The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated KSR Examination Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update.  The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.

As President of a local inventors group I can’t tell you how many inventors I meet who have spent big bucks to procure a patent but never built a prototype. So they have no idea if the invention really works. Others who have a garage full of product, just collecting dust because they never tested the market before hand. However, most successful inventors and product development companies that I know, start off with a Proof of Concept Analysis BEFORE they start spending money. So if they do it, why not you?

In looking around for something to write I stumbled across a press release from August 10, 2010, issued by Your Baby Can, LLC. This is the company that advertises almost non-stop on Sirius/XM every morning, at least on ESPN Radio, claiming that all you have to do is put your children in front of the video and they miraculously learn to read. I have often joked about the commercial and how unrealistic and almost comical it seems, but when I noticed a copyright/counterfeiting angle I was immediately intrigued.

Paul Allen

On Friday, August 27, 2010, Interval Research Corporation brought a patent infringement lawsuit against a who’s who of tech companies in the United States District Court for the Western District of Washington at Seattle, specifically suing AOL, Inc., Apple, Inc., eBay, Inc., Facebook, Inc., Google Inc., Netflix, Inc., Office Depot, Inc., OfficeMax Inc., Staples, Inc., Yahoo! Inc. and YouTube, LLC. Conspicuously missing from the target list was Microsoft Corporation, the company that Paul Allen, which is the co-founder of Interval Research, co-founded with Bill Gates. Many in the technology sector are wondering what Paul Allen is doing and why he is bringing this lawsuit, which to me seems rather naive. As discussed more fully below, it seems to me that Mr. Allen is attempting to enter the deep, dark world of patent trolls. The tell-tale sign being a complaint without any substantive information and naked recitation of a variety of patents that have “one or more” unspecified claims being infringed for unspecified reasons.

How often have you felt you had a great invention that was just what the world was waiting for. Unfortunately, many would-be entrepreneurs are under the illusion that that is all they need for someone to beat a path to their doorstep, big check in hand. If only it were that easy! Turning your invention into dollars and cents requires an understanding of the process, as well as perseverance and patience in dealing with the many challenges that stand between you and potential financial reward.

The average entrepreneur usually does not think about what is really necessary to make their invention a commercial success. As a result, their great ideas often fizzle before they ever have a chance to get to the marketplace.

Chief Judge Lamberth

On Monday, August 23, 2010, Chief Judge Royce C. Lambreth of the United States District Court for the District of Columbia issued his injunction ruling in Sherley v. Sebelius, which deals with whether federal funding of embryonic stem cell research is legal. Judge Lambreth determined that Congress has prevented such funding and the lifting of the Bush ban by President Obama is immaterial. Judge Lambreth has since been either heralded or lambasted, not on the legal merit of his decision, but rather based on ideology, morality and religious conviction, which seems grossly unfair.  It also oversimplifies a complex issue and the fact that Judge Lamberth’s legal analysis seems sound.

You have probably had circumstances when you have positively associated with a certain trademark.  Perhaps you were traveling and had the option to eat at one of several restaurants.  You might have preferred a sit-down meal, but you might have opted for McDonald’s or Burger King instead because you are familiar with what you will get, know it is going to be reasonably priced and within a certain window of acceptable.  This “positive association” made you pick the known over the unknown, which may have been far better, but could have been far worse and more expensive.

Companies whose intellectual property rights are being infringed by imported products are seeking relief at the U.S. International Trade Commission in ever-greater numbers. In the decade between 1999 and 2008, the number of complaints filed at the ITC increased four-fold. The ITC offers many advantages to a plaintiff (called a “complainant” at the ITC): speedy adjudication, relaxed rules on personal jurisdiction and service of process, no opportunity for a defendant (called a “respondent”) to seek a change of venue, short discovery deadlines, no rule-based impediments to taking discovery abroad, no counterclaims, [1] and broad, vigorous injunctive relief which is enforced by U.S. Customs and Border Protection and the ITC. Although the ITC cannot award damages, such relief may be, and routinely is, sought by the complainant in a parallel District Court action.

WASHINGTON – The Commerce Department’s United States Patent and Trademark Office (USPTO) and the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) have agreed to partner in establishing a Patent Prosecution Highway (PPH) pilot program. PPH agreements are cooperative initiatives that streamline the patent system and promote expeditious, inexpensive and high-quality patent protection throughout the world. The USPTO and ROSPATENT plan to launch the pilot program on September 1, 2010, and continue it for a period of one year.

Sculpture: Man wrestle horse, outside FTC. Signifies taming of the markets.

The Federal Trade Commission and Department of Justice on Friday, August 19, 2010, issued revised Horizontal Merger Guidelines that outline how the federal antitrust agencies evaluate the likely competitive impact of mergers and whether those mergers comply with U.S. antitrust law. These changes to the Guidelines mark the first major revision of the merger guidelines in 18 years, and is intended to give businesses a better understanding of how the FTC and DOJ will evaluate proposed mergers moving forward.  For example, the new Guidelines explain that the effect on innovation is something that will be considered when determining whether a horizontal merger is acceptable. The rationale is relatively straight forward: “Competition often spurs firms to innovate.”

Doing your own patent search early in the invention process is good for a few reasons. First, if you can find prior art that is too close to what you want to do then you save time, money and energy, provided of course you move on and not try and pound that round peg into a square hole! Patent searches are also critical because they will give you a lot of ideas if you actually read the patents and not just the title and abstract and check out the pictures.  If you read the text a whole host of ideas are likely to come running into your head.  Finally, a patent search will give you a sense of what else is available that might be public domain already and a substitute for your invention in the eyes of the consuming public.

Center for Functional Nanomaterials at
Brookhaven National Laboratory, USA.

According to a new report from Lux Research, global funding for nanotech increased only 1% (relative to 2008) to $17.7 billion in 2009. The publication of patent applications and number of granted patents rose at a more impressive rate, 11% and 5%, respectively. The report also found that the United States, Germany and Japan are still home to the most nanotech innovations in terms of absolute number, but that smaller markets such as Taiwan, Singapore, Israel and South Korea are more focused on nanotech and are more adept in commercializing such technologies. The report also indicates that despite impressive investments and attempt to become significant havens for nanotechnology, China and Russia are still far from threatening the status quo.

Liz Claman, Fox Business News

This past Sunday there was a brief but very interesting segment on Fox New Sunday that actually discussed the plight of the United States Patent and Trademark Office and how the enormous backlog of inventions in the queue at the USPTO is preventing organic job growth at a time when our economy desperately needs job creation.  Sitting in for Chris Wallace was Brett Baier.  He was interviewing Mark Zandi, who is Chief Economist for Moody’s Analytics, and Liz Claman, an anchor on the Fox Business News channel.  The topic for this 11:54 second segment was the health of the U.S. economy and what can and should be done by our leaders in Washington, DC.  Surprisingly, at least to me, Claman brought up the USPTO as an ideal opportunity for “instant stimulus.”

Every patent practitioner wants to effectively represent his or her client’s interests.  Every patent examiner wants to effectively represent the public’s interests.  Unfortunately, these goals are not always met.  This is particularly true in the newer and more controversial fields of patentable subject matter, such as business methods.  There is a relatively new source of information, however, that can help both the patent practitioner and patent examiner make substantial improvements in the speed and efficiency of patent examination.  This resource is the Patent Application Information and Retrieval system (PAIR).   A new PAIR-based metric, the ratio of allowances to rejections, can be tabulated and analyzed quickly to reveal where significant inefficiencies exist in the patent examination process and suggest how fundamental improvements can be made.

My writings about open source and software patents have earned me a special place in the hearts and minds of those who harbor irrational hatred of software patents. But I am here to tell you that open source is not all bad and, in fact, should be embraced. Open source, however, is hardly something new to the patent community. Perhaps it is better to say that where open source software is heading is nothing new, and it will come as a shock to those who hate patents, but patents will be completely necessary in order for the open source community to continue to advance and live up to its full potential.

The Federal Trade Commission has permanently halted the operations of Canadian con artists who allegedly posed as domain name registrars and convinced thousands of U.S. consumers, small businesses and non-profit organizations to pay bogus bills by leading them to believe they would lose their Web site addresses unless they paid. Settlement and default judgment orders signed by the court will bar the deceptive practices in the future.

MEA CULPA

Upon further investigation it seems to me that what so many have said in the comments is, in fact, correct.  I have finally reached the person referenced who lead me to the story and based on what has been told to me now it seems relatively clear to me that Google did not at any time remove Oracle from its search database.  As many have pointed out the top screenshot (see below) does suggest that the person who lead me to this and took the screenshot visited a link explaining this was a hoax.

As regular readers of IPWatchdog.com know, I am a patent attorney and new to this whole “journalism” endeavor.  It would seem that I placed unwarranted trust in a single source.  That won’t happen again.

As far as whether this person intentionally duped me, who knows, but I do acknowledge what it seems given that a link that explains this was a hoax was visited, as evidenced by the screenshot.

I am not one to push things under a carpet, and for that reason the article below will remain, as well as the comments, to preserve this episode, apology and comments that were correct, as well as mine in defense of a hoax and erroneous single source.

Not all press releases are created equally. Some range from being written as an article, as is commonly the case when the FTC issues a press release, to those containing only vague and hardly useful information for those who are at all serious about an issue. For example, a recent press release I read wrote:

eBay Inc., Skype, Inc., Skype Technologies SA, Skype Communications, S.A.R.L., IDT Corporation, Net2Phone, Inc., IDT Telecom, Inc., and Union Telecard Alliance, LLC, have settled all outstanding disputes among the parties, including two patent infringement lawsuits pending in the United States District Court for the Western District of Arkansas.”

Summer is almost over, but the Practising Law Institute still has some great Intellectual Property courses that all come with CLE credits.  So whether you are looking for an excuse to take a trip to beautiful San Francisco, California, or the City that never sleeps, or you are looking for some great information and CLE credits via webcast, PLI has you covered.  The remaining IP courses for Summer 2010 are all new and completely revised, with the exception of the extremely popular Claim Drafting & Amendment Writing workshop, which will still integrate recent changes and provide tons of practical learning.

Classic Ink, Inc., owner of Classic Sports Logos brand apparel line and rapidly growing trademark licensing firm, secured a major legal victory in the U.S. District Court for the Northern District of Texas against American Needle, Inc., and its Red Jacket apparel business on Aug. 6, 2010. After a five-day trial, the seven-member jury returned a unanimous verdict finding American Needle and its Red Jacket apparel business infringed Classic Ink’s trademark rights under the U.S. Trademark laws, including “Tampa Bay Rowdies”® and “Chicago Sting”® marks. The Dallas jury also confirmed the validity of Classic Ink’s trademarks to its “retro” sport team marks and logos. An injunction prevents American Needle from any further infringing sales, and American Needle has indicated that they would comply with any Court-ordered injunction by stopping future sales of the accused products.