Intellectual Property Law

BPAI Gives Green Light to Nixing "Black Box" Software Patents Under 35 USC 112

Posted on November 04, 2009
Ex Parte Rodriguez, Appeal 2008-000693, October 1, 2009 (Precedential Opinion)The application was directed to a computer-based system and method for configuring and verifying a "structurally variable and complex system."  Exemplary claim 1 reads as follows:1...

Patent Officials: "Worst Is Yet To Come"

Posted on October 28, 2009
From today's EurActiv.com:Gerard Torres of the United States Patent and Trademark Office (USPTO) said an analysis of patent filings at his organisation suggests there is usually a lag of about one year between a recession and its effect on patent filings...

USPTO Looks to Reduce "Stress" of Data Delivery, Seeks High-Volume Dissemination for Future

Posted on October 27, 2009
Currently, the USPTO is looking to unload about 2 petabytes (i.e., 2000 terabytes) of patent-related data sets to an outside vendor in an effort to segregate public data from the examiner systems, and to make "virtually all public information from the USPTO accessible on the Internet...

Study Concludes U.S. Would Benefit From EPO-Style Opposition

Posted on October 26, 2009
Professors Stuart J.H. Graham and Dietmar Harhoff published a paper recently that analyzed the potential effects of a post-grant review procedure (opposition) in the U.S. One particularly interesting aspect of their paper is the comparison of litigated U...

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Arti Rai Heads to USPTO; More Patent Reform News

Posted on October 19, 2009
While it has not yet been announced officially, Arti Rai appears to be on her way to becoming the USPTO's next Administrator for External Affairs. In this position Rai will oversee the Office of International Relations , the Office of Congressional Relations and Office of Enforcement...

Kappos to Speak at ACCA Meeting in Boston

Posted on October 16, 2009
The Association of Corporate Counsel (ACC) announced this week that it will feature USPTO Director David Kappos at its 2009 Annual Meeting in Boston next week. Kappos will appear on an interactive panel discussion, ?Meet the USPTO Brass?, on Tuesday, October 20 at 9 am Eastern at the Hynes Convention Center...

Chinese Gov't to Fund Foreign Patent Filings for SMEs

Posted on October 13, 2009
The Chinese Ministry of Finance (MOF) announced today that approximately 100 million yuan ($14.65 million) will be made available to small- and medium-sized enterprises (SMEs) applying for patents abroad. According to one report,SMEs, 95 percent of which are privately-owned, have played an increasingly important role in China's economy over the last several years...

Ranking Government Patents

Posted on October 13, 2009
Government Agencies do not patent heavily, as they account for approximately 1% of all utility patenting per year. Many government agency patenting efforts are more for defensive purposes. However, governments contribute significantly to patenting innovations through funding and grants to both private and public sectors...

Examining Patent Examination

Posted on October 12, 2009
Continuing their earlier work on patent examination and prosecution, professors Mark Lemley and Bhaven Sampat released a draft copy of their paper title "Examining Patent Examinations," which statistically analyzes patent applications filed in the month of January 2001 - the year PAIR was introduced - through April 2006...

USPTO Continuation Rules *DEAD* (More-or-Less)

Posted on October 08, 2009
Today the USPTO announced that it has filed a joint motion with Plaintiff GlaxoSmithKline to dismiss the lawsuit related to continuation rules. From todays' PTO press release:Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property...

First Action Interview Pilot Program Expanded by the USPTO

Posted on October 06, 2009
Lat week the USPTO announced that it is expanding its First Action Interview Pilot Program, where an applicant is entitled to an interview with the patent examiner prior to the first office action on the merits in a new utility application.Previously, the program was limited to two computer-related technology areas, but now includes additional technology areas for a six-month period beginning on October 1, 2009...

USPTO Alert: Software Not Calculating National-Stage Patent Term Adjustments Correctly

Posted on October 01, 2009
The following notice from the PTO is important for any overseas patent filer having recently allowed or issued patents stemming from § 371 applications:The USPTO is in the process of correcting an error in the computer program that it uses to calculate the patent term adjustment that affects patents issuing from international applications entering the national stage as to the United States pursuant to 35 U...

N.D. Illinois Issues Local Patent Rules

Posted on October 01, 2009
From the Northern District of Illinois website:"The judges of the Northern District of Illinois have enacted the Court?s Local Patent Rules to guide the pretrial procedures in patent cases. The Local Patent Rules are effective as of October 1, 2009, and are available on the court?s web site, www...

Judge Michel on the Patent System

Posted on October 01, 2009
On the nomination of Kappos as USPTO Director:I think the selection of David Kappos as the director of the USPTO is the clearest indication of the new administration's appreciation of IP issues . . . This appointment is salutary - Kappos is a highly experienced lawyer with a worldwide perspective and strong management, as well as legal and technical, skills...

"That's One Small Step . . ." Kappos Starts PTO Reform By Tweaking Examiner Productivity Metrics

Posted on October 01, 2009
Yesterday, the PTO published a briefing paper that was provided to the USPTO examining corps (via POPA) on a proposal that would change the "count system" in the USPTO, which is universally blamed as being a large contributor to the current backlog. Under the current count system, examiners are paid using a modified GS schedule and earn more money through productivity "count" incentives...

Do Assignments Require Express Language to Cover CIP Patents?

Posted on September 29, 2009
Gerber Scientific Int'l v. Satisloh AG, No. 3:07-CV-1382, (D. Conn., September 25, 2009, order) (P. Dorsey)Gerber obtained patents via a broadly-worded assignment conveying all "rights, title and interest" in "the inventions covered thereby and any division reissues and extensions thereof...

PTO Extends Comment Period for 101 Interim Examination Instructions

Posted on September 29, 2009
After releasing the interim examination instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101 on August 29, the USPTO issued a notice on Sept. 17 requesting comments from the public. Strangely, the PTO only provided 11 days for the public to submit all comments (Sept...

BPAI: 101 Rejections Shouldn't Be Based on Implication If Hardware is Disclosed

Posted on September 24, 2009
Ex Parte Azuma, Appeal 2009-003902 (BPAI, September 14, 2009)The Appellant filed a patent application which claimed, among other things,?[a] computer program product for causing a computer to translate a text in a first language into a second language, the computer program product comprising: a computer usable medium having computer usable program code embodied therewith...

USPTO Seeking Comments on Interim Patentable Subjet Matter Guidelines

Posted on September 22, 2009
Earlier, the USPTO issued interim examination instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101 (Interim Patent Subject Matter Eligibility Examination Instructions) pending the Bilski decision. According to the USPTO, the Interim Patent Subject Matter Eligibility Examination Instructions will be used by USPTO personnel in their review of patent applications to determine whether the claims in a patent application are directed to patent eligible subject matter under 35 U...

WIPO Report 2009: Recession Hits Patent Filings (But Not So Much In Asia)

Posted on September 21, 2009
WIPO held a two-day international symposium that concluded on September 18, 2009, where over 40 heads of IP offices participated in various discussions on IP issues. One primary focus of the event was to address the need to pool efforts at the international level to address the problem of backlogs in patent applications...

"And We're Off!" - Companies Turning To Congress on Patent Reform Issues

Posted on September 20, 2009
While other issues (i.e., health reform, bailouts) continue to dominate the attention of Congress, it appears that patent reform is coming back on the radar, as a recent letter from 59 tech companies point out that, "[w]hile some versions of the legislation have been improved this Congress, additional improvements are in order to ensure that the end product avoids serious unintended consequences...

Fed. Cir.: Section 121 "Safe Harbor" Provision Does Not Apply to Continuations

Posted on September 17, 2009
Amgen, Inc. v. F. Hoffman-La Roche, Ltd., No. 09-1020 (Sept. 15, 2009)Amgen prosecuted a series of patent applications relating to the production of the protein erythropoietin ("EPO") using recombinant DNA technology. All of the patents stemmed from a common specification disclosed in "the '298 application...

"Patent Troll Tracker" Trial Begins in E.D. Tex.

Posted on September 16, 2009
Anyone who has followed the patent blogs since last year is familiar with the now-defunct "Patent Troll Tracker Blog", penned by Rick Frenkel, who, at the time, was in-house patent counsel for Cisco. When commenting on patent holding company ESN and it's lawsuit against Cisco, Frenkel alleged on the blog that the filing date for that patent suit was changed after ESN's local counsel "called the EDTX court clerk, and convinced him/her to change the docket to reflect an October 16 filing date, rather than the October 15 filing date...

Kappos Gives First Public Address at IPO Annual Meeting

Posted on September 15, 2009
IPO has now concluded its annual meeting here in Chicago, where one of the many highlights was David Kappos serving as the "kick-off" speaker. In his speech (now posted on the USPTO site), Kappos discussed future plans and goals for the USPTO:- Reengineer the examiner count system - "we?re going to have a count system that helps everyone get to the point without requiring two or three RCEs...

Fed. Cir. Chops Back $358M Lucent Verdict; Gives Clinic on "Patent Damages Apportionment"

Posted on September 13, 2009
Lucent Technologies, Inc. v. Gateway, Inc., No. 08-1485 (Sept. 11, 2009)Microsoft appealed the lower court's findings and jury verdict of $358M against Microsoft Corp. for use of its ?pop-up calendar? in Microsoft Outlook. With regard to validity, the court affirmed the lower court's finding that the patent-at-issue was not obvious...

Willfulness Can Still Be Pled Even If Preliminary Injunction Is Not Sought

Posted on September 09, 2009
When the Federal Circuit issued its Seagate decision on willful infringement, the court stated the following on post-filing willfulness:It is certainly true that patent infringement is an ongoing offense that can continue after litigation has commenced...

PatentFreedom To Offer Subscription-Based Reexam Service to Attack NPE Patents

Posted on September 08, 2009
Joff Wild from IAM Magazine attended the CIP Forum 2009 in Göteborg Sweden and provided an interesting report on a presentation given by Dan McCurdy, who is the chairman of PatentFreedom and CEO of Allied Security Trust. In his presentation, McCurdy announced the launch of a new initiative called "Integrity" which will essentially serve as an inter-partes reexam gadfly service against problematic patents owned by NPE's (aka "trolls")...

Gutierrez On Patent Harmonization

Posted on September 03, 2009
Horacio Gutierrez, Corporate Vice President and Deputy General Counsel of Microsoft, posted the following on Microsoft's official blog on Tuesday:Big challenges certainly confront the global patent system: Escalating patent application backlogs; lengthening pendency periods; increasing costs of patent prosecution; dubious patent quality due to the global explosion of prior art and the time allowed to examine applications; and examination inefficiency due to duplication of work by multiple offices...

"Senior Management Changes" at the USPTO; Doll Retires

Posted on September 03, 2009
Today the PTO announced that, after 35 years at the USPTO, Commissioner for Patents John Doll has intends to retire from the agency on October 2, 2009. As a result, David Kappos has nominated longtime USPTO executive Robert (?Bob?) Stoll to the position of Commissioner for Patents, and has named Margaret (?Peggy?) Focarino Deputy Commissioner for Patents...

Now It Begins? Litigation Rumors Surface Over Intellectual Ventures

Posted on September 01, 2009
Intellectual Ventures (IV) has insisted for a long while that its accumulation of patents has nothing to do with patent litigation. In fact, the company has prided itself on not filing any lawsuits, despite the claim that its patent portfolio, comprising 27,000 patents, has brought in over $1B in licensing revenue...

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