Posts in IPWatchdog Articles

The United States Patent and Trademark Office today issued a Notice of Proposed Rulemaking that proposes changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. The notice requests public comment on the proposed changes, which include rescinding the highly unpopular 2008 Final Rule, implementation of which has been stayed.

Godici told me that those who are not familiar with Three Track will soon need to familiarize themselves because this is going to happen. “This time next year we will be operating in some kind of a Three Track system,” Godici predicted. He went on to say: “These rules are pretty significant from a practitioner standpoint,” because there will be “layers of questions” and opportunities to strategize with respect to the application process.

Unfortunately for those who support a single European patent, negotiations broke down on Wednesday evening and the status quo will remain. According to the Financial Times the sticking point was with respect to languages that patents would be translated into, with Span and to a lesser extent Italy being unhappy with the prominence of English, French and German.

On Tuesday, November 9, 2010, the United States Court of Appeals for the Federal Circuit heard oral arguments in TiVo, Inc. v. EchoStar Corp. The case pits TiVo versus Dish, and any ruling from the Federal Circuit will necessarily define the extent to which a district court judge can rely on contempt proceedings to enforce an injunction rather than simply order a full blown new trial. In process the en banc oral argument in this case at the Federal Circuit did not substantially differ from the oral argument held at the Supreme Court the day earlier in the Costco copyright case, where the Supreme Court was struggling with the meaning of the phrase “lawfully made under this Title.” There are two phrases that will be at the center of resolving the TiVo case. The first is “fair ground of doubt,” and the second is “merely colorably different.”

Currently, the average time between the approval of a green technology petition and the first action on an application is just 49 days. In several cases, patent applications in the green technology program have been issued within a year of the filing date. Earlier patenting of these technologies can help inventors to secure funding, create businesses, and bring vital green technologies to market much sooner. In fact, since the pilot program began in December 2009, a total of 790 petitions have been granted to green technology patent applicants, with 94 patents having already been issued.

On Thursday, November 4, 2010, I attended the 15th Annual Inventors Conference at the USPTO.  In my article Reporting from the 15th Annual USPTO Inventors Conference I discussed the morning sessions and lunch speaker, for day one of the conference.  After lunch, and a panel discussion of the morning speakers, the attendees of the conference went into two sets of…

In a peculiar oddity those who choose to challenge the final determinations on patentability of the Board of Patent Appeals and Interferences (BPAI) can elect to either proceed directly to the United States Court of Appeals for the Federal Circuit, or they can elect to proceed to the United States Federal District Court for the District of Columbia. The question presented and considered by the full Court at the Federal Circuit was whether new evidence (i.e., evidence not previously presented to the USPTO) can be presented to the District Court when challenging a decision of the BPAI. The short answer — YES. However, without new evidence at the District Court the Federal Circuit must continue to give deference to the USPTO on further appeal.

The dispute arose because Omega, S.A., sought to prevent the petitioner, Costco Wholesale Corporation, from reselling genuine watches originally sold by Omega to authorized foreign distributors. Omega, a Swiss company that manufactures watches in Switzerland, did not authorize the importation of the watches by Costco, despite the fact that Costco legally purchased the watches abroad. Thus, the question in this case will be whether copyrighted materials made abroad and legally purchased abroad can be imported without the express permission of the copyright owner. In other words, does the first sale doctrine extinguish the rights of the copyright holder when the goods are made abroad and sold abroad.

Similarly, inventors shouldn’t be rushing out to write their own patent applications and represent themselves pro se. In fact, representing yourself in a patent application is the patent equivalent of taking out your own appendix — a REALLY bad idea. Having said that, many inventors are faced with the situation where they simply cannot afford to hire anyone to assist them. It is either go it alone or do nothing at all. In that situation the inventor is faced with a terrible dilemma. If the inventor goes into the situation understanding they are not going to get the breadth, depth and scope of rights they otherwise could get, and that is acceptable, then they have made a knowing business decision. The Libertarian in me believes that we shouldn’t say don’t do it, but the Patent Attorney in me knows that we need to be realistic about the chances of success and provide that information in a realistic way without sugar coating the reality.

While Tea Partiers generally oppose federal government intervention, a U.S. judge has agreed to referee a dispute among Florida political activists that questions whether anyone has a trademark or any other intellectual property rights to the “Tea Party” name. Given their anti-establishment fervor, one might also be surprised to hear that a Tea Party group filed for federal registration of a trademark. But in April of this year, Marylynne Cellamare filed an application for TEA PARTY in the USPTO (serial number 85011226). The Examiner rejected the mark in an Office action a month later because the mark was merely descriptive. Ms. Cellamare has not responded. And there’s an application for TEA PARTY PATRIOTS (serial 77777712) that wasn’t flat out rejected, but the Examiner did require a disclaimer to “Tea Party”. The application is now before the TTAB in opposition proceedings. There are many more of these types of applications ranging from clothing to bumper stickers to political activism.

At IPWatchdog.com we will spend the next month celebrating Bayh-Dole. We kick off our month long celebration of Bayh-Dole with an exclusive interview with the chief architect of the legislation — The Honorable Birch Bayh, a former three-term United States Senator from the State of Indiana. Senator Bayh is now with Venable LLP, which is located in Washington, DC, and where I conducted my interview with him on October 13, 2010.

During this first installment of my two-part interview with Senator Bayh we discuss some of the accomplishments of Bayh-Dole and Senator Bayh tells the story of how Bayh-Dole came to be. I suspect many, if not most, will be amazed to learn just how close we came to not have this monumentally successful legislation. But for another Senator lifting a hold with an hour left in the 1980 lame duck session there would never have been a Bayh-Dole Act.

Director Kappos was also asked whether there were any plans to allow the community to access the patent search platform that is available to patent examiners. Kappos explained that it was simply not possible for the Patent Office to provide access to its systems to a greater extent than already allowed because the IT systems are “too fragile.” In fact, the state of disrepair that the computer systems at the USPTO are in is almost unfathomable. Particularly when the USPTO is collecting $1 million every day that it is unable to use. So they get the work, but not the fees. A recipe for the backlog and pendency going in the wrong direction.

All of the morning sessions were open to all attendees followed by break out sessions later in the day where the attendees were able to choose the sessions they wanted to attend. Most of the sessions were repeated throughout the event, so that the attendees would not have to forego one topic session to attend another. There were speakers from both the IP community and the USPTO on topics pertinent to this audience, including the inventor of the Post It Note, Art Fry. The attendees were given the opportunity to attend different educational break out sessions that were meant to educate the independent inventor on the entire patent process.

I was pleasantly surprised to see inventors from all over the country, coming from New Jersey, Georgia, Florida and elsewhere. The Inventors Conference provides a truly unique opportunity for independent inventors to interface with patent examiners, high ranking USPTO officials and many industry experts. The two days are filled with programming that includes some “if I can do it, so can you” talks from successful inventors, even Hall of Fame Inventors, who share their stories of dedication and success. Also featured are substantive learning opportunities for inventors, such as how to write claims, why file a provisional patent application, patent searching, foreign filing and more. There is also ample networking opportunities for inventors, and time slots where inventors can receive free consultations with industry experts.

Like anything in life worth doing, the path of an independent inventor from initial stage idea to making money can be challenging. If it were easy then everyone would be a rich inventor. Luckily for those who have the determination to pursue innovation as a business it is not easy enough for anyone to do, which means that there are opportunities available. One of the keys to successfully making money as an inventor is understanding that those who are successful operate in a business responsible way, and this requires closely monitoring expenditure of funds. While you may want to rush out and build a prototype you need to be careful. There is nothing like the show and tell of a working prototype to lure investors, partners and licensing deals, but inventing is better viewed as a marathon than a 100 yard dash, and preserving capital is absolutely essential if you are going to be successful.