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New Look Patent Bar Examination Continues to Evolve

What I can report is that the USPTO did, in fact, meet the April 12, 2011, deadline and the newly testable material is being tested as advertised. The USPTO is also continuing to update the exam through a rigorous process of writing, vetting, and testing new questions. In addition to covering long-standing areas of patent practice, questions are being added to the database that are directed to new and emerging trends in the law and evolving rules of procedure. The subject matter covered by the exam as a whole will continue to test rules, laws and regulations that have been in existence for years, but will also increasingly include questions testing the changes.

Did the Supreme Court Rule First to File is Unconstitutional?

The ink is hardly dry on the Supreme Court decision in Stanford v. Roche and already those who oppose patent reform are concocting one of the most ridiculous arguments I have ever seen to oppose first to file provisions. There are some, including at least one Member of Congress, that have started saying that the Supreme Court’s decision in Stanford v. Roche makes it clear that the first to file provisions of patent reform are unconstitutional. Just sit right back and allow me to explain to you exactly why that is perhaps the most specious argument I have ever heard.

Supreme Court Affirms CAFC in Stanford v. Roche on Bayh-Dole

At issue in the case, essentially, was whether the extraordinarily successful Bayh-Dole legislation (enacted in 1980) automatically vested ownership of patent rights in Universities when the underlying research was federally funded. In a blow to the convention wisdom of Supreme Court patent-watchers, the Supreme Court actually affirmed the United States Court of Appeals for the Federal Circuit. Unlike some recent decisions where the result of the Federal Circuit was affirmed but a wholly new test announced, the Supreme Court simply concluded: “The judgment of the Court of Appeals for the Federal Circuit is affirmed.” Perhaps even more surprising, the Supreme Court seems to have objectively reached the correct conclusion.

Defining the Full Glory of Your Invention in a Patent Application

Unless you are claiming a perpetual motion machine, which based on our current understanding of science is understood to be impossible, you do not need to have a working prototype in order to obtain a patent. In fact, the rules and regulations of the Patent Office do not require a working prototype except when you specifically claim a perpetual motion machine. Given that our scientific understanding is that perpetual motion machines cannot exist, and given that inventors frequently file patent applications claiming perpetual motion machines, the Patent Office does require a working prototype, which will be tested. So if you do not claim a perpetual motion machine the patent examiner will never ask you for a prototype. All you need to do is define the invention in writing, through the use of text and illustrations, so that someone of skill in the relevant technical field would be able to understand the scope of your invention, understand how to make and use the invention, and understand what, if any, preferences you have relative to what you are claiming as your invention.

Selecting a Business Name in a Social Media Crazy World

What’s in a name? Well likely far more than most businesses realize. Your business name is how people will identify with your goods and services, so you want to have one identity that is all your own. Simple enough really, at least in concept, but making a mistake at the selection stage will prove costly. You really need to be picking a business name that gives you the opportunity to create a unified Internet marketing and branding strategy, from the domain name you select to your usernames and identity on popular social media and social networking sites like Twitter, Facebook and LinkedIn.

What To Do If You Are Sued for Patent Infringement

Despite the gathering storm, some businesses would prefer to pretend that patent infringement is not a problem for them and they won’t be sued. The graph below shows that since 1980 the number of patent lawsuits filed has only gone up, with a record number (3,301) being filed in 2010. Add the frequency of the “dime a dozen” threatening letters sent by those seeking to extract licensing payments to the number of lawsuits filed and you can readily see that patent infringement litigation, and the associated threats thereof, are a growth industry. Here is what you need to know when you get sued or get that threatening letter.

IP in the Real World: What a Bunch of Characters!

IP concerns range from highbrow to hilarious. It’s time to wake up, do your due diligence, and make sure you have the comprehensive IP protection you need in place when you start a business so you can stay on track creatively without fear of being derailed. Securing IP protection should now be at the top of your “to-do” list – not just an afterthought.

Funding Your Invention: Get Started with Crowdfunding

Crowdfunding addresses the two biggest challenges many inventors have. “What is the market for my product?” and “How do I get initial funds to produce it?” Conventional sources of funds include yourself, “friends and family”, and angel investors. Crowdfunding adds a new source of funds, the initial consumers. Inventors get committed funds and guaranteed customers. Backers get to be the first to get an exciting new product. If the funds are raised, you know you have a market and you have the resources to produce the product. If the funds aren’t raised, you have valuable market feedback.

Trojan Horse Patent Reform, About Prior User Rights All Along

So why would large companies be such supporters of first to file? What if first to file was the Trojan Horse that carried prior user rights? Prior user rights will not benefit the individual or the small business. Prior user rights unambiguously will benefit the large corporations who innovate and then shelf technology for one reason or another, or those who exploit the technology in secret. Perhaps they choose not to pursue a patent because it isn’t perceived to be a meaningful innovation, or worth the cost and time of pursuing a patent. Perhaps the innovation gets weeded out along the way, never getting green-lighted past a certain point. These trade secrets today are not prior art thanks to 102(g). Remove 102(g) and insert a prior user rights regime and all those secrets that large companies hide, fail to pursue or willfully keep from the public will allow them to ignore the patent rights of those who innovate and actually disseminate that information to the public.

The America Invents Act’s Repeal of Secret Commercial Use Bar is Constitutionally Infirm

The effort to shoehorn foreign patent priority concepts and torture a well-developed 200 year-old American patent system that has a proven record as the best in the world into foreign structures that are inconsistent with the American Constitution and its laws is a futile effort that would likely be met with successful challenge on constitutional grounds. The illusory “harmonization” goal with no demonstrated tangible benefits compared to the existing system does not justify embarking on a risky legal adventure that will destabilize the American patent system and will doom it to decades of economically taxing legal uncertainty.

An Exclusive Interview with Ted Olson & David Boies

The coming together of Ted Olson and David Boies for the purpose of advocating for a judicial system was not by happenstance. As you will read in the interview that follows, the men are aware they are high profile attorneys and hope that their fame will enable them to capture the attention of legislatures, lawyers and the public. They are each committed to advocating for a judicial system starved for resources and without lobbyists of its own, but which is supposed to be a co-equal branch of government along with the Legislative and Executive Branches of government.

Copyrights Last for a Limited Time, At Least in Theory

Currently, the term for copyright protection is life of the author plus 70 years. To put this into perspective for you, Steamboat Willie initially aired in 1928. The copyright is ruled by the 1909 Act and has a shorter term of protection that the current scheme. Steamboat Willie is due to go into the public domain in 2023 unless Congress extends the copyright term again. I’m not sure if nearly one hundred years is a limited term (almost everybody alive during the initial air date will be dead before they can use it), but I guess Congress and Disney think so.

PTO Studying Therasense v. Becton Decision; Guidance Soon

Today the United States Patent and Trademark Office (USPTO) announced that it is carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures. The agency also announced that it expects to soon issue guidance to applicants related to the prior art and information they must disclose to the Office in view of Therasense.

Judiciary Crisis: ABA Task Force Seeks to Preserve Justice

The Task Force is on the Preservation of the Justice System, and is chaired by perhaps the two most well-known lawyers in the United States, David Boies and Ted Olson. Olson and Boies are lending their considerable clout to shining light on a true crisis — an inadequately funded Judiciary. We have long known that a stable business climate is important for thriving, growing businesses. That is why organizations such as the Chamber of Commerce provide rankings of State Judicial Systems in terms of friendliness toward business. Said as straight as I can, if you don’t think a functioning Judicial System is a huge business issue then you just aren’t paying attention or haven’t seriously thought about the issues.

Federal Circuit Re-Settles Law of Inequitable Conduct

Judge Rader wrote: “Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.” Chief Judge Rader would go on to say that materiality is a “but-for” test, and actually breathed real life into the intent requirement, saying: “Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” The Federal Circuit did decline to adopt the USPTO version of the duty of candor outlined in Rule 56, which I have advocated for, instead opting for an even better, more patentee friendly standard than I myself have advocated for over the years. Today is a good day no doubt. Intent now actually requires intent, and a reference must actually be material in order to satisfy the materiality requirement. What a radical concept!