Posts in IPWatchdog Articles

BIO Expresses Some Concern with House Patent Reform

BIO also is concerned about the inclusion of broader prior user rights in the House bill, and believes that this issue, coupled with the harmful inter partes review changes, could set back efforts to pass meaningful patent reform this year by undermining the broad coalition of American innovators currently supporting patent reform.

USPTO Automates Filing of Patent Petitions

The automated petition process uses the USPTO’s new e-Petition system. With e-Petition the data is input through a secure web interface and the petition is decided automatically, eliminating months of waiting for these types of petitions to be docketed, decided and uploaded into Public PAIR (Patent Application Information Retrieval).

Sensenbrenner to Kappos: Prior User Rights is Poison Pill

Today the House Subcommittee on Intellectual Property, Competition and the Internet, which is a subcommittee of the House Committee on the Judiciary, held a hearing on the America Invents Act, the House version of patent reform. While the House and Senate bills are largely identical, there is one striking difference between the two, and that difference relates to prior user…

Innovation Alliance Opposes America Invents Act in the House

The Innovation Alliance is disappointed that the America Invents Act as introduced today in the House of Representatives does not include some important safeguards against the potential for abuse of the post-grant review procedures at the U.S. Patent and Trademark Office (USPTO). In particular, the bill includes a weak threshold for ‘second window’ inter partes review proceedings, one that will allow virtually all challenges to proceed to a trial-like hearing before an administrative patent judge. We believe a higher threshold is needed to enable the USPTO to manage the increased workload of the new administrative review system fairly and efficiently by screening out meritless or unsubstantiated petitions.

Attorney Marketing and Brand Building 101

Brand building seems like a rather easy task for companies that offer tangible products, but as attorneys, all you have to sell is your time, so things can be a little bit different. You need to also factor in that in many, if not most, instances clients feel they are represented by an individual. Sure, the firm identity is important, but the relationship is with the individual. Thus, for attorneys it is especially important to always keep in mind that You Are Your Brand! As with any industry, you cannot simply create some ads, a website and some social media profile pages and expect people to come to you. Rather, clear goals need to be outlined and a strategy for reaching those goals should be mapped out.

Patent Reform: Expanded Prior Users Rights is a Bad Idea

A prior user rights defense prevents those who have previously used the patented invention from being infringers. In many parts of the world there are strong prior user rights, which allow those who keep innovation as a trade secret hidden away from the public to later use those trade secrets as a defense to a patent infringement lawsuit. You can’t sue me for patent infringement because I have been hiding, using that innovation you patented as a trade secret. So the party that disseminates the information for the benefit of the public loses in favor of the party that kept the innovation a closely guarded secret. This has never struck me as fair, a good idea or even in keeping with the Constitutional purpose for patents.

Protecting Your Intellectual Property in China

The China Road Show is a series of two-day China IP events that the USPTO is hosting across the country to help educate businesses about the realities of piracy and counterfeiting—which cost the American economy approximately $250 billion annually. Day 1 is largely devoted to understanding the patent, trademark and copyright laws in China, as well as enforcement of those rights. Day 2 of the seminar will address § 337 Infringement Investigations by the International Trade Commission (ITC), the challenges presented by counterfeiting and piracy on the Internet and the development of global IP strategies even for small businesses.

Patent Reform in the House. Demagoguing of First to File?

I think those that are against first to file are really most worked up about the loss of the across the board grace period for the statutory bar. If the problem is with the grace period let’s talk about the grace period. Misdirection and demagoguing the first to file issue has lead to the weakness of the arguments being exposed and the likelihood that no meaningful debate on the real issue — the grace period — will be possible. I’m here to tell you that those who are making a big deal out of the loss of the ability to swear behind with 131 affidavits are making a mountain out of an ant hill; not even a mole hill.

Intellectual Property Insurance: What Attorneys Need to Know

Many clients are unaware that the commercial general liability insurance (CGL) policy they hold is not fully protecting their most valuable assets, the ability to sell their products. And, most IP attorneys do not know that IP insurance is available to help fund their client’s IP litigation risks. If a client’s IP becomes involved in litigation, specialized IP Insurance products will help ensure that there are funds available to pay the associated legal expenses. Without specific IP Insurance in place, the client may be left with a less desirable way of protecting their IP assets.

Close but Not Identical, House Unveils Patent Reform Bill

Late in the afternoon on Thursday, March 24, 2011, the purported patent reform bill from the House of Representatives began circulating. The House patent reform bill is largely identical to the Senate version – S. 23. There are some differences, one rather major difference, but the Senate first to file provisions remain intact. The House bill would still grant the Patent Office the right to use all of the funds collected, as did S. 23. The House bill also would grant the United States Patent and Trademark Office fee setting authority, as did S. 23, but then curiously goes on to set the fees that the USPTO charges. It seems unclear why on one hand you would set the fees and in another section of the bill say that the USPTO can vary any fees defined.

Google Patents the Google Doodle

Earlier this week Google received U.S. Patent No. 7,912,915, titled “Systems and methods for enticing users to access a web site.” The patent covers what is known as a “Google Doodle.” The patent application was originally filed back in 2001, and due to Patent Office delay Google was awarded a whopping 2,618 days of patent term extension.

Amici Support i4i at Supreme Court in Microsoft Patent Case

What becomes clear in reading these briefs (and the excerpts below) is that despite what you might have heard to the contrary the Supreme Court has already previously addressed this issue and has done so in support of a standard appreciably higher than the mere preponderance supported by Microsoft. The argument of those in support of Microsoft has been that at least some Circuit Courts of Appeal had a lower presumption of validity prior to when the Federal Circuit announced the clear and convincing standard of proof and thereby settled patent law. While that may be true it seems abundantly clear that law setting a preponderance standard was directly in conflict with the clear and unambiguous Supreme Court precedent directly on point. In fact, there is even Supreme Court precedent directly on point saying that more than a mere preponderance is necessary even when the prior art has not been previously considered. So perhaps i4i and the amici, including the U.S. government by and through the Solicitor General and the USPTO General Counsel Bernie Knight can convince the Supreme Court not to overrule its own prior decisions and keep an appropriately high standard.

Federal Circuit Orders Transfers Verizon out of Eastern Texas

With respect to Verizon et al, the petitioners moved to transfer the case to the Northern District of Texas, Dallas Division, which is approximately 150 miles away from the Eastern District of Texas, Marshall Division. The motion was initially denied by a Magistrate Judge. In his decision, the Magistrate agreed with the petitioners that the Northern District of Texas, Dallas Division would likely be more convenient for the parties and the witnesses, and he even noted that a number of party witnesses resided within 100 miles of Dallas and no witness resided within 100 miles of Marshall, Texas. Let’s let that sit for a moment, shall we? It was determined that the Northern District would be more convenient for the parties and witnesses and that not a single witness lived within 100 miles of the Eastern District of Texas, yet the motion to transfer was denied?

Good, Bad & Ugly: Truth About Provisional Patent Applications

There is a terrible injustice done by those non-attorney and/or non-agent services, and it amazes me that individuals are so ready to believe inventors and scientists who have a handful of patents and haven’t read many (if any) cases. You go to an experiences accountant for tax issues, when you feel sick you go to an experienced doctor, if your car breaks down you want an experienced mechanic, yet when you have an innovation that you dream could be worth many thousands, or millions, of dollars you go to an inventor who has little or no experience drafting a patent application? At which point exactly does that start to sound like a good idea? After your third martini at lunch?

What Happened to the Obama Open Source Initiative?

President Obama reportedly asked McNealy to prepare a report on how the federal government could employ open source software, but as yet, some 26 months later there has been no mention of the report or across the board government adoption of open source software. The fact that open source software is given away to be used freely demonstrates the problem with finding a sustainable business model and may explain why the Obama Administration hasn’t yet presented the report on how the government can use open source software to decrease costs. You really have a hard time staying in business and focusing on the research, development and product advancements when the product you offer is given away to be used free, or the underlying code that makes it work can be copied and used by competitors without consequences.