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.

In order to have a patentable business method it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patentable it must produce a “useful, concrete and tangible result.” Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. If you really understand what Judge Rich meant by “useful, concrete and tangible result” you come to the inescapable conclusion that it is the appropriate test and if you really target the description of the invention to satisfy the test you will have something that is patentable under the Supreme Court Bilski v. Kappos test and the USPTO guidelines that have followed.

Funai appealed the examiner’s rejection to the PTO Board which conducted oral argument on August 18th. The CAFC’s earlier decision in favor of Funai was mentioned in passing, but the Judges seemed largely indifferent to it. Counsel for Funia remarked that “at this point the Examiner has adopted our claim construction, which was also adopted by the [ITC], which I know is not [binding] on this Board, and affirmed by the Federal Circuit.” One of the Judges spoke up “…did you say it was affirmed by the Federal Circuit?” Yes, replied counsel, “[i]t should be in the record….” The Judges and counsel then proceeded to discuss the merits of the appeal without further mention of the earlier appellate decision.

In the election yesterday the Republicans scored an enormous victory in the United States House of Representatives, gains of a still unknown number in the United States Senate, and gains in Governors’ races as well as State House and State Senate chambers across the country.  Earlier this afternoon, at 1:00 pm Eastern Time, President Barack Obama held a press conference…

As the evening moves forward it is increasingly apparent that the Republicans are having an excellent night, and exactly what the vast majority of pundits have predicted seems to be coming true. Not withstanding the potentially historic nature of this election, there will be plenty of time to consider what the election results mean in general, for business and for a variety of issues important to families; the so-called kitchen-table issues. But for tonight I will reserve my commentary to what the election results mean for patent reform. Those following my recent articles might find themselves surprised. In order to discuss the impact of patent reform we first need to define what is meant by “patent reform.” I am going to divide patent reform into two categories: (1) pending patent reform that might get consideration in the lame duck session; and (2) patent reform that we desperately need the next Congress to take up.

On Monday evening, November 1, 2010, David Kappos, Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, told the Dow Jones news service: “The USPTO at the present time is maintaining the status quo. We’re continuing with current procedures as they are.” This could set up a contentious and public policy battle between the United States Department of Commerce and the United States Department of Justice. This battle of agency titans — DOJ v. DOC — comes as a result of the Department of Justice filing an amicus brief in The Association of Molecular Pathology v. The United States Patent and Trademark Office, which actually does not take the side of the USPTO, but rather says that what the USPTO is doing is wrong. Thus, in an extremely odd twist the DOJ is supporting the plaintiffs’ against the United States Patent Office.

Like it or not, the patent system is a great motivator, and used appropriately to incentivize the type of behavior we want to encourage it is a powerful tool in the government arsenal. To fundamentally alter what is considered patentable subject matter will not only negatively impact cutting edge biotechnology research, but it will also have a chilling effect. Uncertainty causes business paralysis and forces investors to the sidelines. The uncertainty that would be created by the curtailing of patentability would not be isolated to the biotechnology sector, and is exactly the opposite of what our economy presently needs.

On Friday, October 29, 2010, practically on the eve of a national election that will in all certainty be an enormous rebuke of the Obama Administration and the Democrats’ agenda in general, the Department of Justice filed an amicus brief at the United States Court of Appeals for the Federal Circuit that would destroy the U.S. biotechnology sector. In an astonishing and irresponsible policy shift that directly contradicts the long-standing policy of the United States federal government and a variety of agencies, the Department of Justice is promoting the dialing back of what is considered patentable subject matter and is urging the Federal Circuit to rule that “isolated but otherwise unaltered genomic DNA is not patent-eligible subject matter under 35 U.S.C. § 101.”

The Executive Director of the AIPLA, Q. Todd Dickinson, then took the stage to introduce a video that was dedicated to this year’s AIPLA Board of Directors’ Excellence Award. This year the award was given to the Honorable Chief Justice Paul R. Michel, who retired earlier this year. Dickinson explained the award was being given to him “in recognition of his extraordinary leadership and service to the United States Government and in particular his leadership of the Court of Appeals for the Federal Circuit as Chief Judge while having a distinguished career marked by intellect, integrity, and an unwavering commitment to the administration of justice.”