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.

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.”

BraBall® the patented bra saver. A project Richardson did for a client.

Ideas are first created in the mind’s eye and then sketched out on paper. Then the creator of the idea quite often cobbles together a crude working prototype to give the idea form and to test the first physical aspects of the idea. This is generally referred to as a “Proof of Function” prototype. This process of testing and improving the Proof of Function prototype goes on until the inventor is satisfied that the prototype works as envisioned.

Today 3 Dimensional modeling is gaining popularity.  While it is true that 3D modeling has been around for quite a number of years, it was very expensive and was used mainly by large corporations, at least until recently. In the past 10 years the cost of the 3D modeling software has been drastically reduced, the use of 3D software to control computer controlled milling machines is widespread in manufacturing.  As a result 3D modeling is the standard method of communication in manufacturing.

David Kappos and Hon. Paul Michel (ret.)

Last night the Intellectual Property Owners Association honored Judge Paul Michel, the recently retired Chief Judge of the United States Court of Appeals for the Federal Circuit, with the Distinguished IP Professional Award, which honors lifetime achievement.  The IPO also honored a trio of Dupont inventors, George Lahm, Ph.D., Thomas Selby, Ph.D. and Thomas Stevenson, Ph.D., awarding them collectively the National Inventor of the Year Award for their work on Rynaxypyr®, which is a safe and environmentally friendly insecticide and affects only insects and does not affect mammals.

The IPO event was held at the Smithsonian Museum of Natural History, which was an excellent venue for this black-tie optional event. The event started at 7:00pm with drinks being served in the Hall of Geology, Gems and Minerals on the second floor.  That is where I caught up with David Kappos and Judge Michel (see image left).

In yet another attempt to expedite important patent applications through the examination process the United States Patent and Trademark Office announced earlier today that it is revising its Green Technology Pilot Program.  The revision in the program will allow more categories of technology to be eligible for expedited processing under the USPTO green initiative, which allows for the expediting of patent applications through the examination process. Eligibility for the pilot program, which was designed to promote the development of green technologies, had previously been limited to applications within a select number of classifications, with only about one-third of applications for special status being granted.

It seems pretty clear that under the direction of David Kappos the United States Patent and Trademark Office is pursuing an “all of the above” strategy to cutting into the backlog and ultimately reducing the pendency of patent applications.  It is easy to criticize any one of the initiatives that the USPTO is pursuing, but that would be to miss the forest for the trees.  The reality is that unless and until Congress steps up to the plate and does something, which seems extraordinarily unlikely, the Patent Office will be left to attempt to piecemeal together solutions.  So while no one solution can or will solve all of the problems plaguing the patent system, if cascading solutions are employed at least some applicants can be helped and at least some applications can be accelerated.  Of course, the name of the game today is job creation, so I propose a creative way to accelerate patent applications out of order upon proper showing that jobs will be created, and focus my suggestions on those companies that are most likely to create jobs; namely those 5 years or younger and with 99 or fewer employees.

Earlier today Dale Halling, of Halling IP and State of Innovation Blog, brought to my attention an article on the IAM Magazine Blog from a few weeks ago. Joff Wild of IAM blogged about a study conducted by IPVision, Inc., which focused on analyzing the intellectual property positions of over 9,000 US venture capital backed technology companies. The study was conducted with the assistance of faculty at the MIT Sloan School of Management, and not surprisingly determined that there is a strong correlation between intellectual property assets, particularly strong patent portfolios, and success. In fact, the IPVision study shows that VC-backed technology “[w]inners are many times more likely to hold intellectual property than losers.” Further proof that those who due to ideological reasons forgo pursuing a patent portfolio are dooming themselves, and their investors, to an unnecessary uphill struggle right from the start.

Fig. 1 of US Patent No. 2,322,210, titled simply "Battery" and issued to Adams

After over 32 years of practice, I’ve found that patent application drafting is more “art,” than science.  One item I’ve particularly enjoyed is describing why the invention is significant or a “big deal.”  I call this telling the “story of the invention.”

I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made.  But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable.  Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention.  It can be quite helpful to effectively, but safely tell the “story” of the invention in a patent application.

The litigated cases are often full of interesting “invention stories” which became significant in reaching the conclusion that the invention was patentable.  One great example is United States v. Adams, 383 U.S. 39 (1966) which is one of the few instances, at least in recent memory, where the United States Supreme Court affirmed the patentability of the claimed invention.

Over the last week Scott Adams, the creator of Dilbert, has been out doing himself in a series of laugh out loud funny cartoons. I realize that as a patent attorney my sense of humor is, well… challenged, at least in the view of many who are not in the patent field. That being the case I figured I would share a few of these cartoons with an audience that I figured would be able to appreciate the humor. What is even better is that Dilbert cartoons can be embedded into a blog or website for free, so no copyright infringement was engaged in during the creation or publication of this post.  Which is always nice!

As you can see from the first cartoon in the series, the creator of a project has left the company and his unfinished project is being passed on to the hapless Dilbert.  Scott Adams, through Dilbert, teaches us not only that no one should ever trust Dilbert, but also about the importance of documenting your invention.  I then take this opportunity to also opinion about the impending first to invent changes to US patent laws.   What fun!

February 27, 2010

Earlier this week, on Tuesday, February 16, 2010, TiVo, Inc. (NASDAQ: TIVO) was granted US Patent No. 7,665,111, titled Data storage management and scheduling system.  This patent is indicative of what I suspect will become a growing problem in the years to come, which is a resurgence in so-called submarine patents.  This patent matured from a patent application filed on October 20, 1999, which means it was pending at the United States Patent and Trademark Office for over 10 years.  Amazingly, according to the Patent Office no patent term extension is owed.  Exactly how can a patent remain pending for over 10 years and not be entitled to an extension in the term?  I really don’t know to be perfectly honest, but it seems that this patent will apply to pretty much any and all DVRs currently on the market, so even if there is no patent term extension granted it could produce a choke-hold on the industry through October 20, 2019, which should create a tidy sum of royalty payments for TiVo, at least over the near term.  Of course, it will also spark a rush to innovate around the TiVo patent, thereby causing innovation to march forward, much to the chagrin of anti-patent advocates who are already proclaiming this patent to be evidence that patents harm innovation.   In any event, a patent that issues after 10+ years suggests problems, even if the intended march of innovation is encouraged, which will of course be the case.

This is an article that I have been wanting to write since at least June 2009, and on a snowy and cold day in Northern Virginia, where folks are snow bound due to closed roads caused by high drifts, what better day to write about the 7 deadly sins, right? OK, there is really no connection to snow and the 7 deadly sins, at least in so far as I can tell, but as I search for a topic to write about I came upon this note to myself, which simply says “7 deadly sins relate to motives.” It was in Houston in June 2009 that this revelation (pun intended) came as a result of dinner and a few drinks with John White. John and I were on the road to teach the PLI Patent Bar Review Course and enjoying an Italian dinner with some red wine. As we often do, our conversation ranged from politics, to law, to patents, to innovation and beyond. Somewhere along the way we started talking about software and the anti-patent crowd, and then the conversation got really interesting.

Those who are readers of IPWatchdog.com on a regular basis are familiar with the jousting that goes on in the comments between myself and a core group of patent believers and those who are, shall we say skeptical of the value of patents and would prefer that patents simply not exist, or at least not exist in certain areas, such as software. Without getting into that debate directly here and now allow me to observe that if you are an independent inventor, start-up or small business one successful way to responsibly move forward is to pattern yourself on successful companies. There is no mileage in following the lead of a company in decline, so lessons can be learned by observing successful companies and weaving together a strategy that will lead to market success. Perhaps no other company today so aggressively pursues patents on core technologies and products than Apple, and they enjoy enormous success. So why not take a page from the Apple playbook? Innovate, patent, commercialize and dominate.

Apple, Inc., the tech giant that has revolutionized how we listen to music and the functionality of a cell phone, is now seeking to expand its extremely popular iPod and iPhone products into greener pastures. Specifically, in a US Patent Application No. 20100013309, which published earlier today, Apple is seeking a patent on a solar powered electronic device, such as an iPod or iPhone.

Every week Apple obtains patents and every week more pending patent applications are published where Apple is the assignee (i.e., owner). Apple aggressively pursues patent protection because quite frankly patents make good business sense. There is a reason that the iPod and iPhone dominate the market, and other alleged substitutes lag far behind. It is because Apple has a well developed and ever expanding patent portfolio that protects these core products and prevents competitors from getting too close.

Last week a US Patent Application No. 20100010893 published detailing an invention relating to digital advertising, and more particularly to creating video overlay advertisements suitable for use with digital videos. The owner is Google and the patent application was originally filed on July 9, 2008. It seems that the Internet giant and purveyor of the extraordinarily popular YouTube video sharing website, is attempting to make it easier to create multimedia advertisements.  The screen shots in the patent application show that YouTube video is, in fact, what Google has in mind.  Just what we need, more advertising!  But advertising does pay the bills and allows individuals and businesses to create unique content for the Internet while making a living, thereby enabling for additional creation.  This, after all, is the justification for intellectual property rights.  Grant to businesses and individuals exclusive rights that they can monetize, if in fact there is a market.  Through monetization they can, hopefully, make enough to engage in further original creation, and so goes the cycle.

Earlier today President Barack Obama, perhaps with the best of intentions, demonstrated that he is not all that familiar with the United States Patent and Trademark Office and how they handle patent applications. The short of it is that what President Obama said to tech executives was wrong on the facts, but at least partly correct in spirit. Essentially, President Obama said that the way the Patent Office handles electronically filed patent applications is to print them and scan them. Sadly, that is not true, or is at least extremely misleading. It is certainly true that the Patent Office used to do things that way, but since the new EFS Web system was unveiled on March 16, 2006, electronically filed patent applications are not printed and then scanned. Perhaps the President or his speech writers are readers of IPWatchdog.com and got the wrong impression when I lamented a few months ago that genius federal minds thought printing and scanning created a paperless system, or perhaps the White House has been spying on the PLI Patent Bar Review Course and listening to John White tell stories of the old days when printing and scanning of electronic filings was the rule. Whatever the case, the President was incorrect on the facts, but certainly correct to say that it is embarrassing that the Patent Office computer systems are woefully inadequate and behind the times.

Reports are widespread that large corporations have cut back on the number of patent applications they file, and I see no reason to believe these first hand accounts are incorrect. Nevertheless, fiscal year 2009 saw the second highest number of patent applications filed at the United States Patent and Trademark Office, down only some 11,000 applications from the record year in FY 2008. Meanwhile, tech sector giants have been crying and moaning about how the patent system has run amok and needs to be scaled back, and continually beg for patent reform that would gut the patent system and weaken patent rights. This grumbling is picked up by patent abolitionists who say “see, even Microsoft thinks there should be no patents,” which only adds to the hysteria. Against this backdrop the corporations bemoaning patents received record numbers of patents during 2009. Obviously they talk a good game but when push comes to shove they will get as many patents as they can, but want to make it hard for small businesses and individuals to get patents.  Quite curious if you ask me!

Yesterday the United States Patent and Trademark Office announced the creation of a pilot program to accelerate the examination of certain green technology patent applications. The announcement was short on details, which will apparently be forthcoming, but the move to accelerate green technology patents is one that can and should pay off handsomely. Back on March 30, 2009, I wrote an article titled A Proposal for Green Technology, which called on President Obama to issue an Executive Order requiring the accelerated examination of patent applications that relate to green technologies, while cautioning that relying on the current acceleration avenue would be inappropriate given the number and magnitude of unfavorable admissions that would need to be made. While it is unclear as yet under what circumstances green patent applications will be advanced out of order, we can only hope that the onerous and untenable Examination Support Document will not need to be filed in order to accelerate. If an ESD is required that would make this enormously positive initiative nothing more than a publicity stunt because as long as patent applicants must file an ESD few will because the document must include horrific admissions that would almost certainly render any patent unenforceable if litigated.

For many months we have been hearing about the government attempts to “reform” health care in the United States, and this weekend the United States Senate is actually working, yes Senators working on a weekend, as the contentious debate continues. Even a relatively rare Presidential visit to Capitol Hill is scheduled for later this afternoon, presumably so President Obama can rally the troops for whatever lies ahead. While patent policy has not taken center stage in these debates, it is hard to ignore the under current that rages through the debates. Health care costs too much, so costs need to be contained. Of course, market initiatives like a national heath insurance market, which would lower premiums for everyone overnight, are not being considered. Likewise, attempts to prevent those without insurance from clogging up emergency rooms for simple matters like runny noses, sprains, colds and a litany of other ailment is not on the table either, so rather than discussing health insurance premium reform and government sponsored clinics in areas where there is the highest density of uninsured, we are debating a host of other things and trying to squeeze the private sector. I have long wondered why there has been such an all-out patent war against pharmaceutical and biotechnology companies, but the ACLU patent challenge against Myriad Genetics and the assault on biologic from some corners of government has me thinking that the preferred way to control costs in the minds of some politicians is to either stop or dramatically slow medical technology progress through revised patent and innovation policy. That is a mistake, an enormous mistake. We enjoy an ever increasing life span and higher quality medical care than anywhere in the world because of technology and innovative advances in an array of disciplines, and that MUST be preserved.

Courtesy of NASA

Inventors Digest held a youth innovation essay contest, in part to celebrate National Inventors Month, last August. The four winning essays are at InventorsDigest.com. The magazine received and reviewed some 400 essays from across the country. Inventors Digest, in cooperation with IPWatchdog, is showcasing several essays deserving of honorable mention. This is the second Honorable Mention Essay. The first was written by Hannah Joy Coad and was titled Nanobots – An Invention of the Future. This and other essays illustrate the creativity and optimism of today’s youth.

Gene Therapy – Double Helix Health Care

By Evan Brown, 17, Ocean Lakes High School, Virginia Beach, VA

It’s an average day. You wake up, read the paper, and head off to work. While stuck in the daily traffic jam, you notice a slight twitch of your head.

The fleeting movement goes by unnoticed, unchecked and you go about your life. That seemingly innocuous tick is the precursor to a debilitating and often fatal condition known as Huntington’s Disease.