I/P Updates

46th Annual Corporate Patent Seminar

2010-08-30T11:18:00.000-04:00

Registration is now open for the 46th Annual Corporate Patent Seminar in Austin, Texas on November 14-16th. Past participants have included representatives from Procter & Gamble, Caterpillar, SC Johnson, Pfizer, Eli Lilly and others.

Limited to senior-level corporate counsel, the CPS is an informal group of patent professionals who exist only for the purpose of putting this seminar together. The cost is $800 per person and additional information including registration information can be found at www.corporatepatent.com

Marking Not Required for Notice in Process or Method Claims

2010-06-07T16:20:00.001-04:00

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.

Fair Use Doctrine Under U.S. Copyright Law

2010-03-03T15:34:00.001-05:00

Authors rights under copyright law are subject to certain limitations, including the doctrine of “fair use” that was developed through a substantial number of court decisions over the years and has been codified in section 107 of the copyright law. In the U.S., the Fair Use doctrine allows limited use of copyrighted material without requiring permission from the rights holders under a four-factor balancing test considering:

Purpose and character

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.

Nature of the copied work

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.

Amount and substantiality

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.

Effect upon work's value

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.

As noted by the U.S. Copyright Office, the distinction between fair use and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission and acknowledging the source of the copyrighted material does not substitute for obtaining permission.

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.”

USPTO Interim Procedure for Patent Term Adjustment Recalculation

2010-02-18T15:31:00.001-05:00

The U.S. Patent and Trademark Office expects to complete by March 2, 2010, the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit's recent decision in Wyeth v. Kappos regarding the overlapping delay provision of 35 USC 154(b)(2)(A). In the meantime, the USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who request it no later than 180 days after the issue date. This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth. A copy of the notice submitted to the Federal Register for publication and the form for patentees to use in requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.

An applicant is entitled, subject to certain conditions and limitations, to patent term adjustment if (1) the USPTO fails to take certain actions during the examination and issue process within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; and (3) for delays due to interference, secrecy order, or successful appellate review.

The guidance does not address patents that have issued more than 180 days ago, nor has the USPTO provided any indication that it will address this issue in the future.

USPTO Rules on Special Status Petitions for Green Technology Patent Applications

2009-12-16T16:12:00.000-05:00

In a Federal Register notice published and effective on December 8, 2009, the U.S. Patent and Trademark Office announced rules for implementing its previously-announced pilot program in which an applicant may petition to have an application involving green technologies advanced out of turn without meeting all of the requirements of the existing accelerated examination program such as examination support documents. The Green Technology Pilot Program will run for twelve months from its effective date. The USPTO may extend the pilot program (with or without modifications) depending on the feedback from the participants and the effectiveness of the pilot program.

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:

The non-fee petition must be in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009), and at least one day before a first office action is mailed (which may be a restriction requirement) or appears in the Patent Application Information Retrieval (PAIR) system. Continuing applications will not automatically be accorded special status based on papers filed with a petition in a parent application. Each continuing application must on its own meet all requirements for special status.
The petition to make special must be accompanied by a request for early publication in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18(d).
The application must be classified in one of the may classes identified Section V of the Federal Register notice copied below.
The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds. Applicants may file a preliminary amendment to cancel the excess claims and/or the multiple dependent claims at the time the petition to make special is filed.
The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements
The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met

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).

For applications pertaining to environmental quality, the petition to make special must state that special status is sought because the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements. If the application does not clearly disclose that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life sustaining natural elements, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, in explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment. See MPEP § 708.02 (item V).

For patent applications pertaining to: (1) The discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions, the term ''renewable energy resources'' includes hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources. The second category would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances. The third category listed above would include, but is not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies).

The petition to make special for an application directed to development of renewable energy or energy conservation, or directed to greenhouse gas emission reduction, must state the basis for the special status (i.e., whether the invention materially contributes to (1) development of renewable energy resources or energy conservation, or (2) greenhouse gas emission reduction). If the application disclosure is not clear on its face that the claimed invention materially contributes to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, nor does the standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction. See MPEP § 708.02 (item VI).

For USPTO the press release, click here. For the Federal Register notice with more details of the program and the requirements to participate, click here. USPTO Director Kappos also provides this entry on his official blog on the subject with links to his remarks from the press conference, as well as press accounts of the announcement in NYTimes.com and WSJ.com.

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).

USPTO Expands and "Enhances" First Action Interview Pilot Program

2009-10-19T10:34:00.001-04:00

Effective October 1, 2009, the United States Patent and Trademark Office (USPTO) is expanding and "enhancing" the original First Action Interview Pilot Program which ended on June 28, 2009.

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:

Expanding the pilot across more art units in the Technology Centers, depending upon the filing date of the application.
New utility nonprovisional applications that fall within one of the following groups may be eligible for the Enhanced First Action Interview Pilot Program:
1. Applications filed on or before November 1, 2006, and assigned to workgroup 1610 (art units 161X).
2. Applications filed on or before October 1, 2006, and assigned to art unit 1795.
3. Applications filed on or before February 1, 2008, and assigned to workgroups 2150 and 2160 (art units 215X and 216X).
4. Applications filed on or before July 1, 2008, and assigned to workgroups 2440 and 2450 (art units 244X and 245X).
5. Applications filed on or before June 1, 2007, and assigned to art unit 2617.
6. Applications filed on or before May 1, 2008, and assigned to art units 2811-2815, 2818, 2822-23, 2826, 2891-2895.
7. Applications filed on or before December 1, 2007, and assigned to art unit 3671.
8. Applications filed on or before January 1, 2008, and assigned to art unit 3672.
9. Applications filed on or before November 1, 2007, and assigned to art unit 3673.
10. Applications filed on or before February 1, 2008, and assigned to art unit 3676.
11. Applications filed on or before July 1, 2007, and assigned to art units 3677.
12. Applications filed on or before November 1, 2007, and assigned to art units 3679.
13. Applications filed on or before May 1, 2006, and assigned to art unit 3735.
14. Applications filed on or before April 1, 2007, and assigned to art unit 3736.
15. Applications filed on or before December 1, 2006, and assigned to art units 3737.
16. Applications filed on or before August 1, 2006, and assigned to art units 3768.
17. Applications filed on or before December 1, 2006, and assigned to art unit 3739.
18. Applications filed on or before September 1, 2007, and assigned to art units 3762 and 3766.
19. Applications filed on or before September 1, 2006, and assigned to art unit 3769.
Previously, all applicants had to go through all phases of the pilot’s procedure. After receiving a Pre-interview communication that contains the results of the examiner’s prior art search, applicants may now choose from the following:

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).

The time period to reply set forth in the Pre-Interview Communication will be extendable by one additional month. (Previously, the time period for reply was non-extendable.)
The time period within which to conduct the interview will be two months from the date of filing the interview request form. (Previously, the time period was two months from the Office notice date for the Pre-interview communication.)
Failure to timely reply to the Pre-Interview Communication or to timely conduct the interview will not result in abandonment of the application. Instead, a first action will be provided, similar to waiving 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

More Information:

Original Pilot Program (04/28/08 - 06/28/08) (click for eligibility)

Enhanced Pilot Program (10/01/09 - 04/01/10) (click for eligibility)

For more information about the Enhanced Pilot Program, click here

Changes Between the Original and Enhanced Pilot Programs

Forms:

Examples:

Tips to Consider When Preparing for Interview:

Interview Talking Points [PDF]

Slide Presentation:

First Action Interview Pilot Program: Overview [PPT]

Contacts:

RE: EFS-Web or PAIR system - contact the Electronic Business Center at 866-217-9197.
RE: a specific application - contact John Follansbee at (571) 272-3964.
RE: the First-Action Interview Pilot Program Notice - contact Joseph Weiss ((571) 272-7759), Legal Advisor, Office of Patent Legal Administration, or e-mail first.action.interview@uspto.gov.

Press Release:

----- Forwarded Message ----
From: Karen Sewell <karen.sewell@uspto.gov>
To: BillHeinze@yahoo.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
#09-20    Jennifer.Rankin_Byrne@uspto.gov
    Ruth.Nyblod@uspto.gov

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.

###

FTC Revises Guides Governing Endorsements and Testimonials

2009-10-13T05:51:00.002-04:00

The Federal Trade Commission has issued revisions to its Guides Concerning the Use of Endorsements and Testimonials, which will take effect on December 1, 2009 under16 C.F.R. Part 255: Guides Concerning the Use of Endorsements and Testimonials in Advertising: Notice Announcing Adoption of Revised Guides

TGIF for Religion and Intellectual Property

2009-07-09T11:38:00.000-04:00

On July 7, 2009, Pope Benedict XVI published his third encyclical letter titled "Caritas in veritate" (Charity in Truth) which, among other things, states that "On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care. At the same time, in some poor countries, cultural models and social norms of behaviour persist which hinder the process of development."

In response, the Intellectual Property Owners Association announced that it and others "are working to educate on the incentives that IP rights provide for advancing knowledge and creating jobs."

Good luck in bringing some of that same religious fervor to your organization.

Evidence of Intent to Use Before the US Trademark Office

2009-07-08T15:36:00.000-04:00

The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009).

According to the TTABlog, the U.S. Trademark Trial and Appeal Board's recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], brought the bona fide intent issue to the forefront for many trademark practitioners. There the Board sustained Honda's opposition to Herr Winkelmann's Section 44(e) application to register the mark V.I.C. for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the USA.

According to Edelman,"registration applicants should be very careful about including too many products or services in their intent-to-use based applications, and should maintain some minimal level of contemporaneous documentation and provable business rationale for the products or services listed in the application."

The affirmative activities that have been deemed indicative of the presence of a bona fide intent to use a trademark in commerce include:

conducting a trademark availability search
performing preparatory graphic design work or labeling on sales material for a product;
using a mark in international jurisdictions
using a mark in test marketing
testimony regarding informal, unwritten business plans or market research
obtaining necessary regulatory permits
obtaining a correlative domain name for the mark or setting up a website
making contacts with individuals who might help develop a business;
correspondence mentioning the planned use of the mark
attempts to find licensees, including ones outside of the U.S.
obtaining commercial space in which to perform the services

The factual circumstances that have been deemed indicative of a lack of a bona fide intent to use include:

· an unrealistically broad listing of goods and services;

a defensive intent to prevent others from using the mark;
the filing of numerous intent-to-use applications without ever using them or subsequently abandoning them;
the absence of any steps or planning to use the mark;
lack of industry-relevant experience;
misrepresentation of goods or services in order to reserve a mark

Website "Means" Requires Algorithm Disclosure

2009-05-20T13:31:00.001-04:00

In Ex parte Catlin, __ Westlaw __ (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C. Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:

According to Administrative Patent Judge Horner,

. . . we have thoroughly reviewed the Appellants' Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. Accordingly, the Specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the disclosed functions of the first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.

UKIPO "Green Channel" for Expedited Searching and Examination of Eco-Friendly Technology; SIPO to Follow

2009-05-20T13:29:00.000-04:00

The UK Intellectual Property Office has initiated a "Green Channel" where applicants will be able to request accelerated processing of their application if the invention relates to a 'green' or environmentally-friendly technology. To enter the Green Channel, the applicant must make a request in writing, indicating:

that their application relates to a ‘green’ or environmentally-friendly technology and
which actions they wish to accelerate: Search, Combined Search and Examination, Publication, and/or Examination.

The Office will require no further reasons for accelerated processing. This service will apply to existing applications as well as to applications filed after May 12, 2009. You can find further information about the various accelerated services in the patents fast grant guidance.

According to the press release, "the ‘green’ patents initiative was one of the key deliverables announced at the UK/China Economic and Financial Dialogue on May 11, with China already agreeing to adopt the proposal. The Intellectual Property Office is working with other major trading partners to get them to sign-up to the green patents fast-track system."

In the U.S., so-called "petitions to make special" (except those based on applicant’s health, age, or the PPH pilot program), are required to comply with the detailed requirements for the accelerated examination program as set forth in this notice.

Federal Circuit Standard of Review for ITC Decisions

2009-05-20T13:27:00.000-04:00

In Erbe Elektromedizin GMBH v. International Trade Commission (Fed. Cir. 2009; May 19, 2009), the court restated its standard of review for decisions of the U.S. International Trade Commission:

We review the rulings of the ITC under the Administrative Procedure Act, 5 U.S.C. § 706. 19 U.S.C. § 1337(c); Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1355 (Fed. Cir. 2007). "Rulings of law by the ITC are reviewed for correctness, and findings of fact are reviewed to ascertain whether they were supported by substantial evidence on the record as a whole." Osram, 505 F.3d at 1355. . . .

We review claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). We generally do not construe claim language to be inconsistent with the clear language of the specification; "[u]sually, it is dispositive." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). . . .

. . . the fundamental disagreement between the parties boils down to whether fixed optics are a "working channel." . . . the parties agree that infringement requires the accused devices to be used with an endoscope having at least two "working channels" and that the accused devices have only a single "working channel" if the fixed optics are not a "working channel." Based on our claim construction, the ITC correctly concluded that ERBE presented no evidence that any accused device had been used with an endoscope that had at least two "working channels" and, therefore, that there was no evidence of direct infringement and thus no basis for finding induced or contributory infringement. In light of this holding, we need not address the other arguments raised on appeal. Accordingly, we affirm.

Federal Circuit Clarifies Materiality Test for Geographically Deceptively Misdescriptive Marks

2009-05-01T14:39:00.000-04:00

In In re Spirits International, N.V., (April 29, 2009), the U.S. Court of Appeals for the Federal Circuit vacated the TTAB's decision in which the Board found the mark MOSKOVSKAYA to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here via the TTABlog). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived:

In this case, as in every case, in order to establish a prima facie case of materiality there must be some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark. Here the Board properly recognized that in order to be deceptive, foreign language marks must meet the requirement that “an appreciable number of consumers for the goods or services at issue will be deceived.” In re Spirits, 86 USPQ2d at 1085.

The problem with the Board’s decision is that it elsewhere rejected a requirement of proportionality, and discussed instead the fact that Russian is a “common, modern language[] of the world [that] will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue,” such number being in this case 706,000 people, according to the 2000 Census. Id. The Board, however, failed to consider whether Russian speakers were a “substantial portion of the intended audience.” Because the Board applied an incorrect test, a remand is required.

We express no opinion on the ultimate question of whether a substantial portion of the intended audience would be materially deceived. We note that only 0.25% of the U.S. population speaks Russian. Appellant’s Br. 26. If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.

We remand to the Board for a determination of whether there is a prima facie case of material deception under the correct legal test in the first instance. Because of our disposition on the question of the prima facie case, we do not reach the questions raised by the appellant as to the Board’s rejection of the survey as rebutting the prima facie case, though we note that the Board’s holding as to this issue was heavily influenced by its incorrect view of materiality.

USTR Releases 2009 Special 301 Report

2009-05-01T14:37:00.000-04:00

The Office of the U.S. Trade Representative (USTR) released its annual “Special 301” Report on April 30, 2009 covering the adequacy and effectiveness of intellectual property rights (IPR) protection by U.S. trading partners. Significant developments in this year’s Report include:

· Canada is being elevated to the Priority Watch List for the first time, reflecting increasing concern about the continuing need for copyright reform, as well as continuing concern about weak border enforcement.

· USTR is also elevating Algeria and Indonesia to the Priority Watch List, reflecting growing concern about the IPR situation in those countries.

· Korea is being removed from the Watch List in recognition of the significant improvements it has made during the past year, and the Korean Government’s policy direction of continuing to place a priority on improving its IPR regime. This marks the first time in the history of the report that Korea has not appeared on either the Watch List or the Priority Watch List. USTR will, however, continue to monitor closely the ongoing problem of Internet piracy in Korea, and will be prepared to consider returning Korea to the Watch List in the future if it does not respond effectively to this challenge through its implementation of newly enacted legislation and other steps.

· Again this year, USTR’s Special 301 Report highlights the prominence of IPR concerns with respect to China and Russia, despite some evidence of improvement in both countries:

o USTR announced that it would maintain pressure on China by including it on the Priority Watch List. “I am particularly troubled by reports that Chinese officials are urging more lenient enforcement of IPR laws, motivated by the financial crisis and the need to maintain jobs,” said Ambassador Kirk. “China needs to strengthen its approach to IPR protection and enforcement, not weaken it.”

o The Administration also continues to seek improvements to the intellectual property regime in Russia. The United States is committed to ensuring that Russia fulfills the promises it made to improve its IPR protection and enforcement regimes as part of a bilateral agreement with the United States.

U.S. TTAB: No Famous Marks Doctrine

2009-05-01T14:36:00.001-04:00

In Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (April 6, 2009) [precedential], the U.S. Trademark Trial and Appeal Board held that their is no famous marks Doctrine in the U.S.

Bayer alleged that its mark was "well-known" in this country prior to Belmora's filing date and that Belmora copied its mark and packaging for the FLANAX product. The Board pointed out that the Paris Convention is not self-executing, and that "Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings." Nor does Section 44 of the Trademark Act "provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding. According to the TTAB,

Turning next to petitioner’s claim under Article 6bis of the Paris Convention, “the Paris Convention is not selfexecuting. As such, Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings.” International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603 (TTAB 2002); see also, In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1175 (Fed. Cir. 2005) (“the Paris Convention is not a self-executing treaty and requires congressional implementation”), and Person’s Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir.1990); compare, British-American Tobacco Co. v. Philip Morris, Inc., 55 USPQ2d 1585 (TTAB 2000) (denying motion to dismiss claim under Pan American Convention in part because Convention is self-executing).

Furthermore, while Section 44 was “generally intended” to implement elements of the Paris Convention, In re Rath, 402 F.3d at 1207, 74 USPQ2d at 1177, it does not, through subsections 44(b) or (h) or otherwise, provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding, absent use of the mark in the United States. See, ITC Ltd. V. Punchgini Inc., 482 F.3d 135, 82 USPQ2d 1414, 1433 (2d Cir. 2007), cert. denied, 128 S.Ct. 288 (2007) (“Congress’s specificity in dealing with registered marks cautions against reading a famous marks exception into sections 44(b) and (h), which nowhere reference the doctrine, much less the circumstances under which it would appropriately apply despite the fact that the foreign mark was not used in this country.”).

We acknowledge that the Second Circuit in Punchgini discussed the possible recognition by this Board and by the U.S. Court of Appeals for the Ninth Circuit of a famous mark exception to the territoriality principle, the latter Court apparently recognizing the doctrine “as a matter of sound policy,” in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004). Punchgini, 82 USPQ2d at 1430. However, the Second Circuit also noted that neither the referenced Board cases, one of which addressed the possible exception only in dictum, nor the Grupo Gigante decision found the exception to arise in the context of an Article 6bis claim. Id. at 1429-30. And petitioner’s claim is, as noted, based on Article 6bis of the Paris Convention. fn4 For all of these reasons, respondent’s motion is GRANTED with respect to petitioner’s claim under Article 6bis of the Paris Convention, and the claim is hereby DISMISSED, WITH PREJUDICE.

fn4. In any event, respondent amply demonstrates that a famous mark exception, whatever its possible basis in law, is a minority view, and that most courts which have considered the issue find that there is no cause of action under such an exception where, as here, the plaintiff relies on foreign use alone. Respondent’s Motion to Dismiss at pp. 5-10. More importantly, in Grupo Gigante, the Ninth Circuit found that “the Paris Convention creates neither a federal cause of action nor additional substantive rights” beyond those in the Lanham Act. Id., 73 USPQ2d at 1266. And Board decisions discussing the possibility of a famous foreign mark exception in the common law do not hold to the contrary. See, First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 77 USPQ2d 1334 (TTAB 2005), rev’d on other grounds, 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007), The All England Lawn Tennis Club (Wimbledon) Limited v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983) . . .

U.S. Trademark Fraud Cured Post-Registration

2009-05-01T14:07:00.000-04:00

Thanks to the TTABlog for pointing out a non-precedential decision of the U.S. Trademark Trial and Appeal Board from October 2008 that adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008) [not precedential]. According to John Welch,

It appears from this decision that fraud may be curable even after
registration, as long as the false statement regarding use is corrected before
the registration is challenged. Note well that this is a non-precedential
decision by one panel of the TTAB, so it is not etched in stone. But it is
certainly a promising approach to the fraud problem. . . .

Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]

TTAB Clarifies Requirements for Intent-to-Use Application Based on Foreign Registration

2009-05-01T14:04:00.001-04:00

In Honda Motor Co., Ltd v. Friedrich Winkelmann (Opposition No. 91170552), the U.S. Trademark Trial and Appeal Board (the "TTAB") recently ruled that even though actual "use in commerce" is not required, the applicant must possess a bona fide intent to use a mark in U.S. commerce at the time it files a trademark application with the U.S. Patent and Trademark Office under Section 44(e). Under that section of the trademark statute, a mark registered in a foreign country may be registered on the U.S. registry, but the application must state the applicant has a bona fide intent to use the mark in commerce for the described goods and services. See Lanham Act § 44(e), 15 U.S.C. 1126(e). Although Section 44 does not require evidence of actual use in U.S. commerce prior to registration, the recent TTAB decision has put some teeth into Section 44(e)'s intent-to-use requirement.

New U.S. Patent Status Monitoring Service

2009-05-01T14:02:00.001-04:00

PriorSmart (http://www.priorsmart.com/) will monitor the docket of any application, reexamination, or issued patent and then e-mail reports. "Track documents affecting your litigation or freedom–to–operate opinion; Monitor competitors en masse; Be alerted to new continuations or divisionals."

You just select how long you want your document(s) monitored, how often you want to be alerted, and what billing code to assign to the document. The pricing structure is shown below.

Monitoring frequency Cost

Monthly $3.97 $47.64 per year
Weekly $7.97 $95.64
Daily $15.97 $191.64

U.S. Trademark Fraud Cured Post-Registration

2009-04-22T16:18:00.003-04:00

Thanks to the TTABlog for pointing out a non-precedential decision of the U.S. Trademark Trial and Appeal Board from October 2008 ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008) [not precedential]. According to John Welch,

It appears from this decision that fraud may be curable even after registration, as long as the false statement regarding use is corrected before the
registration is challenged. Note well that this is a non-precedential decision
by one panel of the TTAB, so it is not etched in stone. But it is certainly a
promising approach to the fraud problem. . . .
Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]

Dependent Claim Element Insufficient to Trigger U.S. Inventorship

2009-04-15T12:58:00.002-04:00

In Nartron Corp. v. Schukra U.S.A., Inc. (March 5, 2009) the Federal Circuit court of appeals reiterated that one "does not necessarily attain the status of co-inventor by providing the sole feature of a dependent claim." In this case, dependent claim 11 recited "The [seat control module for introducing massage to a seat control with an adjustable lumbar support] invention as defined in claim 6 wherein said lumbar support adjustor includes an extender."

According to the opinion by Circuit Judge Lourie,

We agree with Nartron that there is no genuine issue of material fact in this case and that Benson was not, as a result of suggesting an extender, a co-inventor of claim 11 of the ’748 patent as a matter of law. Any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor. "One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor." Ethicon, 135 F.3d at 1460 (quotation marks omitted); see Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) ("[A] person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art." (quotation marks omitted)). Moreover, a joint inventor must "contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention."
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387
F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473
(Fed. Cir. 1997)).

. . . .the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. See Fina Oil, 123 F.3d at 1473 ("The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art." (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 ("A contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.").

Borg Indak admitted at oral argument that a lumbar support adjustor with an extender existed in automobile seats in the prior art. Thus, Benson’s contribution of supplying the extender to the patented invention was the exercise of ordinary
skill in the art. The specification of the ’748 patent makes clear that the
automobile seat, including its lumbar support adjustor and extender, comprises
the existing object on which the invention (i.e., the control module) operates,
or the background to the invention. . . . As Borg Indak admitted, the extender
was an existing feature in an automobile seat. In fact, the necessity for the
invention described in the ’748 patent arose from the fact that existing
automobile seats had the parts required to provide a massage (e.g., lumbar
support adjustors including extenders), but simply lacked the controller that
would move those parts in a way that would provide a massage. . . .Thus,
Benson’s suggestion that the control module be capable of operating with an
automobile seat that has a lumbar support adjustor including an extender only
amounted to the exercise of ordinary skill in the art.

Further supporting the conclusion that Benson’s contribution of the extender was
insignificant when measured against the full dimension of the invention of claim
11, the specification and claims of the ’748 patent primarily focus not on the
structure of the seat itself, but on the structure and function of the control
module, which operates the seat. The specification mentions the extender only
once in a twenty-column patent.

The only time that the specification mentions the extender, it does no more than refer to it as the background upon which the invention is built. . . . The patent contains no description of the physical characteristics of the extender, nor does it contain any drawing of the
extender.

. . . This is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. Such an individual may be a co-inventor. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11.

Utility Model Protection In China

2009-04-15T12:56:00.000-04:00

According to Professor Wegner, yesterday, "at the opening of the oral hearing in the Zhejiang High People's Court in Chint v. Schneider, Chinese utility model holder Chint completed its major victory over French competitor Schneider through an unprecedented $ 23 million settlement (RMB 157 million), approximately half the damages awarded two years ago by the Wenzhou Intermediate People's Court."

He also offers a few lessons from Foley and Lardner's presentation on "China Patent Practice: The New Realities Strategies for Success for the Multinational Enterprise," including

The 828,000 Chinese patent, utility model and design applications filed last year represent –by far –the largest number of patent filings of any country in the world.
Because early patent protection will not be possible [due to rising application backlogs], utility model protection should be considered as an alternative.
Less than one (1) percent of utility model applications are by foreign enterprises.
Utility model protection is excellent for prompt grant of the patent right.
The patent is registered with a substantive examination deferred until enforcement.
Utility model protection is an excellent way to quickly boost the size of granted patent protection.
Utility model protection has resulted in very high damages awards on a case by case basis
a trade secret invention practiced in the United States may still be the basis for patenting in other countries; Only the United States adopted the unique bar against patenting an applicant’s secret invention. No other country has followed the U.S. lead of Judge Learned Hand in Metallizing Engineering.
it is anticipated that many disputes will arise as to ownership of improvement inventions that are made as part of outsourcing or joint venture agreements.

Gasket on Flange Not Equivalent to Gasket on Lid

2009-04-15T10:06:00.003-04:00

In Felix v. American Honda Motor Co. (April 10, 2009) the Federal Circuit held that the patent was not literally infringed because the accused product mounted a gasket on the automobile trunk lid, not on a flange as claimed in the patent. The patent was not infringed under the doctrine of equivalents because Felix surrendered claim scope with amendments made during USPTO prosecution.

According to the opinion by Circuit Judge Linn,

On Honda’s second motion for summary judgment, the district court held that Felix was precluded under the doctrine of prosecution history estoppel from arguing that the In-Bed Trunk infringed the gasket limitation by equivalents. Equivalents Op. at 7. Felix argues that he rebutted the presumption of prosecution history estoppel by showing that the amendment giving rise to the estoppel was tangential to the equivalent in question—namely, a gasket mounted on the lid, rather than the flange of the channel. . . .

. . . Amendment-based prosecution history estoppel “arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.” Festo, 535 U.S. at 736. “A patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Id. at 740. But the patentee may rebut this presumption by “demonstrat[ing] that the alleged equivalent would have been unforeseeable at the time of the narrowing amendment, that the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question, or that there was ‘some other reason’ suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., . . .

1. Presumption of Surrender

We first consider which amendment—if any—gave rise to a presumption of surrender of claim scope encompassing the equivalent at it issue. The limitation at issue here is the gasket limitation. That limitation was not contained in original independent claim 1, but was present in dependent claim 7. In Felix’s first amendment on September 10, 1999, he cancelled original claim 1 and rewrote original dependent claim 7 in independent form as claim 14 to contain all of the limitations of claims 1 and 7. J.A. 490-91. It was this first amendment that had the effect of adding the channel and gasket limitations of dependent claim 7 to the broader claim that was cancelled. “[T]he rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” Honeywell, 370 F.3d at 1134. Thus, Felix’s decision in the first amendment to cancel original claim 1 and to rewrite original claim 7 in independent form as claim 14 gave rise to a presumption of surrender.

The interesting wrinkle in this case is that even after Felix cancelled original independent claim 1 and rewrote original dependent claim 7 in independent form, the examiner still did not allow the rewritten dependent claim. In other words, even though Felix amended the claim and thereby narrowed its scope in an effort to secure allowance, that effort did not succeed.5 It was only after claim 8 was rewritten in independent form to include the limitations of claims 1, 7, and 8 that the claim was allowed.

The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee’s response to a rejection—not the examiner’s ultimate allowance of a claim—that gives rise to prosecution history estoppel. . . .We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance.

It is also immaterial in this case that the cancellation and amendment were to application claims 1, 7, and 14—rather than to application claims 8 and 16, which resulted in the asserted claim. The presumption of surrender “applies to all claims containing the [added] [l]imitation, regardless of whether the claim was, or was not, amended during prosecution.” Deering, 346 F.3d at 1326. . . . To hold otherwise would be to exalt form over substance and distort the logic of this jurisprudence, which serves as an effective and useful guide to the understanding of patent claims. The fact that the [the limitation in question] was not itself amended during prosecution does not mean that it can be extended by the doctrine of equivalents to cover the precise subject matter that was relinquished in order to obtain allowance of [another claim].”). Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the ’625 patent, that correspond to the limitations of claim 7.

We next turn to the scope of the presumptive surrender. “[W]hen a claim is rewritten from dependent into independent form and the original independent claim is cancelled . . . the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not available with respect to that added limitation.” Honeywell, 370 F.3d at 1144. Equivalents are therefore presumptively not available as to any of the subject matter added in Felix’s first amendment. It is immaterial that Felix chose to add both the channel and the gasket limitations, rather than just one. The resulting estoppel attaches to each added limitation. See Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) (“It is not relevant to the determination of the scope of the surrender that the applicant did not need to amend the claims [as they were amended] in order to overcome the prior art.”) . . . Felix is therefore presumptively barred from relying on the doctrine of equivalents to prove that Honda’s In-Bed Trunk meets the gasket limitation—one of the two limitations added by amendment.

2. Tangentiality

Felix argues that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation, because “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.” Felix argues that the first amendment “was made because the applicant thought the prior art lacked a channel,” not because of the presence or position of a gasket. Appellant’s Br. at 34. . . .

Felix relies on the language in his argument to the examiner that “the cited references do not show the channel of Claim 7, which is formed at the rim of the bed opening, in combination with the other structure of Claims 1 and 7.” J.A. 494. We reject Felix’s argument for two reasons. First, the cited language in Felix’s argument to the examiner expressly refers not only to the “channel of Claim 7” but also to the “other structure” of the claims. It is therefore not “objectively apparent” from this argument that the channel was the only reason for cancelling original claim 1 and rewriting dependent claim 7 in independent form, as Felix argues. Second, the cited language does not explain the entire amendment. If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f). Thus, Felix has identified no explanation in the prosecution history for the addition of the gasket limitation, and Felix therefore cannot meet his burden to show that the rationale for adding the gasket limitation was tangential to the presence and position of a gasket.

. . . Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court’s summary judgment of no infringement by equivalents.

. . . We agree with the district court that prosecution history estoppel bars Felix from relying on the doctrine of equivalents to show that Honda’s In-Bed Trunk meets the gasket limitation—“a weathertight gasket mounted on said flange and engaging said lid in its closed position.” We therefore affirm the district court’s summary judgment of no infringement under the doctrine of equivalents.

Experimental Use Explained

2009-04-06T19:27:00.003-04:00

In Clock Spring, L.P. v. Wrapmaster, Inc. (March 25, 2009), the Federal Circuit held that Clock Spring's 1989 demonstration was an experimental use and not a prior public use:

The experimental use exception is not a doctrine separate or apart from the public use bar. EZ Dock, Inc. v. Schafer Sys. Inc., 276 F.3d 1347, 1351-52 (Fed. Cir. 2002). Rather, something that would otherwise be a public use may not be invalidating if it qualifies as an experimental use. Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1211 (Fed. Cir. 2005) (limiting "experimentation sufficient to negate a pre-critical date public use or commercial sale to cases where the testing was performed to perfect claimed features, or . . . to perfect features inherent to the claimed invention"). In Allen Engineering Corp. v. Bartell Industries, Inc., we catalogued a set of factors that in previous cases had been found instructive, and in some cases dispositive, for determining commercial versus experimental uses. 299 F.3d 1336, 1353 (Fed. Cir. 2002). These factors include:

(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, (9) the degree of commercial exploitation during testing, (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.

Id. (quotation and alteration marks omitted). Though a prior commercial sale and not a prior public use was at issue in Allen Engineering, the factors explicated are equally relevant to an analysis of experimental use.

We have said that lack of control over the invention during the alleged experiment, while not always dispositive, may be so. Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1366 (Fed. Cir. 2008). In that case, we held that a public use had occurred, finding "dispositive" the fact that the patentee "did not have control over the alleged testing," which was performed by its customer. Id. Clock Spring argues that Fawley, a named inventor, exercised tight control over the demonstration, as shown through the detailed reports made of the demonstration. But, the detailed reports do not provide evidence that Fawley controlled the demonstration. An independent observer "analyzed and recorded" the 1989 demonstration. Three of the eleven Clock Spring installations were done by the pipeline’s personnel. None of these individuals was under Fawley’s control or surveillance. We need not, however, rely on lack of control as establishing public use because we conclude that the use cannot qualify as experimental for other reasons.

A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose—itself a requirement of patentability. See In re Omeprazole Patent Litig., 536 F.3d 1361, 1373-75 (Fed. Cir. 2008). In other words, an invention may not be ready for patenting if claimed features or overall workability are being tested. But, there is no experimental use unless claimed features or overall workability are being tested for purposes of the filing of a patent application.8 See EZ Dock, 276 F.3d at 1352, 1354; Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir. 1998) (stating that the public use provision strives to provide "inventors with a definite standard for determining when a patent application must be filed" (quotation marks omitted)). Indeed, the experimental use negation of the § 102(b) bar only exists to allow an inventor to perfect his discovery through testing without losing his right to obtain a patent for his invention. See EZ Dock

Clock Spring does not urge that refining the claim limitations was the subject of the 1989 demonstration. Rather, Clock Spring argues that the demonstration was experimental because the 1989 demonstration was designed to determine durability of the method, i.e., its suitability for the intended purpose. See City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 136 (1877). The reports make no such explicit statement. The NCF report states that "[t]he purpose of this demonstration . . . was to demonstrate to Panhandle Eastern attendants and guests the steps of application and the ability of minimally-trained crews to make Clock Spring installations." J.A. 2447. The 1994 GRI report states that "[t]his demonstration was designed to familiarize pipeline personnel with the Clock Spring technology, and to begin training of maintenance personnel in the use of the coil pass installation method." J.A. 1441 (emphasis added). The demonstration was similarly described to the United States Patent and Trademark Office ("PTO") during prosecution, where the applicant stated that the purpose of the demonstration was to seek "input from people in the industry on the performance of the bands and the practicality of their installation techniques." J.A. 2452.

To be sure, the 1994 GRI report can be read as suggesting that the 1989 demonstration was for durability testing because it states that "recovery and analysis of installed composite after several years of exposure in pipeline settings was the only means of verifying the long-term performance of [the clock spring’s] composites in moist soils." J.A. 1441. Clock Spring’s problem, however, is that no report in the record states, or in any way suggests, that the 1989 demonstration was designed to test durability for the purposes of the patent application to the PTO. In fact, the reports make clear that the durability testing was for "acceptance by regulators and the pipeline industry," J.A. 1444, and that the 1989 installation was not dug up and examined until almost a year after the 1992 patent application. Thus, even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use exception into play. By filing the 1992 application, the inventors represented that the invention was then ready for patenting, and studies done thereafter cannot justify an earlier delay in filing the application under the rubric of experimental use.

Finally, Clock Spring asserts that because the Department of Transportation did not grant any installation waivers until 1993, the 1989 demonstration must have been experimental. This terse argument is unsupported by any citation to law. That the inventors were not legally allowed to perform the method on a pipeline in commercial operation, does not mean that a public use did not occur. The former fact has absolutely nothing to do with the latter question.

In summary, during the 1989 demonstration, all elements of the repair method in claim 1 of the ’307 Patent were performed. There was no evidence that the overall suitability of the ’307 Patent’s method nor any of the claim elements was being tested as would be required for experimental use. Accordingly, claim 1 of the ’307 Patent is invalid due to prior public use.

Pre-1923 Publication Not in Copyright Public Domain

2009-01-12T17:04:00.001-05:00

In Societe Civile Succession Richard Guino v. Renoir, (9th Cir., December 2008), the court held that works first published in France no later than 1917 without a U.S.-style copyright notice were never subject to U.S. copyright under the 1909 Copyright Act, and therefore could not have fallen into the public domain in the U.S.

This holding is particularly interesting because, as the Ninth Circuit noted, "[t]he year 1923 is significant because the 1976 Act . . . and the 1998 Copyright Extension Act operate together to create a bright line rule for which works are now in the public domain: works published before January 1, 1923 are generally in the public domain." This rule is even noted in Copyright Office Circular 22 which states

. . . the U.S. copyright in any work published or copyrighted prior to January 1, 1923, has expired by operation of law, and the work has permanently fallen into the public domain in the United States. For example, on January 1, 1997, copyrights in works first published or copyrighted before January 1, 1922, have expired; on January 1, 1998, copyrights in works first published or copyrighted before January 1, 1923, have expired. Unless the copyright law is changed again, no works under protection on January 1, 1999, will fall into the public domain in the United States until January 1, 2019.

The works at issue were sculptures by the famed artist Renior and one of his assistants Richard Guino.

--
Posted By Bill Heinze to I/P Updates at 1/12/2009 04:21:00 PM

Pre-1923 Publication not in Copyright Public Domain

2009-01-12T16:21:00.001-05:00

. . . the U.S. copyright in any work published or copyrighted prior to January 1, 1923, has expired by operation of law, and the work has permanently fallen into the public domain in the United States. For example, on January 1, 1997, copyrights in works first published or copyrighted before January 1, 1922, have expired; on January 1, 1998, copyrights in works first published or copyrighted before January 1, 1923, have expired. Unless the copyright law is changed again, no works under protection on January 1, 1999, will fall into the public domain in the United States until January 1, 2019.

The works at issue were sculptures by the famed artist Renior and one of his assistants Richard Guino.

(CAFC/NJIP) Model Patent Jury Instructions Published for Comment

2008-12-10T10:08:00.001-05:00

From the IPO Daily News,

Last Friday the National Jury Instruction Project released model patent jury instructions that were prepared by an informal committee assembled by Federal Circuit Chief Judge Paul Michel. The model instructions are open for comment until February 1, 2009. They will be reviewed by IPO’s Litigation Committee (Chair: JOE KIRINCICH, Pitney Bowes Inc.; Vice Chairs: BETTY MORGAN, Cantor Colburn, LLP, and SCOTT PIVNICK, Pillsbury Winthrop Shaw Pittman, LLP). It is understood that the model instructions will not be endorsed by the Federal Circuit and will remain unofficial.

It's not quite clear why Circuit Judge Michel thought we needed yet another set of model jury instructions, or why the NJIP felt that they needed to use his name when the result would not be endorsed by the Federal Circuit. According to the Introduction,

Chief Judge Paul R. Michel of the United States Court of Appeals for the Federal Circuit requested the members of this National Patent Jury Instruction Project to develop a set of model jury instructions for patent infringement cases. The goal was to create a committee, national in scope, with members from both the bench and bar. The underlying idea was to benefit from the collective experience of both judges and attorneys who are interested in creating an easier to understand and streamlined set of model jury instructions. The following instructions are the result of the project. These instructions will not be endorsed by the Federal Circuit Court of Appeals and are not intended to be "official" jury instructions. Nor is any particular member of this Committee endorsing any particular instruction. These instructions are intended to be helpful models for judges and lawyers. In devising this set of instructions, we have looked to and drawn from the work of others, including the committees for the Northern District of California, The Federal Circuit Bar Association, the AIPLA, and the District of Delaware. Judges and lawyers who use these instructions will need to supplement them with instructions that speak generally to the trial and the jury’s duties, such as the nature of the evidence and the duty to deliberate, and will have to tailor them to the facts and issues in the particular case.

USPTO Appeal Brief Rules Delayed Indefinitely

2008-12-09T13:32:00.002-05:00

The Appeal Rule that was set to go into effect December 10, 2008 is delayed, and will not go into effect tomorrow. A notice to be published in tomorrow's Federal Register reads as follows:
The effective date for the final rule published at 73 FR 32938, June 10, 2008, is delayed, pending completion of OMB review of the proposed information collection under the PRA. The Office will issue a subsequent notice identifying a revised effective date on which the final rule shall apply.

Tomorrow's notice reaffirms the notice from November 20, that briefs may be filed under either the new rules or the old rules. Prudent patent attorneys will consider the estoppel and inequitable conduct effects of complying with the new rules.

The "day ahead" display of the notice to be published tomorrow is at http://www.federalregister.gov/OFRUpload/OFRData/2008-29297_PI.pdf

"While by now everyone is aware of the suspension of implementation of the rules on ex parte appeals," writes Professor Wegner "what is not generally known is that David Boundy is the hero. Against very, very long odds, he quarterbacked a group effort at the OMB that ended in the blockage of this very, very unfortunate rulemaking."

Way to go David.

Secondary Patent Market Snapshot

2008-12-09T09:05:00.001-05:00

from www.iafinance.org/events:

Indefiniteness for Multiple Plausible Claim Constructions

2008-12-09T09:03:00.001-05:00

In Ex parte Miyazaki, (Horner, APJ)(precedential), a five member expanded panel of the USPTO Board of Patent Appeals and Interferences (including the chief APJ and Vice-Chief APJ) crafted a new standard to reject claims for indefiniteness under 35 USC § 112, ¶ 2, whenever a claim has plural, "plausible" constructions. According to Professor Wegner,

The Board stated that "we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. " Miyazaki, slip op. at 11-12.

The Board remarkably departs from more than a century of precedent that permits plural interpretations . . . A unique aspect of the Board's opinion is that it provides a ground for invalidity under 35 USC § 112, ¶ 2, that is applicable only in the case of a pending application and not a granted patent. Presumably, a perfectly valid claim in a granted patent that is put through a reissue proceeding to consider a different issue would now be subject to rejection under 35 USC § 112, ¶ 2.

The Board's rationale for its departure: "The USPTO, as the sole agency vested with the authority to grant exclusionary rights to inventors for patentable inventions, has a duty to guard the public against patents of ambiguous and vague scope. Such patents exact a cost on society due to their ambiguity that is not commensurate with the benefit that the public gains from disclosure of the invention. The USPTO is justified in using a lower threshold showing of ambiguity to support a finding of indefiniteness under 35 U.S.C. § 112, second paragraph, because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent." Id., slip op. at 12.

TGIF for Infringing Foreign Patent Procurement Processes

2008-12-04T10:12:00.000-05:00

TGIF for U.S. Patent Application Publication No. 20080221912 by David James Harris, reciting

1. A method of seeking patent protection for an invention, comprising:

a) filing a first European Patent Application for the invention at a first date;

b) filing a second European Patent Application for the invention at a second date not more than one month later;

characterised in that the second European Patent Application is a divisional European Patent Application claiming the filing date of the first European patent application.

"David, my boy," writes Greg Aharonian, "a patent issued in the United States is completely USELESS for a method performed completely outside the United States."

Except, of course, for imported products that are produced by that infringing process. . . . In Kinik v. United States International Trade Commission, 362 F.3d 1359 (Fed. Cir. 2004) the court explained that the Tariff Act (Section 337) remedy of exclusion based on practice of a patented process was unchanged, and that the exceptions set forth in 271(g)(1) and (2) did not apply in Section 337 cases. Under 35 U.S.C. 271(g),

" Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. . . . A product which is made by a patented process will, for purposes of this title, not be considered to be so made after--

(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product."

Thank Goodness It's (almost) Friday,

--Bill

William F. ("Bill") Heinze

Priority Document Exchange Program Update

2008-12-04T10:06:00.001-05:00

The so-called "Trilateral Priority Document Exchange" program is discussed at http://www.trilateral.net/projects/priority_document_exchange/index.php. Official information on the program is available from the USPTO at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/kipopdx_10142008.pdf, where it states

PCT international applications are currently excluded from the PDX system. Thus, USPTO cannot electronically exchange PCT international applications through the PDX system. Further, the USPTO cannot currently electronically retrieve non-U.S. priority applications to which priority is claimed in a PCT international application.

Note that, in accordance with PCT Rule 17.1(b), an applicant may request the U.S. Receiving Office to transmit a U.S. priority document to the International Bureau. This service is independent from the PDX system.

The USPTO will not retrieve copies of priority applications filed in U.S. national stage applications under 35 U.S.C. 371 unless the applicant files a separate request to retrieve (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) since the USPTO already, in most cases, receives copies of such priority applications from the International Bureau in accordance with PCT Rule 17.2.

The USPTO also offers answers to frequently asked questions at http://www.uspto.gov/main/faq/faq_pdx.html and accepts additional questions on the "PDX" program at PDX@uspto.gov.

The only "Participating Offices" in the program so far are the USPTO, JPO, EPO, and KIPO. According to the USPTO's page on the Priority Document Exchange, "The USPTO will also automatically request retrieval of a JPO priority document if an U.S. application claims priority in the Oath, Declaration, or Application Data Sheet, eliminating the need to submit a “Request To Retrieve” form SB-38. The USPTO already automatically attempts to electronically retrieve a copy of any EPO priority document to which priority is claimed in an U.S. application."

Nonetheless, the practice in some businesses has been to file USPTO Form SB/39, "AUTHORIZATION TO PERMIT ACCESS TO APPLICATION BY PARTICIPATING OFFICES" with all new applications. According to the instructions for that form,

"The EPO, JPO, or KIPO will request retrieval of every US priority application to which an EPO, JPO, or KIPO application claims priority. The JPO will request retrieval of every US priority application to which a JPO application claims priority. Likewise, the KIPO will request retrieval of every US priority application to which a KIPO application claims priority. However, further details and instructions from the EPO will be published in its Official Journal and further details and instructions from the JPO and KIPO will be published on the JPO and KIPO websites respectively.

"Neither design applications nor PCT international applications can currently be exchanged through the Priority Document Exchange system. Accordingly, the EPO, JPO, and KIPO will not request retrieval of priority applications that are design applications or PCT international applications."

Form SB-38 can also provide the ability to make "Requests for Non-Participating Office Priority Documents" as discussed at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/kipopdx_10142008.pdf:

The USPTO will not have the ability to electronically retrieve non-participating office priority documents from the KIPO under 37 CFR 1.55(d)(2). For example, if the applicant files a JPO priority document with the KIPO in a KIPO application, the USPTO will not have the ability to electronically retrieve the JPO priority document from the KIPO through the PDX system. The USPTO similarly does not have the ability to electronically retrieve non-participating office priority documents from the JPO under 37 CFR 1.55(d)(2). See Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents, 1320 Off. Gaz. Pat. Office 173 (July 31, 2007). However, this service continues to be available through the EPO. Thus, for example, if an applicant wishes the USPTO to retrieve a copy of a German priority document that has been made of record in an EPO application file, the applicant must file a request to retrieve in a separate document (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) and provide the USPTO with the EPO application number from which the German priority document may be retrieved. See the Official Gazette notice entitled "Simplification of the Electronic Exchange of Priority Documents" published on June 26, 2007.

By the way, WIPO is developing its own priority document access service at https://webaccess.wipo.int/priority_documents/en/.

Ways to Avoid a USPTO Ethics Investigation

2008-12-04T10:03:00.001-05:00

In Practicing Before the USPTO in Today's Market: Conforming Your Conduct to the USPTO's Code of Professional Responsibility, (December 1, 2008), Harry I. Moatz, Director of Enrollment & Discipline at the United States Patent and Trademark Office, outlined his office's new disciplinary procedures for registered patent practitioners. Mr. Moatz also listed the primary complaints that he receives against patent practitioners as

Neglect.
Lack of candor (Either to client or the PTO).
Failure to make reasonably inquiry.
Failure or delay in filing application
Failure to respond to OA (even when client has not paid)
Misuse of the certificate of mailing
Insufficient funds
Failure to pay issue fee
Failure to revive
Failure to turn over files to new attorney
Failure to communicate with client

As noted by Professor Crouch, additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment. Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of "any" crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days.

Under "Ways to Avoid an OED Ethics Investigation at the USPTO," Moatz suggests

1. Act competently when prosecuting applications before the USPTO

A practitioner shall not neglect a legal matter entrusted to the practitioner. (37 CFR § 10.77(c)).

Communicate
File papers timely
Do not abandon applications without client authorization

2. Don't make misrepresentations to the USPTO

A practitioner shall not engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. (37 CFR § 10.23(b)(4)).

Do not prevaricate on the certificate of mailing
Do not prevaricate to examiners
Avoid criminal offenses

3. A violation of the Rules includes a conviction of a criminal offense involving moral turpitude, dishonesty, or breach of trust. (37 CFR § 10.23(c)(1)).

Felony conviction - See, Moatz v. Rose (http://www.uspto.gov/web/offices/com/sol/foia/oed/disc/d2006-16.pdf)
Moral turpitude DUI
Dishonesty theft related crimes

4. Avoid Violation of State Ethics Rules

A violation of the Rules includes a suspension or disbarment from practice as an attorney on ethical grounds by any duly constituted authority of a State. (37 CFR § 10.23(c)(5)).

Reciprocal Discipline by USPTO for suspension of a practitioner by a state:

5. Avoiding conflicts of interest by former USPTO Examiner

A practitioner who is a former patent examiner cannot accept employment in an area in which personally responsible while an employee at the USPTO. (37 CFR § 11.10(b)).

USPTO Appeals Wyeth v. Dudas Decision on Patent Term Adjustment Calculation

2008-12-04T09:56:00.003-05:00

According to the Patent Docs, "More Patentees Have Followed Wyeth's Lead in Seeking Additional PTA." They also report that the USPTO filed a Notice of Appeal in the District Court for the District of Columbia on that court's September 30th decision in Wyeth v. Dudas. The Wyeth court determined that the U.S. Patent and Trademark Office had misconstrued 35 U.S.C. § 154(b)(2)(A), and as a result, had denied Wyeth a portion of patent term to which it was entitled under U.S. Patent Law.

There is an 83% chance of receiving a patent term adjustment due to USPTO delay. Learn more from the USPTO on patent term adjustement calculation and from free tutorials by patentterm.com.

Post-Bilski Computer-Readable Medium Claim Patentable

2008-11-19T13:38:00.001-05:00

Post-Bilski Computer-Readable Medium Claim Patentable

In what appears to be the first USPTO administrative decision following Bilski, in Ex parte Bo Li, Appeal 2008-1213 (USPTO BPAI 2008, November 6, 2008) the Board of Patent Appeals and Interferences held that a method and system for generating a report using software modules adapted for easy modification and updating was directed to statutory subject matter:

In the analysis of In re Nuijten, 500 F.3d 1346 (Fed. Cir., 2007), the Federal Circuit considers the four statutory classes for a signal, and bases the determination of statutory subject matter on that basis. It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. (Ibid.). Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir., 1994). In view of the totality of these precedents, we decline to support the [nonstatutory subject matter] rejection under 35 U.S.C. § 101.

The claim at issue from Application No. 10/463,287 is copied below:

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:

providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;

parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;

extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;

receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and

organizing, by the data display organization module in response to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

No Graham Analysis for U.S. Obviousness-Type Double Patenting

2008-11-19T13:37:00.001-05:00

Graham Analysis Not Necessary for Obviousness-Type Double Patenting Rejection

In In Re Basell Poliolefine Italia S.P.A. (November 13, 2008), the Federal Circuit reiterated that a full Graham analysis is not required for an obviousness-type double patenting rejection:

We are also unpersuaded by Basell's assertion that the double patenting rejection should be reversed because the Board failed to expressly conduct a full Graham analysis in determining that the '687 patent claims were an obvious variant of claim 1 of the '987 patent. Indeed, "this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting." In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991). Hence, we find no basis for reversing the Board's decision merely because the Board failed to expressly set forth each of the Graham factors in its analysis. The Board carefully considered claim 1 of the '987 patent and the claims of the '687 patent and determined that a person of ordinary skill in the art would have found the '687 patent claims to have been obvious. We find no error in the Board's analysis.

. . . We agree with the Board's conclusion that the claims of the '687 patent are not patentably distinct from claim 1 of the '987 patent. Claim 1 of the '687 patent covers polymerizing 1) an alpha-olefin of C4 or higher, 2) with ethylene, 3) using a titanium halide aluminum alkyl catalyst. As the Director and the Board correctly noted, the claim encompassing those limitations is an obvious variant of claim 1 of the '987 patent. Specifically, with regard to the alpha olefin of C4 or higher, claim 1 of the '987 patent provides that one of the monomeric materials may include "unsaturated hydrocarbons of the formula CH2�CHR in which R is selected from the group consisting of saturated aliphatic radicals containing 1 to 4 carbon atoms." Thus, both claims of the '987 patent and the '687 patent cover alpha olefins of C4 to C6. In addition, with regard to ethylene, claim 1 of the '987 patent recites "another olefinic monomer," and thus covers a genus that includes ethylene. Similarly, with regard to the titanium halide aluminum alkyl catalyst, claim 1 of the '987 patent covers a genus that the parties do not dispute includes titanium halide, as well as a genus that includes aluminum alkyl. Claim 1 of the '687 patent is thus not patentably distinct from claim 1 of the '987 patent.

Patent Ratings and Policy Matrix Terminology

2008-11-19T13:07:00.001-05:00

"Pioneering" - creates a new, exclusive market
"Expanding" - creates a new, exclusive market segment
"Distinguishing" - may prevent copying, but does not prevent entry (most patents)
"Obsolete" - dubious legal or market merit
"Vanity" - probably void ab initio, nearly worthless

from "Patent Portfolio Triage: Proven Methods for Bottom-Line Results" by Tom Clare on November 17, 2008 via the APLF

US-FTC Schedules Hearings on IP

2008-11-11T16:27:00.001-05:00

On November 6, 2008, the U.S. Federal Trade Commission announced a series of hearings on "Evolving Intellectual Property Marketplace." The hearings will be held beginning on December 5, 2008, in Washington, DC. The FTC will examine changes in IP law, patent-related business models, and new learning about the operation of the IP marketplace since the issuance in October 2003 of the Commission report To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy. An agenda for the hearing is available here.

Additional information about the December 5 and subsequent hearings will be available on the website for the hearings, which can be accessed from http://www.ftc.gov/ftc/workshops.shtm.

European Software Patentability Update

2008-11-11T16:26:00.001-05:00

European Software Patentability Update

The UK-IPO issued a press release on November 7, 2008 regarding the patentability of computer programs following the recent UK decision in Symbian Ltd v Comptroller General of Patents in which the UKIPO's approach relating to patentability of computer programs was overturned:

The President of the EPO has now referred a series of questions on the patentability of computer programs to the Enlarged Board. This body has the ability to make a definitive statement of EPO practice and as such also carries significant weight in terms of the practice adopted by the UK-IPO and other national Patent Offices within Europe. In the light of this development, the UK-IPO will not seek to appeal the Symbian judgment further.

. . . The Enlarged Board of Appeal is a body made up of EPO Appeal Board members and international experts. Its decisions are binding on the EPO (although not the UK courts). The EPO President has referred questions on the computer program exclusion to the Enlarged Board because she is concerned that decisions of EPO Appeal Boards have not been consistent. Referral under Article 112(1)(b) EPC [October 22, 2008]

. . . As with all UK court decisions the Symbian judgment is binding on the UK-IPO.

The questions being referred to the EPO Enlarged Board of Appeal are as follows:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

A Reference Guide to the Australian Patent System

2008-11-11T16:18:00.002-05:00

by Bill Bennett, of Pizzeys Patent & Trademark Attorneys, is available at http://www.pizzeys.com.au/Articles/Australian%20Patent%20System%20Guide.pdf

TGIF for U.S. Patent Application Serial No. 11/741,429!

2008-11-07T16:29:00.000-05:00

You too might get an end-of-the-week chuckle over U.S. Patent Application Serial No. 11/741,429 on "Patent Acquisition and Assertion by a (Non-Inventor) First Party Against a Second Party" by U.S. Patent Attorney Clive D. Menezes of Halliburton Energy Services Inc.:

Thank Goodness It's Friday,

--Bill

p.s. - Get more IP news from the IP Think Tank Global Week in Review, General Edition - Friday, 7 November 2008

East Asian Patent Database Searching

2008-11-05T15:41:00.003-05:00

According to "Tips & tricks for searching East Asian patent databases" by Irene Schellner, European Patent Office, 27 October 2008:

more than 50% of the patent applications published worldwide are written in Japanese, Chinese or Korean
KIPO receives 4th highest number of IP applications in the world (after US, JP and CN)
every year more than 350 000 patent applications are filed in Japan
between 1997 and 2007, domestic filings in China increased twelve fold and domestic filings in Korea doubled

Her presentation goes on to discuss

Challenges when searching East Asian data
Data sources & providers
Overview of free databases
Tips & tricks for searching
Bridging the time gap
Going beyond English abstracts
Overcoming language barriers
How the EPO can help

Get more East Asian Patent Information from the European Patent Office, and other such patent intelligence insights from the Intellectual Property Intelligence Blog.

TGIF for Halloween

2008-10-31T22:25:00.001-04:00


"Bat Decorative Object" U.S. Patent No. 5285898

Thank Goodness It's Friday,

--Bill Heinze

Federal Circuit Adopts 'Machine-or-Transformation' Test for Process Patent Eligibility

2008-10-31T21:40:00.003-04:00

Method of Hedging Commodities Trading Risk Not Patentable Subject Matter

In In Re Bilski (October 30, 2008) the Federal Circuit affirmed en banc that "A method for managing the consumption risk costs of a commodity sold by a commodity provider . . ." is not directed to patent-eligible subject matter because it neither (1) "is tied to a particular machine or apparatus," nor (2) "transforms a particular article into a different state or thing." The decision also clarifies the standards applicable in determining whether a claimed method constitutes a statutory "process" under 35 U.S.C. §101.

According to the majority opinion authored by Chief Judge Michel and joined by eight of the twelve active judges of the Federal Circuit:

"The application contains eleven claims, which Applicants argue together here. Claim 1 reads:
A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:
(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions
". . . The question before us then is whether Applicants' claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed. Unfortunately, this inquiry is hardly straightforward. . . .
"The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70 ("Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."); Diehr, 450 U.S. at 192 (holding that use of mathematical formula in process "transforming or reducing an article to a different state or thing" constitutes patent-eligible subject matter); see also Flook, 437 U.S. at 589 n.9 ("An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a 'different state or thing'"); Cochrane v. Deener, 94 U.S. 780, 788 (1876) ("A process is . . . an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.").7 A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.

". . . The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson and discussed below, the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.

". . . We hold that the Applicants' process as claimed does not transform any article to a different state or thing. Purported transformations or manipulations simply of public or private legal obligations or relationships,business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances. Applicants' process at most incorporates only such ineligible transformations. See Appellants' Br. at 11 ("[The claimed process] transforms the relationships between the commodity provider, the consumers and market participants . . . ."). As discussed earlier, the process as claimed encompasses the exchange of only options, which are simply legal rights to purchase some commodity at a given price in a given time period. See J.A. at 86-87. The claim only refers to "transactions" involving the exchange of these legal rights at a "fixed rate corresponding to a risk position." See ′892 application cl.1. Thus, claim 1 does not involve the transformation of any physical object or substance, or an electronic signal representative of any physical object or substance. Given its admitted failure to meet the machine implementation part of the test as well, the claim entirely fails the machine-or-transformation test and is not drawn to patent-eligible subject matter.

". . .We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine."

The Federal Circuit also rejected other articulations of the test for patent-eligible subject matter under Section 101 from prior panel decisions:

"In light of the present opinion, we conclude that the Freeman-Walter-Abele test is inadequate. . . . This test, in its final form, had two steps: (1) determining whether the claim recites an "algorithm" within the meaning of Benson, then (2) determining whether that algorithm is "applied in any manner to physical elements or process steps."

"The second articulation we now revisit is the "useful, concrete, and tangible result" thereby overruling the portions of its opinions in State Street Bank & Trust Co v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1998), that indicated that a claim is patent-eligible if it "produces a useful, concrete and tangible result.

" . . . [W]e also conclude that the "useful, concrete and tangible result" inquiry is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply.

However, the Court did not overrule the State Street Bank decision with regard to patent-eligibility for business methods:

"We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court.22 We rejected just such an exclusion in State Street, noting that the so-called "business method exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method." 149 F.3d at 1375-76. We reaffirm this conclusion."

More at these links from Foley & Lardner, Wilmer Hale, Sutherland, McDermott Will & Emery, and Professor Crouch.

Australia Now International Search Authority for US-Filed PCT Applications

2008-10-31T18:12:00.001-04:00

Effective 01 November 2008, applicants may select IP Australia (IPAU) as the International Searching Authority (ISA) in international applications filed in the United States Receiving Office (RO/US). The search fee for requesting IPAU as the ISA will be $1514 (Fee Code: 1712). The revised PCT Fee Schedule will be posted at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm. See the press release at: http://www.uspto.gov/web/offices/com/speeches/08-36.htm.

A Brief Guide to Protecting your Trade Secrets

2008-10-31T18:10:00.001-04:00

From the WIPO SMEs NEWSLETTER for October 2008:

"Protecting your Trade Secrets: A Brief Guide to Preserving Intellectual Capital"

This basic guide by FISH & RICHARDSON P.C. provides useful information on building up a trade secret protection program and in preventing unauthorized use of the trade secrets of others. More

ICC Model IP Guidelines for Business

2008-10-31T18:07:00.001-04:00

From the WIPO SMEs NEWSLETTER for October 2008:

This article by International Chamber of Commerce (ICC) suggests some guidelines that help businesses prepare and implement policies to improve protection of their IP rights and to reduce the business risks associated with counterfeiting and piracy. More

Eight Factors for Determining "Undue Experimentation" to Defeat Anticipation in the U.S.

2008-10-31T18:05:00.001-04:00

In Impax Laboratories Inc. v. Aventis Pharmaceuticals Inc. (October 3, 2008), the U.S. Court of Appeals for the Federal Circuit identified eight factors for determining the level of "undue experimentation" required to defeat anticipation:

In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008) (citing In re Omeprazole Patent Litig., 483 F.3d 1364, 1379 (Fed. Cir. 2007)). In other words, the prior art must enable the claimed invention. Minn. Mining & Mfg. Co. v. Chemque, Inc. (3M), 303 F.3d 1294, 1301 (Fed. Cir. 2002). The “undue experimentation” component of that equation examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

. . . The district court also did not find the dosage information in the disclosure to teach a proper treatment. Instead the trial court noted that “the dosage guidelines are broad and not specific to any of the hundreds of formula I compounds of the claimed invention or to any of the listed diseases.” Id. at 433. Moreover, the '940 patent ties the dosing information to “the compounds of the invention” and specifically excludes riluzole from the invention. Id. at 432-33. Finally, the trial court also noted the absence of working examples.

. . . In view of these findings, the district court found that one of ordinary skill in the pharmaceutical arts would have needed extensive experimentation to link riluzole with the treatment of ALS. Id. at 433. The district court then reached the ultimate conclusion that the ’940 patent does not enable claims 1-5 of the ’814 patent and thus, it is not anticipatory. As this court explained during the first appeal, when an accused infringer asserts that a prior art patent anticipates specific patent claims, the infringer enjoys a presumption that the anticipating disclosure also enables the claimed invention. Impax Labs., 468 F.3d at 1382. However, the patentee may overcome that presumption with persuasive evidence showing that the prior art patent does not enable the claimed invention.

U.K. Computer Program Patent Eligilbilty

2008-10-31T18:04:00.001-04:00

As noted by the IP Kat blog, "The Court of Appeal judgment in Symbian Ltd v Comptroller General of Patents has just been published, and is available from BAILII here. The UK-IPO's appeal against the decision of Mr Justice Patten in the High Court (here, with IPKat commentary here and here) has been dismissed."

According to the decision by Lord Neuberger,

"This is the judgment of the court to which all members have contributed. It is on an appeal brought, with the permission of the Judge, by the Comptroller General of Patents against a decision of Mr Justice Patten. He allowed an appeal by Symbian Ltd against the Comptroller's decision refusing UK Patent Application No GB 0325145.1 ("the Application"), on the ground that the alleged invention was excluded from patentability by section 1(2) of the Patents Act 1977. The issue raised on this appeal requires us to consider the reach of the exclusion of "programs for computers" from patentable inventions, a topic which is inherently difficult and on which there is apparently inconsistent authority domestically and in the European Patent Office ("EPO"). . . ."

". . . It is, of course, inevitable that there will be cases where the EPO will grant patents in this field when UKIPO should not, at least so long as the view in Pension Benefit and Hitachi is applied by the Board and is not applied here. The fact that the two offices and their supervisory courts have their own responsibilities means that discrepancies, even in approach or principle, are occasionally inevitable. However, the fact that such discrepancies have been characterised as "absurd" by Nicholls LJ, and the reasoning in [3] of Conor emphasise the strong desirability of the approaches and principles in the two offices marching together as far as possible. This means that there is a need for a two-way dialogue between national tribunals and the EPO, coupled with a degree of mutual compromise. More directly relevant to the present appeal, it means that, where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases."

"For these reasons, we would dismiss this appeal."

"Fast-Track" EU Design Registrations

2008-10-31T17:59:00.001-04:00

"Fast-track" EU design registrations

On October 22, 2008, the Trademarks and Designs Registration Office of the European Union announced that its has introduced a "fast-track" registration for Community designs which should result in around 30% of applications being registered in under 10 days. The fast-track process identifies the more straightforward applications which come by e-filing (or mail); either have no priority or come with all the priority documents attached; and are paid for via an OHIM current account.

At present, OHIM's service standards specify that 80% of designs should be registered in under six weeks, but Design Department Director Pedro Rodinger says that by meeting the criteria set out above, users can benefit from much faster registration. "We are hoping that this information will encourage more users to adopt simple measures such as opening an OHIM current account, which can make a big difference to the speed of registration. When the new e-filing system for designs is introduced next year, we hope to make even more dramatic improvements in timescales."

For more information see October's Alicante News

USDOJ Clears RFID Patent Licensing Group

2008-10-31T17:57:00.001-04:00

The U.S. Department of Justice announced on October 21, 2008 that it will not challenge a proposal by a consortium of companies to jointly license patents needed to comply with standards for ultra high frequency radio frequency identification (UHF RFID) technology. UHF RFID is a type of automatic identification and data capture technology, which can be used to identify objects automatically by using radio frequency waves to transmit and read information stored in an integrated circuit (or chip) on a label. Read the Response to RFID Consortium LLC's Request for Business Review Letter, and the Antitrust Guidelines for the Licensing of Intellectual Property issued by the U.S. Department of Justice and the Federal Trade Commission on April 6, 1995.

WIPO PCT Survey

2008-10-31T17:57:00.000-04:00

WIPO PCT Survey

Thanks to GE's Thaddeus Burns for passing along that

"WIPO is conducting a user survey on the Patent Cooperation Treaty (PCT) system. The purpose of this comprehensive PCT survey is to provide an opportunity for users of the PCT system to communicate their needs, expectations and experiences with the PCT system directly to WIPO. The results from this survey will provide WIPO with input on how the PCT is being used, how it is perceived, and how its users would like to see it develop in the future.

"This reflects an new interest in user satisfaction under Francis Gurry and I hope we can provide him with some useful data.

"The survey can be accessed at the following link: https://webaccess.wipo.int/opinio/s?s=2433"

USPTO IDS and Markush Claim Proposals Will Not Proceed

2008-10-31T17:51:00.000-04:00

According to AIPLA Reports on October 27, 2008,

"The PTO’s proposed rules on information disclosure statements and on applications
containing "Markush" alternative claim language will not be published as final rules by the current Administration. The announcement was made October 24, 2008 at the AIPLA Annual Meeting in Washington, D.C. by PTO Deputy Commissioner for Patent Operations Margaret Focarino in an appearance before the AIPLA Committee on Patent-Relations with the USPTO."
She reportedly made reference to May 9, 2008 Office of Management and Budget memorandum to all federal agencies stating that “regulations to be finalized in this Administration should be proposed no later than June 1, 2008, and final regulations should be issued no later than November 1, 2008.” Nonetheless, it appears that the new Appeal Brief rules will still take effect on December 10, 2008.

"The major difference between the IDS/Markush versus Appeal Brief rules package is that the former group only relates to proposed rules while the latter group relates to already finally promulgated rules," adds Professor Wegner. "To the extent that [the] valiant effort to kill the Appeal Brief rules is unsuccessful with the present Administration, efforts will surely be made with a new Obama (or McCain) Administration to alter this most draconian set of rules."

Free CLE from the Audio "IP Colloquium"

2008-10-28T10:27:00.003-04:00

The Intellectual Property Colloquium at http://www.ipcolloquium.com/ is an online audio program devoted to intellectual property topics. According to UCLA Professor of Law Doug Lichtman,

We aspire to be something like an NPR talk show, but focused on copyrights
and patents, and aimed primarily at a legal audience. The programs are
neither lectures nor debates. They are conversations, ideally thoughtful
ones, with guests drawn from academia, the entertainment community, and the
various technology industries.Each program lasts one hour; is downloadable; and
(the kicker) any lawyer who listens to our programs can earn (free) CLE credit
in California, New York, and any state that accepts one of those through
reciprocity. (We should soon be able to offer CLE in all the states, but
for now the combination of California, New York, and reciprocity should cover
most of our audience regardless.)I host each program; and our first one, a
lively conversation with Fred von Lohmann of the EFF, is up and ready to
go. A schedule of up-coming shows is already posted on the site, as are a
variety of subscription features that provide updates every time a new audio is
available.

USPTO Board Holds U.S. Provisional Application as Prior Art on its Filing Date

2008-10-23T11:10:00.001-04:00

In Ex parte Yamaguchi (USPTO, August 28, 2008), the Board of Patent Appeals and Interferences held that U.S. provisional patent applications act as prior art under 35 U.S.C. §102(e) as their filing date, rather than the year-later filing date of any corresponding utility patent application. As noted by Professor Crouch, "This holding is in tension with the controlling precedent of In re Wertheim, 646 F.2d 527 (CCPA 1981)."

According to the five-member panel opinion by Administrative Patent Judge Jefferey,

Narayanan claims benefit under 35 U.S.C. §119(e) to Provisional Application No. 601254,437, filed December 8,2000 ("the provisional application), a date before the present application's putative foreign priority date. . . . [T]he anticipation issue in this appeal [therefroe] turns on whether Narayanan qualifies as prior art
under §102(e).

The two types of applications for patent that are relevant to this appeal are established by statute. First, §111 (a) provides for a standard written application that requires a specification, drawing, oath, and claims that must be accompanied by the requisite fee. 35 U.S.C. § 11l(a) (2002). Second, §111 (b) provides for a provisional application that must contain a specification and a drawing, the application also accompanied by the requisite fee. 35 U.S.C. § 111(b) (2002).
In sum, the statutory scheme of Title 35 indicates that Congress intended for "applications for patent" under §102(e) to apply to both regular utility applications and provisional applications, particularly when considering §111 (b) and §102(e) together. As a published "application for patent" under this statutory framework, a provisional application - like a regular utility application - constitutes prior art for all
that it teaches and, as such, promotes the progress of the useful arts.

As noted by Administrative Patent Judge Torczon in his concurring opinion,

If [this decision] is correct, In re Wertheim, 646 F.2d 527 (CCPA 1981), is no longer tenable authority.

. . . Wertheim posits a but-for theory for accepting a patent as prior art under 35 U.S.C. §102(e). According to this theory, a patent can only be prior art if it satisfies the fiction that it would have been available as of an earlier filing date but for delays in the United States Patent and Trademark Office. Thus, in Wertheim, the reference patent could not be used as of its earliest filing date because the issued claims depended on subject matter that had been added in intervening benefit applications. 646 F.2d at 536. Under the but-for test, a provisional application could never be used for a filing date under §102(e) because a provisional application cannot issue as a patent (or be a published application) without some additional action by the
applicant.

. . . Wertheim requires a strained reading of statute and precedent to address a misplaced concern about secret prior art. Were we to follow Wertheim, we would reverse. Instead, I join my colleagues in their decision to affirm.

Another Computer Means-Plus-Function Claim Invalid for Failure to Disclose Algorithm

2008-10-20T18:18:00.002-04:00

In Net Moneyin Inc. v. Verisign, Inc. (October 20, 2008) the Federal Circuit affirmed that claim language reciting "first bank computer including means for generating an authorization indicia . . ." was invalid under 35 U.S.C. § 112 ¶ 2 where the specification failed to disclose an algorithm for accomplishing that function on the illustrated computer.

According to that portion of the opinion by Circuit Judge Linn:

A patent applicant who employs means-plus-function language "must set forth in
the specification an adequate disclosure showing what is meant by that language.
If an applicant fails to set forth an adequate disclosure, the applicant has in
effect failed to particularly point out and distinctly claim the invention as
required by the second paragraph of section 112." In re Donaldson Co., 16 F.3d
1189, 1195 (Fed. Cir. 1994) (en banc). To avoid purely functional claiming in
cases involving computer-implemented inventions, we have "consistently required
that the structure disclosed in the specification be more than simply a general
purpose computer or microprocessor." Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). "Because general purpose
computers can be programmed to perform very different tasks in very different
ways, simply disclosing a computer as the structure designated to perform a
particular function does not limit the scope of the claim to ‘the corresponding
structure, material, or acts’ that perform the function, as required by section
112 paragraph 6." Id. "Thus, in a means-plus-function claim ‘in which the
disclosed structure is a computer, or microprocessor, programmed to carry out an
algorithm, the disclosed structure is not the general purpose computer, but
rather the special purpose computer programmed to perform the disclosed
algorithm.’" Id. (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999)). Consequently, a means-plus-function claim element for
which the only disclosed structure is a general purpose computer is invalid if
the specification fails to disclose an algorithm for performing the claimed
function. See id. at 1337-38.
There is no dispute in this case that the specification fails to disclose an algorithm by which a general purpose bank computer "generat[es] an authorization indicia." [FOOTNTE 3: At oral argument, counsel for NMI conceded that "[t]here is nothing in the written description that expressly states what is going on inside that bank computer." Oral Arg. at 20:10-20:15, available at http://oralarguments.cafc.uscourts.gov/mp3/2007-1565.mp3.] As a result, the district court correctly concluded that claims 1, 13, and 14 are indefinite under 35 U.S.C. § 112 ¶ 2. We therefore affirm that part of the judgment.

The decision reiterated that the test for anticipation by a single reference under 35 USC § 102 requires that the elements in a single reference be “arranged or combined in the same way as in the claim:”

[A]rranged as in the claim’ is readily understood in relation to claims drawn to things such as ingredients mixed in some claimed order. In such instances, a reference that discloses all of the claimed ingredients, but not in the order claimed, would not anticipate, because the reference would be missing any disclosure of the limitations of the claimed invention ‘arranged as in the claim.’ But the ‘arranged as in the claim’ requirement is not limited to such a narrow set of “order of limitations” claims. Rather, our precedent informs that the ‘arranged as in the claim’ requirement applies to all claims and refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. The test is thus more accurately understood to mean ‘arranged or combined in the same way as in the claim.’”

JPO "Super Accelerated Examination" Allows Patent in Seventeen Days

2008-10-20T18:15:00.001-04:00

On October 1, 2008, the Japan Patent Office (JPO) implemented a trial "super accelerated examination" system on a trial basis. According to Japan Today, Keio University received a patent for a process for detecting toxic metals following a screening process that took just 17 days. "The time spent on the examination was the world’s shortest," government officials reportedly said.

According to Keisen Associates, the eligibility is as follows:

a) Applicants that have already requested an examination, but for which the examination process has not yet started (i.e., Reasons for Refusal and other
office actions have been taken)
b) "Working invention-related application", i.e., applications filed by an applicant or a licensee who has already commercialized the invention or plans to commercialize the invention within two years from the filing date
c) "Internationally filed Applications", i.e., applications that were filed with both the JPO and at least one foreign IP Office
d) Applicants that file online

According to Mami Akasaka at Tech-On!, "the JPO is planning to continue the test for at least six months and lead to the revision and official operation of the system after considering the opinions of the applicants who used the test system."

Intent to Deceive Inferred

2008-10-17T14:22:00.002-04:00

In Praxair v. ATMI (September 29, 2008), the Federal Circuit concluded that intent to deceive for inequitable conduct may be inferred from findings: (1) that the RFO art was highly material to the prosecution of the ’115 patent, (2) that the applicants knew of the RFO art and knew or should have known of its materiality, and (3) that the patentee has failed to come forward with any credible good faith explanation for the applicants’ failure to disclose prior art use of RFOs to the PTO.

Customer Applications and Training Insufficient to Show Specific Intent for Inducement

2008-10-16T11:11:00.004-04:00

In Kyocera Wireless Corp. v. International Trade Commission (October 14, 2008), the Federal Circuit vacated and remanded the ITC’s determination of induced infringement for failing to examine whether Qualcomm's conduct satisfied the specific intent requirement.

The decision noted that the Commission found Qualcomm’s MSM chips infringe the ’983 Patent’s asserted claims when they are programmed with computer source code ("system determination software") that implements battery-saving features such as reducing the frequency of scanning for network access points. The ITC determined that Qualcomm’s handset manufacturer customers directly infringe the ’983 Patent by making handsets that incorporate the accused MSM chipsets and system determination software. The ITC further determined that Qualcomm induces the infringing acts of its handset manufacturer customers by, inter alia, providing customers with the system determination software, training them on implementation of their mobile devices, providing software and firmware updates, offering customer support, furnishing promotional and technical documents for the accused MSM chipsets, and recommending that its customers implement battery saving features.

According to the opinion by Circuit Judge Radar, that was not enough to prove inducement:

Under 35 U.S.C. § 271(b), "[w]hoever actively induces infringement of a patent shall be liable as an infringer." To prevail on inducement, "the patentee must show, first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement." Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002) (citation omitted). In DSU Med. Corp. v. JMS Co., this court clarified en banc that the specific intent necessary to induce infringement "requires more than just intent to cause the acts that produce direct infringement. Beyond that threshold knowledge, the inducer must have an affirmative intent to cause direct infringement." 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc review of intent requirement).
The ITC released its initial determination before this court’s clarification of the
intent standard for inducement in DSU. The ITC’s administrative law judge
understood Federal Circuit law to permit a finding of inducement upon "a showing
of either general or specific level of intent" and expressly adopted Broadcom’s
argument that "the only intent required of the defendant is the intent to cause
the acts that constitute infringement." Initial Determination, 2006 ITC LEXIS
803 at *126, *225. Applying this understanding of the law, the Commission
determined that "Qualcomm intends to induce infringement because it provides its
customers with the system determination code." Id. at *225.

Although thought to be proper at the time, the approach adopted by the ITC is improper under this court’s decision in DSU. Proof of intent to cause infringing acts is a necessary but not sufficient condition for induced infringement. Inducement additionally requires "evidence of culpable conduct, directed to encouraging another’s infringement," i.e., specific intent to encourage infringement. DSU, 471 F.3d at 1306. This specific intent may, of course, be demonstrated by circumstantial evidence such as that presented by Broadcom. Id. But the ITC’s conclusion that "Qualcomm intends to induce infringement because it provides its customers with the system determination code" evinces, at most, a finding that Qualcomm generally intended to cause acts that produced infringement. Thus, the current record falls short of the
necessary intent showing for inducement—that Qualcomm possessed a specific
intent to cause infringement of Broadcom’s patent.

Comparative Examination Duration Distributions Across Patent Offices

2008-10-16T10:48:00.003-04:00

Source: "Application pendency times and outcomes across four patent offices," by Paul H. Jensen, Alfons Palangkaraya, and Elizabeth Webster of the Intellectual Property Research Institute of Australia, Melbourne Institute of Applied Economic and Social Research, University of Melbourn

USITC Limited Exclusion Order Does Not Apply to Non-Respondents

2008-10-16T09:46:00.003-04:00

There are two types of import exclusion orders issued by the U.S. International trade Commission -- general exclusion orders and limited exclusion orders. A general exclusion order directs the U.S. Customs Service to exclude all infringing articles, without regard to source. In contrast, a limited exclusion order directs the Customs Service to exclude all infringing articles that originate from a specified firm that was a respondent in the Commission investigation.

In Kyocera Wireless Corp. v. International Trade Commission (October 14, 2008), the Federal Circuit vacated and remanded a limited exclusion order ("LEO") by the International trade Commission against the importation of all downstream products containing the accused technology. Despite the broad downstream scope of the LEO, Broadcom named only Qualcomm as a respondent in its ITC complaint.

According to the opinion by Circuit Judge Radar,

. . . this court has consistently honored the . . . distinction between limited and general exclusion orders. For example, this court has held that LEOs "only apply to the specific parties before the Commission in the investigation." Fuji Photo Film Co. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). By contrast, GEOs "bar the importation of infringing products by anyone, regardless of whether they were a respondent in the Commission's investigation." Id.; see also Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004) ("A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order."). . . .
In summary, Section 337 permits exclusion of the imports of non-respondents only via a general exclusion order, and then too, only by satisfying the heightened requirements of 1337(d)(2)(A) or (B). The statute permits LEOs to exclude only the violating products of named respondents. Because the Act speaks unambiguously to the precise question at issue in this case, the Chevron inquiry is at an end. This court must simply "give effect to the unambiguously expressed intent of Congress." Chevron, 467 U.S. at 843. Because the Commission did not issue a GEO under either of the two statutory exceptions in 19 U.S.C. § 1337(d)(2), the Act prevents the Commission from issuing a limited exclusion order that excludes products of those who are not "persons determined . . . to be violating [Section 337]." Accordingly, this
court vacates the ITC’s exclusion order. On remand, the Commission can reconsider its enforcement options.

. . . Finally, this court vacates and remands the exclusion order fashioned by the Commission because Section 337 unambiguously limits the ITC’s exclusionary authority to persons named by the complainant.

No Appellate Deference to Post-Judgment USPTO Determinations

2008-10-13T11:41:00.004-04:00

From Technology Licensing Corp. v. Videotek Inc. (Federal Circuit; October 10, 2008):

Whether the later reissuance of the ’250 patent by the PTO, subsequent to the decision by the trial court in this case, is pertinent to the appeal is a different question. It is self-evident that the PTO’s subsequent reaffirmation of its earlier position, that claim 33 is a valid claim despite the alleged prior art, can have no legal effect as such on the already-rendered judgment of a court of competent jurisdiction. No one suggests that the PTO has power to exercise review authority over a judgment of a federal trial court.
That said, there remains the question of what deference, if any, needs to be accorded on appeal to such an administrative re-determination when it first appears at the last moment in an appeal from a trial court’s final judgment. It hardly needs noting that it is the trial court’s decision, not the PTO’s, that is before us on appeal. The reissuance of the patent occurred after the trial court rendered its final judgment. An appellate court ordinarily declines to consider new evidence or argument not previously presented to the trial forum whose judgment is under review. We think that, in a circumstance such as this, judicial efficiency and the policy of repose counsels against our re-weighing of the evidence to add an additional deference-thumb to the scale, or, even more disruptive, our asking the trial court to reopen the entire invalidity question to reweigh the intangible worth of additional deference.
This is not to say that the determinations made by the corps of examiners are not important, or should not be worthy of appropriate deference to their expertise in these technical matters, especially when we have the benefit of well-reasoned explications. It is to say that when dealing with the intangible worth to be accorded an administrative agency’s decision making, the judicial process cannot be held hostage to the timing of either the agency or the litigants who have invoked the agency’s further review. In some circumstances a party may be able to obtain a stay from the trial court while awaiting the sought-for agency action; absent that, and absent extenuating circumstances not here present, the case must be decided on the record the litigants present for appeal.

Federal Circuit Clarifies Evidentiary Burdens

2008-10-13T11:24:00.003-04:00

In Technology Licensing Corp. v. Videotek Inc. (October 10, 2008) the Federal Circuit clarified the terminolgy that it uses surrounding evidentary burdens:

First, a clarification of terminology. We will refer to the generic problem of burdens only in the plural—burdens of proof—because there are within that phrase two distinct, and quite different, ideas. One is the burden of persuasion. That is the ultimate burden assigned to a party who must prove something to a specified degree of certainty—beyond a reasonable doubt (the criminal law standard of proof for guilt); by a preponderance of the evidence (the usual civil law standard for proof of a fact); or, perhaps, something in between, such as "clear and convincing," the patent law evidentiary standard for establishing that a patent, otherwise presumed valid, is invalid . . . . Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses. see 35 U.S.C. § 282; Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.See generally Christopher B. Mueller & Laird C. Kirkpatrick, Evidence § 3.1 (1995); Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice & Procedure § 5122 (2d ed. 2005).
A quite different burden is that of going forward with evidence—sometimes referred to as the burden of production—a shifting burden the allocation of which depends on where in the process of trial the issue arises. See generally Christopher B. Mueller & Laird C. Kirkpatrick, Evidence §§ 3.1, 3.2 (1995); Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice & Procedure § 5122 (2d ed. 2005). We understand, and we shall use here, the phrase ‘going forward with evidence’ to mean both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record, as the case may require.
PowerOasis was issued between the time the briefing in this case was completed and the time oral argument in the case was held.
In affirming the trial court’s judgment, this court’s opinion noted that the trial court "held that PowerOasis had the burden of proving that it is entitled to claim priority to the filing date of the Original application." 522 F.3d at 1303. In our affirmance, however, we stated that once T-Mobile satisfied its initial burden of production by coming forward with evidence that the MobileStar Network was anticipatory prior art, "the burden was on PowerOasis to come forward with evidence to the contrary." Id. at 1305 (emphasis added). We then concluded that the "district court therefore correctly placed the burden on PowerOasis to come forward with evidence to prove entitlement to claim priority to an earlier filing date." Id. at 1305-06 (emphasis added).
Nevertheless, Gennum is not alone in reading PowerOasis to have modified the traditional burdens rule so that the patentee has the burden of persuasion to prove it was entitled to the earlier filing date. Carefully read, however, our decision in PowerOasis says nothing more than, and should be understood to say, that once a challenger (the alleged infringer) has introduced sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim, the patentee has the burden of going forward with evidence and argument to the contrary. As we noted earlier, it is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed. Correctly understood, PowerOasis is fully consistent with this understanding; until such time as these rules are abrogated by statute, by this court sitting en banc, or by the Supreme Court, the opinion in PowerOasis could not be otherwise.

TTAB Reverses False Connection Refusal of "MARIA CALLAS" for Jewelry

2008-10-10T12:07:00.002-04:00

Thanks to John L. Welch at the TTABlog for pointing out In re MC MC S.r.l., Application No. 79022561 (September 26, 2008) where the U.S. Trademark Trial and Appeal Board reversed a Section 2(a) "false connection" refusal of the mark MARIA CALLAS for jewelry and other goods:

In order to establish this Section 2(a) bar to registration of a now-deceased natural person's name, the PTO must show, inter alia, that there are heirs or other successors who are entitled to assert that person's right to the use of the designation. Here, the "contradictory" evidence led the Board to give the Applicant the benefit of the doubt.
. . . Based on the totality of the evidence of record, the Board expressed its "doubt as to whether there is any successor in interest entitled to assert rights, as contemplated under Section 2(a), to the Maria Callas name or persona. In other words, it is unclear whether the rights that Ms. Callas once possessed in her name or persona devolved to anyone. The record is replete with contradictory information on this point."
Because the burden of proof is on the PTO to establish that applicant’s mark falsely suggests a connection with the particular name or persona, the Board sided with Applicant: "In view of the significant doubt remaining as to whether anyone currently possesses rights in the name 'Maria Callas,' and resolving such doubt in applicant’s favor, we find that the examining attorney has not met her burden in establishing the false suggestion of a connection refusal under Section 2(a)." . . .

Update on Appeal Rule and Paperwork Reduction Act

2008-10-10T11:58:00.003-04:00

Thanks to David Boundy for poiting out that the USPTO has "not made its submission to OMB requesting clearance under the Paperwork Reduction Act for the Appeal Rule easily available on its web site. However, the PTO's submission is available at the OMB web site."

According to David,

The single most important document is this one
http://www.reginfo.gov/public/do/DownloadDocument?documentID=89627&version=0
Further background is available at: http://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=200809-0651-003 http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=200809-0651-003#section0_anchor (click the "All" box at the top of the page)
The materials on the Appeal Rule and the public comments are at http://www.uspto.gov/web/offices/com/sol/notices/72fr41472.pdf http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf http://www.uspto.gov/web/offices/pac/dapp/opla/comments/bpai/bpai1.html http://www.uspto.gov/main/homepagenews/2008sep03.htm

District Court's Five Year Delay in Issuing Opinion After a Patent Trial Did Not Warrant Reassignment of the Case on Remand

2008-10-09T08:23:00.002-04:00

According to the IP Law Observer, in Cohesive Tech. Inc. v. Waters Corp., Fed. Cir. No. 08-1029 (10/7/08), "the panel considered several issues in affirming in part rulings by the district court on a dispute about patents for high pressure liquid chromatography, and refused to reassign the case despite a five year delay after trial before the district court issued its opinion."

Alleged infringers, file your next DJ action with Judge Douglas P. Woodlock of the United States District Court for the District of Massachusetts. . . .

Anticipation Not "the Epitome of Obviousness"

2008-10-08T17:15:00.000-04:00

In Cohesive Tech. Inc. v. Waters Corp.. (October 7, 2008), the Federal Circuit held the district court erred by granting judgment as a matter of law on the issue of anticipation before the jury was allowed to consider the claim.

The district court did not make a finding that no reasonable jury could conclude that the asserted references anticipated. Rather, the district court itself characterized the anticipation case as “iffy.” Specifically, after reviewing Waters’s evidence and argument on anticipation and obviousness, the district court concluded that “the contentions that the defendant is making [are] best captured by obviousness,” rather than anticipation. The district court expressly stated that it did not understand, as a matter of “strategic judgment,” why a defendant “would want [a] charge on anticipation when they get one on obviousness.”

According to the opinion by Circuit Judge Linn,

Despite theoften quoted maxim that anticipation is the “epitome of obviousness,” In re Kalm, 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of patentability and therefore separate defenses available in an infringement action. See 35 U.S.C. § 282 (2000). . . .

While it is commonly understood that prior art references that anticipate a claim
will usually render that claim obvious, it is not necessarily true that a verdict of
nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed.Cir. 2003) (“Succinctly put, the various unenforceability and invalidity defenses that maybe raised by a defendant—inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under §
103—require different elements of proof.”). . . .
Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp., 767 F.2d 853, 857 (Fed. Cir. 1985) (“In a § 103 obviousness analysis, Graham [v. John Deere Co., 383 U.S. 1 (1966)] requires that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the priorart, and (4) the so-called ‘secondary considerations.’”), with Hakim v. Cannon AventGroup, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) (“‘Anticipation’ means that theclaimed invention was previously known, and that all of the elements and limitations ofthe claim are described in a single prior art reference.”). And although anticipation canbe proven inherently, proof of inherent anticipation is not the same as proof ofobviousness. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir.2005) (“[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency.”); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (“[O]bviousness is not inherent anticipation.”). Thus, “it does not follow that every technically anticipated invention would also have been obvious.” In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).2
FOOTNOTE 2: The dissent claims categorically that “every anticipated claim is obvious.”Post at 3. But this is not correct. Consider, for example, a claim directed toward aparticular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.
This is precisely why our precedent has rejected reliance on the “legal homily”
that “anticipation is the epitome of obviousness.” Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a “long line of precedent” supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the “epitome” maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103. See Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998)(remarking in footnote that trial court did not err in allowing parties to present argument on anticipation during trial on obviousness); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (prefacing quoted discussion of relationship between anticipation and obviousness with “it is never necessary to so hold”); Fracalossi, 6 F.2d at 794 (addressing whether specific anticipation rejection was sufficient evidentiary support for obviousness rejection); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)(affirming § 103 rejection when § 102 rejection would also have been appropriate); In re Kalm, 378 F.2d 959, 963(CCPA 1967) (reversing anticipation rejection). We cannot conclude—as the dissent’s reasoning implies—that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.

OMB Collecting Comments on Paperwork Burden of New Appeal Rules

2008-10-08T13:34:00.006-04:00

by Dr. Richard B. Belzer (via David Boundy)

BACKGROUND

Today the PTO published a notice in the Federal Register inviting public comments on paperwork burdens associated with the Ex parte Appeal Rule (73 Fed. Reg. 32937-32977, June 10, 2008).

The Paperwork Reduction Act (44 U.S.C. 3501 et seq, 5 C.F.R. Part 1320) is a very important but almost completely unknown law. It's purpose is to protect the public from abusive governmental demands for information. Unlike previous notice-and-comment periods,
this time comments go to the Office of Management and Budget, a neutral arbiter outside the PTO whose statutory responsibility is to ensure that federal agencies treat the public fairly.

THIS INFORMATION COLLECTION ("ICR") IS VERY IMPORTANT

Without OMB's approval, the Patent Office has no legal authority to compel patent applicants to comply with the new Rules.

WHAT YOU NEED TO DO

Obtain the documentation from the PTO.

The first thing to do is send an email request to the PTO asking for a copy of the relevant documents:

To: Susan.Fawcett@uspto.gov
Subject Line: 0651–00xx Board of Patent Appeals and Interferences (BPAI)
Actions copy request
Message Body: Please send by reply email a copy of this ICR and the Supporting Statement.

Please include a bcc to me (rbbelzer [at] post.harvard.edu) so that I can count how many requests are sent to the PTO as a result of this alert.

You should receive at least two documents (we are awaiting our copies). The text of the ICR will contain summary information. By regulation, the Supporting Statement must include objectively supported estimates of burden, and these estimates must be transparent and easy for you to reproduce to see how they did it.

For reference, the definition of paperwork "burden" is an expansive one; see the text below.

Estimates based on the “professional judgment,” “belief,” or "opinion" of Patent Office personnel, or estimates with no disclosed basis, do not qualify as “objectively supported.”

Submit a public comment to OMB.

For the next 30 days, OMB will be accepting public comment on the paperwork and recordkeeping burdens associated with the Appeal Rule. By law, OMB has 60 days to either approve or disapprove the ICR. That deadline will run out very close to December 10, 2008, effective date of the Appeal Rule. For that reason, it is imperative that public comments be submitted as early as possible. Do not wait until Day 29 to decide to do this.

It is essential that OMB hear from you. The more thoughtful, reasoned, and documented public comments OMB receives, the better. Usually, OMB does not receive any public comments at all, and in these cases it is OMB is compelled by necessity to assume that what the agency provided is valid and reliable. Your job is to make sure OMB gets higher quality information.

Public comments on the ICR should be sent as soon as possible, and must be sent by November 7, 2008, via email to:

Nicholas A. Fraser
Desk Officer for USPTO
Office of Information and Regulatory Affairs
Office of Management and Budget
Nicholas_A._Fraser@omb.eop.gov

What to include in your public comment.

Public comments to OMB should address the following issues:

Has the PTO provided an objectively-based estimate of the number of hours it will take to comply with the Appeal Rule? Historically, the Patent Office has severely underestimated the number of hours, and has failed to provide any analytical transparency into the sources or methods employed. Often, the PTO's burden estimates consist of mere "judgment" or "belief."

Has the PTO provided an objectively-based estimate of the opportunity cost of each of these hours? Historically, the Patent Office has significantly understated the
hourly cost of attorney time, and assumed that tasks normally performed by
attorneys can be performed by lower-cost paralegals and administrative staff instead.

Has the PTO provided an objectively-based estimate of the number of applications expected to be appealed? There is considerable controversy about
how many appeals should be expected. For purposes of public comment on
this ICR, the Continuations Rule, currently enjoined by the District Court
in Tafas v. Dudas but now under appeal, should be assumed to apply.
Do not assume that Tafas will be upheld. You are entitled to take the PTO at its
word, that issues formerly resolved through continuations must now be
resolved through appeal.

Did PTO contact you for assistance or information to help them estimate the burden associated with the Ex parte Appeal Rule? By
law and regulation, the PTO is required to consult with those who would bear the burden of complying with information collection requirements. They do not have to consult with all of you, but they do have to consult with some of you. Statements from the organizations that logically should have been consulted (e.g., AIPLA, ABA-IP, IPO, NAPP) stating that they were not consulted would be especially helpful.

Which elements of the Ex Parte Appeal Rule require you to submit information that the PTO already has in its possession, albeit in another form? It is against the law for OMB to approve the collection of duplicative information. Thus, most contents of the appendix required by current and proposed 37 C.F.R. § 41.37(t) are simply illegal. Are there any other provisions that you believe are duplicative?

I'd very much appreciate your help ensuring that OMB receives a rich set of highly informative public comments. I would like to make sure that comments are submitted by a variety of entities (organizations, firms, large, small, from a variety of technological areas), and I can help you target your efforts to be informative without being tendentious. A series of conference calls may be scheduled to assist you. To indicate interest in participating, please contact me by email at rbbelzer [at] post.harvard.edu or by phone at 703-780-1850.

Richard B. Belzer

(Dr. Belzer is the Harvard-educated and former White House staff economist that provided one of the affidavits in the Tafas v Dudas litigation explaining the PTO's lack of compliance with basic rulemaking procedure, http://docs.justia.com/cases/federal/district-courts/virginia/vaedce/1:2007cv00846/221151/178/1.pdf, and and gave OMB an analysis of the Continuations, Claims and IDS rules http://www.reginfo.gov/public/do/DownloadDocument?documentID=57744&version=1 )

APPENDIX: DEFINITION OF "BURDEN"5 C.F.R. 1320.3(b)(1):

Burden means the total time, effort, or financial resources expended by persons to generate, maintain, retain, or disclose or provide information to or for a Federal agency, including:

(i) Reviewing instructions;
(ii) Developing, acquiring, installing, and utilizing
technology and systems for the purpose of collecting, validating, and verifying
information;
(iii) Developing, acquiring, installing, and utilizing technology
and systems for the purpose of processing and maintaining information;
(iv) Developing, acquiring, installing, and utilizing technology and systems for the
purpose of disclosing and providing information;
(v) Adjusting the existing ways to comply with any previously applicable instructions and requirements;
(vi) Training personnel to be able to respond to a collection of information;
(vii) Searching data sources;
(viii) Completing and reviewing the collection of information; and
(ix) Transmitting, or otherwise disclosing the information.

New USPTO Patent Appeal Procedures Start December 10, 2008

2008-10-03T09:55:00.000-04:00

On June 10, 2008, the USPTO published new Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Final Rule. The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.

The change "represents an extremely expensive and highly technical trap for the unwary that will severely punish underfunded entities as well as boutiques unaccustomed to detailed procedural practice," comments Professor Wegner. He sees the this portion of the Notice as "the key reason why the PTO has found it necessary to make this change in the rules:"

Presently, the Board is experiencing a rapid increase in ex parte appeals. In FY
2007, the Board received 4639 ex parte appeals. The number of appeals received
in FY 2007 exceeded the appeals received in FY 2006 by more than 1000 appeals. In FY 2008, the Board expects to receive more than 6000 ex parte appeals. The amendments to the rules governing ex parte appeals are one item of a five point plan to ensure that the Board will be able to handle an increasing number of ex parte appeals in a timely manner.

According to the Notice, "the primary changes in this rule are:"

The requirements for an appeal brief include new sections for jurisdictional statement, table of contents, table of authorities, statement of facts, new format for arguments in the appeal brief and for claim support and drawing analysis section and means or step plus function analysis section in the appendix of the appeal brief, new section for table of contents in the evidence section of the appendix, new format in 14-point font, and 30-page limit for the grounds of rejection, statement of facts, and argument sections,
The requirements for a reply brief include new sections for table of contents, table of authorities, statement of additional facts, new format for arguments in the reply brief, new format in 14-point font, and 20-page limit for the statement of additional facts and argument sections,
The requirements for a request for rehearing include new sections for table of contents, table of authorities, new format for arguments in the request for rehearing, new format in 14-point font, and 10-page limit for the argument section,
new grounds of rejection are no longer permitted in an examiner’s answer,
the examiner’s response to a reply brief is eliminated,
petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,
petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and
a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

Other potentially noteworthy aspects of the changes include:

The amended rules replace the requirement for a summary of the invention with a claims and drawing analysis and a means or step plus function analysis. For each independent claim involved in the appeal and each dependent claim argued separately, the claim support and drawing analysis section in the appendix shall consist of an annotated copy of the claim (and, if necessary, any claim from which the claim argued separately depends) indicating in boldface between braces ({ }) the page and line or paragraph after each limitation where the limitation is described in the specification as filed. If there is a drawing or amino acid or nucleotide material sequence, and at least one limitation is illustrated in a drawing or amino acid or nucleotide material sequence, the ‘‘claims support and drawing analysis section’’ in the appendix shall also contain in boldface between the same braces ({ }) where each limitation is shown in the drawings or sequence.

The amended rules also require a ‘‘statement of facts’’ section where the appellant is required to set out the material facts relevant to the rejections on appeal. The ‘‘statement of facts’’ shall set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal. A fact shall be supported by a reference to a specific page number of a document in the Record and, where applicable, a specific line or paragraph, and drawing numerals. A general reference to a document as a whole or to large portions of a document does not comply with the requirements of this paragraph.

The amended rules require an ‘‘argument’’ section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. The ‘‘argument’’ shall explain why the examiner erred as to each ground of rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees. Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct. For each argument an explanation must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. Each ground of rejection shall be separately argued under a separate heading. Unless a response is purely legal in nature, when responding to a point made in the examiner’s rejection, the appeal brief shall specifically identify the point made by the examiner and indicate where appellant previously responded to the point or state that appellant has not previously responded to the point. In identifying any point made by the examiner, the appellant shall refer to a page and, where appropriate, a line or paragraph, of a document in the Record.

Petitions are decided by the Chief Administrative Patent Judge of the Board. Under former rules, petitions are decided by the Director of each Technology Center.

The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.

The rules do not amend any of the rules relating to inter partes reexamination appeals. Except for citation of authorities, the rules do not amend any of the rules relating to contested cases.

When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together to decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether claims have been argued separately or as a group as to a ground of rejection will be resolved against appellant and the claims will be deemed to have been argued as a group.

the ‘‘means or step plus function analysis section’’ in the appendix shall consist of an annotated copy of the claim (and, if necessary, any claim from which the claim argued separately depends) indicating in boldface between braces ({ }) the page and line of the specification and the drawing figure and element numeral that describes the structure, material or acts corresponding to each claimed function.

For appellants taking advantage of the Office’s newly instituted pre-appeal brief conferences, an appeal brief is not due until the results of the pre-appeal conference are mailed to appellant.

Competition for 'Design-Wins' and Speculative Damages Support Non-Practicing Entity's Preliminary Injuction

2008-09-24T16:21:00.004-04:00

In Broadcom Corp. v. Qualcom Inc. (September 24, 2008), the Federal Circuit affirmed the district court did not abuse its discretion in issuing a permanent injunction where Broadcom provided evidence of irreparable harm and lack of adequate remedy at law, despite the fact that it does not practice the claimed inventions.

According to the opinion by Circuit Judge Linn,

The district court found that this factor [of irreparable harm] weighed in favor of an injunction with respect to both the ’317 and ’010 patents. Injunction Opinion at 10, 15. It remains an open question "whether there remains a rebuttable presumption of irreparable harm following eBay," Amado v. Microsoft Corp., 517 F.3d 1353, 1359 n.1 (Fed. Cir. 2008), but the district court did not abuse its discretion in finding irreparable injury here even if Broadcom benefits from no such presumption. The district court explained that the evidence at trial demonstrated that
[t]he market for baseband chips is unlike the typical market for consumer goods where competitors compete for each consumer sale, and the competition is instantaneous and on-going. . . . Competition for sales is
not on a unit-by-unit basis, but rather competition is characterized by
competing for "design wins" for the development and production of cell
phones which will embody the proposed chip. . . . In this kind of a market,
the exclusion has a competitive effect on a firm even if it does not have an
immediately available product.
Injunction Opinion at 5-6. And as identified by Broadcom, Qualcomm has
previously conceded this indirect competition. E.g., J.A. at 7785 n.7 ("Any cell
phone customer who has chosen between, e.g., Cingular (GSM) and Verizon (CDMA)
service knows that handsets and thus chipsets do compete and thus ‘substitute’
across standards.").
Thus, Broadcom provided evidence of irreparable harm, despite the fact that it does not currently practice the claimed inventions. . . . [T]he district court did not abuse its discretion in finding that allowing Qualcomm to sell CMDA2000 chips implementing Broadcom’s patented features would harm Broadcom’s efforts to market WCDMA solutions.
. . . We [also] agree with Broadcom that the district court did not abuse its discretion here [with regard to lack of adequate remedy at law], particularly in light of its findings that "the structural nature of a ‘design win’ market favors a finding that monetary damages are inadequate." Id. at 16. We also agree that the Verizon license has little bearing on the effect of a compulsory license to a direct competitor, particularly in light of these market realities. Additionally, while Broadcom’s damages expert testified that any comparison of Qualcomm’s lost profits based on an injunction to Broadcom’s potential gain would be "almost pure speculation at this point," J.A. at 3217, this difficulty in estimating monetary damages reinforces the inadequacy of a remedy at law. Cf. Jacobsen v. Katzer, 2008 WL 3395772, at *6 (Fed. Cir. Aug 13, 2008) (noting, in the copyright license context, that "because a calculation of damages is inherently speculative, these types of license restrictions might well be rendered meaningless absent the ability to enforce through injunctive relief").

Opinion of Counsel Relative to Question of Active Inducement

2008-09-24T16:07:00.003-04:00

In Broadcom Corp. v. Qualcom Inc. (September 24, 2008), the Federal Circuit held that the failure to procure a noninfringement opinion may be probative of intent in the context of active inducement.

According to the opinion by Circuit Judge Linn,

Because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer "knew or should have known" that its actions would cause another to directly infringe, we hold that such evidence remains relevant to the second prong of the intent analysis. Moreover, we disagree with Qualcomm’s argument and further hold that the failure to procure such an opinion may be probative of intent in this context. It would be manifestly unfair to allow opinion-of-counsel evidence to serve an exculpatory function, as was the case in DSU itself, see 471 F.3d at 1307, and yet not permit patentees to identify failures to procure such advice as circumstantial evidence of intent to infringe. Accordingly, we find no legal error in the district court’s jury instructions as they relate to inducement.

Thus, the district court did not err in instructing the jury to consider "all of the circumstances," nor in instructing the jury to consider—as one factor—whether Qualcomm sought the advice of counsel as to non-infringement. . . .

Personal Jusrisdiction Established with Request to Remove Convention Exhibitor

2008-09-24T11:41:00.005-04:00

In The Campbell Pet Co. v. Miale (September 18, 2008), the Federa Circuit held that the presence of the defendant patent owner in the State of Washington and her attempt to have a convention manager remove the allegedly infringing exhibitor, were sufficient to allow a federal district court in that state to exercise in personam jurisdiction over the defendants, a California corporation and a California resident.

According to the decision by Circuit Judge Bryson,

In June 2007, Ms. Miale attended a three-day convention in Seattle, Washington, sponsored by the American College of Veterinary Internal Medicine. During that convention, Ms. Miale demonstrated her products and offered them for sale. In the course of the convention, she took two orders for tables from residents of Virginia and New York, for a total purchase price of $9,400. Plaintiff Campbell also had a display at the convention featuring its products. In the course of the convention, Ms. Miale and her mother confronted several of Campbell’s employees who were attending the convention and accused them of infringing the Miale patents. According to the Campbell employees, Ms. Miale said that she had contacted her patent attorney and threatened Campbell with patent litigation, stating that patent attorneys and litigation were expensive. The Campbell employees further alleged that the convention manager told them that Ms. Miale and her mother had asked that the Campbell display be removed from the convention because it infringed Ms. Miale’s patents, but that the convention manager had declined to do so on the ground that she was not qualified to evaluate a claim of patent infringement. The Campbell employees also alleged that a customer informed them that Ms. Miale and her mother were "bad mouthing" Campbell and its products to Campbell’s customers, and referred to Campbell as "copiers of their patent."
. . . In this case, the district court erred by characterizing Ms. Miale’s actions at the June 2007 convention as constituting nothing more than attempts to inform Campbell of suspected infringement. As Campbell points out, its employees’ affidavits assert that Ms. Miale did more at the trade show than simply inform Campbell that its animal stretchers might infringe her patents. The affidavits state that Ms. Miale attempted to have Campbell’s allegedly infringing products removed from the convention and that she told Campbell’s customers that Campbell’s products were infringing. Of critical importance to the issue of personal jurisdiction, Ms. Miale’s attempts at "extra-judicial patent enforcement" were targeted at Campbell’s business activities in Washington and can fairly be characterized as attempts to limit competition from Campbell at the Seattle convention. Those efforts go beyond simply informing the accused infringer of the patentee’s allegations of infringement.
. . . In this case, . . . the defendants’ conduct went beyond simply informing the plaintiff that they regarded the plaintiff’s products as infringing. According to the plaintiff’s allegations, which were credited by the district court for purposes of the motion to dismiss, the defendants took steps to interfere with the plaintiff’s business by enlisting a third party to take action against the plaintiff. Although Ms. Miale’s efforts in that regard were not successful (unlike the efforts of the defendant in the Dudnikov case), in that the exhibit manager at the Seattle convention allegedly declined to remove Campbell’s exhibit at Ms. Miale’s behest, the pertinent step taken by Ms. Miale was the request that action be taken. The fact that her efforts did not succeed does not affect whether it is fair and just to treat her actions directed at
Campbell as sufficient to trigger personal jurisdiction in the forum state. Moreover, unlike the situation in both Dudnikov and Bancroft & Masters, Ms. Miale’s efforts at private enforcement occurred within the forum state and while she was personally present there. Under these circumstances, we hold that it would not be contrary to the principles of the Red Wing Shoe line of cases for the district court to assert jurisdiction over Ms. Miale and Ty-Lift based on Campbell’s allegations.
. . . Because Campbell’s allegations in its affidavits and complaint provide a sufficient basis for the district court to exercise specific jurisdiction over the defendants, we reverse the district court’s dismissal of Campbell’s complaint and remand the case to the district court for further proceedings consistent with this opinion.

New Federal Rule of Evidence 502 on Inadvertent Privilege Waiver

2008-09-24T09:09:00.003-04:00

According to WilmerHale,

On September 19, 2008, Federal Rule of Evidence 502 became effective, as President Bush signed into law P.L. 110-322, 122 Stat 3537. For an analysis of Rule 502's provisions and some likely consequences, please see the WilmerHale Email Alert published on September 12, 2008.

According to Marcia Coyle writing for the The National Law Journal on September 16, 2008,

Under the new federal rule, disclosure of privileged materials will not be a waiver of the privilege if disclosure is inadvertent; the holder of the privilege or protection took reasonable steps to prevent disclosure; and the holder took reasonable steps to rectify the error.

The rule also addresses the problem of "subject-matter waiver" by providing that, when a party produces one privileged document, any resulting waiver of the privilege would not extend to other related documents, as long as there was no intentional and
misleading use of protected information.

Improper Revival No Defense to Patent Infringement

2008-09-23T15:57:00.002-04:00

In Aritocrat Technologies Australia PTY Lmtd. v. International Game Tech. (September 22, 2008), the Federal Circuit held that "improper revival" may not be raised as a defense in an action involving the validity or infringement of a patent.

IGT alleged that the USPTO "improperly revived" the patent application by requiring Aristocrat only to show "unintentional delay." The district court concluded that the Patent Act permitted revival of an abandoned patent application only upon a showing of
"unavoidable delay." Aristocrat Techs. Austl. Pty, Ltd. v. Int’l Game Tech., 491 F. Supp. 2d 916, 924-29 (N.D. Cal. 2008). Next, the district court found that IGT was permitted, pursuant to 35 U.S.C. § 282, to raise the PTO’s alleged improper revival as a defense to infringement.

According to the decision by Circuit Judge Linn,

The salient question, then, is whether improper revival is "made a defense" by title 35. We think that it is not. Congress made it clear in various provisions of the statute when it intended to create a defense of invalidity or noninfringement, but indicated no such intention in the statutes pertaining to revival of abandoned applications. For example, 35 U.S.C. § 273 is entitled "Defense to infringement based on earliest inventor" and expressly provides that the provision "shall be a defense to an action for infringement." Similarly, 35 U.S.C. § 185 states that a patent issued to a
person who has violated the secrecy provisions of section 184 "shall be invalid," except under certain circumstances. Section 272 of title 35 provides that the temporary presence of a patented invention in the United States, if used exclusively for the needs of a vessel, aircraft, or vehicle, "shall not constitute infringement." The list goes on. What is important to note is simply that sections 133 and 371, relied upon by IGT, provide none of the signals that Congress has given in other circumstances to indicate that these sections provide a defense to an accused infringer. Rather, these provisions merely spell out under what circumstances a
patent application is deemed abandoned during prosecution and under what circumstances it may be revived. See 35 U.S.C. § 133 ("Upon failure of the applicant to prosecute the application within six months . . ., the application shall be regarded as abandoned . . . ."); id. § 371 ("Failure to comply with these requirements shall be regarded as abandonment of the application . . . ."). Because the proper revival of an abandoned application is neither a fact or act made a defense by title 35 nor a ground specified in part I patentability, we hold that improper revival may not be asserted as a defense in an action involving the validity or infringement of a patent.
Our conclusion that improper revival is not a defense comports with the approach we took in Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997), which we continue to believe is a sound one. In that case, we concluded that "[p]rocedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued." Id. at 960; see also id. ("Imperfection in patent examination, whether by the examiner or the applicant does not create a new defense called 'prosecution irregularities' amd does not rplace the experience-based criteria of Kingsdown, 863 F.2d 867 (Fed. Cir. 1988)]."). There is good reason not to permit procedural irregularities4
[footnote 4: We take this opportunity to point out that "prosecution irregularities" is distinct from "prosecution laches." Prosecution laches stems not from any procedural lapse or irregularity during prosecution, but rather from an abuse of statutory provisions that results, as a matter of equity, in "an unreasonable and unexplained delay in prosecution." Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 422 F.3d 1378, 1385 (Fed. Cir. 2005). Moreover, the legislative history of 35 U.S.C. § 282 suggests that it was intended to incorporate preexisting equitable defenses, including prosecution laches. Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 277 F.3d 1361, 1366 (Fed. Cir. 2002).]
during prosecution, such as the one at issue here, to provide a basis for invalidity. Once a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee’s right to exclude. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. This deluge would only detract focus from the important legal issues to be resolved—primarily, infringement and invalidity. We wish to stress, however, as we did in Magnivision, that where the procedural irregularity involves an "affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive," it may rise to the level of inequitable conduct, and is redressible under that framework. See Innogenetics, N.V. v. Abbott Labs.the applicant, does not create a new defense called ‘prosecution irregularities’ and does not displace the experience-based criteria of Kingsdown[ Medical Consultants, Ltd. v. Hollister, Inc.4 , 512 F.3d 1363, 1378 (Fed. Cir. 2008) (citations omitted); cf. Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1343-44 (Fed. Cir. 2003) .
Once a patent has issued, the procedural minutiae of prosecution have little relevance to the metes and bounds of the patentee’s right to exclude. If any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. This deluge would only detract focus from the important legal issues to be resolved—primarily, infringement and invalidity. We wish to stress, however, as we did in Magnivision, that where the procedural irregularity involves an "affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive," it may rise to the level of inequitable conduct, and is redressible under that framework. See Innogenetics, N.V. v. Abbott Labs. . . .

Point of Novelty Test Scrapped: Ordinary Observer Test for Design Patent Infringement Now "Informed by Prior Art"

2008-09-22T12:31:00.013-04:00

In Egyptian Goddess v. Swisa Inc. (September 22, 2008), the Federal Circuit held en banc that the "point of novelty" test should no longer be used in the analysis of a claim of design patent infringement.

According to the en banc opinion written by Circuit Judge Bryson,

. . . in accordance with Gorham and subsequent decisions, we hold that the "ordinary observer" test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article "embod[ies] the patented design or any colorable imitation thereof." Goodyear Tire & Rubber Co., 162 F.3d at 1116-17; see also Aminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc. . . .

In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear "substantially the same" to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. Where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.

We emphasize that although the approach we adopt will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement. Thus, as is always the case, the burden of proof as to infringement remains on the patentee. However, if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer. To be sure, we have stated that the burden to introduce prior art under the point of novelty test falls on the patentee. See Bernhardt, 386 F.3d at 1384. Under the ordinary observer test, however, it makes sense to impose the burden of production as to any comparison prior art on the accused infringer. The accused infringer is the party with the motivation to point out close prior art, and in particular to call to the court’s attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design. Regardless of whether the accused infringer elects to present prior art that it considers pertinent to the comparison between the claimed and accused design, however, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence. As in our recent decision in In re Seagate Technology, LLC, we "leave it to future cases to further develop the application of this standard." 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).

With regard to whether trial courts should conduct claim construction in design patent cases, the decision leaves

. . . the question of verbal characterization of the claimed designs to the discretion of trial judges, with the proviso that as a general matter, those courts should not treat the process of claim construction as requiring a detailed verbal description of the claimed design, as would typically be true in the case of utility patents.

Under this standard, the question before the court amounted to "whether an ordinary observer, familiar with the prior art Falley and Nailco designs, would be deceived into believing the Swisa buffer is the same as the patented buffer" (in that order below):

. . . It is agreed that the general shape of the accused nail buffer at issue in this case is the same as that of the patented buffer design. The difference between the two is that the accused buffer has raised buffing pads on all four sides, while the patented buffer has buffing pads on only three sides. The two closest prior art nail buffers before the court were the Falley nail buffer, which has a solid, rectangular cross section with slightly raised buffers on all sides, and the Nailco patent, which shows a nail buffer design having a triangular shape and a hollow cross section, and in which raised buffing pads are located on all three sides . . .
In light of the similarity of the prior art buffers to the accused buffer, we conclude that no reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design. In concluding that a reasonable fact-finder could not find infringement in this case, we reach the same conclusion that the district court reached, and for many of the same reasons. Although we do so by using the ordinary observer test as informed by the prior art, rather than by applying the point of novelty test, our analysis largely tracks that of the district court. After analyzing the Nailco patent and the claimed design, as they related to the accused design, the district court concluded that "in the context of nail buffers, a fourth side without a pad is not substantially the same as a fourth side with a pad." While the district court focused on the differences in the particular feature at issue rather than the effect of those differences on the appearance of the design as a whole, we are satisfied that the difference on which the district court focused is important, viewed in the context of the prior art.

Finally, although we do not adopt the "non-trivial advance" test employed by the panel in this case, we note that our analysis under the ordinary observer test is parallel to the panel’s approach in an essential respect. The panel focused on viewing the difference between the claimed and accused designs in light of the prior art, as we do. The panel wrote: "The Swisa buffers have raised, abrasive pads on all four sides. When considering the prior art in the nail buffer field, this difference between the accused design and the patented design cannot be considered minor." 498 F.3d at 1358. That point captures the essence of the rationale of our decision today, even though the panel decision employed a different analytical approach. For the foregoing reasons, we sustain the district court’s entry of summary judgment of no infringement, but we do so under the ordinary observer test in the form that we have adopted, and we hold that the accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, "inducing him to purchase one supposing it to be the other." without using the point of novelty test that we have disapproved. In the language used by the Supreme Court in Gorham,
81 U.S. at 528, we hold that the accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, "inducing him to purchase one supposing it to be the other."
AFFIRMED.

EPO Strike Set for September 18, 2008

2008-09-17T10:29:00.002-04:00

Thanks to the IAM Magazine Blog for pointing out that

The Stop Software Patents website carries a copy of a press release put out by SUEPO – the union representing European Patent Office examiners – to coincide with the one day strike of EPO staff and a protest to be held in Brussels, both of which are scheduled for this Thursday, 18th September.

For more, see "Union calls European patent examiners out on strike."

No Copyright First Sale Defense for Watches Made Overseas

2008-09-11T10:26:00.006-04:00

In Omega S.A. v. Costco Wholesale Corp. (September 3, 2008), the Ninth Circuit held that the copyright "first sale doctrine" in 17 U.S.C. § 109(a) did not provide a defense to an infringement action where

Costco obtained watches bearing the copyrighted design from the “gray market” in
the following manner: Omega first sold the watches to authorized distributors overseas. Unidentified third parties eventually purchased the watches and sold them to ENE Limited, a New York company, which in turn sold them to Costco. Costco then sold the watches to consumers in California. Although Omega authorized the initial foreign sale of the watches, it did not authorize their importation into the United States or the sales made by Costco.
. . . In summary, our general rule that § 109(a) refers “only to copies legally made . . . in the United States,” id., is not clearly irreconcilable with Quality King, and, therefore, remains binding precedent. Under this rule, the first sale doctrine is unavailable as a defense to the claims under §§ 106(3) and 602(a) because there is no genuine dispute that Omega manufactured the watches bearing the Omega Globe Design in Switzerland. Id.; Fed. R. Civ. P. 56(c); see also Swatch S.A. v. New City, Inc., 454 F. Supp. 2d 1245, 1253-54 (S.D. Fla. 2006) (concluding that Quality King is consistent with the interpretation that “lawfully made under this title” means “legally made . . . in the United States”); 2 Goldstein on Copyright § 7.6.1, at 143-44 (concluding that Quality King “indicates an intention not to disturb lower court holdings that the first sale defense is unavailable to importers who acquire ownership of gray market goods made abroad”).

Display of Medical Device at Trade Show Insufficient to Establish Personal Jusridiction for Patent Infringement

2008-09-09T12:15:00.004-04:00

In Medical Solutions Inc. v. C. Change Surgical (September 9, 2008), the Federal Circuit held that CCS’s mere display of the allegedly infringing medical device device at a trade show did not constitute a "use" under the patent laws sufficient to establish personal jurisdiction.

According to the opinion by District Judge Zagel sitting by designation,

Several courts addressing whether a defendant has "used" a patented invention have held that "the mere demonstration or display of an accused product, even in an obviously commercial atmosphere" is not an act of infringement for purposes of ' 271(a). Fluid Mgmt. Ltd. P’ship v. H.E.R.O. Indus., Ltd., No. 95-5604, 1997 WL 112839, at *4 (N.D. Ill. Mar. 11, 1997) (quoting Intermedics, Inc. v. Ventritex, Inc., 775 F. Supp. 1269, 1286 (N.D. Cal. 1991) (concluding that absent concurrent sales-oriented activity which results in, or at least substantially advances, an actual sale, the demonstration of an accused product at a scientific trade show does not constitute an infringing "use")); see also Brennan v. Mr. Hanger, Inc., 479 F. Supp. 1215, 1231 (S.D.N.Y. 1979) (noting that the mere display of the infringing hanger bars would not constitute an infringing "use").
footnote 3. A demonstration of an accused device plus the simultaneous solicitation of purchase orders has been held to amount to a sufficient degree of "selling" activity. See U.S. Envtl. Prods., Inc. v. Infilco degremont, Inc., 611 F. Supp. 371 (N.D. Ill. 1985). However, that
holding is inapposite here since MSI hangs its hat on the "uses" rather than the "sells" prong of ' 271(a).
The inquiry as to what constitutes a "use" of a patented item is highly case-specific, Van Well Nursery, Inc. v. Mony Life Ins. Co., 362 F. Supp. 2d 1223, 1229 (E.D. Wash. 2005). We find that the district court correctly considered and interpreted all of the facts with regard to CCS’s "use" of the allegedly infringing IntraTemp product at the trade show. In Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 699 F. Supp. 1576, 1580-81 (N.D. Ga. 1988), the court found that the plaintiff established a prima facie case for the exercise of personal jurisdiction where the defendant demonstrated the allegedly infringing knife-cutting machines at a trade show, but the defendant in that case also purposefully engaged in other activities related to the litigation in that forum. Here, MSI asserts nothing other than CCS’s activities, which appear to fall short of practicing all of the elements of any one claim, at the trade show as evidence to confer personal jurisdiction over CCS.

The ordinary meaning of "use" is "to put into action or service." NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005) (quoting
Webster’s Third New International Dictionary 2523 (1993)). MSI’s patented
technology pertains to systems for warming and controlling the temperature of
medical and surgical items. At the trade show, CCS displayed a prototype of its
product, staffed its booth with representatives, and made available brochures
about the product. But none of these activities was putting the IntraTemp device into service. MSI claims that "[t]he infringing InterTemp [sic] warmer was not just passively shown or displayed; CCS staffed its booth with several sales epresentatives, who actively demonstrated the IntraTemp’s actual functions in use." The portion of the joint appendix cited in support of this claim, however, does not indicate whether the IntraTemp device was used to heat medical items at the trade show. The closest evidence that MSI points to on appeal in support of its claim that CCS "actively demonstrated" IntraTemp at the trade show appears to be the declaration of Mr. Cordell stating that the CCS representative showed at least one attendee how to take the basin off the device when the basin still had fluid in it. Even if we accept as true that a CCS representative took a basin off an accused device during a trade show, that alone would not establish that the accused device was put into service so as to
constitute an infringing use. Much more would be needed to qualify as an infringing use, including that the device was used to heat medical items at the show. In this case we need not (and do not) decide whether the demonstration of a product at a trade show could ever be sufficient to establish an infringing use.4
footnote 4. That said, we do recognize other courts have held that demonstrations of a device are not proper evidence of "use" because using a device means using it to perform its actual function or service, not using it as a demonstrative display. See Union Asbestos & Rubber Co. v. Evans Prods. Co., 328 F.2d 949, 951 (7th Cir. 1964); Advanced Semiconductor
Materials Am., Inc. v. Applied Materials, Inc., No. 93-20853, 1995 WL
419747, at *6 (N.D. Cal. July 10, 1995) (holding that a demonstration
"hardly qualifies as using the patented process for its intended purposes").
We simply conclude that the facts as alleged in this case do not establish a prima facie case. For these reasons, we agree with the district court’s conclusion that CCS’s display and demonstration of IntraTemp at the trade show did not constitute a "use" of the allegedly infringing product.5

footnote 5. Because MSI fails to make a prima facie case of personal jurisdiction under the District of Columbia’s long-arm statute, we too do not reach the issue of whether the exercise of personal jurisdiction over CCS in the District of Columbia comports with the requirements of due
process.
. . . While we can conceive of situations where CCS’s conduct would constitute a “use” under the statute, such a situation would involve, at a minimum, practicing all of the elements of at least one claim. The declaration MSI provided gave no hint of such
an appropriate set-up, so the decision to deny discovery based upon that declaration was a judgment call the district court was entitled to make.

EPO E-Learning Modules

2008-09-08T09:41:00.002-04:00

Thanks to the Intellectual Property Intelligence Blog for pointing out the European Patent Office's free, e-learning webinars at http://www.epo.org/patents/learning/e-learning.html:

The European Patent Office currently offers the following e-learning modules in
order to maximise equal access to IP training throughout Europe and offer cost-saving and flexible opportunities for attending patent related IP courses on-line.

The European patent system
Revision of the European Patent Convention (EPC 2000)
European patent system
Biotechnology
Searching and documentation
Patent Information - general
The European Patent Classification
esp@cenet
"Search matters" seminar
IP, innovation, business and commerce
Growing business with IP
Patents: realising and securing value
Special topics
PCT in China

Substantial New Question of Patentability Raised During Reexam with Secondary Reference from Initial Examination and Prior Appellate Decision

2008-09-04T16:22:00.011-04:00

In In Re Swanson (September 4, 2008), the Federal Circuit held that under 35 U.S.C. § 303(a), as amended in 2002, despite consideration of U.S. Patent No. 4,094,647 ("Deutsch") in the initial examination as a secondary reference for obviousness and in prior appellate decision on anticipation, there was a substantial new question of patentability regarding whether Deutsch anticipated and made obvious claims 22-25 that made reexamination warranted.

According to the opinion by Circuit Judge Gajarsa,

. . . we sustained the judgment that Deutsch did not anticipate the asserted claims, noting that "the burden having been on Syntron to prove by clear and convincing evidence that the claims were anticipated, we cannot conclude that the jury verdict on anticipation was not supported by substantial evidence."
. . . The district court and this court did consider the precise question at issue on reexamination: whether Deutsch satisfies the "flowing" limitation of the asserted claims and, thus, anticipates them. And both courts upheld the validity of the ’484 patent in light of Deutsch. Nevertheless, the statutory language, legislative history, and different purposes underlying reexamination and federal court proceedings suggest that the determination of a substantial new question is unaffected by these court decisions.
. . . We agree with the PTO’s current position. Section 303’s language and legislative history, as well as the differences between the two proceedings, lead us to conclude that Congress did not intend a prior court judgment upholding the validity of a claim to prevent the PTO from finding a substantial new question of validity regarding an issue that has never been considered by the PTO. To hold otherwise would allow a civil litigant’s failure to overcome the statutory presumption of validity to thwart Congress’ purpose of allowing for a reexamination procedure to correct examiner errors, without which the presumption of validity never would have arisen. See Patlex, 758 F.2d at 604 ("A defectively examined and therefore erroneously granted patent must yield to the reasonable Congressional purpose of facilitating the correction of governmental mistakes."). . . .
We, therefore, conclude the Board did not err in holding that the prior district court litigation did not prevent the Deutsch reference from raising a "substantial new question of patentability" under § 303(a). As properly interpreted a "substantial new question of patentability" refers to a question which has never been considered by the PTO; thus, a substantial new question can exist even if a federal court previously considered the question.
Surmodics also argues that Deutsch does not raise "a substantial new question of patentability" because Deutsch was considered by the PTO during the initial examination and relied on as a secondary reference for rejecting various dependent claims as obvious.
Surmodics recognizes that the 2002 amendment to § 303 overrides our prior rule in In re Portola Packaging, where we held that a reference could not raise "a substantial new question of patentability" if it was previously considered by the PTO in reference to the same or broader claims. It nevertheless urges this court to adopt a bright-line rule that "would preclude rejections in reexaminations based solely on references used in a rejection of claims in the original patent prosecution." Appellant Reply Br. 14. We decline the invitation. Such a rule would be plainly inconsistent with the clear text of the amendment. Section 303(a) now mandates that "the existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office." Thus, under § 303(a) as amended, a reference may present a substantial new question even if the examiner considered or cited a reference for one purpose in earlier proceedings. Nothing in the statute creates an exception to this rule for references considered in the context of a rejection of prior claims. Indeed, such an exception would overwhelm the rule and thwart a central purpose of the amendment, to overrule In re Portola Packaging. In that case, as here, the issue was whether a piece of prior art relied on for a prior rejection could nevertheless create a new question of patentability sufficient to warrant a reexamination. See In re Portola Packaging, 110 F.3d at 787-89. After the amendment to § 303, the answer to that question must be yes.
. . . As the legislative history clarifies, to decide whether a reference that was previously considered by the PTO creates a substantial new question of patentability, the PTO should evaluate the context in which the reference was previously considered and the scope of the prior consideration and determine whether the reference is now being considered for a substantially different purpose. See H.R. Rep. No. 107-120, at 3 ("The appropriate test to determine whether a ‘substantial new question of patentability’ exists should not merely look at the number of references or whether they were previously considered or cited but their combination in the appropriate context of a new light as it bears on the question of the validity of the patent."); see also 147 Cong. Rec. H5359 (statement of Rep. Berman) ("Ideally, a reexamination could be requested based on prior art cited by an applicant that the examiner failed to adequately consider . . . .").
Determining the scope of an examiner’s previous consideration of a reference will generally require an analysis of the record of the prior proceedings to determine if and how the examiner used the reference in making his initial decisions. As we believe that this inquiry is most accurately viewed as a question of fact, we will review the Board’s findings regarding the scope of consideration of a reference during prior examinations for substantial evidence. See also H.R. Rep. No. 107-120, at 3 (stating that there should be "substantial evidence" that the examiner "did not properly understand the reference, or did not consider a portion of the reference in making his decision."). However, the ultimate question of whether the reexamination is based on a substantial new question of patentability, in light of how a reference was previously considered, remains a question of law, which we review de novo. While the standard is more flexible than before, we are mindful that Congress intended that the courts continue to "judiciously interpret the ‘substantial new question’ standard to prevent cases of abusive tactics and harassment of patentees through reexamination." H.R. Rep. No. 107-120, at 3.
We agree with the Board that whether Deutsch anticipates claims 22-24 raises a substantial new question of patentability under the amended § 303(a). Substantial evidence supports the Board’s conclusion that in the initial examination, "Deutsch was relied upon, as a secondary reference," for the limited purpose of "teaching immunoreactions in general, and not for the specific method steps claimed." In re Swanson, No. 2005-0725, Reexamination No. 90/006,785, at 18-19 (B.P.A.I. May 29, 2007). Deutsch was not evaluated as a primary reference that taught or made obvious the specific analytical method claimed. The independent claims, such as original claim 9, were found obvious without any reliance on Deutsch. Deutsch was cited only to reject the dependent claims that limited the analyte-reactant pair used in the method to a ligand-antiligand pair, e.g., original claim 10, or, more specifically, an antigen-antibody pair, e.g., original claim 11. Original Office Action at 9-10. The examiner explained that "it would be obvious that any known reaction within reasons [sic] could be incorporated in the modified method and apparatus of either Morison and [sic] Bauer" and cited to Deutsch as one of three references that disclosed immunoreactions. Id. In other words, since Deutsch and the other secondary references taught immunoreactions, immunoreactions were one type of "known reaction" that could be adopted to the method made obvious for any known reaction (within reason) by Morison and Bauer. Nowhere in its decision did the examiner consider the particular analytical method disclosed by Deutsch.
In light of the extremely limited purpose for which the examiner considered Deutsch in the initial examination, the Board is correct that the issue of whether Deutsch anticipates the method disclosed in claims 22, 23, and 25 was a substantial new question of patentability, never before addressed by the PTO.6
footnote 6 - In reaching this holding, we do not rely on the fact, discussed by the Board, that claim 22 differed from the rejected claims in the initial patent. While the difference between rejected claims and the claims at issue during a reexamination may be relevant to whether there is a substantial new question of patentability, a change in the scope of a claim will not, in itself, make all questions of patentability of the revised claim "substantial new question[s]." As the limited scope of the examiner’s consideration of Deutsch is sufficient to find that anticipation by Deutsch raises a substantial new question of patentability, we need not consider what effect the change in scope of the claims would have had had Deutsch been more fully considered during the initial proceeding.