Posts in IPWatchdog Articles

The fashion industry claims it loses millions of dollars in revenue every year because of copycats buying one very expensive handbag or shoe or other item, deconstructing it, farming it out (usually to some factory in Asia), and making copies of it to be sold for a fraction of the price. There is now proposed legislation attempting to address and put a dent in the very lucrative knock-off market. Enter the “Innovative Design Protection and Piracy Prevention Act” (S.3728), courtesy of Senator Chuck Schumer (D-NY). Now, imitation is the no longer the sincerest form of flattery, it’s the basis for a lawsuit. Swell. Sen. Schumer is proposing to amend Chapter 13 of the Copyright Statute- Protection of Original Designs. (See the text of his proposed amendment) Fortunately, dear readers, I’m here to make sense of this, or at least give it a hero’s try. It is copyright, after all, and I can only do so much.

On Monday, September 22, 2010, the United States Patent and Trademark Office announced via Federal Register Notice that the Office is considering pro-business strategies for incentivizing the development and widespread distribution of technologies that address humanitarian needs. One proposal being considered is a fast-track ex parte reexamination voucher pilot program to create incentives for technologies and licensing behavior that address humanitarian needs. Under the proposed pilot program, patent holders who make their technology available for humanitarian purposes would be eligible for a voucher entitling them to an accelerated re-examination of a patent. Given that patents under reexamination are often the most commercially significant patents, it is believed that a fast-track reexamination, which would allow patent owners to more readily and less expensively affirm the validity of their patents, could provide a valuable incentive for entities to pursue humanitarian technologies or licensing.

The Association of Patent Law Firms (APLF) will present its 2010 Annual Meeting in Chicago from September 29 to October 1 at the Hyatt Regency. The event will bring together lawyers and professionals whose practices are dedicated to patent, trademark and copyright law. Renee C. Quinn, of IPWatchdog, Inc., will be one of the speakers on the program this year, discussing Social Networking for the IP Lawyer on Friday, October 1, 2010. In addition to discussing the Social Networking phenomenon, the APLF Annual Meeting program will addresses contemporary IP law firm management issues in addition to current substantive IP topics. IP experts from Whirlpool, INVISTA and Clorox will share their IP experiences and issues and how they relate to recent IP developments.

This idea of revenue in exceeding revenue out is really not one that is in and of itself patentable though. Families and small businesses live with that reality every day of every week of every month of every year. So there will likely need to be some kind of a hook in whatever claims we write to make sure that we distinguish over the common sense prior art established by hard-working individuals who are the backbone of this Nation and who know that you simply cannot continue to spend more than you bring in. As our President is fond of saying — when you are in a hole you need to put down the shovel. That is common sense for individuals, families and small businesses, but seemingly incomprehensible when it comes to government — and that will be the patentability hook no doubt.

In this edition of News, Notes & Announcements, the mother of all patent trolls, Acacia Research Corporation, scores two more licensing agreements, one with IBM the other with US Cellular. Samsung Electronics and Stanford Law School are combining forced to co-sponsor a patent prize for excellent writing about patent law, with real money awarded to the winner and runners-up; $10,000 and $5,000 respectively. AIPLA announced that David Kappos will give the keynote speech at the annual meeting on Thursday, October 21, and Judge Gajarsa will speak on Friday and Chief Judge Rader will participate in a panel on the amicus process. The Wall Street Journal is reporting about new challenges to cookies tracking our every move online, and BIO is the charter sponsor of a new weekly public affairs television program called BioCentury This Week, which premiered yesterday and is available on the web.

So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. When you are at the point where you can describe the uniqueness of your idea in comparison to other patents and pending applications then you are again tilting heavily toward the invention side of the idea-invention continuum.

My interview with Q. Todd Dickinson, the current Executive Director of the AIPLA and former Under Secretary of Commerce for Intellectual Property and Director of the Patent and Trademark Office, took place on August 19, 2010, in a conference room at AIPLA headquarters. In this final installment of the interview we discuss how current USPTO Director David Kappos is doing, whether his honeymoon period will ever end, whether there is any concern he will burn-out, and we discuss the AIPLA position on Three Track, plus the usual fun questions at the end.

Biotechnology industry leaders announced today a major new program to improve the quality of U.S. life science education. The Biotechnology Institute’s new “Scientists in the Classroom” initiative is the life science industry’s response to President Obama’s “Educate to Innovate” campaign to improve the performance of America’s students in science, technology, engineering, and mathematics (STEM) education. The announcement came as life science industry executives participated in a White House event announcing the creation of the new broad education coalition called “Change the Equation” comprised of CEOs from across a broad spectrum of industries.

A bipartisan group of 25 Senators Wednesday sent a letter to Senate Majority Leader Harry Reid (D-Nev.) urging him to schedule a vote on the bipartisan Patent Reform Act. The legislation will make the first reforms to the nation’s patent laws in more than 55 years, and will update the patent system to improve patent quality and increase certainty among parties in litigation.

I thought it might be interesting to take a look at what the Office of Enrollment & Discipline has been up to since the start of 2010. To be perfectly honest, I was quite surprised by what I found. Not only is there not a single case involving Rule 11.5, but the overwhelming majority are related to reciprocal proceedings where discipline was already taken by a State and the USPTO is taking appropriate matching action with respect to the practitioner. In fact, out of the 37 disciplinary proceedings this year 24 have been reciprocal proceedings, where the USPTO seems to hand out justice largely or solely based on justice being handed out by some State Bar authority.

I would also like to take issue with Judge Dyk’s statement that it would simply be easier, and better, to say that anything in the preamble is limiting. Yes, that would certainly be easier and probably a better approach than the nebulous standard presently in place, but I doubt that would be to the Supreme Court’s liking given they seem to detest bright line rules, even when they make sense. I also protest such an approach because that has, as far as I can tell, never been the law, or at least not at any time during my practice career. So regardless of whether it is a better test it absolutely should not be applied retroactively to affect those rights obtained under the belief that what is in the preamble is not limiting.

While success in Phase I is critical, there are substantial hurdles to overcome yet before this vaccine could reach the market. Nevertheless, such a promising cancer vaccine ought to be heralded by everyone, right? Think again! Inovio actually has the audacity to have patents on its ground breaking innovation, which will lead the anti-patent non-thinkers to be more concerned with blowing up the patent system than rooting on Inovio and others as they attempt to eradicate cancer. Absolutely ridiculous if you ask me!

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

In this second installment of my interview with current AIPLA Executive Director and former USPTO Director, Q. Todd Dickinson, we start out discussing pendency at the Patent Office. Dickinson tells me about the incentives he used to keep patent examiners as they matured into the level of experience where they are ready to really roll up their sleeves and become the work-horses that Office needs. We talk about the AIPLA position on the proposed Three Track Proposal now pending at the USPTO. We then moved into a very interesting discussion of patent reform, and a bombshell is dropped, at least in my opinion. I was surprised to hear Dickinson say that he does not think patent reform is dead for THIS legislative cycle. He says: “The clock’s running and, the plays have to be run a little faster,” but that he “can see a path forward once the Congress returns.” He goes on to point out that the American Inventors Protection Act was attached to an appropriations bill. Looking at what Congress has on its plate upon returning it looks like there are a lot of appropriations bills. Curious indeed!

In this edition of News, Notes & Announcements, patent attorneys asked to participate in an inequitable conduct study, BIO seeks session proposals for 2011 Convention, Huffington Post and other popular press starting to report that patent backlog is costing jobs, the Second Circuit refuses en banc rehearing in reverse patent payments case and PLI sponsoring yours truly on a speaking tour.