IP LEGISLATION

September 28, 2007

What, Me Worry? Continuation and Claim Rules Summary, Part Cuatro

Your head is probably still spinning from the USPTO’s Aug. 21, 2007 Final Continuation and Claims Rules, and there is no doubt that panic, discomfort, and long hours have set in for most, if not all, patent practitioners.  Have no fear!  There is no need to worry—this post identifies the critical dates and steps you can take to ensure a smooth transition into compliance with the new rules.    Alright fellow intellectual property enthusiasts, take a deep breath, buckle your safety belts, and enjoy a delectable excursion through the realm of patent reform.

There are essentially two critical dates that all practitioners should be aware of:  November 1, 2007 and February 1, 2008.  Each date is detailed below.

November 1, 2007 

November 1 marks the official compliance date of the new rules, which means that each application filed thereafter is subject to the “2+1 Rule” (two continuations plus one RCE).  Below is a list of things to consider with regards to the November 1 deadline: 

• Determine if an RCE has already been filed on a pending application that has been issued a final rejection.  If the answer is yes, consider whether an additional RCE needs to be filed on the application.  As long as the RCE is filed by November 1, it does not count against the “2+1” limitation.
• As far as continuation filing is concerned, there is no real rush to file all of your continuations before November 1.  There is, however, one exception.  If you have a family of co-pending applications that claim priority back to the same date and you intend on filing continuations on more than one of these applications, you must do so before November 1.  After November 1, only one continuation application will be allowed for the whole family.

February 1, 2008

By February 1, 2008, every practitioner should comb over all of their patent portfolios to identify applications that are commonly owned, have at least one inventor in common, and have a filing date or priority date within two months of the filing date or priority date of the other application.  As previously pointed out (click here), the new rules impose a rebuttable presumption that all applications with overlapping disclosures and a common priority date contain patentably indistinct claims.  Thus, it is imperative to identify these overlapping, commonly owned applications to develop a method for rebutting the patentably indistinct presumption (either by stating a reason why the claims are patentably distinct or by filing a terminal disclaimer).

Aside from the two critical dates above, practitioners should evaluate all pending, unexamined applications that have yet to receive an office action from the USPTO by November 1.  Why you ask?  Well, these applications are subject to the “5/25 Rule.”  As such, practitioners should look to each application to determine whether the claims need to be amended, cancelled, or whether a Suggested Restriction Requirement (SRR) needs to be filed to comply with the “5/25 Rule.”

We will keep you posted on any new developments regarding the new claims and continuations rules within the USPTO.  As always, any questions or comments on any of our posts are appreciated.

Be sure to tune in next week as PHOSITA hosts the “1^st Annual DCR Patent Poetry Throwdown!”

Posted by Michael Schade at 02:07 PM.
Permalink: What, Me Worry? Continuation and Claim Rules Summary, Part Cuatro
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IP LEGISLATION

September 26, 2007

Round 2 - Part 3 – Review of the New Continuation Rules

As you may or may not already know, on November 1, 2007, the USPTO’s new claims and continuation rules become effective.  The new rules change various aspects of continued examination filings, requests for continued examination, and divisional filings.  This post covers the key rule changes regarding to related applications.   

I digress, before reading the rest of this article, think of the great song of the late 70s, We are Fa-mily, I got all my sistas with me!  We are Fa-mily, get up ev-rybody and sing!  It sets the tone for the remainder of this article since this post discusses patent Fa-milies.   

According to the new rules, an applicant must identify other pending and issued patents within its patent family.  This means, the applicant must identify patents that:

1. Other commonly owned applications  -OR-
2. Patents that have:
1. an inventor in common with the application; and
2. a filing date within 2 months of the filing date of the application.

 

1. Are commonly owned,
2. have an inventor in common with the application; AND
3. have a priority date within 2 months of the priority date of the application. 

Also, the new rules state that a rebuttable presumption exists that the application contains at least one claim that is not patentably distinct from at least one of the claims from its patent family if the related family patent:

1. has an inventor in common with the application
2. has a claimed filing or priority date that is the same as the claimed filing or priority date as the application; and
3. has substantial overlapping disclosure with the application. 

Where there is a rebuttable presumption, the applicant must:  

1. rebut the presumption that the claims are not patentably distinct by explaining how the application contains only patentably distinct claims
   -OR-
2. submit a terminal disclaimer. 

For additional information click here.  Also click here for a chart detailing the rule changes to “Commonly Owned Applications and Applications Containing Patentably Indistinct Claims”.

Posted by Emily Campbell at 01:47 PM.
Permalink: Round 2 - Part 3 – Review of the New Continuation Rules
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IP LEGISLATION

September 25, 2007

round 2 - continuation and claim rule review - part deux

As the dust settles on the patent frontier, I bet every patent attorney/inventor/corporate counsel/law student is sitting at their desk reading and re-reading the USPTO rules.  Lucky for you, this week we are providing the key highlights via PHOSITA.  Today’s topic….claims and the dreaded Examination Support Document (ESD).

Claims

We heard the rumors out of the USPTO that patent applications would be limited to ten claims.  The good news – the USPTO did not stick with the 10 claim rule.  The bad news – you are now limited to 5 independent claims and 25 total claims (5I/25T) per patent application without an ESD.  If you happen to file a patent application exceeding the 5I/25T rule without submitting an ESD, the USPTO will send you a nice little notice requesting you either amend the claims for compliance or submit the ESD within 2 months. 

These new rules give you a couple of options in claim drafting.  The easiest solution is to not exceed the 5I/25T rule when you file your application.  Boring.

For the brave at heart, you can jack up the number of claims that you file, exceed the 5I/25T rule, and then submit a suggested restriction requirement (assuming you can) selecting without traverse 5 independent claims and 25 total claims.   Withdrawn claims are not counted in your 5I/25T.  Hopefully the Examiner agrees with your suggested restriction requirement or you may have a little problem getting a refund on the claims you withdraw/cancel.  (Watch out for the section on refunds due to cancellation of claims – Section 1.117). 

For the loonies out there, go ahead and exceed the 5I/25T rule without a suggested restriction requirement, but be prepared for the monster - the dreaded ESD.

The Dreaded Examination Support Document

Starting November 1st, the ESD rule applies to applications exceeding 5I/25T that have yet to receive the first Office Action.  An ESD includes the following:

• a statement that a preexamination search was conducted;
• a listing of the references deemed most closely related to the claims;
• identification of all of the limitations of each of the claims that are disclosed by each reference (OUCH) (Note – there is a small entity exception to this Rule – see Comments);
• a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references (DOUBLE OUCH); and,
• a showing of where each limitation finds support in the written description of the specification (TRIPLE OUCH).

My guess is that the ESD is probably not on the top ten list of things a patent attorney would like to file.

Posted by Laura C. Wood at 12:24 PM.
Permalink: round 2 - continuation and claim rule review - part deux
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IP LEGISLATION

September 21, 2007

Patent Reform Act 2007 - Part 5 . . . Patent Litigation

Not only does the Patent Reform Act of 2007 include changes that effect how patents are prosecuted, but the Act also includes changes that may effect how patents are litigated.

For example, in an effort to reduce damage awards, H.R. 1908, § 5, requires courts and jury’s to use specific valuation methods listed in the Act to determine "reasonable royalty awards." The purpose of the different valuation methods is to ensure that a "reasonable royalty" is applied only to the economic value attributable to the patent’s specific contribution over the prior art. The court determines which valuation method to use and then identifies any relevant factors to be considered under the chosen valuation method.

H.R. 1908 also adds inequitable conduct as a defense to infringement. The Act requires clear and convincing evidence to show that a person with a duty to disclose information to the PTO had the intent to deceive or mislead the examiner or misrepresented or failed to disclose material information. Information is deemed material if an examiner could have maintained a finding of unpatentability from such information and an intent to deceive or mislead may be shown by circumstances that indicate conscious or deliberate behavior not to disclose material information or to submit false information. If the court determines that inequitable conduct has occurred then the court may deny equitable relief or hold the patent unenforceable.

H.R. 1908 continues to set venue where the defendant has a principal place of business or is incorporated, or where the defendant committed acts of infringement and has a physical facility for a substantial portion of its operations. The Act also provides that venue is proper where the plaintiff resides, if the plaintiff is an institution of higher education or a non profit organization; or where the plaintiff is engaged in substantial research and development, manufacturing or the management of research and development or manufacturing which is related to the disputed patent; or where the inventor plaintiff resides, if the inventor has not assigned or is not required to assign the patent. Moreover, a party may not manufacture venue to invoke the venue of a specific district court, in other words no forum shopping.

We will continue to keep you up to date on the Patent Reform Act and any impact these changes may have on patent litigation. Any comments or thoughts are always appreciated.

Posted by Ward Hobson at 01:23 PM.
Permalink: Patent Reform Act 2007 - Part 5 . . . Patent Litigation
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IP LEGISLATION

September 20, 2007

Patent Reform Act of 2007 - Part 4

You are no doubt on the edge of your seat waiting to see what other changes are in store if the Patent Reform Act of 2007 is enacted.  Well, wait no longer, this blog post brings to you not one, but two more proposed changes to the current Patent System:  (1) Prior User Rights and (2) Best Mode Requirement Violations. 

You might be asking yourself, “Self, what are prior user rights?”  Well, prior user rights (also called the first inventor defense) stem from 35 U.S.C. § 273.  Currently, 35 U.S.C. § 273 provides a limited defense for actions that would normally constitute infringement if the person “actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.”  The defense is narrowly tailored so that “[a] person may not assert the defense under this section unless the invention for which the defense is asserted is for a method.”  In other words, the defense is limited to business method patents. 

After the State Street Bank decision, the USPTO experienced a huge surge of business method applications as well as a huge lack of adequate prior art to judge the novelty and obviousness of these applications.  Consequently, litigation erupted and the prior user defense was enacted to remedy the effects of the enforcement of poor-quality business method patents.   

The Patent Reform Act proposed to widen the scope of the prior user defense by eliminating the business method patent limitation so that users of all types of inventions would have been able to use the defense.  But as amended and passed, the legislation does not include any such changes to the prior user defense.  Instead, the legislation requires the USPTO to prepare a report for Congress detailing their findings and recommendations on the operation of prior user rights in several selected countries. 

The Patent Reform Act, if enacted, would also affect violations of the best mode requirement.  What is the best mode requirement, you might ask.  Well, funny you ask, because I just so happen to have a brief explanation.  Currently, under 35 U.S.C. § 112 a specification must, among other elements, “set forth the best mode contemplated by the inventor of carrying out his invention.”  Under the current law, a defendant in an infringement action could assert invalidity as a defense if the patentee failed to set forth the best mode of carrying out his invention.  35 U.S.C. § 282(3). 

But according to the Judiciary Committee Report there were several problems involved in litigating violations of the best mode requirement since it is so subjective.  So the Patent Reform Act amended the defenses available to potential infringers by making failure to meet the best mode requirement unavailable as a defense to infringement.  Now, the Patent Reform Act, if enacted, replaces Section 282(3) and states that invalidity of a patent or failure to comply with any requirement of Section 112 “other than the requirement that the specification shall set forth the best mode contemplated by the inventor of carrying out his invention” is an available defense. 

Posted by Emily Campbell at 04:11 PM.
Permalink: Patent Reform Act of 2007 - Part 4
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IP LEGISLATION

September 19, 2007

And Now for Something Completely Different...Patent Reform Act 2007, Part Three

By now, virtually all intellectual property practitioners are aware of the major changes occurring within the USPTO.  Some practitioners are nervous, some are confused, and some are just outright pained by these “novel” (pun intended) final and proposed rules.  From continuation and claim reform to a proposed overhaul of the “first to invent” system, the current administration appears to be playing hard-ball with the United States patent regime.

This post focuses on two particular areas of H.R. 1908:  (1) the USPTO Director’s ability to require applicants to submit search reports when filing an application to establish elements of patentability, and (2) the elimination of an applicant’s ability to opt-out of having the USPTO publish an application 18 months from the earliest filing date.

Pre-Examination Search Reports

The current version of H.R. 1908 proposes to add §123 to 35 U.S.C., which provides that, “The Director may, by regulation, require that applicants submit a search report and other information and analysis relevant to patentability.”  The report need not be performed by the applicants themselves, and may be performed by any United States citizen or commercial entity employing United States citizens.  Failure to provide this report, or other information deemed necessary by the Director, results in abandonment of the pending application.

As is the case with most rules, there is an exception.  §123 exempts “micro-entities” from having to file pre-examination search reports.  If you are like me, you might be asking yourself, “What in the heck is a micro-entity?”  The answer depends on whether the application has been assigned or not.

In both instances, the applicant(s) must make a certification.  For un-assigned applications, each inventor must certify that:  (1) the inventor qualifies as a small entity as defined by the Director (currently, see 37 C.F.R. 1.27); (2) the inventor has not been named on five or more previous applications; (3) the inventor has not assigned, granted, conveyed, or licensed, or is under any obligation to do such things with, any ownership interest in the application; and (4) the inventor does not make more than 2.5 times the median household income in the year preceding the year the examination fee is paid.

If the application has been assigned, the requirements are similar to those stated above, except that each inventor must certify that the inventor has assigned the application to an entity with five or more employees.

Effectively, this proposed statutory addition gives discretion to the Director to place the initial onus of prior art searching on the applicant rather than the examiner.  While §123 explicitly states that “[a]ny search report required by the Director may not substitute in any way for a search by an examiner of the prior art during examination,” any information provided by an applicant search report can, and undoubtedly will, be used by the examiner in his or her examination.

Publication Amendment

H.R. 1908 further stands to amend 35 U.S.C. §122(b)(2)(B)(i) by eliminating an applicant’s ability to opt-out of application publication.

Currently, the above section allows an applicant to opt-out of having his or her application published after 18 months from the earliest filing date, provided that the applicant certifies that the “application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing.”

As currently proposed, H.R. 1908 mandates that an application shall be published the later of:  (1) three months after the applicant is notified (or mailed) of a second office action; or (2) 18 months from the earliest filing date pursuant to 35 U.S.C. §122(b)(1)(A).

Stay tuned to for more posts concerning the changes proposed in H.R. 1908.  And, as always, comments and thoughts on any posts are appreciated.

 

 

Posted by Michael Schade at 05:17 PM.
Permalink: And Now for Something Completely Different...Patent Reform Act 2007, Part Three
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IP LEGISLATION

August 24, 2007

Labor unions join patent reform fight

This news report surprised me as I had never given much thought to the impact patent reform might have on the types of interests represented by Labor Unions.  But it makes sense.

The U.S. patent system provides a barrier to entry for “knock offs” of successful technologies and, as stated below, a large percentage of patents are issued for inventions covering improvements to manufactured goods.  Items that are highly susceptible to production offshore and imported into the U.S. 

According to the AFL-CIO:

But the AFL-CIO letter alluded to recent efforts of the U.S. government and the U.S. tech industry to prod China to strengthen its intellectual property protections. These two changes "may have a negative impact on innovation and research," the AFL-CIO letter said.

"At a time when the Chinese government is constantly being challenged to live up to its intellectual property obligations, we do not want to take actions that may weaken ours." The United Steelworkers letter said nearly 70 percent of patents filed in the U.S. come from manufacturing firms. "These bills would allow an endless loop of legal challenges after patents are awarded that will make it more difficult for U.S. patent holders to prevail against frivolous challenges," the letter said.

Patent reform is truly making some odd bedfellows these days.

Via Labor unions join patent reform fight - addict3d.org.

Posted by Douglas Sorocco at 07:29 PM.
Permalink: Labor unions join patent reform fight
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IP LEGISLATION

August 05, 2007

Herring and Patents - And no, I don't mean fish.

The other day I mentioned a chart from the Economist outlining the largest patent granting countries – with Japan coming out on top.

The Intellectual Asset Management Magazine also picked up on the online chart and added some additional thoughts to the debate concerning software patents.  They posit that it is the certainty of the legal protections afforded rather than the existence of protection for information technology that ensures a competitive industry.  In other words, patent protection for software is a debate that has little, if anything, to do with maintaining open and competitive IT industries.

Some food for thought…

Is the software patent debate a red herring?

That said, the EIU sees the legal infrastructure in a country as being much less important than other factors, such as IT infrastructure, human capital, R&D environment and support for IT industry development. Of course, it could be that all of these are actually affected by the IP infrastructure of a country (in other words, for example, maybe a company is more likely to invest in R&D or to attract funding for R&D, if the right IP protection is available); but it could also well be that, if the EIU is right, the vitriolic nature of the debate around software patents is actually little more than hot air because, in the end, as long as there is legal certainty – of whatever kind – other factors are far more important in ensuring strong competition in the IT industry. (Emphasis added)

 

Posted by Douglas Sorocco at 09:15 PM.
Permalink: Herring and Patents - And no, I don't mean fish.
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IP LEGISLATION

July 29, 2007

Patent Reform - Getting Ready for the August Recess

Patent reform is the buzzword around the patent world right now and, for once, the news is not limited to geeks, wonks and inventors.  The mass media appears to have gotten the "patent reform" bug as well - although, it appears that the "fixing the ridiculous" meme is taking hold. 

For example:

Congress tackles patent-law reform -- via the baltimoresun.com

WASHINGTON - Crustless peanut-butter-and-jelly sandwiches, a way to move sideways on a swing, a technique for exercising cats using a laser pointer - these are among the inventions patented in the United States over the years.

Now Congress is trying to cut down on poor-quality or downright ridiculous patents, and at the same time adapt the patent system to a high-tech era in which computers and other electronic devices might contain thousands of patentable parts.

We will be exploring all things patent reform here at Phosita during the month of August, so send us your stories, frustrations and rumors.  Of course, we will not reveal your name, slant or employer - so, send it to:  douglas.sorocco+reformtip@gmail.com

See you in August!

Posted by Douglas Sorocco at 09:12 PM.
Permalink: Patent Reform - Getting Ready for the August Recess
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IP LEGISLATION

February 12, 2007

Nope... There is no 'Official' Policy

Of course the PTO has no ‘official policy’ relating to the dis-allowance of patent applications.  It is merely coincidence that the number of allowances have plummeted …. while the “backlog” continues to grow…

Anyone have a FOIA form handy? 

Discussion:  Matt Buchanan on “Rethinking Backlog”

Posted by Douglas Sorocco at 08:30 PM.
Permalink: Nope... There is no 'Official' Policy
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IP LEGISLATION

January 31, 2007

The Resolution(tm) -- a new Fedcirc.us Product

FedCirc.us (Matt/Steve/and I) announced earlier today the availability of a free preview issue of The Resolution, the inaugural issue of our quarterly magazine, The FedCirc.us Reader.  Download the .pdf here.

According to Matt:

The Resolution will give you a sneak-peak at the features of the magazine.  It's jam-packed with all sorts of patent-caselaw goodness, including a 'Trend Spotting' article, a featured case review, prosecution- and litigation-focused digests, chronological and alphabetical listings of cases from last quarter (including summaries), and a fun "Quotables" section that includes some of our favorite quotes from cases issued during last quarter.

For this issue, we've even included a brief note about the story behind the FedCirc.us name and domain.

We think you'll agree that the magazine is an exciting and effective new tool for staying current on patent caselaw developments.

Of course, the free preview issue includes subscription details for the magazine.  The site will be ready to accept subscription payments starting tomorrow.

Please download our first copy and let us know what you think.

Posted by Douglas Sorocco at 10:20 AM.
Permalink: The Resolution(tm) -- a new Fedcirc.us Product
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IP LEGISLATION

October 17, 2006

Continuation Rule Implementation May be Delayed til 2007

As many readers know, the U.S. PTO has been pounding its chest over the past year with threats of implementing a draconian and, as believed by many, unconstitutional rule limiting the availability of continuation applications.  Matt has a couple of great posts on the subject of the ‘continuation rule’ over at Promote the Progress.

According to a news blast from Hal Wegner this morning, a reliable source has informed him that the implementation of the rule may be delayed into 2007 and possibly killed altogether. 

Specifically, according to Hal:

An always previously reliable PTO official has stated that the dreaded, notorious "continuation rules" package is hung up within the PTO with uncertain implementation. Per this official, the continuation rules, if implemented, will be significantly delayed well into calendar year 2007.

The information has been provided by Leon Radomsky, Chair of the AIPLA Chemical Practice Committee, in his notice of the meeting later this week in Washington, D.C. The relevant information on the continuation rules has been highlighted in red.

Rob Clarke noted at the beginning of the meeting that the proposed rule changes regarding Continuations and Representative Claims are still being considered, that more comments were filed in response to these rules than ever before, and that if they do decide to go forward with the rule changes, they have to be submitted through a special rulemaking procedure because they are substantive rule changes.  That internal administrative review will take at least 90 days, and the result may be a refusal to allow the rules to go forward.  And after that, it will be at least another 30 days before the rules become final.  Rob Clarke did state that he expects the IDS rules to come out before the continuation and representative claims rules.

If any reader has any additional information – please post in the comments or send to me via an email —– your anonymity will be safe with us.

Posted by Douglas Sorocco at 09:01 AM.
Permalink: Continuation Rule Implementation May be Delayed til 2007
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IP LEGISLATION

June 18, 2006

Rethink(IP) Aloud - New Podcast Available at Rethink(IP)

There is a new podcast available over at Rethink(IP):

We are proud to announce that our newest podcast is available for your down loading and listening pleasure – Rethink(IP) Aloud #6. 

The audio is approximately 47 minutes long and the file is a 41.1MB file.  If you want to grab the RSS feed and subscribe to the Rethink(IP) Aloud podcast – you can get it via FeedBurner at Rethink(IP) Aloud Podcast.

This podcast is the audio portion of Matt’s lecture on U.S. patent reform in 2006 and covers the efforts happening in the 109th Congress and at the Supreme Court and USPTO.  We posted the video of the presentation over at Phosita last week and received many requests for an audio only version.  Matt’s PowerPoint slides to go along with the Patent Reform lecture are also available.

The intro and ending music is “Patricia” by Billy May and his Orchestra off the Ultra-Lounge Vol. 11 album.

Happy father’s day!

 

Posted by Douglas Sorocco at 02:11 PM.
Permalink: Rethink(IP) Aloud - New Podcast Available at Rethink(IP)

IP LEGISLATION

June 12, 2006

patent reform lecture - j. matthew buchanan

A couple of weeks ago, the IP Section of the Oklahoma Bar Association conducted its annual CLE seminar at Tanglewood Resort on Lake Texoma.  My partner, Nick Rouse, was in charge of the weekend and did a phenomenal job.

The lecturers were top notch and although I am a bit biased, I would have to say that Matt Buchanan was one of the two best speakers over the course of the weekend.  Matt blogs about patent reform issues and patent legislation over at Promote the Progress.

Matt spoke on the recent patent reform efforts underway in the United States and the impact any such reform may have on practitioners and patentees. 

Considering the timeliness and importance of Matt’s talk, I recorded the lecture and DCR is presenting it here for your review and comment. 

The video stream can be viewed below (or you can grab it at Google Video as a stream, as a download or as a video iPod download).  The PowerPoint slides are available for download as a PDF file (2.2MB).

Posted by Douglas Sorocco at 01:42 PM.
Permalink: patent reform lecture - j. matthew buchanan

IP LEGISLATION

April 14, 2006

What the heck is a patent troll?

What is a patent troll?

Everyone in the patent community has a general idea of what makes a patent owner a troll, but I can't find a litmus test definition anywhere.  If you've got one, please put it in the comments.  I'm looking for a definition that allows me to decide if a particular patent owner is, or is not, a troll. 

Based on several popular media accounts of NTP (of BlackBerry fame) and other famous trolls, I have the following questions relating to the term:

Must a patent owner eschew commercialization of the claimed invention to qualify as a troll?

Are you a troll before you sue someone who has commercialized the claimed invention?  Or are you magically deemed a troll once you seek to enforce your patent?  Are preliminary licensing negotiations enough to earn the moniker, or must you actually file suit?

Can you be a troll on the day a patent issues only later to earn the right to shed the term, perhaps when you start commercializing the invention?

Can an inventor be a troll?  Or is there some sort of requirement that the patent owner acquired the patent from the inventor or some other previous owner?

Is it enough if that acquisition was part of an ordinary business transaction, or must it have been through some sort of "fire sale" or bankruptcy proceeding, as some have suggested?

There seems to be consensus on a threshold requirement that, to qualify as a troll, the patent owner must not have made use of the invention.  But, even that is vague.  In my mind at least, it raises more questions than answers.  What the heck does "make use of the invention" mean?  Must the invention have been commercialized?  To what extent?  Do initial commercialization activities qualify as 'commercialization', such as market testing, prototyping, and the like, or is actual shipment of product and/or provision of service required?  Could a real troll duck the term if legally advantageous by doing some quick and dirty rapid prototyping?  Market surveys?

Maybe the Supreme Court will fill the gap with its forthcoming decision in eBay v. MercExchange.  A little dicta could go a long way on this issue.  Let's just hope we don't see an "obscenity style" definition.

 

Posted by J. Matthew Buchanan at 01:07 PM.
Permalink: What the heck is a patent troll?
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IP LEGISLATION

January 28, 2006

rep. tom davis demands uspto quality improvements - what has RIM wrought?

Rep. Tom Davis (R-Va.) asked the director of the U.S. Patent and Trademark Office on Friday if the controversy over who controls the patents for Research in Motion (RIM) BlackBerry technology indicates that USPTO needs to reform how it examines patent applications, according to a press release (PDF Version).

“In today’s fast-moving world, America’s economy and our ability to compete in a global marketplace are dependent on an efficient and competent system to bring new technological developments to the consumer market,” Davis said in a press release. He is chairman of the House Government Reform Committee.

In a letter to USPTO Director Jon Dudas (PDF copy), Davis questioned whether the agency needs to refine the patent process. Davis added that he is ready to help improve the process.

“If adequate resources were utilized to determine the initial validity of the patents, this controversy could have been avoided,” he wrote in the letter. “Additionally, if RIM’s re-examination requests had been acted upon more expeditiously, the current uncertainty could have been resolved long before it threatened critical service to the government and consumers.”

“The current patent controversy involving BlackBerry service is but one signal that our economy and ability to compete in a global economy are dependent on an efficient and competent system,” Davis wrote. “A vital component of that system is a well-funded and efficient Patent and Trademark Office.”

The answer is pretty simple actually, Congressional appropriators have to stop raiding the excess fees (i.e. the “inventors tax”) raised by the USPTO and instead let them be used for improving service, quality and examination time.  Simple solution – hard to carry out.

Posted by Douglas Sorocco at 01:35 PM.
Permalink: rep. tom davis demands uspto quality improvements - what has RIM wrought?

IP LEGISLATION

December 05, 2005

announcing ... J. Matthew Buchanan - of counsel to Dunlap Codding & Rogers

You know the old saying… save the best for last. 

It is my utmost pleasure to be able to finally and “officially” announce that J. Matthew Buchanan has joined Dunlap Codding & Rogers, P.C. 

I know that others (including Matt, Steve, Dennis and Kevin, among many other well wishers) have already beat me to the punch, but since December 1 was Matt’s first official day “on board” – I wanted to wait to make the announcement over here at PHOSITA. 

Many of you know of my collaboration with Matt and Steve Nipper over at Rethink(IP) – but what you may not know is that the three of us began collaborating with one another on different legal matters, practice tips and general career issues at about the same time. 

We all knew that we wanted to continue practicing law – it is truly what we love to do – but at the same time we believed that we could begin to explore the nature of intellectual property law and how legal services are provided to clients. Hence the birth of Rethink(IP) – a place where we can rant and post about the practice of intellectual property law. 

As you can imagine, many of the things we discuss “off blog” are where we are most interested and one of the truly great things to come out of Rethink(IP) was the ability to discuss our individual practices with someone outside our firms – without fear of competition or self-interested advice being given.

One of the things that struck me almost immediately is that we all have the same philosophy and desire to serve our clients.  Matt especially — Matt is the kind of lawyer that we all want to be – loyal to a fault, insightful, pragmatic and wickedly inquistive and knowledgeable. 

I always had in the back of my mind that Matt was one of “those people” I wanted to associate with — little did I know that I would get the opportunity much sooner than I had ever expected.  When Matt mentioned to me this past summer that he was interested in exploring other career opportunities, I knew that there was an opportunity for us to begin putting some of the things we both believe in – service, commitment and excellence – into practice. 

So, after thousands of conversations – Matt agreed to come on board with us at DCR.  I doubt Matt ever expected to be “of counsel” to a firm started in Oklahoma in the 1950s – but as we have grown to include an office in Washington D.C. and our clientele spans the globe, it is only fitting that our newest and tech-saviest firm member is keenly aware of international patent developments and legislation. 

Matt is also spearheading our insourcing and outreach efforts – an experiment surrounding the concept of leveraging the lower overhead of “one off” midwestern cities to a client’s advantage.

Overall, DCR is extremely excited and hopeful about Matt joining our firm.   I think DCR is a perfect fit for Matt, and I likewise believe that Matt will be someone who helps further position DCR at the forefront of intellectual property law firms.

And as Matt has said over and over the past couple of months, “… any place you can eat five types of smoked animals on one plate, can’t be all that bad!”

Posted by Douglas Sorocco at 07:16 AM.
Permalink: announcing ... J. Matthew Buchanan - of counsel to Dunlap Codding & Rogers

IP LEGISLATION

December 04, 2005

thank god for patent sanity... mercexchange versus ebay editorial

Looks like the Los Angeles times Editorial Board is excited that sanity may soon reign over the patent system.  I just cringe when I start reading articles that start out like this:

PATENT LAWS MAY BE AN inventor's best friend, giving someone with a groundbreaking idea the means to capitalize on it. But on many levels, the U.S. patent system is profoundly flawed. Too many patents are issued for "innovations" that are obvious, vague or already in wide use. Too many patent holders try to extend their claims to devices and services that weren't even contemplated when the patents were granted. And it's a difficult, costly exercise to overturn a questionable patent after it has been awarded.

Overall the editorial’s purpose is to inform about the Supreme Court’s decision to review the MercExchange v. Ebay case regarding when it is permissible and advisable to grant injunctions.  I do think, however, that the editorial board’s bias is clear when they say that:

The courts may be right in this case to stop EBay from using technology patented by MercExchange, whose attempt to launch an online auction service fizzled several years ago.

Fizzled – as opposed to Ebay’s success, I presume.  It appears that the editorial board is basing the merit of MercExchange’s patent infringement claims on who or what best commercialized the invention – not who thought of it first.  Would it be appropriate to penalize MercExchange because they couldn’t raise the capital funding or execute the business plan?  Isn’t the patent system supposed to reward the inventor for their inventions – not those who can execute on an idea?

I guess we will have to wait and see what the Supreme Court has to say about the issue.

Posted by Douglas Sorocco at 05:55 PM.
Permalink: thank god for patent sanity... mercexchange versus ebay editorial
| Comments (4)

IP LEGISLATION

November 08, 2005

Engines of Growth - Report of the Economic Contributions of the US Intellectual Property Industries

According to an article entitled Content must catch up with new-media world, the real world ramifications of “rampant” intellectual property theft are shocking:

A study released by NBC Universal on Monday put a fine point on just what is at risk not only to media and entertainment industries but also to the overall U.S. economy. "Engines of Growth: Economic Contributions of the U.S. Intellectual Property Industries," (PDF) commissioned by NBC Universal, yielded "shocking" conclusions according to NBC Uni chairman and CEO Bob Wright regarding copyrighted music, books, TV shows, films and patents.

The piracy of intellectual-copyrighted products is costing the U.S. about $250 billion annually. Globally, it is estimated that more than one-third of all software is pirated. Domestically, what hits home is that 40% of the growth of U.S. private industry contributing to the all-important gross domestic product is from intellectual property-related industries. In other words, this still problematic matter is a U.S. economy-buster.

Well worth the read, whether your are pro-IP or a copyfighter at heart – thanks to IPcentral for hosting the PDF. 

I would suggest reading the report in tandem with Nicholas Carr’s blog post entitled “The Amorality of Web 2.0” – why you may ask?  Well, take this excerpt for example:

But the yearning for a higher consciousness didn't burst with the bubble. Web 1.0 may have turned out to be spiritual vaporware, but now we have the hyper-hyped upgrade: Web 2.0.

. . . .

The promoters of Web 2.0 venerate the amateur and distrust the professional. We see it in their unalloyed praise of Wikipedia, and we see it in their worship of open-source software and myriad other examples of democratic creativity. Perhaps nowhere, though, is their love of amateurism so apparent as in their promotion of blogging as an alternative to what they call "the mainstream media."

To those of you copyfighters who want everything free, open and accessible without limitations on access – I have a question:

Is free information that is incorrect, inaccurate, incomplete and incoherent really free?

Just asking.

Posted by Douglas Sorocco at 09:58 PM.
Permalink: Engines of Growth - Report of the Economic Contributions of the US Intellectual Property Industries
| Comments (5)

IP LEGISLATION

September 07, 2005

ip memes' newest members

IP Memes will include a couple of new contributors in the next issue due out on September 26 - namely, Matt Buchanan of the Promote the Progress blog and myself.

If you're not familiar with The TechnoLawyer Community...you should be. TechnoLawyer provides a number of great newsletters (including IP Memes), and a forum where "technolawyers" can ask one another questions about technology (i.e., "has anyone every used _______ and what did you think about it?"). It is an excellent resource for all tech attorneys, and has an archive which I have searched from time to time with questions (what scanner to purchase, whether I should upgrade to the latest version of __________, etc.). The best part? It is free. Try it, if you don't agree you can easily unsubscribe.

Over the past year Steve Nipper of The Invent Blog has been writing the IP Memes newsletter. IP Memes is described as “a weekly newsletter that explores emerging technology-related intellectual property issues — or “memes” as we call them. Think of it as your coal-mine canary for intellectual property issues.”

Steve has been doing a solid job this past year - Matt and I are both thrilled to be asked to join him to continue IP Memes' tradition of excellence and join some of the IP community's finest commentators and thinkers - including Dennis Kennedy, Denise Howell, Gail Standish, Kevin Grierson and Kurt Calia - all of whom, are IP Memes alumni.

Click the image above to be taken to the signup form for IP Memes and yes, it is just another example of the collaboration taking place over at Rethink(IP). You never know where we might "pop up" next.

Posted by Douglas Sorocco at 08:06 PM.
Permalink: ip memes' newest members

IP LEGISLATION

August 31, 2005

Pre-Appeal Brief Conference

You've probably heard about the Pre-Appeal Brief Conference by now. If not, you can find out all about it through one of the PTO Notices now available at Rethink(IP) - RSS Mojo.

It seems like a good way to save some time and money during the appeal process. However, there must be some drawbacks. Does anyone have any experience with or opinions about this pilot program?

Posted by Melody Wirz at 08:36 AM.
Permalink: Pre-Appeal Brief Conference
| Comments (1)

IP LEGISLATION

August 25, 2005

a patent troll by any other name....

Sometimes you get a sort of zen when reading through your RSS aggregator.  Something similar to randomly listening to your iPod and getting opera followed by glam metal from the 80s.  It just fits together so well that you smile and think “that’s good”.

 

 

This morning these two items were huddled together in one of my FeedDemon watchlists:

 

• Patent Act of 2005 - *Draft* amendment circulated
  
  There has been no formal action on the Patent Act of 2005 (H.R. 2795) since its initial referral to the House Subcommittee on Courts, the Internet, and Intellectual Property. Representative Smith, the original sponsor of the bill, is currently circulating a draft amendment in the form of a substitute.  As of today, this amendment (substitute bill) has not been formally introduced.  The bill as introduced remains the working form of the bill.
   
  
• Myhrvold Claims Patent Problem Is Myth
  
  Not only have fears of a patent crisis been greatly exaggerated, but the U.S. patent system is functioning quite well, Microsoft's former chief technologist said Tuesday. Nathan Myhrvold, now the chief executive of a start-up company that exists to create and license inventions, told a conference here that "before you get worked up about this gigantic problem, you ought to see what the facts are."

Photo of The Glam Rock Band

Posted by Douglas Sorocco at 08:03 AM.
Permalink: a patent troll by any other name....

IP LEGISLATION

August 17, 2005

What's the Big Deal About Patent Reform, Anyway?

Unless you're a major IP dork (like me), you probably haven't been following all the different versions of currently pending patent legislation. There has been little coverage of the issues in the media, and most of your friends probably don't even realize that the patent system as we know it may be changing drastically. Well, maybe "drastically" is a little strong, but to a patent attorney these are major changes.

So, if you want to be informed, you can read the entire 63-page proposed legislation (HR 2795 IH), or you can get the 4-page Cliffs Notes version: Patent Reform and Why You Should Care.

It isn't too late to contact your representatives in the House or the Senate and let them know how you feel about the changes. Since few people are even aware of the issue of patent reform, your voice can be heard.

For the Okies, you can contact your representatives through the internet. If you aren't sure who your Congressman is, go here first.

• Tom Coburn
• James Inhofe
• John Sullivan (1st District)
• Dan Boren (2nd District)
• Frank Lucas (3rd District)
• Tom Cole (4th District)
• Ernest Istook Jr. (5th District)

Posted by Melody Wirz at 04:02 PM.
Permalink: What's the Big Deal About Patent Reform, Anyway?

IP LEGISLATION

May 11, 2005

Oklahoma/Texas Intellectual Property CLE Weekend

The Intellectual Property Section of the Oklahoma Bar Association will be presenting it’s annual CLE program at the Tanglewood Resort on Lake Texoma (satellite map) the weekend of June 3–5, 2005.  The PDF brochure is available here.

Along with Pete Peterson’s patent law year-in-review (which is always the highlight of the weekend), featured topics will include a copyright law year in review, a planel discussion on the state of technology transfer in Oklahoma, trademark enforcement in cyberspace and the risks associated with open source software.

Registration is $345 for Oklahoma Bar members and $370 for nonmembers.  The weekend has been approved for 8 hours of Oklahoma CLE credit and Texas approval is pending.

Tanglewood is a great venue for the weekend, the information looks to be extremely interesting and timely and the Board members of the Intellectual Property Section have numerous family and social activities planned – including a golf tournament Saturday afternoon.

 

Posted by Douglas Sorocco at 12:44 PM.
Permalink: Oklahoma/Texas Intellectual Property CLE Weekend

IP LEGISLATION

May 06, 2005

US appeals court tosses FCC's broadcast flag rule

From the Washington Post:

A U.S. appeals court on Friday struck down a Federal Communications Commission rule designed to limit people from sending copies of digital television programs over the Internet.

The U.S. Court of Appeals for the District of Columbia said the FCC had "exceeded the scope of its delegated authority" with the 2003 rule, which would have required TV set manufacturers to start using new anti-piracy technology by July 1.

The full 34-page opinion is available here.

Posted by Melody Wirz at 04:30 PM.
Permalink: US appeals court tosses FCC's broadcast flag rule

IP LEGISLATION

April 27, 2005

congress is washing your DVD's mouth out with soap

President Bush signed into law a bill (S. 167 and H.R. 357 entitled the Family Entertainment and Copyright Act of 2005) that is intended to protect technology (and especially the companies which have developed and employ the technology) which strips DVDs of material deemed offensive by parents. 

Both sides of the issue, pro and con, have weighed in on this legislation and I doubt that this is the end of the battle.  How the courts reconcile this legislation with the current copyright laws and free speech guarantees will be interesting.

My take: more special interest legislation run amok.

 

Posted by Douglas Sorocco at 05:55 PM.
Permalink: congress is washing your DVD's mouth out with soap
| Comments (2)

IP LEGISLATION

December 13, 2004

Inventor Tax Update

As many of you already know, the fee increase for the USPTO is official. As of last Wednesday, fees have increased again. That's two fee increases in a little over 2 months. President Bush signed the Consolidated Appropriations Act for 2005 on December 8, 2004, effective immediately.

Unfortunately for inventors, these fees will continue to fund non USPTO programs.

In a current lawsuit, one inventor claims this is unconstitutional. The U.S. Constitution states "The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." This inventor reasons that fee diversion is actually a tax on inventors, which fails to promote progress. Since the fees paid by inventors currently provide funding the general welfare, this is an interesting position.

For more information on the lawsuit (which was filed in 2001), click here.

For prior PHOSITA postings on the legislation and related issues, click on the appropriate link below:

• Inventor's Tax - November 18, 2004
• Another USPTO Fee Increase? - November 11, 2004
• Tech Lobbyists Spending Millions - May 20, 2004
• Patent Office Revised Fee Chart - May 3, 2004
• Senate Judiciary Committee Passes PTO Anti-Fee Diversion Bill - April 29, 2004
• Patent Office User Fee Diversion - March 8, 2004
• Higher Patent Office Fees? Interesting - February 23, 2004
• President Bush's Budget Patent Friendly - February 3, 2004

Posted by at 09:48 AM.
Permalink: Inventor Tax Update

IP LEGISLATION

November 20, 2004

outsourcing and trade secret issues

Outsourcing is a highly contentious and potentially cost-saving measure that is constantly in the news these days.  Sending work off-shore (or, more specifically, outside the U.S.) provides a company the benefits of oftentimes highly educated labor forces that can complete specific tasks at substantially reduced costs.

Outsourcing is rife with potential IP conflicts and pitfalls.  Computerworld has posted an in-depth look at one such pitfall: outsourcing and its effect on trade secrets.

Taking work offshore may cut costs, but it still comes with a not-so-hidden price. Asian countries, including the No. 1 outsourcing destination, India, have weak or untested intellectual property laws, inefficient courts, and financial and public records mechanisms that make it difficult to conduct employee background checks.

That doesn't mean that intellectual property sent to reputable offshore developers is more likely to be stolen and sold than it is here. Sophisticated U.S. and Canadian companies have lost valuable intellectual property in their home countries because of dishonest employees and hackers. Employees in India and elsewhere aren't any more dishonest than workers here. But because overseas court systems and laws aren't as strong as in those the U.S. and evaluating potential employees is more difficult overseas, the odds of intellectual property theft could be higher.

U.S. businesses are also sending valuable code to regions of the world with high piracy rates. In China, for instance, 92% of the software installed on computers is pirated, according to a recent study by IDC and the Business Software Alliance. In India, the piracy rate is 73%, and in the U.S., it's 22%, the lowest rate in the global study.

Those jumping on the outsourcing band wagon may want to consider some of the issues outlined in this article.  

 

Posted by Douglas Sorocco at 09:06 AM.
Permalink: outsourcing and trade secret issues

IP LEGISLATION

November 11, 2004

Another USPTO Fee Increase?

As you may know, fees to the USPTO increased on October 1, 2004. So you may think it�s too soon for another increase. The U.S. House of Representatives disagrees. In fact, the House voted to increase fees again on March 3, 2004 (before the current increase even took effect). It isn�t law yet, though. It has to pass the Senate first. That could happen as early as Tuesday. According to www.gpoaccess.gov, the legislation is on the Senate calendar (no. 487) for November 16, 2004. If it does pass, it will be effective fiscal year 2005.

I�ve heard that the bill was supposed to contain a provision to keep fees in the USPTO, rather than allowing them to be diverted to other governmental functions. But, I couldn�t find anything to support this assertion. However, there are provisions that would make other changes. For example, reduced fees for electronic filing.

The bill, H.R. 1561 is called the "United States Patent and Trademark Fee Modernization Act of 2004" and can be found at thomas.loc.gov.

My printout of the bill is 8 pages long, but I�ll try to summarize for you:

• Regular filing fees will all be decreased (on average by about 50%)
• Excess claim fees will all increase (on average by about 100%)
• An examination fee will be added for regular applications (on average about $150)
• Issue fees will all increase (on average by about 30%)
• The first maintenance fee will decrease slightly (to $900 from $940), but the second and third will each increase (from $2,150 to $2,300 and from $3,320 to $,3800 respectively)
• The USPTO will charge a search fee for all regular applications ($500 for utility, and $300 for design and plant), which the director may increase by 20% a year for 3 years.
• Filing fees will be reduced by 75% when electronic filing is used.
• The director will be required to conduct a study of the effect of patent fees on the ability of small entities to file applications.
• Generally, other fees will increase by similar amounts as those listed above.

Generally, the minimum USPTO fees for a utility patent from application to expiration will increase from $8,570 to $9,400 ($9,175 with electronic filing). 7-10% may not seem like a large increase, but this would be the second increase in two years.

If you have an opinion about any of the proposed changes, let your senator know before Tuesday. You can find contact information at www.senate.gov.

Posted by at 10:30 AM.
Permalink: Another USPTO Fee Increase?

IP LEGISLATION

November 03, 2004

IP FIVE-BY-FIVE - THE GOOD, THE BAD, AND THE UGLY

Matt Homann over at the The [Non]Billable Hour blog, regularly hosts a question/answer series famously known as the  "Five-by-Five".  For each Five-by-Five, Matt solicits five experts in an area of the law to give five responses to a specific question about the law. 

The most recent episode is the IP Edition.  Matt asked five intellectual property law bloggers the question: What five things would you change about IP law and/or practice? 

Matt graciously asked me to participate and here are a couple of comments from each of the bloggers:

Stephen Nipper: You are your brother's keeper.  One of the things IP practitioners tend to do is ignore our responsibility to spend time educating non-IP attorneys as to the basics of IP law.  Lets face it, our colleagues (understandably) aren't typically very good at issue spotting when it comes to IP issues.  The result is countless pain and suffering (and much gnashing of teeth).  Solution?  Go teach a CLE to general practitioners, blog, write articles for your local bar journal, start writing a newsletter, etc.  You will be rewarded.

Douglas Sorocco: Everyone needs to take a deep breath regarding software patents.  The end of the world is not near, the seas are not going to be flooding our coastal cities and software  patents are not stifling development of new and useful tools and processes.  Software developers are simply going to have to become better business people and accept that nothing is free and patent clearance searches must be made an integral part of the development process.

Martin Schwimmer: I also think that the development of the UDRP is an astounding success in that it represents a model of dispute resolution.  There are times that a trademark owner has to walk away from the misuse of a mark in a domain because litigation will cost $50,000, but a UDRP can cost under $3000. The UDRP is not a perfect solution, but it has absolutely achieved what it set out to do.  I still do a lot of them, probably one a week.  I think the UDRP may pave the way to other forms of alternate dispute resolution for IP problems.

Dennis Crouch: Law Firm Life: Billing Requirements:  Billing expectations at most large law firms are simply unreasonable.  They disrupt family life and tend to destroy any solid mentoring program.  Today, however, I�m upset with how the long hours spent billing really cramp the ability of associates to begin to build a practice of their own.  The hour requirements were raised after the salary bump several years ago.  Now, there are rumors that another salary jump is in store for BigLaw associates.  In my opinion, rather than increasing associate salaries, firms should compete based on hours.  

Mark Partridge: Eliminate rights in gross mentality:  My second change, admittedly related to the first, would be to eliminate the "rights in gross" mentality. By this, I mean the notion that a trademark creates an absolute and exclusive right. One sees this tendency on both sides of the rights issue. A trademark owner may have the view that no one else may use its mark for any purpose. The junior user may believe there is no infringement if the mark it adopts is not identical to another's trademark.  Both views are mistaken, of course. The rationale for protecting trademarks is preventing deception of the public, not to protect a right in gross. Again the effect of the marks in question on the public mind is critical. Some uses of another's mark are permitted because they do not deceive the public. The use of nonidentical marks on related goods may still be an infringement because they deceive the public.

These are the comments I found most interesting, you should visit The [Non]Billable Hour blog for the full posts.  Each authors' blog can also be seen on the web: Nipper, Sorocco, Schwimmer, Partridge, Crouch, and Homann 

Posted by Douglas Sorocco at 04:41 PM.
Permalink: IP FIVE-BY-FIVE - THE GOOD, THE BAD, AND THE UGLY

IP LEGISLATION

October 15, 2004

Patents in Developing Countries: Different Standards?

I've noticed several stories in the news lately that deal with patents and how they should be treated in developing countries.

One such article, entitled "Canadian Drugs Patent Law for Poor Countries Released for Comment," discusses proposed legislation in Canada.  This legislation would allow drugs produced in Canada to be exported to developing countries, and sold at a discount.  This article states that "[t]he Canadian regulation is the first attempt internationally to implement a WTO General Council Decision of 30 August 2003 to waive patent rights to permit developing countries to import less expensive versions of high-priority medicines from other countries."  The idea is to allow drugs for HIV/AIDS (among others) to be sold to countries who couldn't afford the full-price.

Two other articles deal with the claim that strong intellectual property rights in developing countries tends to inhibit development.

"Patents Too Long" expresses the viewpoint held by the Honourable Kerrie Symmonds, Minister in the Ministry of Foreign Affairs and Foreign Trade for Barbados.  He believes that a patent term of 15 years is preferable to a 20 year term.  In his proposal, the 15 year term could be extended by five years.

"Intellectual property rights could harm progress: Developing countries feel brunt of the law" considers the same issue in Lebanon.  The president of the Lebanese Information and Technology Association recently stated "we are afraid the intellectual-property-rights system could negatively affect the developing countries ability to catch up with technological development."

While it's true that developing countries may appear to benefit from weak IP protection, I'm not sure this is the right approach.  This benefit to the developing countries would be at the expense of IP owners.  If IP owners cannot reap the reward of their efforts, the efforts will likely decrease.  We must strike a balance to determine the optimum protection time.  If the protection time is too short, investments cannot be returned and innovation is inhibited.  If it's too long, one innovative step gives long-term profits, creating little incentive to keep looking for another innovation.  The U.S. has found a balance at about 20 years.  Other countries must find this balance as well.  But, they must consider the fact that either extreme will inhibit the innovation necessary for growth.

Posted by at 09:30 AM.
Permalink: Patents in Developing Countries: Different Standards?

IP LEGISLATION

October 13, 2004

ashcroft on DOJ IP taskforce

Attorney General John Ashcroft announced on Oct. 13, 2004 the recommendations of the Justice Department's Intellectual Property Task Force.  The task force is charged to examine all aspects of how the Department handles intellectual property issues and report on proposals for future activity.

"Intellectual property theft is a clear danger to our economy and the health, safety, and security of the American people," said Attorney General Ashcroft. "The enforcement of our intellectual property laws is among the highest priorities of the Justice Department, and I created the Intellectual Property Task Force to explore ways for us to strengthen our protection of the nation's valuable intellectual resources. With the recommendations put forward by the Task Force, the Department is prepared to build the strongest, most aggressive legal assault against intellectual property crime in our nation's history."

"I am confident that our nation's creative and intellectual resources will be better protected when the recommendations of the Task Force report are implemented. The Justice Department will have additional tools to fight movie theft and product counterfeiting," said U.S. Attorney Yang. "With the increased protection and new law enforcement resources, our nation's intellectual property will continue to enhance our daily lives and play a role in the continued growth of the American economy."

The IP task force report can be found here in PDF.

Posted by Douglas Sorocco at 05:55 PM.
Permalink: ashcroft on DOJ IP taskforce

IP LEGISLATION

October 09, 2004

china enacts defense technology patent system

China published a newly-written statute on patents for defense-related technology Saturday, as part of the governments commitment to step up protection of intellectual rights in this field.

The new Statute on Defense Patents was jointly signed by Premier Wen Jiabao and Chairman of the Central Military Commission of the People's Republic of China Jiang Zemin on Sept. 17.

The new provisions will go into force on November 1, replacing the existing Statute on Defense Patents, enacted on July 30, 1990.

The new statute includes five articles and 36 clauses covering all issues involving the application, examination and approval of defense patents.

One of the main differences in the new law is that special agencies will now be designated to help with the application for defense-related patents.

Posted by Douglas Sorocco at 08:42 PM.
Permalink: china enacts defense technology patent system

IP LEGISLATION

October 08, 2004

... and the us state department offers funds for overseas ip training programs

The State Department will spend over $2.5 million on 16 United States Government-sponsored international training programs in various parts of the world to combat piracy and counterfeiting efforts.

Several countries will receive the funds, for example:

Tri-Border Initiative: $100,000

A major obstacle to fighting transnational crime is poor cooperation between enforcement entities across borders. This has been the case with the nations in the Tri-Border region of Paraguay, Argentina, and Brazil. The intersection of these three countries has long been a hotbed of piracy and counterfeiting of all kinds of products. Funding for this project will allow U.S. Department of Justice and U.S. Department of Homeland Security officials to train prosecutors, police, and customs officials from the Tri-Border Region to combat intellectual property crime. By bringing together officials of all three countries, this project will improve intellectual property rights enforcement skills while fostering communication and cooperation, a joint sense of responsibility, and stronger operational efforts to fight intellectual property rights crimes.

Posted by Douglas Sorocco at 08:04 PM.
Permalink: ... and the us state department offers funds for overseas ip training programs

IP LEGISLATION

October 07, 2004

defending IP - what is it worth

Senate Report 108-344, which accompanies the appropriations bill for Commerce, Justice, and State (S.2809), states that:

It is estimated that 50 percent of United States exports now depend on some form of intellectual property protection, compared to less than 10 percent 50 years ago. United States companies lose an estimated $200,000,000,000 to $250,000,000,000 to counterfeiting and piracy each year. Companies' ability to profit from their intellectual property is critical to their growth and, in turn, the health of the United States economy. There is widespread concern -- and the Committee [on Appropriations] agrees -- that not enough is being done to combat the counterfeiting and piracy of American intellectual property. Emphasis added

Another reason why IP (patents, copyrights, trademarks etc) is important.  Strong intellectual property systems enhance competition and grow the economy - they do not stifle it.

Thanks to Promote the Progress for the tip.

Posted by Douglas Sorocco at 02:53 PM.
Permalink: defending IP - what is it worth

IP LEGISLATION

September 27, 2004

Patent Lawsuits Stifle Innovation

From the New York Times

According to a couple of professors, the patent system is broken.  In their forthcoming book, "Innovation and Its Discontents: How Our Broken Patent System Is Endangering Innovation and Progress, and What to Do About It," the duo asserts that a few mistakes in the system have had monumental consequences.

The establishment of a single federal appeals court in the early 1980s was one such mistake, according to the authors.  Another was the change in financing of the USPTO.  Apparently, allowing the office to pay for itself was a bad idea.

The authors point out that as more patents are sought, examiners become more pressed for time.  This reduces the quality of patents issued.  Basically, the easier it is to get a patent, the less the patent is worth.

The authors set out a few goals in the book that seem worthy of consideration.  First, get rid of the notion that a patent examiner only needs a few hours to study relevant technology before making a decision on patentability.  Second, eliminate the uniform approach for all patents.  It makes sense to spend more time and money on inventions that are more important to society.

The authors think it is essential to get more information to examiners.  One way they think this is feasible is to provide incentive for third party involvement.

The authors admit that substantial change will not happen until corporations realize that changes in patent law can impact their profitability as much as tax changes.  Once this happens, the pool of patent lobyists will broaden beyond a few patent lawyers in the D.C. area.

The authors also criticize the litigation of patents, claiming that the money should be spent on the patent application process.  They say that lawsuits place emphasis on the fight over the idea, diverting resources from innovation.

In my opinion, this actually makes sense.  Less litigation would result in a level of certainty with regard to the validity of a patent.  This would, in turn, allow companies to accurately determine the value, without worrying about a later determination of invalidity.

The book comes out in November, and you can pre-order at Amazon.com for $20.37.  It sounds interesting, so I'm adding it to my Christmas list.

Posted by at 06:33 PM.
Permalink: Patent Lawsuits Stifle Innovation
| Comments (2)

IP LEGISLATION

September 17, 2004

US H-1B Visa Cap for 2004-05 fiscal year almost reached

The H-1B U.S. visa is one of the cornerstones of the US scientific and research community.  The H-1B visa is a nonimmigrant classification used by an alien (i.e. non U.S. citizen) who will be employed temporarily in a specialty occupation or as a fashion model of distinguished merit and ability.  Congress has tightened up the number of H-1B visas that are to be issued in the coming years and it appears that the opportunity for the 2004-05 fiscal year may be drawing to a close.

Thanks to the law firm of LeClair Ryan Flippin Densmore for the following informational bulletin relating to H-1B Visas:

The U.S. Citizenship and Immigration Services (�USCIS�) recently announced that as of mid-August it has received 45,900 H-1B visa petitions that will count against the annual cap for the next fiscal year, i.e., October 1, 2004 through September 30, 2005 (�FY 2005�).  As you will recall, Congress mandates that the USCIS approve only 65,000 petitions for new H-1B employment in FY 2005.  Thus, in the next few weeks (if not sooner), we expect the USCIS to announce that it will not accept any new H-1B petitions for first-time employment which are subject to FY 2005 cap. 

Reaching the H-1B visa cap less than one month into the fiscal year is unprecedented.  Unfortunately, it does not appear that there will be a legislative fix (if any) until after the November election. 

Based on this information, we strongly advise employers and employees to file new H-1B petitions as soon as possible and to consider using the Premium Processing program.  In particular, if you have any employees who are currently working in optional practical training as F-1 students, you should file an H-1B petition for them now, even if their employment authorization cards do not expire until next year. 

Please note that the following are not subject to the cap and the USCIS will continue to accept H-1B petitions filed to:

• Extend the amount of time a current H-1B worker may remain in the United States;
• Change the terms of employment for current H-1B workers;
• Allow current H-1B workers to change employers; and
• Allow current H-1B workers to work concurrently in a second H-1B position.

The USCIS will also continue to accept petitions for new H-1B employment where the petitioner/employer is not subject to the annual cap.  To qualify as a �cap exempt� petitioner, the employer must be: (i) an institution of higher education or a related or affiliated nonprofit entity; (ii) a nonprofit research organization; or (iii) a governmental research organization.

For those companies and institutions who rely on H-1B workers -- time is slipping by for such an "unprecedented" occurrence.

Posted by Douglas Sorocco at 05:02 PM.
Permalink: US H-1B Visa Cap for 2004-05 fiscal year almost reached

IP LEGISLATION

August 25, 2004

It's about time: Spammers in the Slammer

I'm not sure if it happened because I wished it, but the e-mail gods are smiling on me today.  Apparently, the justice department is finally enforcing the CAN-SPAM Act of 2003.

According to this FindLaw article, "U.S. law enforcers have arrested dozens in a crackdown on 'spam' e-mail, identity theft and other fraudulent online activity."

Hopefully, this isn't a problem for those poor folks who will no longer be able to find pornography, medicine without a prescription, that great deal on mortgage rates, or how to enlarge various body parts.  Maybe google business will see a sharp increase as a result.

Since wishes are being granted today, maybe everyone will be buzzing about that girl in Oklahoma that won the lottery without even buying a ticket.  Kinda think of it, I deleted an e-mail that said just that.  I sure hope it was actually spam.

Posted by at 04:51 PM.
Permalink: It's about time: Spammers in the Slammer

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August 12, 2004

Britain grants license for human cloning

The BBC reports that Britain granted a license for human cloning yesterday, making it the second country to allow licensing of human cloning.

University researchers hoping to create insulin-producing cells for diabetics now have a license for their work in Britain.

Because embryos must be destroyed to harvest stem cells, embryonic stem cell cloning has been a hot political topic, both in Britain and elsewhere.  The ProLife Party of Britain is considering the prospect of suing.  In the United States, federal funding for stem cell research and cloning is prohibited, and several states also prohibit any embryo cloning.  Opponents include the Vatican, and Life Site.

The BBC article does a good job of explaining how cloning works, as does howstuffworks.com.  Other sites of interest include The Human Cloning Foundation, Advanced Cell Technology, a BBC article "Cloning humans: Can it really be done?," and newscientist.com.

This promises to be a highly debated topic for quite a while, so we should all be aware of the argument each side is making.

Posted by at 08:52 AM.
Permalink: Britain grants license for human cloning
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IP LEGISLATION

June 27, 2004

DON'T TAKE YOUR CAMCORDER TO A THEATER

TAKING A CUE FROM SEINFELD

The U.S. Senate unanimously passed a bill (S1932) cracking down on movie piracy that the motion picture industry says costs Hollywood studios billions of dollars.  The legislation would make it a crime to record movies in theaters or screening rooms and allow prison sentences of as many as three years for a first offense and six years for subsequent convictions. A separate bill the Senate passed unanimously will allow the Justice Department to bring civil copyright- infringement cases. 

Posted by Douglas Sorocco at 04:07 PM.
Permalink: DON'T TAKE YOUR CAMCORDER TO A THEATER

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