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In Crown Packaging Technology, Inc. v. Reexam Beverage Can Co. (March 17, 2009) the Federal Circuit reiterated that the notice provisions of §287 do not apply where the patent is directed to a process or method.
[A] party that does not mark a patented article is not entitled to damages for infringement prior to actual notice. Although Rexam asserted only the method claims of the '839 patent against Crown, the district court dismissed Rexam's counterclaim because the '839 patent also includes unasserted apparatus claims. The district court erred.
The law is clear that the notice provisions of§287 do not apply where the patent is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed.Cir.1983). In Hanson, 718 F.2d at 1082-83, we held that 35 U.S.C. §287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.
In American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523 (Fed.Cir.1993), we explained:
The purpose behind the marking statute is to encourage the patentee to give notice to the public of the patent. The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).
Id. at 1538-39. As the American Medical opinion goes on to explain:
In this case, both apparatus and method claims of the '765 patent were asserted and there was a physical device produced by the claimed method that was capable of being marked. Therefore, we conclude that AMS was required to mark its product pursuant to section 287(a) in order to recover damages under its method claims prior to actual or constructive notice being given to MEC.
Id. at 1539 (emphasis added). In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims. In American Medical, in contrast, "both apparatus and method claims of the '765 patent were asserted." American Medical, 6 F.3d at 1523. Because Rexam asserted only the method claims of the '839 patent, the marking requirement of 35 U.S.C. § 287(a) does not apply Consequently, we reverse the district court's grant of Crown's motion for summary judgment dismissing Rexam's counterclaim for infringement of the ' 839 patent.
Whether the use in question helps fulfill the intention of copyright law to stimulate creativity for the enrichment of the general public, or whether it aims to only "supersede the objects" of the original for reasons of personal profit.Courts are more likely to find fair use where the work is factually-oriented, facts and ideas are separate from copyright—only their particular expression or fixation merits such protection.In general, the less that is used in relation to the whole, e.g., a few sentences of a text for a book review, the more likely that the sample will be considered fair use.Courts often consider two kinds of harm to the potential market of the original work. First, courts consider whether the use in question acts as a direct market substitute for the original work. Second, courts also consider whether potential market harm might exist beyond that of direct substitution, such as in the potential existence of a licensing market.
The 1961 Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law cites examples of activities that courts have regarded as fair use: “quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use in a parody of some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report; reproduction by a library of a portion of a work to replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a lesson; reproduction of a work in legislative or judicial proceedings or reports; incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported.”
Once a petition is granted, the special status applications will be placed on an examiner's special docket prior to the first Office action, on the examiner's amended docket after the first Office action, and will also have special status in any appeal to the BPAI and in the patent publication process. However, petitions to make special under the Green Technology Pilot Program must be filed before December 8, 2010 and the USPTO will accept only the first 3,000 petitions, provided that the petitions meet several requirements, including:
If applicant files a petition to make special under the Green Technology Pilot Program that does not comply with the requirements set forth in the notice, the USPTO will notify the applicant of the deficiency by issuing a notice and applicant will be given only one opportunity to correct the deficiency within the longer of one month or thirty days. Otherwise, tithe application will not be eligible for the Green Technology Program. The time period for reply is not extendable under 37 CFR 1.136(a).
The following is a list of the eligible classifications:
A. Alternative Energy Production
1. Agricultural waste (USPC 44/589).
2. Biofuel (USPC 44/605; 44/589).
3. Chemical waste (USPC 110/235259, 346).
4. For domestic hot water systems (USPC 126/634680).
5. For passive space heating (USPC 52/173.3).
6. For swimming pools (USPC 126/ 561568).
7. Fuel cell (USPC 429/1246).
8. Fuel from animal waste and crop residues (USPC 44/605).
9. Gasification (USPC 48/197R, 197A).
10. Genetically engineered organism (USPC 435/252.3252.35, 254.11254.9,257.2, 325408, 410431).
11. Geothermal (USPC 60/641.2641.5; 436/2533).
12. Harnessing energy from man-made waste (USPC 75/958; 431/5).
13. Hospital waste (USPC 110/235 259, 346).
14. Hydroelectric (USPC 405/7678; 60/495507; 415/25).
15. Industrial waste (USPC 110/235259, 346).
16. Industrial waste anaerobic digestion (USPC 210/605).
17. Industrial wood waste (USPC 44/589; 44/606).
18. Inertial (e.g., turbine) (USPC 290/51, 54; 60/495507).
19. Landfill gas (USPC 431/5).
20. Municipal waste (USPC 44/552).
21. Nuclear powerinduced nuclear reactions: processes, systems, and elements (USPC 376/all).
22. Nuclear powerreaction motor with electric, nuclear, or radiated energy fluid heating means (USPC 60/203.1).
23. Nuclear powerheating motive fluid by nuclear energy (USPC 60/644.1) Photovoltaic (USPC 136/243265).
24. Refuse-derived fuel (USPC 44/552).
25. Solar cells (USPC 438/57, 82, 84,85, 86, 90, 93, 94, 96, 97).
26. Solar energy (USPC 126/561714; 320/101).
27. Solar thermal energy (USPC 126/561713; 60/641.8641.15).
28. Water level (e.g., wave or tide) (USPC 405/7678; 60/495507).
29. Wind (USPC 290/44, 55; 307/6466, 8287; 415/2.1).
B. Energy Conservation
1. Alternative-power vehicle (e.g.,hydrogen) (USPC 180/2.12.2, 54.1).
2. Cathode ray tube circuits (USPC 315/150, 151, 199).
3. Commuting, e.g., HOV, teleworking (USPC 705/13).
4. Drag reduction (USPC 105/1.11.3; 296/180.1180.5; 296/181.5).
5. Electric lamp and discharge devices (USPC 313/498512, 567643).
6. Electric vehicle (USPC 180/65.1;180/65.21; 320/109; 701/22; 310/1310).
7. Emission trading, e.g., pollution credits (USPC 705/3545).
8. Energy storage or distribution (USPC 307/3841; 700/295298; 713/300340).
9. Fuel cell-powered vehicles (USPC 180/65.21; 180/65.31).
10. Human-powered vehicle (USPC 180/205; 280/200304.5).
11. Hybrid-powered vehicle (USPC 180/65.2165.29; 73/35.0135.13, 112115, 116119A, 121132).
12. Incoherent light emitter structure (USPC 257/79, 82, 8890, 93, 99103).
13. Land vehicle (USPC 105/4961 (electric trains); 180/65.165.8 (electric cars)).
14. Optical systems and elements (USPC 359/591598).
15. Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/3246).
16. Static structures (USPC 52/309.1309.17, 404.1404.5, 424442, 783.1795.1).
17. Thermal (USPC 702/130136).
18. Transportation (USPC 361/19, 20, 141, 152, 218).
19. Watercraft drive (electric powered) (USPC 440/67).
20. Watercraft drive (human powered) (USPC 440/2132).
21. Wave-powered boat motors (USPC 440/9).
22. Wind-powered boat motors (USPC 440/8).
23. Wind-powered ships (USPC 114/ 102.1115).
C. Environmentally Friendly Farming
1. Alternative irrigation technique (USPC 405/3651).
2. Animal waste disposal or recycling (USPC 210/610611; 71/1130).
3. Fertilizer alternative, e.g., composting (USPC 71/830).
4. Pollution abatement, soil conservation (USPC 405/15).
5. Water conservation (USPC 137/78.278.3; 137/115.01115.28).
6. Yield enhancement (USPC 504).
D. Environmental Purification, Protection, or Remediation
1. Biodegradable (USPC 383/1; 523/124128; 525/938; 526/914).
2. Bio-hazard, Disease (permanent containment of malicious virus, bacteria, prion) (USPC 588/249249.5).
3. Bio-hazard, Disease (destruction of malicious virus, bacteria, prion) (USPC 588/299).
4. Carbon capture or sequestration (USPC 95/139140; 405/129.1129.95; 423/220234).
5. Disaster (e.g., spill, explosion, containment, or cleanup) (USPC 405/129.1129.95).
6. Environmentally friendly coolants, refrigerants, etc. (USPC 252/7179).
7. Genetic contamination (USPC 422/143).
8. Hazardous or Toxic waste destruction or containment (USPC 588/1261).
9. In atmosphere (USPC 95/5781, 149240).
10. In water (USPC 210/600808; 405/60).
11. Landfill (USPC 405/129.95).
12. Nuclear waste containment or disposal (USPC 588/120, 400).
13. Plants and plant breeding (USPC 800/260323.3).
14. Post-consumer material (USPC 264/36.136.22, 911921; 521/4049.8).
15. Recovery of excess process materials or regeneration from waste stream (USPC 162/29, 189191; 164/5; 521/4049.8; 562/513).
16. Recycling (USPC 29/403.1403.4; 75/401403; 156/94; 264/37.137.33).
17. Smokestack (USPC 110/345; 422/900).
18. Soil (USPC 405/128.1128.9, 129.1129.95).
19. Toxic material cleanup (USPC 435/626282).
20. Toxic material permanent containment or destruction (USPC 588/ all).
21. Using microbes or enzymes (USPC 435/262.5).
Under the Enhanced First Action Interview Pilot Program ending April 1, 2010, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments). The response period to reply to this pre-interview communication can be extended by 30 days.
Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action to which the applicant will be given one month to reply with limited extensions of time and this First Action Interview office action will be considered the first action on the merits. The applicant can also waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment, and proceed directly to the second substantive examination.
Other aspects of the program include:
a. The full pilot procedure (Pre-interview communication, interview and first action).
b. Waiver of the interview (Pre-interview communication and first action only).
c. Waiver of the interview and first action (by filing a reply in compliance with 37 CFR 1.111(b) in response to the Pre-interview communication).
d. Waiver of the first action (by requesting entry of a proposed amendment during the interview).
Applicant's request to participate in the program must be filed during the six month life of the program and at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system. The request to enter the Pilot Program must be made via EFS-Web which can be accessed at: http://www.uspto.gov/ebc/index.html
----- Forwarded Message ----
From: Karen Sewell <email@example.com>
Sent: Thursday, October 1, 2009 2:23:31 PM
Subject: USPTO Expands Pilot Program to Reduce Pendency and Improve Patent Quality
PRESS RELEASE CONTACT: Jennifer Rankin Byrne or Ruth Nyblod
October 1, 2009 Phone: 571/272-8400 or
USPTO Expands Pilot Program to Reduce Pendency and Improve Patent Quality
First Action Interview Pilot enhances information exchange between applicant and examiner and promotes early resolution of outstanding issues
Washington – The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is expanding its First Action Interview Pilot Program in which 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. The program will expand to additional technology areas for a six-month period beginning on October 1, 2009. The initial pilot program was limited to two computer-related technology areas.
The initial six-month pilot program, which began April 28, 2008, has shown that the patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one. For the applications involved in the initial pilot, the First-Action Allowance rate increased six-fold when compared to applications from the same technology area not involved in the pilot.
“When people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real-time,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Initial results from this pilot are very impressive and show that interviews present a clear path to resolve issues and move prosecution forward quickly.”
Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.
Under the expanded pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).
Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance and fees due will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, to reply, with limited extensions of time. It is this First Action Interview office action that is considered the first action on the merits in the application.
There have been several improvements made to the program since the initial pilot. For example, the response period to reply to the pre-interview communication can now be extended by 30 days. Also, the applicant can now waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment and proceed directly to the second substantive examination. This may be preferable to those who would prefer not to wait for the First Action Interview office action and refile the proposed amendment formally.
The USPTO will continue to survey applicants during the expanded pilot to make further improvements to the program.
For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.