Posts Tagged: "Authors"

The basic argument in Myriad is whether DNA that is isolated from the chromosomes is statutory subject matter, or whether it is a product of nature. The stakes are high in the Myriad case, since the isolated DNA claimed by Myriad encodes mutated BRCA1 and BRCA2 proteins that can be used to detect breast cancer. Myriad has the only test offered in the United States because of its aggressive enforcement of its several patents. The numerous plaintiffs in the case speak to the core of the patent versus non-patent debate: whether patents actually “promote the progress of science and useful arts” as required in the U.S. Constitution. Myriad and other companies heavily reliant on biotechnology patents, would support the argument that strong patent enforcement allows companies which have invested millions or billions in assay or drug development for clinical use to recoup their investment and provide a return for investors. The plaintiffs would argue that such patents not only hinder the useful arts, but also endanger lives and/or drives up the cost of providing potentially life-saving testing and treatment.

As an aside, and somewhat related to the boring concept, is the idea that intellectual property practitioners are all basement-dwelling nerds. OK, maybe we’re a little nerdy in some ways, but I swear I do not live in a basement, my summer reading did not include the cheat guide to World of Warcraft, and I have NEVER been to Comicon. So what if I have the blueprints to the Millennium Falcon on my office wall and my favorite TV show is “How it’s Made”? You gotta admit some of the stuff we get to do and see in our professional lives is pretty freaking cool. The seediest infringement cases. The bleedingest edge of technology. The next rival to the power of McDonald’s logo or Coca-Cola trade secret. I wear my nerd moniker proudly.

It is fair to say that enactment of the AIA is not what most stakeholders championed early on. Many small inventors and innovation companies feel that some of the provisions are not in their best interest. IT would have preferred a bill that did more to change how patents are valued and enforced. Nevertheless, to most stakeholder, the final version of the bill is an improvement over previous versions of patent legislation. When patent reform legislation was first introduced in 2005, its primary objective was to reduce the infringement liability of large technology aggregators by significantly limiting equitable and monetary remedies, restrict venue, and make issued patents far easier to invalidate through post-grant review. In addition, earlier versions of the bill would have given the USPTO unprecedented substantive rulemaking authority and increased the cost and burden of filing a patent application. In combination, these measures would have significantly undermined the enforceability and value of patent rights, while increasing the cost, complexity, and uncertainty of obtaining patents. All of these reforms were advanced by a IT interests set on weakening the ability of small innovators to obtain and enforce patents.

For example, the new provision retains the existing notion of “public use” and “on sale” under current law; however, a key difference is that the one year grace period of current law will not be available under new 102 (Another key difference is that activities outside the United States may create a so-called public use or on sale bar under new 102). The new grace period under the America Invents Act is personal to the inventor and relates to “disclosure,” which many believe could be interpreted not to cover “public use” or “sale” as those terms are presently understood. Therefore, there is a possibility that your client’s invention may already be unpatentable in the United States by the time he or she contacts you (such as if a “public use” or “offer for sale” even took place the day before he or she consults you).

On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage. This article is a play-by-play of the process and how it unfolded.

The economics of mass patent enforcement have changed. A patent owner will no longer be able to casually sue a multitude of parties with a single filing, participate in proceedings in a single action in a single venue likely convenient only for the plaintiff, and thereby expeditiously pursue a recovery against numerous disparate parties. Actions will have to be filed individually against each accused infringer. The patent owner will have to participate in, contend with and address procedural and substantive aspects of each action.

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act and, with his signature, which will marshal in major changes to the U.S. patent system. Many provisions of the Act take effect a year or more after this date including, e.g., procedures for post-grant review proceedings before the U.S. Patent and Trademark Office (after September 16, 2012) and a change to a first inventor to file system (after March 16, 2013). However, a number of changes will take effect on September 16, 2011, or soon thereafter. The immediate and nearly immediate changes are outlined here in this article.

The truth is that Google bought a great deal more than patents when it acquired Motorola, though there are doubtless some real gems in the Motorola portfolio. As a relative newcomer to the wireless arena, the search giant in one bold move got its hands on the unmatched innovation experience of the longest-lived mobile phone company on earth. The technical acumen and product experience of those thousands of mobile software and hardware engineers will prove hugely valuable to Google as it seeks to dominate the $250 billion global market in smartphones, especially if it decides to become a handset maker as Motorola had been.

For example, regarding Thomas Edison, Lemley’s primary case illustrating the so-called “myth of the sole inventor,” he alleges that “Sawyer and Man invented and patented the incandescent light bulb” (Lemley 2011, p26) and that “Edison did not invent the light bulb in any meaningful sense” (Lemley 2011, p25). We disprove Lemley’s assertions and present five key facts that Lemley omits: for example, although Lemley cites a Supreme Court case in 1895 as a source for the statement above, he neglects to inform us of the decision reported in that case; it affirmed a lower court’s 1889 decision in favor of Edison and finding the Sawyer & Man patent invalid. Furthermore, the Sawyer and Man lamps were not commercially viable, having only a few hours life, whereas Edison’s invention was the basis for a lamp with a hundred times longer useful lifetime: electric lighting became economic and it was Edison’s invention that unlocked the field after three decades of experimentation by others in incandescent lamps. There was no candidate for an invention simultaneous with Edison’s invention.

The canonical story of the lone genius inventor is largely a myth. Edison didn’t invent the light bulb; he found a bamboo fiber that worked better as a filament in the light bulb developed by Sawyer and Man, who in turn built on lighting work done by others. Bell filed for his telephone patent on the very same day as an independent inventor, Elisha Gray; the case ultimately went to the U.S. Supreme Court, which filled an entire volume of U.S. Reports resolving the question of whether Bell could have a patent despite the fact that he hadn’t actually gotten the invention to work at the time he filed. The Wright Brothers were the first to fly at Kitty Hawk, but their plane didn’t work very well, and was quickly surpassed by aircraft built by Glenn Curtis and others – planes that the Wrights delayed by over a decade with patent lawsuits.

People have been arguing about the Internet since Al Gore invented it (sorry, I just couldn’t resist). One would think this issue would have been well settled by now but it’s not. The courts are starting to move toward some sort of congruency but there is still a very decided split in the decisions. And, as with oh-so-many issues in intellectual property, there is a litany of case law on the subject and not one bright line rule. It all boils down to what we consider a “use in commerce” and if we can call that “use” a source of confusion in the consumer. Briefly, in order to make a claim of trademark infringement stick, you have to show the defendant used your mark in commerce and you have to show that that use likely confused the purchasing public as to which company was actually selling that service or those goods. Since a metatag isn’t technically visible on the web page, federal courts haven’t agreed whether a metatag is “used or displayed in the sale or advertising of a service rendered in commerce or “placed in any manner” on a good transported in commerce”. See Lanham Act 15 U.S.C. 1127 .

The president says that’s the fault of recalcitrant Republicans in Congress. Republicans in Congress say it’s the fault of a president who is hostile to business. But the real reason we are not putting people back to work three long years into the recession is that Washington is afflicted with a totally-bipartisan cluelessness about how to create jobs.

Now, we’re about to toss it out in favor of a “first to file” bent with post grant challenges and derivation proceedings? Say what…….why? What did the statute do wrong? 8 million patents is a reasonable figure to have achieved. The US is the cross roads of the world’s technology with a statutory “negative pressure” that draws innovators and their ideas here. This country has flourished.

Most patents are obtained simply on the “refrigeration theory” as I call it. Just like if you are in food service you won’t get far without the preserving effects of refrigeration. Everything spoils unless eaten immediately. Likewise in technology; without the coverage of a patent, everything spoils unless consumed forthwith (first mover advantage). The decision is simple: if it is worth doing, i.e., putting resources into, it is worth patenting.