Posts in IPWatchdog Articles

In my view, both the majority opinion, as well as Judge Dyk’s dissent, miss the real “written description” problem in Crown Packaging which has nothing to do with whether the common patent specification illustrates both solutions to the prior art problem. Instead, it relates to the follow description (see column 1, line 62 to column 2, line 5 of the ‘826 patent) at the end of the sentence stating how the claimed invention solved the problem of using less metal in the can end: “characterized [or “characterised” depending on which version of the ‘826 patent you use] in that, the chuck wall is inclined to an axis perpendicular to the exterior of the central panel at an angle between 30o and 60o and the concave [i.e., the reinforcing] bead narrower than 1.5 mm (0.060”).”

H.R. 1473, the Full-Year Continuing Appropriations Act, 2011, is the legislation reflecting the compromise on the Continuing Resolution to fund the government for fiscal 2011. The letters point out that the provisions of the bill related to the USPTO appropriate $100 million less than the projected user fee revenues to be collected, essentially diverting that money to other government programs.

For goodness sake, innovation is the key to a better economy, not raising taxes! Simply stated, taxing more at a time when individuals and businesses are doing less well is not the same as taxing more when individuals and businesses are doing better year after year. In one scenario the tide is rising and will remain high, although slightly less so with increased payments to the government. In the second scenario the tide is already lower and becomes even lower still with additional financial burdens owed to the government. It doesn’t take a rocket scientist to realize there is a fundamental difference between taxing a rising economy and taxing a falling, stagnant or sluggish economy.

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures. This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011.

While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.

The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days. While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained. I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clue in the file history regarding how and why claims are awarded. It should also demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

Because of sufficient funding not linked to the current fiscal year, the United States Patent and Trademark Office will remain open for business and will continue to operate as usual through the close of business on Monday, April 18, 2011 even in the event of a government shutdown.

One of the problems created by true newbies, particularly those who have not done any reading or tried to at least bring themselves up to speed to some extent, is that they present in a way that makes established patent attorneys and law firms want to run and hide. Whether it is unrealistic expectations, wanting a confidentiality agreement signed because they want to be able to sue you if things go bad, or wanting representation on a contingency basis, these things scream PROBLEM to most patent attorneys, thereby foreclosing a possible representation relationship in many cases.

Class matters. Technology class, that is. In some of the more rapidly growing areas of our economy, like Social Networking and Mobile Phone Apps, it looks like you can almost double patent allowance rate by making sure your patent application is classified in the more technological patent office art units. For entrepreneurs, a faster allowance rate and earlier acquisition of patents can directly translate into better fund raising, more secure commercialization and more profitable licensing. For large corporations, it means substantially reduced patent costs. And with some forethought you can probably influence which class your application is placed in while at the same time creating a more comprehensive patent application.

Listening to those who code complain about patents is nearly hysterical. They still haven’t figured out that by and large they are not innovators, but rather merely translators. Perhaps that is why they so frequently think that whatever they could have come up with themselves is hardly worthy of being patented. Maybe they are correct, but that doesn’t mean that an appropriately engineered system isn’t patentable, it just means that those who code are not nearly as likely to come up with such a system in the first place because they rarely, if ever, seem to approach a project as an engineer would. Rather, they jump right in and start coding. In the engineering world that is a recipe for disaster, and probably explains why so much software that we pay so much money for today is hardly worthy of being called a beta, much less a finished product.

International trademark activity recovered during 2010, according to the World Intellectual Property Organization (WIPO), which received 39,687 applications under the 85-member Madrid System for the International Registration of Trademarks (“the Madrid system”). This increase in application from 2009 to 2010 represents a 12.8% rate of growth. Growth was the largest for the Republic of Korea (+42.2%), China (+42%), Italy (+38.7%), United States of America (+29.6%), European Union (+26.9%) and Japan (+20.2%).

The United States Patent and Trademark Office (USPTO) announced today plans for the agency to begin accepting requests for prioritized examination of patent applications – allowing inventors and businesses to have their patents processed within 12 months. It currently takes nearly three years to process the average patent. The program, called Track One, launches May 4, 2011, and is part of a new Three-Track system, which will provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process.

In part 2 of the interview we discuss the energizer bunny, known better as USPTO Director David Kappos. We also discuss what skills she has brought from a private law practice that she feels will help her most at the Patent and Trademark Office. Finally, we discussed initiatives the USPTO is pursuing to assist women entrepreneurs and the inevitable questions about where we stand with patent reform.

Both the House and Senate bills create the opportunity for continual and constant challenges, one right after another. For example, challengers could tie up issued patents in post-grant review, followed by inter partes review and subsequently, or simultaneously, by challenges in one of the Federal District Courts. Thus, the settling of patent rights seems a distant dream if a well funded challenger wants to tie up a patent. The only hope for the patent owner is that with every subsequent challenge it becomes more difficult to challenge. That is what S. 23 sets up by having a “substantial new question of patentability” standard to initiate a post-grant review and then a much heightened “likelihood of success” standard to institute inter partes review.

The World Intellectual Property Organization (WIPO) recently announced that the number of cybersquatting cases has reached an all time high. In 2010, trademark holders filed 2,696 cybersquatting cases relating to some 4,370 domain names with the WIPO Arbitration and Mediation Center (WIPO Center) under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This spike in the number of domain name disputes caused by cybersquatting represents an increase of 28% over the 2009 level and of 16% over the previous record year, 2008.