Posts in IPWatchdog Articles

An Interview with Manny Schecter, IBM Chief Patent Counsel

On April 4, 2011, I had the honor to interview Manny Schecter, the Chief Patent Counsel for IBM Corporation. I met Manny in October 2010 when I did a CLE presentation at IBM’s offices in Armonk, New York. Since that time I have worked to schedule a time to chat with him on the record, and we were recently able to coordinate and chatted on the record for approximately 60 minutes. During our conversation we talked about numerous topics, including patent reform, Microsoft v. i4i, Patent Office initiatives such as the Three Track initiative and Peer to Patent. We also discussed David Kappos, his former boss, as well as Watson’s Jeopardy triumph, the new IBM IP blog and the usual fun questions.

Top 10 Reasons to Take the PLI Patent Bar Review Course

Effective April 12, 2011, the USPTO has dramatically updated the patent bar examination. As a result, the PLI Patent Bar Review Course has been completely updated – overhauled really. We had already been working on updates to our materials based on the inevitable change in the exam moving from MPEP Rev. 4 to MPEP Rev. 8. We knew it was only a matter of time before a new revision of the MPEP was tested, so we have had MPEP Rev. 8 materials at the ready. The text and questions have been completely revised and our lectures re-done. We feel confident the PLI patent bar review course is simply the best!

Drafting Patent Applications: Writing Method Claims

Method or process claims will include active steps to achieve a certain result. In method claims the transition is typically either “comprising” or “comprising the steps of.” While legally there may be some distinction between these two different transitions, both are acceptable. It is also important to understand that each of the steps in a method or process claims use gerunds, which are a form of a verb that ends in “ing” and operates to direct the action that is to take place. Said another way, you must use “ing” words in method claims. You cannot define a method or process in the past tense.

AIPLA Applauds Approval of Patent Reform in House Committee

At an all-day session on April 14, members of the Committee gave serious consideration to a variety of amendments to the bill and concluded with an overwhelming, bi-partisan vote of 32-3 in support of the long-overdue improvements to the patent law. The Committee proceeding demonstrated the careful balancing of interests and the compromises necessary to address the concerns of the diverse stakeholders. While more work is yet to be done, the Committee’s effort represents encouraging progress.

House Patent Reform Bill is in Need of Reform, BIO to Oppose

BIO has consistently praised House Judiciary Committee Chairman Lamar Smith (R-TX) for his introduction of a comprehensive patent reform bill similar to the bill adopted by the U.S. Senate earlier this month by a nearly unanimous vote. Unfortunately, given the addition of the Goodlatte supplemental examination amendment, added to the bill during Committee consideration, we have no choice but to oppose floor consideration of the bill until this issue is repaired.

Ethical Issues: Staying in the Frying Pan and out of the Fire

In the situation where there is a joint research collaboration everything is fine, people are happy and hope springs eternal right up until that moment when everything falls apart. Then you have issues associated with a law firm representing inventors of a joint collaboration might be conflicted out of the representation altogether because downstream patent applications filed by one or more of the collaborators creates a situation where the collaborators no longer have jointly aligned interests, perhaps as the result of double patenting issues. Ware explained several cases arising out of a common set of facts whereby multiple joint collaborators were not consulted on the filing of a joint application (or at least not enough to their liking), which created a double patenting issue for an after filed application. The law firm representing the collective was sued for malpractice and breach of fiduciary duty; the case settled.

A Landmark Case: The Aftermath of Myriad Genetics

Richard M. Marsh, Executive Vice President and General Counsel for Myriad Genetics is on the panel. He started off his presentation explaining that he really wants to talk about the case and the issues, but given that the case is ongoing and the future is uncertain regarding whether it will continue to be appealed, go back to trial or be dismissed altogether he might be unable to answer all questions. He did say clearly that the biotechnology industry “is under attack.” Marsh explained that the industry needs to be proactive because “if we sit back and idly do nothing there could be grave consequences.” Marsh explained that Myriad was able to do what it did thanks to the patents by giving it the time, money and incentive to innovate. I couldn’t agree with him more.

Stanford v. Roche: An Academic/Industry Collaboration Gone Wrong

This morning the first panel discussion is focusing on Stanford v. Roche, titled Who’s Rights Are They Anyway? The first speaker, Maggie Shafmaster, Ph.D., Vice President and Chief Patent Counsel, Genzyme Corporation, lead off by pointing out something that everyone largely seems to agree with, namely that the facts of the case are still largely in dispute, which makes me wonder why would the Supreme Court take such a case. Be that as it may, Shafmaster went on to say that this case is one that makes in-house attorneys and those representing Universities lay awake at night. She characterized the case as “an academic/industry collaboration gone wrong.” And we are off to the races!

Did the CAFC Miss the Real “Written Description” Issue in Crown Packaging?

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”).”

AIPLA Expresses Deep Concern Over USPTO Funding in CR

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.

Non Sequitur: We Need to Go Back to the Clinton Tax Rates

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.

USPTO Updates Registration Exam for Patent Practitioners

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.

An Interview with Sharon Barner, Former PTO Deputy Director

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.

Learning from Apple Patent’s Newsreader for Mobile Devices

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.

USPTO to Remain Open Even if U.S. Government Shuts Down

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.

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