Eventually we are going to have a decision from the Supreme Court in Bilski v. Kappos, or we will know that the case will be held over until the next term of the Court, which beings in October 2010. The current Supreme Court term comes to an end on June 28, 2010, so something will soon happen worth discussing. PLI has selected a number of possible dates depending on when the Supreme Court hands down its long awaited decision.

You have an idea, now what? Unless your idea is ridiculously simple, you will probably need to develop it. Almost no ideas come fully formed. They must evolve to approach their final form. Evolution takes place through a process of exploration whereby the inventor plays with the idea and learns. The best method for playing and learning is making a prototype. Making a physical model will often expose overlooked problems and opportunities for improvement. I cannot count the number of times that, in the construction of a prototype, I discovered obvious problems that I had missed. In addition, I discovered many ways to improve upon my idea.

From the standpoint of appropriate judicial process within our system of government the Bilski case is an easy one. If the Court were predisposed to do what they are supposed to do, a stretch I know, they would exercise judicial restraint and actually only decide the case before them. At this point unless the case is held over because no decision can be reached it seems a virtual certainty that the Supreme Court will say more than they should, which will lead them to create problems that they never envisioned. Saying too much and not appreciating the unforeseen (at least to them) consequences just so happens to be a Supreme Court specialty, at least when it comes to patent law.

There is some irony that on the day we mark the 30th anniversary of the decision that launched the modern biotechnology industry we are still awaiting a decision on a patentable subject matter case — Bilski v. Kappos. Bilski has the potential to not only kill business methods, but also the software industry, the biotechnology industry and much of the medical innovation we see growing by leaps and bounds. So for today I toast the Supreme Court decision that launched the biotech industry, created millions of jobs and has lead to innumerable cures and treatments. I just hope that tomorrow (or whenever the Supreme Court issues its Bilski decision) it is not all for naught.

Who among us likes monopolies? Monopolies charge super competitive prices and consumers have no leverage, which leads frequently to inferior goods or services that consumers are forced to accept. This aversion to monopolies has been ingrained in American culture and heritage since the founding of the Nation, and was taken to new extremes during President Theodore Roosevelt’s Administration. While a patent does not confer a monopoly, patents can result in economic power through exclusion of competitors. It is this fundamental aspect of the patent right granted by the government that attracts investors to companies that have acquired patent rights.

Management at the United States Patent and Trademark Office has been working with representatives of the patent examiners union, the Patent Office Professional Association (POPA), to better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos announced today. If adopted, the joint task force’s changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.

In Perquignot v. Solo Cup Co., the stakes were truly mind-boggling: about $10.8 trillion in total. Approximately $5.4 trillion of that bounty would be the federal government’s share which the Federal Circuit characterized as “sufficient to pay back 42% of the country’s total national debt.” High stakes indeed! But unfortunately for the bounty hunter (Pequignot) in Perquignot, the Federal Circuit affirmed a district court grant of summary judgment that there was no “deceptive intent” on the part of the patentee (Solo Cup), thus no approximately $5.4 trillion bounty was owed.

Tafas and GSK were recognized with this prestigious award for their successful legal challenge to the claims and continuations rules made final in 2007 by the United States Patent and Trademark Office. Dr. Tafas was first to file his complaint against the USPTO, which was filed the day after the final rules were announced in August 2007. The rules were not to go into effect until November 1, 2007, and for some time it seemed as if Dr. Tafas alone would take on the Patent Office. In October 2007, after previously promising to challenge the rules, GSK filed its complaint. Armed with the benefit of the Patent Office response to the Tafas complaint, GSK was able to assault the rules from another flank and with full knowledge of how the Patent Office postured itself to defend against Tafas. By challenging immediately Dr. Tafas and his attorneys (Steven Moore and James Nealon of Kelly Drye) did an enormous service for the industry and took the fight to the Patent Office. They exposed the Patent Office and in tandem with GSK were able to keep the USPTO on their heels throughout the proceedings.

86 law, economics, public policy and business professors filed an amici curiae brief with the United States Court of Appeals for the Second Circuit seeking the en banc review of the panel decision in In re Ciprofloxacin Hydrochloride Antitrust Litigation, which issued on April 29, 2010. Mark A. Lemley, William H. Neukom Professor, Stanford Law School and partner in the San Francisco law firm Durie Tangri LLP, is representing the 86 professors pursuing this matter pro bono as a concerned law professor and not on behalf of any client. When asked for comment he offered that he thinks “the Cipro case may well be the turning point in legal treatment of reverse settlements.”

Last week when I wrote Broken Record, No Bilski for You Today, which was a fun combination of Soup Nazi meets LPs, I dangled the thought that perhaps the Supreme Court would not decide Bilski this term and might hold the case over. I said I refused to speculate at this point, but some of those commenting on that article asked me to engage in the speculation, as did others via e-mail and some that I have encountered in the industry since then. I still think it is unlikely that the Supreme Court will hold Bilski over, just because it is an extraordinarily rare occurrence, but with only two more decision days this term (i.e., Monday June 21 and Monday June 28), it seems appropriate to at least ponder the rare occurrence of the Supreme Court holding a case over, which the Court did in Marbury v. Madison and Brown v. Board of Education.

Throughout the last three decades (or more) there has been an increasing influx of catchy ad campaigns as television viewership has increased and more companies have looked to utilize this means of marketing. A really powerful ad campaign is one that is interesting, funny and memorable, and clearly defines what the product or service is, the type of commercial that is often the topic of discussion, or is frequently quoted. However, this type of ad campaign can also be ineffective and even damaging to a company’s brand if the your target audience does not know what product the commercial is trying to endorse. I am sure you can recall hearing catchy ad slogans and jingles or seeing commercials that have left you wondering, “What company was that for?”

At these types of ceremonies everyone says such nice things, but what Judges Newman, Linn and Lourie said about Judge Michel seemed particularly heartfelt, and they seemed almost saddened to see their friend choose to leave and set out to make a difference advocating rather than opining. The video also included flattering comments from Chief Judge Anthony Joseph Scirica of the Third Circuit, one of Judge Michel’s former clerks and executives of the IPO. It was extremely tasteful, gave an appropriate but not lingering recap of his career and did not linger or go on at an uncomfortable length as these things sometimes can do. Extremely well done and kuddos to the IPO.

from the business perspective when you are building a trademark or trademark portfolio it is really the good will that will define the value of the trademark. But like most things in life there is a double edge sword. There is positive good will and negative good will. Negative good will sounds silly I know, but it relates not to the absence of good will, but negative feelings. So, for example, BP is in the process of developing enormous negative good will as a result of the oil spill in the gulf of Mexico.

By far, most inventions are improvements upon other known devices or solutions. In fact, whenever I teach patent law courses I tell students that in their career as a patent attorney they are unlikely to ever come across a pioneering invention (i.e., first of its kind, revolutionary invention). Even the great Thomas Edison, the most prolific inventor in US history, rarely came up with pioneering inventions. What Edison really had a knack for was taking something that someone else had come up with and making it extraordinarily better. So the first lesson here is that inventors can and most frequently are those who improve upon the work of others. The second lesson is that those inventors who focus on improvements can be quite successful indeed!

Cumulative statistics released by the USPTO demonstrate steady growth in the number of requests for reexamination being filed generally (particularly inter partes) since the advent of third-party participation in 1999. Between January 1, 1999 and December 31, 2009 the USPTO Official Gazette noticed 5,594 requests for reexamination. Of these, 97 or 1.7% were requests for reexamination of design patents. Of these 97 reexaminations, 85 or 88% were ex parte and 12 or 12% were inter partes.