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.

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.

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.

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.

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.

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.

Just the other day I wrote about how the Acacia Research Corporation (Nasdaq: ACTG), regarded in many high-tech sectors as the mother of all patent trolls, formed a new IP Fund and obtained new financing to acquire more patents.  See Mother of all Patent Trolls, Acacia Research, Gets More Funding. Yesterday, Acacia announced that they acquired another patent, this one regarding labeling technology.  Acacia also announced two high profile license deals, one with IBM and the other with Investors Business Daily.

Washington – On Tuesday, August 10, President Barack Obama signed into law P.L. 111-224 that gives the United States Patent and Trademark Office (USPTO) the authority to spend an additional $129 million of the fees the agency will collect in Fiscal Year (FY) 2010. Due to an improving economy and increased patent examination productivity, the agency projects it will collect nearly $200 million more than its FY 2010 appropriation of $1.887 billion.

David Kappos told CBS the biggest problem is the backlog and the PTO needs more money. "It's no taxpayer dollars at all-- all the fees we collect come from patent applicants."

Straight from the “it’s about time” department comes breaking word that the so-called popular press are finally identifying the most under reported news story of this recession.  The United States Patent and Trademark Office is foundering and it needs more money in order to do its job.  That alone ought to be newsworthy, but add the fact that the Patent Office is the one agency of government with the ability to recognize assets out of whole cloth and have industry organically grow as a direct result and without ANY taxpayer dollars.  The fact that the Patent Office can without any taxpayer dollars directly influence and creation of new, high paying jobs makes it virtually criminal that the elite press, who has reported on virtually every angle of this recession, has ignored the engine that could get us out of this mess.

Acacia Research Corporation (Nasdaq: ACTG), which in some circles is known as the mother of all patent trolls, announced today that a wholly-owned subsidiary has become the General Partner of the newly formed Acacia Intellectual Property Fund, L.P. An institutional investment group is the lead limited partner of the Fund, who together with the subsidiary, have provided a total of $27 million as an initial funding commitment.

On August 2, 2010, a panel of the United States Court of Appeals for the Federal Circuit consisting of Chief Judge Rader and Judges Bryson and Moore summarily denied a petition for writ of mandamus filed by Allvoice Developments US, LLC. On July 12, 2010, Allvoice petitioned the Federal Circuit asking that court to issue a writ of mandamus directing the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences to vacate its decision declaring an interference between Allvoice’s patent, US Patent No. 5,799,273 (“the Mitchell patent”) and Patent Application No. 09/351,542 (“the Holt application), which is a continuation of Patent Application No. 08/566,077, which was filed November 13, 1995.  Advanced Voice Recognition Systems Inc. (AVRS) is the assignee of the Holt application.

Those who are in favor of open source frequently become near apoplectic at the thought that open source software can be, and in fact should be, patented.  The reality is that forward thinking companies that operate in the open source space do make use of the patent system.  A quick search of Freepatentsonline.com shows that Red Hat, Inc., one of the preeminent open source companies in the world, is named as the assignee on some 263 US patents or US patent applications.  So if you are about to make an enormous mistake and listen to the “open source means free” community, ask yourself why a highly successful company like Red Hat uses the patent system and acquires patents.  If patents are good for Red Hat, an open source company not at all enamored with the existence of software patents, then why are software patents bad for you?  Shouldn’t you model your business off successful companies?

Gene Quinn, IPWatchdog.com.

Straight out of the shameless commerce division, but possibly of interest and hopefully very worthwhile.  The fact that it is FREE for firms is only a bonus!

Over the last month or so it has been made known to PLI that some law firms might be interested in me coming to the firm to give a talk or presentation on some hot patent related issue of the moment.  It has also come to my attention that a number of firms have weekly or bi-weekly sessions already scheduled where one member of the firm is tasked with creating a presentation worthy of CLE credit for a “lunch and learn” presentation.  I am happy to come to your firm to give such a presentation, and at no cost to your firm.  All you have to do is let me speak for 5 minutes about PLI offerings, such as their CLE Seminars, Patent Bar Review Course and Treatises.  I promise these 5 minutes won’t eat into any CLE worthy presentation I give, and will meet any requirements as agree upon so as to make sure attorneys attending get appropriate CLE credit.

Although much remains unclear after the U.S. Supreme Court’s decision in Bilski v. Kappos, one thing is certain: software remains patent-eligible in the U.S. This result may not be entirely clear from a quick read of the opinions in the case. Therefore, I present the following pieces of evidence that the Supreme Court in Bilski effectively re-affirmed the patent-eligibility of software (listed, for the sake of simplicity, in the order in which they appear in the decision).

Director Kappos discusses matters with Arti Rai.

On July 19, 2010, I was granted behind the scenes access to observe the United States Patent and Trademark Office. From 11am to 7pm I trailed David Kappos, the Under Secretary for Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. My hosts for the day were primarily Peter Pappas, Chief Communications Officer and Senior Advisor to Kappos, and one of his top lieutenants, Jennifer Rankin Byrne. As I went through the day I met members of the Senior Staff, some of whom I already knew and others who I was meeting for the first time, and sat in on a series of meetings with Director Kappos.

As Alice once said things are growing “curioser and curioser.”  I just opined about the “fuzzy” looking glass called Bilski v. Kappos for determining what is (or remains) patent-eligible subject matter under 35 U.S.C. § 101.  See Through the Fuzzy Bilski Looking Glass: The Meaning of Patent-Eligible under 35 U.S.C. § 101 .  After reading King Pharmaceuticals, Inc. v. Eon Labs, Inc., I’m now ready to throw my Ouija board though that Bilski looking glass.  With an opportunity to render some order out of the Bilski chaos, the Federal Circuit instead completely ducked the patent-eligibility issue clearly presented in King Pharmaceuticals.  The Federal Circuit then created (and I do mean “created”) the new “an anticipated method claim doesn’t become patentable if it simply includes an informing step about an inherent property of that method” doctrine.  With this new “doctrine,” we have now “jumped down the rabbit hole” into a surreal “Bilski in Patentland” world.

Chief Judge Paul Michel (ret.)

In this final installment of my interview with Chief Judge Paul Michel we discuss Bilski v. Kappos and what he thought of the Supreme Court’s decision. Judge Michel talks about how only one of the Justices who decided Bilski ever decided a patentable subject matter decision, leaving the impression that the Supreme Court should probably just leave well enough alone. He tells us that he “think[s] the Federal Circuit can help minimize harm” that may otherwise be caused by the Supreme Court’s decision in Bilski v. Kappos, but is unsure whether the Federal Circuit can all “the harm that may lie inherent in the approach of the Supreme Court in that opinion…” Chief Judge Michel also discusses how he feels that the patent system is now favoring extremely large companies over independent inventors, start-ups and small businesses. Plus, the fun stuff!