Posts in IPWatchdog Articles

If we can spend trillions in a failed effort couldn’t we spend a billion or two in an effort that is virtually guaranteed to succeed? I say for every $1 trillion wasted we should spend at least $1 billion on things that will work. By my estimates that means $4 billion more for the Patent Office. Not being a greedy guy I am happy to take that in four equal installments of $1 billion over a 4 year period. For those who are math adverse, that would mean the USPTO budget for FY 2011, 2012, 2013 and 2014 would be whatever they collect plus $1 billion, which for FY 2011 would likely be in the neighborhood of about $3.2 billion.

IFW Insight is a web-based application for searching, sharing and collaborating on US Patent Image File Wrapper (IFW) documents, which are also commonly referred to as “File History” documents. The IFW Insight search interface includes powerful search features including support for both proximity and Boolean search operations. The IFW Insight database currently includes over 1,000 IFW documents. IFWs are created by the USPTO as image-based documents, and are thus not searchable. Notwithstanding, by applying proprietary optical character recognition (OCR) algorithms The Patent Box is able to expose text data embedded within these image-based documents, thereby making them fully searchable.

Katehi also has some interesting suggestions regarding what the Patent Office could do to help Universities, both in speeding up the patent process and in keeping costs lower. I learned a lot from speaking with Katehi, which supplemented my knowledge based on my experiences at Syracuse University. What I am continually piecing together suggests that there is no great surprise why most Universities do not do a better job with respect to technology transfer. There are things that are clearly considered best practices in the private sector that seem to elude Universities for the most part. The University of California system seems to be out in front and trying to bring the best practices of the private sector into Universities. It is no wonder they do a better job than most with technology transfer.

Wednesday was my day to walk through the BIO Exhibit Hall. I had already decided to blow off the Al Gore “media availability.” I am not sure exactly what that is, but as near as I can tell it meant I would get to listen to the first 5 minutes of Al Gore’s keynote address. I’m not a big Gore fan, and there were so many cool innovations to learn about. I love to talk shop and nothing quite captures me like innovation, innovators and those who speak the language of business. So… sorry Mr. Vice President, this nerd decided to join the other nerds in the Exhibit Hall. The decision to skip the Gore media availability was sealed when I learned of an tech transfer iPhone app that needed some investigation. Hey, I can’t help it, I’m an electrical and computer engineer at a BIO Convention?!?! I needed some computer angle somewhere!

On Wednesday, May 5, 2010, David Kappos testified in front of the United States House of Representatives Committee on the Judiciary. See Hearing Page and Kappos Prepared Remarks. Many issues were covered during the hearing, but there were a couple matters that jump out as quite important. Most significantly, it seems that once again the Senate patent reform bill may be running into some difficulty in the House of Representatives. Some in the House of Representatives seem interested in slowing down regarding the substantive changes embodied in the Senate bill, but seem willing to consider legislation less grandiose and focused solely on giving the Patent Office fee setting authority and perhaps the ability to retain its fees. This, however, lead to a heated exchange that has been misreported in some outlets, so lets set the record straight.

Yesterday I had the honor of spending 30 minutes interviewing Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). The Director General spoke substantively about issues facing the Patent Offices of the world, as well as some possible solutions. Gurry also discusses harmonization attempts, work-sharing agreements and the crushing worldwide backlog of patent applications that could lead to irrelevance of the system. As you read the interview you will also see that he thinks it is possible that the rest of the world will adopt a US-like grace period.

What follows are pieces of Director Kappos’ remarks at the session prior to taking questions and answers. While it is probably unfair to call these remarks prepared remarks, it was clear that he referred to his notes as he provided detailed information and statistics. He also seemed to be reading what he said when he spoke about the ACLU case against Myriad Genetics, but who can blame him given the USPTO was a nominal party to the case and it will be appealed to the Federal Circuit. It is also worth mentioning that during the Q&A there were a few interesting things that came up, chief among them was Kappos’ explanation of the long odds facing a small entity claiming to be the first to invent but who filed the patent application second. Kappos likened the odds of such a Junior Party prevailing to the odds of being bitten by a Grizzly Bear and a Polar Bear on the same day. He then went on to say that you have to go back to FY 2007 to find a prevailing small entity Junior Party in an interference.

On Wednesday, April 21, 2010, I had the pleasure of conducting an exclusive, on the record interview with Jim Greenwood, former Congressman and current President & CEO of BIO. It was a treat to chat with Jim Greenwood. Our conversation lasted about 35 minutes, and we talked about his decision to leave Congress to take over at BIO, exciting new technologies BIO companies are working on, healthcare reform, the importance of patents to start-up companies and capital investment requirements. We also learn that he is an avid bird watcher and has started to become a bit of a gym rat.

Last summer J.D. Salinger sued the author/publisher of the book entitled “60 Years Later Coming Through the Rye” for copyright infringement. Salinger claimed that the book was a sequel to his famous book entitled “Catcher in the Rye” and therefore it was an infringing derivative work. The Second Circuit agreed with the district court that Salinger is likely to ultimately prevail in his lawsuit because the book is probably an infringing work which is not protected by the fair use exception to copyright infringement. However, the Second Circuit remanded because it held that the test used by the district court to decide whether to issue a preliminary injunction was no longer the proper test to use in light of the 2006 Supreme Court decision in eBay v. MercExchange, 547 U.S. 388.

For 2010 the US Trade Representative reviewed 77 trading partners for this year’s Special 301 Report, and placed 41 countries on either the Priority Watch List, Watch List, or the Section 306 monitoring list. The Priority Watch List for 2010 names the following countries:China, Russia, Algeria, Argentina, Canada, Chile, India, Indonesia, Pakistan, Thailand and Venezuela.

The plaintiffs had argued that defendants had in fact violated Section 1 of the Sherman Act when they settled their dispute concerning the validity of Bayer’s Cipro patent by agreeing to a reverse exclusionary payment settlement. Bayer agreed to pay the generic challengers, and in exchange the generic firms conceded the validity of the Cipro patent. The Second Circuit panel affirmed the granting of summary judgment, finding themselves confined by the previous Second Circuit ruling in Tamoxifen. The panel did, however, make the extraordinary invitation to petition the Second Circuit for rehearing in banc, citing the exceptional importance of the antitrust implications, the fact that the primary authors of the Hatch-Waxman Act have stated reverse payments were never intended under the legislation and the fact that the Second Circuit in Tamoxifen simply got it wrong when they said that subsequent generic entrants could potentially obtain a 180 exclusive period even after the first would-be generic entrant had settled.

The complaint alleges that in some cases the republication and distribution occurs within a minute or two after the article is published by Dow Jones. In just one two-week period, Briefing.com copied a substantial portion of at least 100 articles and republished more than 70 headlines within three minutes of the initial publication on Dow Jones Newswires. Dow Jones alleges that this conduct violates Dow Jones’ copyrights, amounts to “hot news” misappropriation, violates the DMCA and is otherwise unfair competition.

Intent to deceive was admitted, if you can believe that, but as it turns out the prior art withheld, a prior sale, was not invalidating and would not have lead to an appropriate rejection by the Patent Office. Nevertheless, the prior sale of an earlier version of the invention in question was the closest prior art and the Federal Circuit, per Judge Prost, explained that materiality does not require that the the withheld prior art lead to a good rejection. So Judge Prost applied the Patent Office law relative to materiality as it existed prior to the 1992 revision of 37 CFR 1.56.

There are few things in this world that irritate me more than hypocrisy. Did you know that since 1976 Duke University has had 716 issued US patents, 266 of which in some way, shape or form relate to genetics and 156 of which relate in some way, shape or form relate to both genetics AND cancer. While Duke University throws Myriad Genetics under the bus over its patents on the BRCA1 and BRCA2 genes tied to breast and ovarian cancer, Duke has its own patent on identification and sequencing of the BRCA2 cancer susceptibility gene. How convenient!

The United States Court of Appeals for the Federal Circuit earlier today decided to take up important issues relating to inequitable conduct en banc, vacating the earlier panel decision in Therasence, Inc. v. Becton Dickinson and Co., which issued January 25, 2010. Hopefully the entire Federal Circuit will be able to put to rest the nonsense that has become inequitable conduct, and if the questions presented are any indication we might be in store for a major re-write and settling of the law of inequitable conduct.