-v-doll-some-rules-valid-others-invalid.html
8. http://www.patentlyo.com/patent/2008/07/outsourcing-of.html
9. http://www.patentlyo.com/patent/2009/03/patent-reform-act-of-2009.html
10. http://www.patentlyo.com/patent/2008/11/junk-patents.html
11. http://www.patentlyo.com/patent/2009/02/no-no-words-what-words-do-you-avoid-in-patent-applications.html
12. http://www.patentlyo.com/patent/2008/11/post-bilski-bpa.html
13. http://www.patentlyo.com/patent/2009/03/dear-patently-o-how-do-you-react-to-the-following-letter.html
14. http://www.patentlyo.com/patent/2009/01/ex-parte-marius.html
15. http://www.patentlyo.com/patent/2008/11/ex-parte-hallig.html
16. http://www.patentlyo.com/patent/2008/05/cafc-hears-en-b.html
17. http://www.patentlyo.com/patent/2008/12/cafc-affirms-pt.html

Patently-O Bits and Bytes: Events and Jobs

Upcoming Events:

• Apr 17 in Concord, NH: Pierce Law's IP Symposium
• May 2 - May 7 in San Antonio, TX: Patent Information User's Group Annual Conference. Very good conference for any interested in patent informatics and patent searching. The focus of this year's conference is on international patent information. I will be one of the speakers.
• May 8 in Overland Park, KS: KBA's IP Law Institute. I'm planning to be there in the audience to hear John Whealan, Chuck McManis, and Paul Fleischut.
• May 12 in Washington DC: GWU will host its Law Symposium on Intellectual Property with a focus on practical patent litigation issues.

New Source of Upcoming Events: The Patently-O Events Calendar (BETA VERSION). HTTP://www.patentyo.com/calendar. We're still working on the formatting & integration. The best way to post an event is to use create the event in your calendar (such as Outlook, Google Calendar, or iCal), and then invite patentevents@gmail.com. Be sure to include a URL in the description.

Job Postings from April 2009:

• Patent Attorney/Agent - Law Firm - Austin, Texas
• IP Associate - Law Firm - West Palm Beach, Fla.
• IP Counsel - Small Corporation - Gaithersburg, Md.
• Intellectual Asset Manager - Small Corporation - Cambridge, Mass.
• Chief IP Counsel - Brookhaven National Laboratory - Upton, N.Y.
• IP Associate - Law Firm - Washington D.C.
• Patent Attorney/Agent - Law Firm - Alexandria , Va.

Query:

• I should know this, but I don't recall the answer: Suppose a recently issued patent was filed in 2004 and claims to be a continuation-in-part of another application filed in 2000. In the new patent, some of the claims were fully described and enabled in the 2000 application while other claims in the new patent include matter only found in the 2000 application. Will the enforceable patent term differ between the two sets of claims? If so, does the PTO require a terminal disclaimer if the claims are not patentably distinct?

Economic Downturn => Downturn in Patent Filings

PTO Director John Doll was kind enough to provide me with updated numbers on patent filings through March 17, 2009. The PTO's numbers tell the story that original utility application filings and continuation application filings have slowed in FY 2009 while requests for continued examination (RCE's) filings continue to rise. The Office is now faced with a serious financial crisis. Original filings (i.e., revenues) are down to FY 2004 - 2005 levels but the budget and backlog are both at all time highs. Although I the numbers are still being compiled, two of the PTO's other primary sources of revenue - maintenance fees and late fees - are also down this fiscal year.

The first chart below shows a time series for the percentage of continuation applications and RCE filings as compared to the total UPR filings (Utility, Plant, and Re-Issue applications). Remember here, that for most PTO statistics, RCE filings are counted as a utility application. According to this data, 27.6% of all of the UPR filings thus far in FY09 are RCEs - continuing a steady trend of of rising RCE filings. (Note - the RCE data also includes historical data for CPA and R129 filings).

For the next chart, I extrapolated the partial FY 09 data to the entire fiscal year to find some expectation of the total filings for the year. I also removed the RCE/CPA data because most practitioners would not consider those as separate applications. As mentioned above, both the original and continuation filings are down to around FY 04 levels. As compared to FY 08, original filings are on track to drop about 10% while continuations will likely be down over 20%. The large drop in continuation filing is likely an artifact due to the large number of continuations filed at the beginning of FY 08 in anticipation of the looming limits on continuation practice.

In the title of this post, I link the economic downturn with the downturn in patent filings. Some may also link the drop in patent filings with other recent events that may drop the allure of a patent application - namely, KSR v. Teleflex; eBay v. MercExchange; Bilski; Seagate; the prospect of further patent reform; the Second Pair of Eyes review; 750,000 backlog of unexamined patents; and the 26 month average pendency before the first OA.
> Although not in the title of the graph, the numbers do include plant patent filings which have hovered around 1,000 per year.
Of course, other factors may also

Tags: backlog, uspto

Tuesdays with Aaron

12:01 am on Tuesday morning is a special time for patent attorneys. That is when the USPTO releases the newest batch of issued patents. Usually, over 3,000 issue each week.

Patent Attorney Aaron Feigelson (Leydig Voit firm) has started a great new blog: 1201tuesday.com covering PTO events. Aaron writes with an eye toward patent prosecution and does a good job of finding examples from recently issued patents that raise important practice issues. He has also been closely following the aftermath of Bilski. Aaron describes his project as follows:

I started regular weekly monitoring of issued patents a few years ago for some particular client-related matters, but my intrigue grew after stumbling upon certain patents, unrelated to client matters, with stories that were too interesting to keep to myself. Like U.S. Patent No. 6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). Or U.S. Patent No. 7,472,070 for a seemingly innocuous grain aeration system -- but granted to Microsoft, that well-known player in agricultural technology. Or trends, like the trickling-off of issuances to applications filed the first week of June 1995 (when there was a pre-GATT filing surge). Or Jerome Lemelson being granted U.S. Patent No. 7,343,660 more than a decade after his death, with priority going back over fifty years to 1954.

Lately, my attention has turned to the fallout from the Federal Circuit's recent decision of In re Bilski and its effect on patentable subject matter under Section 101. In particular, I was curious (to aid my own practice) to see what sorts of claims had been allowed pre- and post-Bilski, and what techniques applicants had used to address or circumvent the machine-or-transformation test. I began sending my weekly findings internally to a few attorneys in my firm. Then to a few more. Then to a few more..

After a few months of these "Bilski Watch" emails, this blog was created.

I enjoyed Aaron's recent post regarding patents issuing from applications filed in early June 1995 - just before the patent term reference was switched from the issue date to the filing date.

Notes

• For those of you who don't know, the IP blogging community is rather inter-connected. For instance, Aaron Feigelson was a 2L at UChicago Law when I started there as a 1L. He was also a summer clerk at the MBHB firm. I started at MBHB soon after Aaron left and actually took over his desk and sat next door to his classmate Aaron Barkoff of the Orange Book Blog. Also at the MBHB firm are the PhD's who blog at Patent Docs (both Aarons hold PhD's as well). I interviewed at Matt Buchanan's (Promote The Progress) former Chicago firm, which is just across the Chicago River from Feigelson's office. Matt has participated in several business ventures with Steve Nipper (Invent Blog) and Doug Sorocco (PHOSITA). Matt and I are also working on a project for this fall. My old firm also paid for my patent bar review course with PLI partially taught by Gene Quinn (IPWatchdog). I could continue...

Patently-O Bits and Bytes No. 100

• PTO Director: Commerce Secretary Locke has been confirmed as Commerce Secretary. Congratulations. With patent attorney blinders - the next step is to solidify the PTO leadership positions. Leading candidates include Todd Dickinson and David Kappos (IBM). Dickinson is an old-guard Clinton supporter. Kappos was an Obama donor.
• Drop in Filing?: I recently relayed an apparent quote from the PTO General Counsel James Toupin reporting a 16% decrease in new patent filings. Toupin and the PTO have since rejected that number as a large overstatement and have indicated that they will provide better numbers shortly. The bottom line is still true - the PTO is experiencing a cash-shortfall and is cutting its own budget wherever it can.
  
• Fee Increases: Dramatically shifting its position, the IPO has announced that it opposes "any significant increase in USPTO patent fees in the near term."
• IP Primer: The Dickstein Shapiro firm has released a new version of its IP Primer (free, but you have to give a name).
• Patent Reform 2009: The Senate Judiciary Committee holds the ball on patent reform and is set to meet again to discuss mark-ups on March 31, 2009. Lobbying will be heavy during the next week to define the center "consensus" ground. Quinn; IPWatch.
  

Dear Patently-O: How Do You React to the Following Letter

Dear Mr. Crouch:

I am a solo physician and inventor. I am wondering if you can point me in the generally right direction to resolve this issue.

I went to a large, well-respected, nationally-known firm to file a patent application for an invention. The invention is not that complicated. It's mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.

My attorney knew from the start that I am a solo inventor and under a tight budget. The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted. However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen's patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).

My current plan is to go back to this attorney and have a frank discussion with her, and to ask for a partial refund. If she refuses, I plan to go to the state bar and file a complaint.

Is this the right way to go about this? Are there any precedents for recovering fees in this sort of situation in a way that won't tie me up in further legal fees?

Many thanks,

____ ____ M.D. (anonymized at the author's request)

Patently-O Bits and Bytes: Economic Downturn and the PTO

Marketers see an economic downturn as a time to emerge with a new business paradigm. Better start working.

• Hearsay: A Patently-O reader paraphrased the PTO's James Toupin who spoke at a recent USC conference: "New patent filings are down 16% so far in 2009." Patents were previously thought to be rather inelastic to price. There is a confluence of issues: (1) downturn in the US economy reducing cash-on-hand and a strong dollar discouraging foreign investment; (2) Increased PTO bureaucracy making it more difficult to obtain a patent with a valuable scope; (3) increased in patentability standards making it more difficult to obtain patent protection; and (4) decreased potential returns in litigation.
• PTO Budget: The falling numbers has the PTO worried about its budget. I would say that the falling numbers are signs of much larger worries than just the PTO budget.
• PTO Cuts: PTO Director Doll was previously reported as saying that the PTO has stopped hiring.
• PTO Cuts: Now, the PTO has announced that all legal and technical studies programs have been suspended because of "budget constraints." One PTO reader noted that the Examiner's Union (POPA) knew about the cuts to this cherished development program for the past week, but remained silent.
• Superduperextraordinary: CCIA calls for further tightening the standard for patentability. (Via Greg Aharonian)
  

Patently-O Bits and Bytes

• Patent Reform: Senator Kyl Introduces the alternative Patent Reform Act of 2009; This bill is more patent-holder friendly than the Leahy bill. The Leahy bill may see some action in Committee on March 26, 2009.
• Patent Reform: Inequitable Conduct: Although a co-sponsor of the Leahy Act, Senator Hatch has suggested that the reforms should include reforms of inequitable conduct proceedings.
• ITC: The res judicata effect of ITC Section 337 Decisions: Nil.
• ITC Theory: John Marshall's IP Law Journal has a nice set of articles focused on ITC patent Litigation
• Personnel: Gov. Gary Locke is President Obama's nominee for Secretary of Commerce. Barring some unknown tax snafu or AIG relationship, is expected to be confirmed quickly. In his Senate testimony he mentioned the politically correct goal of reducing the PTO backlog along with creating a foundation for long-term economic growth; improving weather forecasting, and managing our fishing industry.
• Personnel: The PTO needs three new members of its Patent Public Advisory Committee (PPAC). Current members include Kevin Rivette (Rembrandts in the Attic), Louis Foreman (CEO / Inventor), Scott Kieff (Conservative Law Professor), Damon Matteo (PARC innovation & licensing chief), Doug Patton (inventor & industrial designer at PattonDesign); David Westergard (IP guy at Micron – Looking to water-down patent rights), Marc Adler (former Chief of IP at Rohm & Haas), Steve Pinkos (former Deputy to Jon Dudas), and Maureen Toohey (Solo practitioner; former GC of a Dean Kamen's DEKA company). I believe that Rivette, Patton, and Westergard will have reached the end of their terms this year and will be replaced.
• The Economic Downturn: Diane Bartz has taken over writing all about patent law for Reuters. In a recent interview with John Doll, she uncovers that the PTO is projecting a 2% drop in applications in 2009. Others expect a 10% decline. The problem for the PTO is that their funding is entirely fee driven, and the agency had budgeted for a 5% increase. Along with most law firms, according to Doll, the PTO has "stopped hiring at this time."

Patently-O Bits and Bytes

• Upcoming Event: ACI's 3rd Annual Paragraph IV Disputes on April 27-28, 2009 in New York City (Downtown Marriott). http://www.americanconference.com/ParagraphIV.htm . This is a good event because it is well attended by both the innovators (brands) and the generics. On the wednesday following the class, several speakers will walk through a brand-generic settlement agreement and work on mechanisms to avoid FTC & antitrust problems.  
• PCT Search Offices: The PTO is warning PCT applicants to make sure that the selected International Search Authority (ISA) is certified for your particular type of claims. One problem, the EPO is not ready to handle business method claims. [Notice]
• Court Report: 2,875 patent lawsuits were terminated in the year ending Sept 30, 2008. Of those, only 3.8% (109) reached trial. Although 3.8% appears low, patent cases reach trial more often than many other claims brought in Federal Court. The same statistic for Copyright and Trademark cases shows 1.3% and 1.7% reaching trial respectively. During the past year, only six patent cases were filed in the Court of Federal Claims alleging infringement by the US Government. Read the Report.

Query on Elements and Limitations

A Patently-O commenter recently made a distinction between claim elements, claim steps, and claim limitations.

"[B]asically, the distinction can be discerned grammatically. Elements are nouns. Steps are verbs or gerunds. Limitations are almost always adjectives, adverbs or modifying phrases, usually beginning with "wherein"."

Is this distinction correct? Is there any legal basis for these distinctions?

Patent Law Professors on the Move

The lateral market for patent law professors is alive and steaming ahead.

• Scott Kieff has accepted a position at GW law school in DC and will be moving from Washington University in St. Louis. GW may well have the best patent focused program in the country. At any opportunity, Kieff promotes the notion that strong property rights almost always lead to the best outcome.
• Tim Holbrook is off a recent stint at Stanford Law school and is taking a position at Emory in Atlanta. Emory's patent space has been vacant since Margo Bagley left for UVA several years ago. Holbrook is leaving his fulltime position at Chicago-Kent.
• Also leaving Chicago is Katherine Strandburg (from Depaul). Strandburg is taking a position at NYU where she will join Richard Epstein and my undergraduate classmate Troy McKenzie. McKenzie is a chemical engineer, but does not do patent law. Instead he focuses on bankruptcy.
• In a coup, Mark Janis is headed home to Indiana (Bloomington) - leaving his longtime post at Iowa. Janis is one of the most highly cited patent law professors with a focus on the interplay between trademark and patent rights.
• Dave Schwartz is moving from John Marshall to fill Holbrook's position at Kent. Before moving into academia, Dave was a partner at a firm handling patent litigation and prosecution.

Each of these individuals have been helpful to me at some point during the past few years. Thank you, and good luck in your new positions!

PriorSmart: Tracking Patent Documents

The creative guys at PriorSmart (www.priorsmart.com) have created a very interesting tool for those of you frustrated by the PTO's bans on automated PAIR access. For a relatively small fee, PriorSmart will monitor the docket of any application, reexamination, or issued patent and then e-mail reports. To stay within the PTO's no-automation requirements, PriorSmart hires people to check the PAIR site and report on activities. Daily monitoring of an application costs $16 per month, a monthly report costs $4 per month. That price beats your paralegal. PriorSmart sees itself as filling a gap by allowing companies to "Track documents affecting your litigation or freedom–to–operate opinion; Monitor competitors en masse; [and] Be alerted to new continuations or divisionals."

• http://docs.priorsmart.com/
• Also, check out their search functionality at http://www.priorsmart.com/.

Patently-O Bits and Bytes

• Injunctive Relief: I re-read Michelle Lee's (Google) statement about the need for patent reform. One issue that jumped-out this time: No mention of injunctions. Money is still at stake, but Google appears confident that it won't face a shut-down even if it loses a patent case. In that sense, Google is lucky that it is being sued by non-practicing entities who as a de facto rule don't get injunctive relief against infringers who have a major market share.
• Benefit of Trade Secrets: Avoid Charges of Infringement. In some senses, google is very public. Yet, its actual operation is quite secretive. One benefit of that type of operation is that it helps avoid charges of patent infringement. If patentee's can't tell how you operate, it makes it much more difficult to assert charges of infringement.
• Warranties and Copyright: My colleague Marc Roark has an interesting new paper: Limitation of Sales Warranties as an Alternative to Intellectual Property Rights: An Empirical Analysis of Iphone Warranties' Deterrent Impact on Consumers.
• The BPAI Watchdog: http://bpaiwatchdog.blogspot.com/. So far, Leigh Martinson is focusing on the BPAI's application of Bilski.
• European Bilski: The Enlarged Board of Appeal of the EPO is looking for third-party input on four issues:
• 1. Is it only proper to exclude patents covering computer programs as such when explicitly claimed as a "computer program"?
  2. Does a claim avoid the computer program as such exclusion by mentioning a computer or data storage medium? (If not, what technical effect is needed?)
  3. Can a technical effect be non-physical? Is it sufficient if the physical entity is an unspecified computer?
  4. Does the activity of programming a computer necessarily involve technical considerations?
• Input on the European questions are due by the end of April. http://www.epo.org/topics/news/2009/20090219.html.
• Application for the job of PTO Director (by Prof Morris) http://www.stanford.edu/~rjmorris/pto.htm. I maintain that it is possible to find an excellent nominee who is not a patent attorney. However, any nominee who does not have extensive experience with the patent prosecution process will face an uphill credibility battle from day one.

Bits and Bytes for March 3, 2009

Inventors

• I used a software algorithm to count the number of inventors in each utility patent application published June 2007- February 2009. The histogram below shows the result. The median application has two inventors. One German application lists 100 inventors (I'll post the patent number when I get back to my office).

Revisiting Upcoming Conferences

• Northwestern Law School's Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday).
• Howard University's Institute of Intellectual Property and Social Justice IP Symposium – March 5-6. Day two will focus in patent issues and will include a year in review by Irving Kayton, a discussion of design patent issues by Jon Wood (Bridgestone); and panels that include Chief Judge Michel and Judge Linn as speakers.
• Federal Circuit Year in Review (St. Louis) – March 13 – I'll be presenting this one hour session sponsored by the Bar Assn. of Metropolitan St. Louis.
• The IP Law Summit - March 17-19 - hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).
• The Federal Circuit Symposium – March 18. Sponsored by the FCBA and GWU Law School. Speakers include Chief Judge Michel, and Judges Friedman, Newman, and Rader; Senator Specter (invited); a heavy Supreme Court perspective with the five former solicitors general; academics speaking include John Duffy, Arti Rai, John Golden, and Rochelle Dreyfuss may largely focus on the role of the Federal Circuit.
• Fordham IP Conference (NYC) - April 15-16. This conference has strong cross-Atlantic ties and will include judges and scholars from both continents.
• IAM's IP Business Congress in Chicago – June 21-23 – As the name suggest, this annual event focuses on how IP can be used in business. Sessions include "brand IP, strategic IP and business alignment, and IP value creation, as well as a range of breakouts examining legal, financial, strategic and business-related topics."

Patently-O Bits and Bytes

Upcoming Events

• Northwestern Law School's Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday). Bob Irvine will be debating Bilski with Lauren Katznellenbogen. Irvine is a partner at my former firm, MBHB – He is amazingly smart and was my resource whenever I had difficulty understanding some complex technology. The debate is moderated by blogger R. David Donoghue. (The notice includes a disclaimer that the positions "are for advocacy purposes" and might not reflect the positions of the parties or their firms. Other speakers include Judge Holderman, Dr. Chris Singer (of Patent Docs and MBHB), Profs Seymore and Sag, and Mike Baniak (also of MBHB). [Symposium Website]
• The IP Law Summit - March 17-19 - hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).

Stays pending reexamination:

• I continue to be surprised that courts grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow. In Wall Corp. v. BondDesk Group, LLC (D.Del. Feb. 24, 2009), district judge Gregory Sleet granted the defendant's motion to stay the litigation pending inter partes reexaminations. The fact that the reexamination was inter partes was especially important to the court since the potential "estoppel will resolve many of the invalidity issues and streamline the litigation." In a decision last week in Affinity Labs v. Dice Electronics, LLC, (E.D.Tex. February 20, 2009), the Texas-based Federal Court denied a stay pending ex parte reexam noting that the ex parte approach allows the "Defendant to lay behind the log, hoping for favorable developments with the passage of time. Instead of streamlining the process, Defendants' choice guarantees the imposition of additional costs … and indicates a lack of desire to resolve the issues in the case in a timely manner."

Late Patents:

• I recently discussed maintenance fees here, here, here, and here. An interesting website on the topic is latepatents.net. (Hat tip to John Spevacek)

Patently-O Bits and Bytes

• New Commerce Secretary: Gary Locke. Former Washington State Governor, Partner at Davis Wright Tremaine. Gov. Locke is Chinese American and co-chairs the firm's China practice. He is also an Eagle Scout, a Yalie, and a Terrier.
• 
  USPTO Deferred Examination Comments Due February 26:
  
  
  • http://www.uspto.gov/main/homepagenews/2009feb09.htm
  • https://uspto.connectsolutions.com/p91717658/ (Watch the Roundtable discussion)
  
  
  
  
• 
  Cert Denied: The Supreme Court has denied certiorari in the following patent related cases.
  
  
  • Singleton v. Volkswagen (E.D. Texas Venue Case where 5^th Circuit ordered transfer).
  • Forest Labs v. Caraco (Declaratory Judgment standing).
  • FTC v. Rambus (Duties of a patent holder in standard setting negotiations).
  • Burandt v. Dudas (When is a failure to pay "unavoidable").
  • Apotex v. Roche (reverse doctrine of equivalents).
  
  
  
  
• 
  Judge Linn recently gave a Keynote address to the PTO examiner's corps. [Read it here]. Judge Linn started as a patent examiner in 1965. The following are some quotes from the full speech:
  
  
  • "Your job is much harder now than it was for me all those years ago. The technology of today's inventions is immensely more complex than ever before. The length and breadth of applications is greater. The volume of prior art is much larger. The legal issues are more intricate and harder to comprehend. And the law is in a continual state of change. Compounding all of this is the perception among some individuals that the work of the PTO in general, and the examiners in particular, is somehow of secondary importance and questionable quality. It is commonly said that the real action in patents is in private or corporate practice."
  • "Your job is to grant patents—valid patents. And that takes a combination of skills, reasoning and informed judgment. The Examiner's task is to assess the patentable merits of each invention, as presented, and to grant patents where patents are due. No applicant wants an invalid patent. Similarly, no examiner wants to grant an invalid patent. Thus, both the applicant and the examiner play parallel and complementary—not contradictory— roles in seeing to it that valid patents are issued."
  • "[R]eading legal decisions, particularly those of the Board and the Federal Circuit, is not only the best way to learn how to make the tough decisions you are regularly called upon to make, but also the best way to make your job easier and more enjoyable. You might ask, "why should I bother to read decisions of the Board and the Federal Circuit? After all, I have all the guidance I need in the MPEP, and I don't have time to spend reading other cases that have nothing to do with me." The answer is that the cases bring to life the statutes and rules you are required to apply and give you real world examples of how those statutes and rules apply in similar cases. The MPEP has some guidelines, but they are just a sampling and cannot possibly reflect the full range of claims and circumstances you face every day. Keeping up with the law by reading decisions of the Board and the Federal Circuit will allow you to master your craft and will result in your standing out from your peers."
  • "The last point I want to make is to not forget about §112. … [I]t is not correct to trivialize or ignore these kinds of Informalities [such as claims that are vague and indefinite or lacking in support in the written description]. Indeed, these kinds of problems affect not only the applicant but the public as well in a significant way. … In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description."
  
  
  
  

Brief post on the stimulus [updated]

To put $800 billion in perspective, I like to think in terms of households. In the US, there are around 115 million households with a little under three persons per household. Simple division gives us $7,000 per household. The median household income of Patently-O readers is at least two to three times greater than the national median of $50,000. The income-correlated cost will be at least proportional -- pushing $20,000 for Patently-O households.

A weak economy has little demand for patent attorneys. Patent attorneys make less money, clients disappear, and law firms close. Although patents can be countercyclic, on average they are not - especially in a sustained downturn.

In the 1990's, I taught high-school level math and physics as a Peace Corps volunteer in Ghana, West Africa. Many of my students were smarter and certainly harder working than their American counterparts. Yet, the Ghanaians have an expected per capita income of just under $1,000 per year. Those kids are a victim of circumstance. In the US, we reap the windfall of circumstance. Our individual income levels are within our control only to a certain extent.

The bottom line here is that this additional $20,000 cost is worth while ... if it works. I guess that we'll find out.

Article One Partners Pays First Patent Slayer Prize of $50,000

I spoke with Ricky Roberson today. Roberson is an Alabama based aerospace engineer who read about Article One on slashdot and was interested in their offer of $50,000 for invalidating prior art.

Roberson focused on Pat. No. 6,784,873 which covers a touch screen personal navigation device — a patent that he called “low hanging fruit” compared with other Article One subjects such as the multiple Rambus patents being litigated or a pharmacuetical formulation such as rosuvastatin calcium (Crestor).

The ‘843 case is important because the patentee (SPT) has accused Garmin of infringement. Roberson primarily used Google Scholar & Google Patents to search for prior art patents. He had never worked with patents before, but also found the WIPO, EPO, & JPO search engines useful.

In the end, the folks at Article One awarded two winners: Roberson’s submission (WO 91/12578 A1) and an anonymous contribution of a 1998 Microsoft CE programming guide. Roberson will receive $35,000 and the anonymous contributor will receive $15,000.

Article One indicated its belief that the two references would invalidate the ‘843 patent, however, they company is quick to note that “only a U.S. federal court or the U.S. Patent Office can invalidate a U.S. patent.”

Notes:

• Read Ricky’s forum post

Patently-O Bits and Bytes

• Statistics on the Use of Means Plus Function Language: Thus far in 2009 (1/1/2009 – 2/8/2009) the PTO has issued 17,206 patents. Of those, only 12% (2060) have a “means for” clause in the claim language.  Looking back one decade, 24% of patents issued in January 1999 included a “means for” clause in the claim language. Looking back two decades, 34% of patents issued in January 1989 included a “means for” clause in the claim language. Looking back three decades, 40% of patents issued in January 1979 included a “means for” clause in the claim language.
• New Funny Blog: http://courtoons.wordpress.com/ by appellate attorney David Mills
• Watch The Symposium: The hardworking folks at Santa Clara’s Computer & High Technology Law Journal (CHTLJ) have posted materials and video from their conference two weeks ago. Those of you who have practiced before Judges Whyte or Ware will certainly enjoy the tribute video. [LINK] [The best portion begins at 11:20 in the Whyte video].
• PTO Transparancy: Readers submitted two additional suggestions for PTO Transparancy
• • The PTO should calculate and publish the expiration date of each patent.
  • The PTO should publish reexamination certificates so that they are searchable. [Via NIPPER]

Patently-O Bits and Bytes

• Patent Reform I: In a recent article, DC insider Hal Wegner noted that there is "reason for optimism that patents will not be put on the back burner by the new President." Wegner pointed to the President's pro-reform start and to the President's Technology Agendy that calls for: (1) ensuring that American IP is protected abroad and (2) reforming the patent and copyright systems "while ensuring that intellectual property owners are fairly treated." The agenda speaks specifically to patent reform: "Reform the Patent System: Ensure that our patent laws protect legitimate rights while not stifling innovation and collaboration. Give the Patent and Trademark Office (PTO) the resources to improve patent quality and open up the patent process to citizen review to help foster an environment that encourages innovation. Reduce uncertainty and wasteful litigation that is currently a significant drag on innovation." [Read the Technology Agenda]
• Patent Reform II: Although Wegner noted "optimism," many patent industry insiders may be pessimistic that there is a high likelihood of patent reform. In particular, the technology agenda statements, coupled with Professors Sprigman and Rai as advisors, further coupled with the rumored appointment of John Thompson as Secretary of Commerce point toward legislative patent reforms being along the same lines as eBay (weakening injunctions), KSR (making it easier to find patents obvious); VW (weakening plaintiff's choice of forum); Bilski (limiting patentable subject matter); and Seagate (limiting damage awards).
• Patent Reform III: On the other hand, Professors Rai and Sunstein are both major administrative reformers. There is hope that their style of internal PTO reforms - made through rule changes and standard operating procedures – could dramatically change the PTO for the better.
• Role of the Secretary of Commerce: 35 USC 1(a) establishes the Patent Office (PTO) within the Department of Commerce. However, the statute is clear that the PTO has some power independent of the larger department: "The [PTO] is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the [PTO] shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law."

Bits and Bytes

• Patent Case Management: Professor Peter Menell (Berkeley) has been working with several top patent litigators to develop a "comprehensive patent case management guide" for federal judges. The almost-final draft is available online. The manuscript will very likely become a desk reference for district court judges and their clerks once it is published by the Federal Judicial Center in the next couple of months. In some ways, the 500+ page manuscript is a patent doctrine encyclopedia as well as a judicial form book.
• [UPDATE] Secretary of Commerce: In a prior post, I wrote about the potential John Thompson, CEO of Symantec may be appointed as the next Secretary of Commerce. As noted in the comments, I failed to mention the fact that Symantec is a leading member of the "Coalition for Patent Fairness." The Coalition is a lobbying group pushing for reduced patent damages awards, reduced ability to forum shop, and an invigorated system for post-grant challenges to asserted patents. [LINK] Previously, the Coalition also supported eBay and reduced willfulness findings. Each of these changes reduce the potential power individual patents.
• Query: Assume you have a popular product covered by a pending patent. Is there a way to mark the patent pending good in a way so that an infringer will be considered on notice of the patent as soon as the patent issues (so that you can collect past damages).

Bits and Bytes

• New PTO Director: The USPTO will be closed on Monday and Tuesday (Jan. 19-20). When it reopens, John Doll will be the Acting Director of the USPTO. Doll is a career PTO official and already fully understands the system and the role of the PTO director. Because Doll has had considerable influence while working under Jon Dudas, we can expect that there will be few immediate or dramatic changes. In part because of the absence of a Commerce Secretary, I expect that Doll's tenure will likely last for several months.
• Secretary of Commerce: While on the topic, I heard this morning that John Thompson, CEO of Symantec may be named appointed as the next Secretary of Commerce. If appointed, Thompson may play an important role in some patentability disputes. Symantec has been directly involved in a number of patent litigation disputes – both as a plaintiff and as a defendant. Symantec is the assignee of hundreds of patents. I cannot say, however, whether Thompson feels scorned or empowered by the current patent system.
• Chief Judge Michel & Professor Lichtman: Professor Doug Lichtman has introduced his most recent guest on the "IP Colloquium" – Chief Judge Paul Michel of the Court of Appeals for the Federal Circuit. In an hour-long discussion, the pair discuss common deficiencies in appellate advocacy; the important value of amicus briefs at the rehearing stage; Section 101 post-Bilski; and the lost doctrine of equivalents. Professor Lichtman has configured the system so that you can also easily claim free CLE credit in California, Illinois, NY, Texas, or Washington State. Excellent work!
• ABA Top Legal Blogs: For two years in a row, the ABA Journal has chosen Patently-O as one of the top 100 legal blogs. (Only 50 blogs made the cut both years). In addition, Patently-O has been honored in 2008 as the top legal blog focusing on a niche area of law. Thank you to everyone who voted during this process! In time for Patently-O's fifth anniversary in April, I expect that the website will record its ten-millionth visit in addition to the 16,000+ readers who receive their updates via the daily e-mail feed.
• Patent agent Brian Galvin has started a new blog, in a recent post, he discusses the BPAI's Cornea-Hasegan Opinion. His analogy is interesting: "[The current state] of statutory eligibility … reminds me of … Ptolemaic astronomy just before Galileo, Kepler and Copernicus. The more wheels we add, the more untenable the whole structure." [LINK]

Patently-O Bits and Bytes

• For the first time in history, fewer than 50% of US patents issued in the past year originated from US applicants. [Zura] IBM received 4,000+ patents in 2008.
• In 2007, I asked the question: How will the US patent lobbying change when most new patents are held by foreign companies?
• Brian Moriarty and Deirdre Sanders (Massachusetts patent litigators) discuss the combination of the Texas Venue problems (TS Tech, VW) and new D.Ma. local patent rules. Their conclusion: "Patent Suits – Massachusetts In, Texas Out." [LINK]
• More Patent Jobs:
  
  
  • Godfrey & Kahn (Milwaukee) needs an "IP Generalist" with "excellent academic credentials" to help with litigation, trademarks, patent prosecution, and transactions. [Link]
  • Baker & Daniels (Indy) needs a MechE (or mechanically inclined equivalent) associate to handle patent prosecution. [Link]
  
  
  
  

Patently-O Bits and Bytes No. 85

• BPAI Plummeting Reversal Rate. [LINK]
• Accessing Patently-O: I have set up several ways to access Patently-O depending upon your preferences:
  • Via the Website;
  • Via daily Email Digest;
  • Via Full Content RSS Feed;
  • Via RSS Squib.
• Obama's original selection for Secretary of Commerce – Bill Richardson – will not pan out. Richardson has decided to withdraw his nomination. Although we rarely see the Secretary of Commerce directly shaping USPTO policy, the Office is still part of the Department of Commerce and the USPTO Director reports directly to the Secretary of Commerce. The greatest impact of the Secretary of Commerce may be on the selection of high-level PTO officials (including the Director).
• The Patent Troll Tracker debacle made the ABA Journal's list of the top ten legal stories of 2008. (The only IP related issue to make the list). [Link]
• Patently-O Jobs:
  • Microsoft (Redmond, WA) needs a patent portfolio manager (at least 5 years exp.) [LINK]
  • Google (Mountain View, CA) needs an IP litigation counsel (at least 3 years exp.) [LINK]
  • Amin Hallihan (Chicago) focuses on IP & FDA issues. The firm is looking one or more experienced patent attorneys to join their ranks. [LINK]
• Phama Law: Pozen's migraine drug (Treximet) is special because it combines two types of migraine treatments into one pill: naproxen sodium (Aleve) and sumatriptan (Imitrex). Alphapharm (Mylan) filed an abbreviated new drug application (ANDA) to begin marketing a generic version of the drug – arguing that the patent is invalid. On January 2, Pozen sued Alphapharm for infringement in the Eastern District of Texas. Claim 1 of the asserted patent reads as follows:
  • 1. In a method for treating a migraine patient by administering a 5-HT agonist [Imitrex], the improvement which comprises: concomitantly administering to said patient a long-acting, non-steroidal, anti-inflammatory drug (LA-NSAID) [Aleve] in an amount that, together with said 5-HT agonist, is effective to reduce migraine relapse or produce longer lasting efficacy compared to the administration of said 5-HT agonist in the absence of said LA-NSAID.

Patently-O Bits and Bytes No. 84

• USPTO News: Although the move has been in the works for some time, Raymond Chen is now Solicitor of the USPTO and Deputy General Counsel for Intellectual Property Law. Chen's JD is from NYU. He also has a BS in electrical engineering from the UCLA. Prior to joining the solicitor's office, Chen was a technical assistant at the United States Court of Appeals for the Federal Circuit. Chen's parents were both engineers as well.
• Voting: Patently-O is in second place in the ABA Blog championship. Vote for Patently-O here.
• Suing the Software Giants: In 1998 three central-Indiana inventors filed for patent protection iconic software. The claims – finally issued in 2008 – cover a method of using icons that look like the content of the files they represent. The first named inventor – Greg Swartz – moved to Arizona and has recently filed an infringement complaint in that state. Defendants include Google (Chrome Browser), Microsoft (Vista), and Apple (iPhone). (U.S. Patent No. 7,346,850; ArsTechnica). The Niro firm is representing the patent holder – Cygnus Systems. An additional continuation is pending. The complaint can be found through Stanford's LexMachina Database.

Patently-O Bits and Bytes No. 77

• Acting Patent Commissioner Focarino recently reported on the rising use of the Patent Office Electronic Filing System (EFS) for filing patent applications. Kudos to the PTO on a system that works well! (The graph below is built from Commissioner Focarino's data).

  

• I wonder how electronic filing impacts prosecution speed and quality?
• Great article on Biotech 101 (i.e., subject matter patentability of biotech) by Philip McGarrigle and Vern Norviel. It is pre-bilski, but considers many of the same issues. http://www.chtlj.org/pdf/24-2_McGarrigle.pdf.
• BountyQuest II: http://www.articleonepartners.com.
• Patent Law Jobs: Los Angeles / Washington D.C.; ITC Litigator; Part-time; IP Fellowship Washington D.C.; Chicago; Wilmington, N.C.; Orange County & Los Angeles; Alexandria, Va.; Philadelphia; Menlo Park.