Monday, June 11, 2018

IP Watchdog - Iancu: People have a right to know what is patent eligible

Today, Gene Quinn posted an article: Iancu: People have a right to know what is patent eligible that should encourage those dealing with the current law of patent eligibility under 35 U.S.C. 101.

"Director Iancu would go through the list of things we collectively understand are not patent eligible, such as isolated DNA, gravity and the like.

'Let’s be transparent,' Iancu said. 'Let’s make a list.'

'What is it that we want to exclude from patenting, people should know up front,' Iancu said forcefully.

'We must be careful to not overread the Supreme Court’s exclusions,' Iancu said before quoting the Supreme Court recognizing that their tests could if applied expansively swallow all of patent law.

'Why not simplify,' Iancu asked."

I like where our USPTO Director Iancu is going, but think if and when Congress, the courts, and the USPTO put together an "exclusion list" we would then hear much disputing on whether a given invention is "on" or "off" the list.

Perhaps Congress and the Supreme Court need to reconsider whether or not 35 U.S.C. 101 should  have judge made exclusions to patent eligibility. Look how much uncertainty it has generated. I don't think everything man thinks up should get patent protection. However, we can exclude what shouldn't receive patent protection using the substantial body of case law set forth in 35 U.S.C. 102 and 35 U.S.C. 103. Otherwise, we may continue to watch the courts stretch the language of 35 U.S.C. 101 under Alice/Mayo test to encompass novelty under 35 U.SC. 102 and non-obviousness under 35 U.S.C. 103. 

Copyright © 2018 Robert Moll. All rights reserved.

Friday, April 13, 2018

Harvard Journal of Law & Technology - Special Issue - Software Interface Copyright

The Harvard Journal of Law & Technology published a Special Issue - Software Interface Copyright worth reading if you are interested what certain academics think regarding copyright's role with respect to application programming interfaces (APIs). It also discusses fair use and relates to Oracle v. Google.

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, April 11, 2018

USPTO - Director of USPTO Andrei Iancu - Role of U.S. Patent Policy in Domestic Innovation and Potential Impacts on Investment

On April 11, 2018, Director of USPTO Andrei Iancu delivered an encouraging and insightful speech:

"Thank you Neil (Bradley) for that generous introduction. Thank you also to the U.S. Chamber of Commerce and its Global Innovation Policy Center for hosting this impressive gathering and inviting me to speak here today.

 Dr. Eli Harari, an electrical engineer, always tinkered and invented things. He tells, for example, that he invented a new type of fishing rod, although he never fished. “Imagine how much more successful you’d be,” his wife said, “if you’d invent in a field you knew something about.” And so he did. Dr. Harari is credited with inventing the Electrically Erasable Programmable Read-Only Memory, also known as EEPROM, or “E-squared PROM.” This was in the 1970s, when Harari was working at a major corporation, where he was a star.

But a few years later, he wanted to be on his own, to invent, to perfect, to commercialize. In his late 30s, he was also married and had a child. So in the prime of his career, with a family at home, Harari left his comfortable life with major corporations. Seeding it in part with his own money, Harari started a company of his own. And he did not even draw a salary the first several months. He risked everything: his career, his finances, and his family.

That first company actually did not work out well, but a few years later, Harari risked it all again and co-founded a new company, which he ultimately called SanDisk. At SanDisk, Harari built upon his EEPROM technology, added critically important new inventions, and perfected flash memory data storage. And he obtained patents, including on how to turn memory chips into reliable systems. Harari’s flash technology came to be used almost universally in devices like digital cameras and cell phones. In 2016, Western Digital acquired SanDisk for $19 billion.

But think about it: Without patents, how could someone like Dr. Harari risk everything, put aside his secure career at an established company, and strike it on his own? As Dr. Harari told me: “The only asset you have is your idea. If you have no way to protect your idea, you are at the mercy of the next bad guy. The U.S. patent system is genius, really the bedrock foundation of capitalism.”

Harari’s sentiment was echoed by President Ronald Reagan, who said in 1982: “Throughout our Nation’s history, the patent system has played a critically important role in stimulating technological advances.” How true that is.

 Yet today, our patent system is at a crossroads. For more than just a few years, our system has been pushed and pulled, poked and prodded. The cumulative result is a system in which the patent grant is less reliable today than it should be. This onslaught has come from all directions: There has been major reform legislation, and proposed legislation. There have been massive changes brought about by major court cases. And the USPTO itself has taken a variety of actions in an effort to implement these changes. Plus, importantly, the rhetoric surrounding the patent system has focused relentlessly on certain faults in, or abuses of, the system—instead of the incredible benefits the system brings to our nation.

We see the result of this years-long onslaught in your own study, the U.S. Chamber’s 6th Annual International IP Index. I don’t need to tell this audience that the American patent system, which in prior years was deservedly ranked as the number one system in the world, in 2017 fell to number 10. And this year it fell further, tied for number 12. But make no mistake: we are still an elite system, a mere ¼ point away from the systems ranked 2-11. And the United States remains the leader for overall IP rights.

Still, we are at an inflection point with respect to the patent system. As a nation, we cannot continue down the same path if we want to maintain our global economic leadership. And we will not continue down the same path. This administration has a mission to create sustained economic growth, and innovation and IP protection are key goals in support of that mission. So, how do we reverse the trend? The good news is that reclaiming our patent leadership status is within reach. For today, let me focus on two principal points: (1) Creating a new pro-innovation, pro-IP dialogue, and (2) Increasing the reliability of the patent grant. First, we must change the dialogue surrounding patents. Words have meaning. Words impact perception and drive public policy. And for too long, the words surrounding our patent system have been overly-focused on its faults. A successful system cannot be defined by its faults. Rather, a successful system must be defined by its goals, aspirations, and successes. Obviously, errors in the system should be corrected. And no abuse should be tolerated. Errors and abuse should be identified and swiftly eliminated. However, the focus for discussion, and the focus for IP policy, must be on the positive.

We must create a new narrative that defines the patent system by the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to society. And it is these benefits that must drive our patent policies. At my swearing-in, I remarked that through the doors of the U.S. Patent and Trademark Office comes our future. And indeed it does, and it always did. We must celebrate that. From Thomas Edison to the Wright Brothers, from Stanley Cohen and Herbert Boyer to Steve Jobs, American inventors have fueled the imagination of our people for generations. We are a pioneering people, who overcome large obstacles in order to realize our dreams and create prosperity. Inventors help make dreams reality. And American invention changes the world. Indeed, with American patents, humans made light, began to fly, treated disease, and enabled instant communications across the globe from tiny devices in our pockets. And those patents also enabled these inventors to start companies and grow our economy. Our dialogue and policies need to be focused on these amazing achievements, and how we can encourage more of them. Take Walter Hawkins as another example: Hawkins, who in 1942 became the first African American scientist on staff at AT&T’s Bell Labs, developed the plastic coating that covers telephone wires, a more versatile, durable and eco-friendly alternative to the lead standard at the time. It was so durable, in fact, and so effective, that Hawkins’ invention enabled huge investments to bring affordable phone service across America, including rural areas, and to millions of people in the 20th Century. Inventor stories like Hawkins’ and Harari’s are those we need to tell. This is the American patent system. This is the dialogue we need to have. And this should be the focus of our patent policy. This is how we incentivize innovation and growth.

But, how exactly do we translate this into a better patent system? Here’s a start: when we write, interpret, and administer patent laws, we must consistently ask ourselves: Are we helping these inventors? Whether it’s an individual tinkering in her garage, or a team at a large corporation, or a laboratory on a university campus—we must ask ourselves: are we helping them? Are we incentivizing innovation? And that brings me to my second principal point for today: increasing the reliability of the patent grant. Because that is key to incentivizing innovation. Without reliable patents, inventors like Dr. Eli Harari are less likely to risk it all in order to bring their new concepts to the market. As I said at my Senate confirmation hearing: “When patent owners and the public have confidence in the patent grant, inventors are encouraged to invent, investments are made, companies grow, jobs are created, science and technology advance.”

This year’s Chamber report explains why our patent system has dropped to number 12: “innovators and creators face a challenging environment for protecting their IP under current U.S. law… U.S. patentability standards and patent opposition procedures continue to create uncertainty for rightsholders.” So your report identifies two principal reasons for the increased uncertainty (or lower reliability) of our patents: (1) Patentability Standards, or more specifically, patent subject matter eligibility pursuant to 35 USC Section 101; and (2) Opposition procedures, namely, the post-grant procedures, such as IPR, that were established by the America Invents Act.

Let me address each of these in turn. First, our current law surrounding patentable subject matter has created a more unpredictable patent landscape that is hurting innovation and, consequently, investment and job creation. Recent cases from the Supreme Court – Mayo, Myriad, and Alice – have inserted standards into our interpretation of the statute that are difficult to follow. Lower courts applying these cases are struggling to issue consistent results. Patent lawyers trying to advise their clients are, in turn, struggling to predict the outcome with respect to certain patents. And examiners at the USPTO must spend increased amounts of time addressing this challenging issue. The current standards are difficult for all: stakeholders, courts, examiners, practitioners, and investors alike. System-wide, a significant amount of time is being spent trying to figure out where the lines should be drawn, and what’s in and what’s out. And multiple people looking at the same patent claims often have trouble agreeing on, and predicting, the outcome.

Something must be done. To be sure, we must and will apply Supreme Court law faithfully. This does not mean, however, that more cannot be done to increase clarity and predictability. Of course, given our statutory mandate, there is only so much that the USPTO can do. But within that mandate, we will do everything we can. Currently, we’re actively looking for ways to simplify the eligibility determination for our examiners through forward-looking guidance. Through our administration of the patent laws, which we are charged to execute, the USPTO can lead, not just react to every new case the courts issue.

Second, your report also mentions our “patent opposition procedures” as a reason for the increased uncertainty of our patents. This refers primarily to our Inter Partes Review, or the IPR system. This was a creation of the America Invents Act, and since its introduction five and a half years ago, we have now conducted more than 8,000 such proceedings. It’s been a very popular proceeding. Opinions on this new system diverge widely. Yet each opinion is passionately held by its supporters. Pointing to the high invalidation rates in IPR proceedings, some hate the new system with vigor, arguing that it’s an unfair process that tilts too much in favor of the petitioner. Others love the system, and think it’s the best tool we have to correct errors, eliminate “bad patents,” and improve patent quality. Who is right? Well, both arguments have legitimate elements.

But I encourage people to reduce the hyperbole and look at the process with fresh eyes, in order to understand its true benefits and true challenges. This is what we are now doing at the USPTO. Indeed, it’s one of our highest priorities. We need to carefully balance rights-holder’s and rights challenger’s interests. On the one hand, for example, this proceeding can come years after issuance, when the patent owners and the public may both have relied on those rights and made investments accordingly. On the other hand, we do want to execute the statutory mandate and help maintain the quality of patent rights. And – assuming the Supreme Court does not declare it unconstitutional – we do want the IPR system to effectively address invalid claims, but at the same time, we don't want to throw out the baby with the bathwater. The filters need to be appropriately set. And so, among various other things, we are now examining: how and when we institute proceedings, the standards we employ during the proceedings, and how we conduct the overall proceedings.The goal, with whatever action we take, is to increase predictability of appropriately-scoped claims.

Finally on the predictability front, let me mention something that was not addressed directly in your report. If we want truly reliable rights, we must ensure that we issue appropriately-scoped patent claims from the get-go. In other words, we must also focus on the front end. And since our examiners are first in line, we must ensure that they have the tools they need for a thorough search and examination. Our examiners already do a fabulous job. And it is not easy, given the state of the law and all the information that needs to be processed and analyzed. To further improve the original examination, a next step would be to increase examiners’ ability to find the best prior art during examination. At times, there is a gap between the prior art found during initial examination and the prior art found during litigation. There are many reasons for this, but the main culprits are the ever-accelerating publication and accessibility explosions. These are issues that face every Patent Office around the world. Indeed, we are ahead of most others on this front. But if we could further narrow this gap in prior art between examination and litigation, then the accuracy of the patent grant – and therefore, its reliability – would increase. We are focusing on this as well, together with the other issues I’ve already mentioned.

Overall, addressing these various issues, especially as outlined in your report – from patentable subject matter to a carefully balanced post-grant process – we can return our patent system to a higher level of predictability and stability. Finding the right balance on these issues requires work, and a holistic, collaborative approach.

As Neil mentioned in his introduction, I come from the private sector. I’ve seen our patent system at work from all sides. And I have represented clients from various sectors, of different sizes, and in different postures. I understand that there are a variety of legitimate points of view. We must work together to achieve a careful balance that is most beneficial to the American economy as a whole. In the end, the hallmarks of a well-functioning patent system are the reliability and predictability of quality patents. This is critical for both patent holders and the public. And the benefits of a well-functioning patent system are indeed unmistakable. It enabled inventors like Eli Harari and Walter Hawkins, who exemplify the brilliance of American innovation, to make significant technological advances while also generating remarkable job creation and progress for our nation. Of his flash memory inventions, Dr. Harari told me, “We really changed the world.” And as to how his patents helped him start his company? He said, “With a patent at a minimum we were able to speak relatively freely under an NDA. And in a small start-up, you need partners who can help you accelerate your development and to invest in you.” “If you are not protected,” he said, “God help you!”

Let me leave you with this: During his first address to Congress in February of last year, President Trump noted that, on our 100th anniversary, in 1876, citizens from throughout the country came to Philadelphia to celebrate America’s centennial. At that celebration, the country’s inventors showed off their wonderful creations. Alexander Graham Bell presented his telephone for the first time. Remington revealed the first typewriter; and Thomas Edison showed an automatic telegraph and an electric pen. President Trump then asked all of us to imagine the wonders our country could know in America’s 250th year. He asked us to think about all the illnesses that could be cured, the distant worlds we could walk on, and the marvels we could achieve, if only we could set free the dreams of Americans. That’s how I think about intellectual property.

As I see it, no dream is too big if we unleash the power of innovation, and give our nation’s inventors the protections they need to succeed. That’s why it’s so important that we find the right balance in the IP system. This is something I’m very passionate about, and fully committed to, as I lead the U.S. Patent and Trademark Office. We have a remarkable patent system, born from our Constitution and steeped in our history. It is a crown jewel; a gold standard. We have a unique opportunity to ensure it meets its full Constitutional mandate to promote innovation and grow our economy. I look forward to working with all of you in support of that great endeavor. Thank you again for the invitation to participate in this important discussion."

I have only a few comments on Mr. Iancu's speech. His story about Dr. Harari is correct. I worked at WSGR on the SanDisk team that defeated Samsung in the ITC in 1996-1997. As I worked on that case, I came to respect both his brilliance and kindness and willingness to come from Israel, earn PhD in Physics from Princeton, work at Intel then leave all of that to start his own company. Dr. Harari really does believe in the US patent system. Check out how many SanDisk patents have issued and filing patents was the first order of business. You can ask Dr. Harari, but in my view that enforcement of SanDisk's patents was fundamental to its early success in the marketplace and many cell phones and digital cameras still use SanDisk patented technology today.

Because not many know about the SanDisk v. Samsung case, I should note SanDisk precipitated the patent dispute by having the audacity to ask the much larger Samsung to sign a patent license. Samsung would have none of that and filed a declaratory judgment action seeking to show the patents invalid in the district court. SanDisk aware of the expense of fighting it out in district court decided to file an ITC action to seek patent enforcement within 12-18 months. Fortunately, SanDisk won on both the patents which led Samsung and other large foreign competitors to sign patent licenses. Question whether with the unpredictable subject matter eligibility law, it would have had the same outcome.

Mr. Iancu mentions the negative view of patents being propagated in the press. For example, one myth I have heard is patents hinder innovation and startups. Keep in mind nearly everyone in the world acts in self interest -- and when a big tech companies (or related academic) tells you patents are harming the economy, or surprisingly that they harm innovation or startups ask yourself why is this academic/think tank or lobbyist telling me US patents are harming smaller competitors?

Thus, I appreciate Mr. Iancu's boldness cutting through the constant drum of misinformation and acknowledging we are at the cross roads with patents and startups need an improved reliable US patent system especially in terms of patent eligibility and IPR to succeed. I have seen patent success first hand, love this country and hate to see US patents harmed by misinformation.

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, February 13, 2018

USPTO & Berkeley Center for Law & Technology - Start-Up Nation Comes to Silicon Valley: Comparing the U.S. and Israel Patent Systems and Start-up Cultures

Today, the USPTO and Berkeley Center for Law & Technology announced registration is still open for "Start-Up Nation Comes to Silicon Valley: Comparing the U.S. and Israel Patent Systems and Start-up Cultures."

Here are the details:

"Friday, February 16, 2018
12 noon - 1:15 PM
Silicon Valley U.S. Patent & Trademark Office
26 South 4th Street
San Jose, CA 95112

Join leaders from across the innovation ecosystem in a comparative U.S. - Israel discussion on promoting start-up activity and fostering economic growth. Panelists will highlight trends in entrepreneurial activity taking place in both countries and will share their experiences with patent practices and address questions of patent subject eligibility and patentability across emerging technologies.

This event is free and open to the public. Space is limited.

Register here by February 15, 2018

Speakers:
Moderator: Peter Menell, Koret Professor of Law and Co-Founder/Director, Berkeley Center for Law & Technology, Berkeley Law
Asa Kling, former Director of the Israel Patent Office and Commissioner of Patents, Trademarks, and Designs (2011 - 2017) and Gilbert Distinguished Visiting Fellow of the Berkeley Institute of Jewish Law and Israel Studies at Berkeley Law
John Cabeca, Regional Director, Silicon Valley U.S. Patent and Trademark Office
Dan Lang, Vice President, Intellectual Property and Deputy General Counsel, Cisco Systems
Yasmin Lukatz, Executive Director, ICON -Israel Collaboration Network"

Copyright © 2018 Robert Moll. All rights reserved.

Friday, February 9, 2018

Waymo and Uber Announce Settlement of Self-Driving Trade Secret Case

Waymo settled its trade secret case with Uber during the trial. Uber gave 0.34% in equity to Waymo. If Uber is valued at $72B, the settlement is worth $245M.

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, January 30, 2018

USPTO - Manual of Patent Examining Procedure (MPEP) Revised on January 25, 2018

Today, the USPTO announced that it has revised the MPEP:

"On Jan. 25, the ninth edition, Revision 08.2017, of the Manual of Patent Examining Procedure (MPEP) was made electronically available as an update to the eMPEP.

The revision includes changes to chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500, and 2700. Each section that has been substantively revised in this revision (published January 2018) has a revision indicator of [R-08.2017], meaning that the section has been updated as of August 2017. Appendices L and R were revised to include the laws and rules current as of Aug. 31, 2017, and Appendices T and AI were revised to reflect the PCT Articles, Rules, and Administrative Instructions that were in force effective July 1, 2017.

Learn more on the MPEP web page."

The MPEP is published by the USPTO to give guidance to examiners. However, I found it useful because it gives details not discussed in the 35 USC, 37 CFR, and federal court decisions, and also the USPTO's interpretation of the legal authority. It is free, in PDF and HTML, and searchable.

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, January 16, 2018

USPTO - Updated US Patent Fee Schedule Effective Today

Today, the USPTO announced the adjusted US patent fees became effective:

"The USPTO Fee Schedule has been updated to reflect the fee changes. For more information on the revised fees, see the Federal Register Notice of a final rule: Setting and Adjusting Patent Fees During Fiscal Year 2017 (Effective January 16, 2018).

The fee schedule provides information and fee rates for products and services provided by the USPTO. For more information, call the USPTO Contact Center at (571) 272-1000 or (800) 786-9199."

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, January 14, 2018

Supreme Court - WesternGeco LLC v. ION Geophysical Corp. - International Damages

On January 12, 2018, the U.S. Supreme Court granted a petition for certiorari in WesternGeco LLC v. ION Geophysical Corp.

The issue to be considered is whether the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f).

As a reminder, 35 U.S.C. § 271(f) states "Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer."

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, January 10, 2018

Tech Crunch - IBM Led on Patents in 2017, Facebook Broke into Top 50 for the First Time

Tech Crunch's article IBM Led on Patents in 2017, Facebook Broke into Top 50 for the First Time lists the top 20 companies in US patent awards and an overview of what they patented in 2017.

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, January 9, 2018

IP Watchdog - With 9,043 U.S. Patents, IBM Tops for 25th Consecutive Year

In IP Watchdog With 9,043 U.S. Patents, IBM Tops for 25th Consecutive Year, Gene Quinn has an article on IBM's receiving 9,043 patents in 2017, including 1,900 cloud related patents, 1,400 artificial intelligence (AI) related patents, and 1,200 cybersecurity patents.

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, December 31, 2017

Supreme Court - Impression Products, Inc. v. Lexmark International, Inc. - Patent Exhaustion

In Impression Products, Inc. v. Lexmark International, Inc., the US Supreme Court held that a patent owner's authorized sale exhausts all patent rights.

As the Court stated when a patent owner chooses to sell an item, that product is no longer within the limits of the monopoly and instead becomes the private, individual property of the purchaser with the rights and benefits that come along with ownership. A patent owner is free to set the price and negotiate contracts with purchasers but may not by virtue of his patent control the use or disposition of the product after ownership passes to the purchaser. The sale terminates all patent rights to that item.

Copyright © 2017 Robert Moll. All rights reserved.

Supreme Court - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Laches

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the US Supreme Court held that laches-- unreasonable delay plus prejudice-- cannot be raised as a defense against a claim for damages brought within the six-year limitations period of 35 USC 286, which provides "no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."

Copyright © 2017 Robert Moll. All rights reserved.

Professor Janicke - Patent Venue: Half Christmas Pie, And Half Crow

Professor Janicke's Patent Venue: Half Christmas Pie, And Half Crow gives a nice summary of how patent venue works after the US Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands

Copyright © 2017 Robert Moll. All rights reserved.

USPTO - Public Tour San Jose CA - January 4, 2018

The USPTO announces:

"The Silicon Valley USPTO will host an informational public tour of its office located in the 3-story Wing building of the San Jose City Hall Complex. Participants will tour the office and learn about the U.S. Patent and Trademark Office from USPTO representatives. The event is free and open to the public Please RSVP here by January 4, 2018

Please note that the Silicon Valley USPTO is a federal facility.  Visitors are required to show a valid form of government-issued identification (driver license or passport) and may be subject to security screening to gain access.

For accessibility requests, please email siliconvalley@uspto.gov or call (408) 918-9900."

Copyright © 2017 Robert Moll. All rights reserved.

IP Watchdog: What Mattered in 2017: Industry Insiders Reflect Biggest Moments in IP

IP Watchdog: What Mattered in 2017: Industry Insiders Reflect Biggest Moments in IP does a nice job of using industry experts to highlight the key events in patent law in 2017.

Copyright © 2017 Robert Moll. All rights reserved.

Saturday, November 25, 2017

USPTO - General Information Concerning Patents

If you are looking for an introduction to US patent law, I recommend General Information Concerning Patents on the USPTO website.

This article is well organized and gives a nice overview of the US patent system, explains the difference between utility and design patents, and the difference between inventions protected by patents and other intellectual property (IP) protected by copyright or trademark. It should help new inventors understand the requirements of patent applications, drawing requirements, and patent prosecution in general.

My critical comment is the description of patentability searching is way out of date. It actually recommends searching in the Public Search Facility of the USPTO or in patent libraries throughout the US or worse in CDs. This is not the way to conduct searches today and hasn't been the way since Web searching took over about 1995.

Copyright © 2017 Robert Moll. All rights reserved.

Tuesday, November 21, 2017

Professor Epstein - Patent Respect

In Patent Respect, Professor Richard Epstein continues to discuss Oil States Energy Services, LLC v. Greene's Energy Group LLC, which will be heard by the Supreme Court on November 27. Again, some persuasive arguments by a smart professor who is a leading expert on property law for decades. This case considers question of whether inter partes review by the USPTO to analyze the validity of patents violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. If the Supreme Court rules inter partes review is held unconstitutional in Oil States, it should benefit many small entity patent owners.

Copyright © 2017 Robert Moll. All rights reserved.

Saturday, November 18, 2017

Time - The 25 Best Inventions of 2017

Time Magazine's The 25 Best Inventions of 2017 is my pointer to readers tonight.

Copyright © 2017 Robert Moll. All rights reserved.

Tuesday, November 14, 2017

Forbes - USC Sees The Future With New Course Offering - Intellectual Property

In USC Sees The Future With New Course Offering, Marshall Phelps reports that University of Southern California is offering an intellectual property course for undergraduates through the Marshall Business School.

Here's an excerpt from the article: "... intellectual property is the new watchword for almost any career of the future. The only problem is, most of our higher education institutions haven't gotten the memo yet, and that’s a real bummer for young people.

Here’s why: Intellectual property (IP) now accounts for a whopping 38.2% of total U.S. GDP and 30% of total national employment. Yet despite IP's enormous role in the U.S. economy, almost no American universities offer any undergraduate courses on the basic workings of patents, copyrights, trademarks and trade secrets in U.S. social and economic life."

This “IP education gap” poses a real threat to U.S. leadership of the 21st century knowledge economy. To understand why, just imagine how U.S. leadership of the industrial economy of one hundred years ago would have been hamstrung had there been no Wharton School or Forbes or Harvard Business Review to teach industrial management and the organization of mass production enterprises to 20th century business leaders. Similar stakes exist today.

That’s why it’s such good news that the University of Southern California (USC) has stepped forward with a first-of-its-kind course for general undergraduates on the basics of IP. This new program, launched by the Greif Center for Entrepreneurial Studies within USC’s Marshall School of Business, will train tomorrow’s leaders in the skills they need to navigate our IP-driven economy. If successful, it will be rolled out to some 40 other colleges and universities nationwide.

Pioneered by USC President C. L. Max Nikias and billionaire medical inventor Dr. Gary Michelson, USC's new undergrad course — named “The Entrepreneur’s Guide to Intellectual Property” — launched this fall semester. Taught by Kirkland & Ellis partner Luke Dauchot, this innovative new course has already attracted a who’s who of IP luminaries as guest speakers.

These include former Patent Office director David Kappos, long-time Google head of patents and current Facebook IP chief Allen Lo, Dolby’s General Counsel Andy Sherman, Chinese smartphone maker Xiaomi’s chief of IP strategy Paul Lin, and a dozen of the senior-most IP leaders of Apple, Nike, Teva Pharmaceuticals, Dollar Shave, and other high-flying IP-intensive companies."

Good job President Nikias and Dr. Michelson!

Note the author Marshall Phelps led the very profitable IBM and Microsoft patent licensing programs.

Copyright © 2017 Robert Moll. All rights reserved.

USPTO - Finalizes Revised Patent Fee Schedule

Today, the USPTO announced patent fees for fiscal year 2017. This is effective on January 16, 2018.

"The revised fee schedule is projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board (PTAB) operations, and administrative services. The additional fee collections will support the USPTO’s progress toward its strategic goals like pendency and backlog reduction, patent quality enhancements, technology modernization, staffing optimization, and financial sustainability.

 In response to feedback from patent stakeholders, the USPTO altered several of the fee proposals presented in the Notice of Proposed Rule Making (NPRM). The key differences between the NPRM and the final rule are:

In response to stakeholder concerns, the USPTO reduced both plant and design issue fees from the levels proposed in the NPRM. Still, the large entity plant issue fee increases to $800 (+$40) and the large entity design issue fee increases to $700 (+$140). Plant and design patents do not pay maintenance fees, and the majority of plant and design applicants are eligible for small and micro entity fee reductions, which remain available.

Stakeholder feedback suggested that increased appeal fees could discourage patent holders’ access to increasingly important USPTO appeal services. In response, the USPTO elected to maintain the existing Notice of Appeal fee at $800 instead of increasing it to $1,000 as proposed in the NPRM. Likewise, the fee for Forwarding an Appeal to the Board increases to $2,240 (+$240) instead of $2,500 as proposed in the NPRM. The revised fees still do not fully recover costs, but taken together should allow continued progress on reducing the backlog of ex parte appeals.  Since the 2013 patent fee rulemaking, ex parte appeal fees have enabled the PTAB to hire more judges and greatly reduce the appeals backlog, from nearly 27,000 in 2012 to just over 13,000 at the end of FY 2017. Additional appeals fee revenue will support further backlog and pendency reductions.

Increases to the PTAB AIA trial fees are aimed at better aligning these fees with the USPTO’s costs and aiding the PTAB to continue to meet required AIA deadlines. The Office’s costs for Inter Partes Review requests are consistently outpacing the fees collected for this service.  These fee adjustments seek to more closely align fees and costs. Trial fees and associated costs still remain significantly less than court proceedings for most stakeholders.

Inter Partes Review Request Fee – up to 20 Claims increases to $15,500 (+$6,500)

Inter Partes Review Post-Institution Fee - Up to 15 Claims increases to $15,000 (+$1,000)

Other fee changes proposed in the NPRM remain the same."

Copyright © 2017 Robert Moll. All rights reserved.

Saturday, November 11, 2017

Renjun Bian - Many Things You Know About Patent Infringement Litigation in China Are Wrong

The conventional wisdom is filing a patent in China is a waste of money, because China is lax in enforcing patent rights especially those of foreign patent owners. Now U.C. Berkeley law student Renjun Bian's article Many Things You Know About Patent Infringement Litigation Are Wrong gives some data that suggests that conventional wisdom is wrong.

Here's the Abstract:

"As the Chinese government continues to stimulate domestic innovation and patent activities via a variety of policies, China has become a world leader in both patent applications and litigation. These major developments have made China an integral venue of international patent protection for inventors and entrepreneurs worldwide.

However, due to the lack of judicial transparency before 2014, westerners had virtually no access to Chinese patent litigation data and knew little about how Chinese courts adjudicated patent cases. Instead, outside observers were left with a variety of impressions and guesses based on the text of Chinese law and the limited number of cases released by the press.

Taking advantage of ongoing judicial reform in China, including mandated public access to all judgments made since January 1, 2014 via a database called China Judgements Online (CJO), this paper analyzes 1,663 patent infringement judgments – all publicly available final patent infringement cases decided by local people’s courts in 2014. Surprisingly, many findings in this paper contradict long-standing beliefs held by westerners about patent enforcement in China.

One prominent example is that foreign patent holders were as likely to litigate as domestic patentholders, and received noticeably better results – higher win rate, injunction rate, and average damages.

Another example is that all plaintiffs won in 80.16% of all patent infringement cases and got permanent injunctions automatically in 90.25% of cases whose courts found patent infringement, indicating stronger patent protection in China than one might expect."

Copyright © 2017 Robert Moll. All rights reserved.

Tuesday, November 7, 2017

Joe Mullin - Supreme Court Won't Hear Apple v. Samsung Round Two

In Supreme Court Won't Hear Apple v. Samsung Round Two, Joe Mullin reports that the US Supreme Court has left in place Apple's damage award of $120 million for Samsung's infringement of US Patent No. 8,074,172 (auto correction), US Patent No. 5946647 (quick links), and US Patent No. 8,046,721 (slide-to-unlock).

For background details on this lengthy battle see the Supreme Court of United States blog: Samsung Electronics, Ltd. v. Apple, Inc. 

Copyright © 2017 Robert Moll. All rights reserved.

Friday, November 3, 2017

Northwest University Kellogg School of Management - Waiting to Protect Intellectual Property Could Doom Your Startup

Northwest Kellogg School of Management's publishes a free online magazine that has a section on entrepreneurship with well written articles on innovation and intellectual property (IP) that is worth checking out. For example, here's an article that may help startups seeking to protect their IP: Waiting to Protect Intellectual Property Could Doom Your Startup. In this article, Mark McCareins, Northwestern's clinical professor of business law argues a startup really needs to spend time and money to protect its IP and interviews four patent attorneys' for tips on protecting IP.

Copyright © 2017 Robert Moll. All rights reserved.

Saturday, October 28, 2017

Professor Richard Epstein - The Supreme Court Tackles Patent Reform

In The Supreme Court Tackles Patent Reform, NYU Professor Richard Epstein discusses the Oil States case currently being reviewed by the U.S. Supreme Court and raises some interesting constitutional arguments against AIA inter partes review (IPR).

Because IPRs have been effective at invalidating U.S. patents based on written prior art, the article is worth reading whether you do or don't like patents. I agree the case could be significant. As Professor Epstein states in the article, "Oil States Energy Services, LLC v. Greene’s Energy Group, LLC is the most important intellectual property case to come before the Supreme Court in many years. It challenges some of the innovative dispute resolution provisions of the 2011 American Invents Act (AIA) the most significant legislative reform of patent law since the Patent Act of 1952. Oil States assumes its vast significance because its outcome will determine, perhaps for decades, the litigation framework for all future patent disputes."

Copyright © 2017 Robert Moll. All rights reserved.