Sunday, April 26, 2015

Congresswoman Kaptur - The Innovation Act is Bad News for America's Patent System

Today, I suggest reading Congresswoman Marcy Kaptur's article in IP Watchdog: The Innovation Act is Bad News for America’s Patent System. It tells why this Act's will weaken the US patent owners rights. I agree this is not what is needed today.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, April 19, 2015

Professor Shawn Miller - "Fuzzy" Software Patent Boundaries and High Claim Construction Reversal

Tonight, I suggest reading "Fuzzy" Software Patent Boundaries and High Claim Construction Reversal in the Stanford Technology Law Review.

Here is the author's summary:

"Bessen and Meurer theorize that a breakdown in notice of patent boundaries caused the patent litigation surge of the 1990s. They argue that a prime source of this breakdown was the proliferation of software patents with particularly uncertain scope. In this Article I seek evidence that software patent scope is more uncertain by extending the empirical literature on claim construction reversal rates to determine whether the Federal Circuit has been more likely to find error in district court construction of software patents. Not only do I find that it has, but since 2002 software patents account for 40% of the difference between the Federal Circuit’s high claim construction reversal rate and its lower average reversal rate on all other patent issues. These results are cause for optimism because, in general, the application of existing claim construction law has been more predictable than many have feared. However, that optimism does not extend to software claim construction, which is highly unpredictable."

In my view, the article supports that one might reasonably appeal to the Federal Circuit a software patent case lost on claim construction since you have a 40% chance of reversal. However, the Federal Circuit's 40% reversal rate does not establish the software patent owner and prospective defendant disagreed regarding claim scope leading to a litigation surge in the 1990's. I think it only says why we had a lot of appeals to the Federal Circuit. Moreover, should anyone care about a litigation surge in the 1990's-- more than 15 years ago-- given the big decrease in patent litigation in recent years?

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, April 12, 2015

Professor Robin Feldman and Reseach Fellow Evan Frondorf - Patent Demands and Initial Public Offerings - A Comment

In a study Patent Demands and Initial Public Offerings, forthcoming in the Stanford Technology Law Review, Professor Robin Feldman and Research Fellow Evan Frondorf of UC Hastings law school state a "significant majority of information technology companies received patent demands near their IPO and "almost all of that activity originated from patent NPEs." Sounds like a problem, right?

In this study the authors checked with lawyers at recently public companies about exposure to patent demands as their company developed. Mr. Frondorf explains "Patent trolls thrive on extracting settlements from startup companies that don't have the time or money to litigate, even if the claims are dubious. An IPO is new leverage that can be used against a company that wants to avoid the negative effects that pending litigation might have on its offering price or public reputation. The results are consistent with monetizers issuing demands based on the economics of patent litigation, rather than on the legitimacy of the claims. It's more evidence of the need for comprehensive patent reform."

I appreciate the research of Professor Feldman, but I am not seeing that a study revealing patent demands occur before IPOs is more evidence supporting the need for comprehensive patent reform being considered by Congress.

Patent demands made before IPOs is not a new tactic, but a long standing strategy of patent owners. As a patent lawyer at Wilson Sonsini Goodrich & Rosati from 1993 - 1998, I saw a number of tech companies get hit with patent demands and even patent lawsuits before going public. That does not prove, however, whether the patent claim is legitimate or not. Patents owners simply show up when they have the most leverage to get paid. Whether the patent owner practices the invention is not relevant to whether or not a patent is valid or infringed.

I also question the suggestion that companies near an IPO have no time or money to fight illegitimate patent claims. Many tech companies have pending patent litigation or threatened lawsuits but have the resources to handle that as well as go public. How many of them withdraw from going public because the patent lawsuit drained their resources? I would venture rarely if ever. A patent lawsuit may be resolved before the IPO, but it is not required. Instead, the risk of that patent lawsuit is disclosed in the prospectus. Whether or not it settles is up to the parties. One notable example is Yahoo's online advertising patent lawsuit before Google's IPO. Google disclosed the risk in the prospectus, and settled with Yahoo, then went public, and life went on. Sure Google had to pay a chunk of stock, but a number of observers believed Yahoo had a legitimate claim. Google had the legal talent, financial resources and considerable momentum in the search engine space that enabled it to settle that patent case on its own terms.

If a company is successful to the point of going public, it usually also has smart management, a viable business, legal talent, and the financial resources to settle or fight the patent demands before, during, and after the IPO. Further, the AIA trials give a relatively low cost way to deal with dubious patent demands today. Just before a company goes public is not when it's vulnerable to illegitimate patent demands. Higher vulnerability occurs at a much earlier stage, but as the study notes "almost no companies received demands near another important funding moment-- obtaining the first round of venture capital funding." Another vulnerable time for a startup to receive a patent demand is when seeking a first round of funding, since investors do not want to invest in that situation, but of course you have exceptions.

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, April 8, 2015

EFF - Bringing Transparency to Patent Law

Tonight, I suggest reading Electronic Frontier Foundation's (EFF's) article Bringing Transparency to Patent Law.

I worked with Michael Barclay while at WSGR 1993-1998, and he is a great guy. Here's part of the article:

"Previously, the Federal Circuit issued many of its orders for free on its website. They were not necessarily easy to search, but it was at least possible to search by party name or download all orders they issued. But at the end of 2014, the Federal Circuit announced a new policy. Instead of publishing most orders, the Federal Circuit would only publish “selected” orders. (To be clear, PACER is still available, but it is notoriously difficult to navigate and charges both to search and download information. We’re not fans of PACER.)

Unfortunately, “selected” orders seems to mean “few if any” orders. Since the new policy went into effect, only 6 orders have been made freely available (compare that to the quarter from July 1, 2014 to September 30, 2014, where the Federal Circuit published over 180 orders).

We’re concerned that the new Federal Circuit practice is limiting the availability of the public to understand how our courts work. The Federal Circuit hears all appeals in patent cases so its recent practice is especially disappointing since it comes at a time when interest in patent law, and possible reform, is very high."

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, April 7, 2015

Federal Circuit - Carnegie Mellon University v. Marvell Technology Group - $1.5 Billion Damage Award

Today, the Federal Circuit heard oral arguments on whether it should uphold $1.54 billion damage award in favor of Carnegie Mellon University (CMU) based on Marvell Technology Group's  infringement of US Patent No. 6,201,839 and 6,438,180 relating to improved accuracy of reading data from hard disk drives.

Some commentary thinks this case will have impact on the extraterritorial scope of US patents.

Here are links to more information on this case:

CMU v. Marvell Technology Group - district court opinion (2012)

Patent Lawsuit - Carnegie Mellon v. Marvell Technology Group

Marvell Technology Group Ltd. Frequently Asked Questions Concerning the Status of the CMU Litigation

TribLive.com Article - CMU patent technology lawsuit may set precedent as it moves to federal appeals court

Copyright © 2015 Robert Moll. All rights reserved.

Friday, April 3, 2015

US Supreme Court - Oral Arguments Transcript - Kimble v. Marvel Enterprises, Inc.

The US Supreme Court heard oral arguments in Kimble v. Marvel Enterprises, Inc.

The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

Here's a PDF copy of the transcript of the oral arguments.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Program for Ex Parte Appeals

The Patent Trial and Appeal Board (PTAB) is hosting a free program on ex parte appeal from 9 - 10 am Pacific Time, Tuesday, April 6. Judges Bradley Garris, Linda Horner, and John Jeffery will discuss the ex parte appeal process, statistics, and tips for winning appeals.

For more information about the Boardside Chats and to access all slide materials:

Webinar Access Information:

Event address: uspto-events.webex.com/uspto-events/onstage/g.php?MTID=ee4b8faff5a188332aaa6a752f4b6c292

Event number: 994 593 512

Event password: 123456

Audio conference: Call-in toll number is 1-650-479-3208, access code is 994 593 512

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, April 2, 2015

US Supreme Court - Oral Argument Transcript Commil USA v. Cisco Systems

The US Supreme Court heard oral arguments in Commil USA, LLC v. Cisco Systems.

The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

Here's a PDF copy of the transcript of the oral arguments.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, March 30, 2015

Fierstein - A Triumph of Genius: Edwin Land, Polaroid, and the Kodak Patent War

I suggest reading Ronald Fierstein's book A Triumph of Genius: Edwin Land, Polaroid, and the Kodak Patent War. It's a lengthy 672 pages, with many details about patent litigation, but I hope you don't mind. I guess it's to be expected as Mr. Fierstein was a lawyer at Fish & Neave during the case resulting in Polaroid's $925 million award for patent infringement.

From the editor: "Apple founder Steve Jobs once hailed Edwin Land, the founder of Polaroid and the father of instant photography, as 'a national treasure' and once confessed to a reporter that meeting Land was 'like visiting a shrine.' By his own admission, Jobs modeled much of his own career after Land's. Both Jobs and Land stand out today as unique and towering figures in the history of technology. Neither had a college degree, but both built highly successful and innovative organizations."

Copyright © 2015 Robert Moll. All rights reserved.

CAFC - USPTO Revival Actions are Not Subject to Third Party Challenge

In Excela Pharma Sciences, LLC v. Lee (2015), the Federal Circuit held a third party does not have "the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty."

The Federal Circuit stated the Patent Act's "intricate scheme for administrative and judicial review of PTO patentability determinations" demonstrates Congress did not intend such challenges. See Pregis Corp. v. Kappos, (Fed. Cir. 2012).

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, March 28, 2015

PTAB - Changes to Rules for AIA Trials

In PTAB's Quick-Fixes for AIA Rules Are to Be Implemented Immediately, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee discusses rule changes governing America Invents Act (AIA) trials before Patent and Trial and Appeal Board (PTAB):

"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).

Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.

As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent."

Copyright © 2015 Robert Moll. All rights reserved.

Friday, March 27, 2015

US Supreme Court - Oral Arguments in Kimble v. Marvel and Commil USA v. Cisco Systems on March 31

On March 31, the US Supreme Court hears oral arguments in the patent cases: Kimble v. Marvel Enterprises and Commil USA, LLC v. Cisco Systems.

The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

The SCOTUS blog will be live blogging the oral arguments at 9:45 am ET.

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, March 26, 2015

Tech Dirt - Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents

Tech Dirt's article Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents  has "news about two startups that could upend intellectual property laws: Qentis (copyright) and Cloem (patents)."

Tech Dirt claims "Cloem's business model seems a bit more grounded in reality" and notes VentureBeat describes Cloem as providing "software that ... appears to linguistically manipulate a seed set of a client’s patent claims by, for example, substituting in synonyms or reordering steps in a process, thereby generating tens of thousands of potentially patentable inventions."

"Cloem is a mixture of patent experts and computer linguistic specialists. The key element of its potentially-patentable variations lies within 'seed lists,' which draw from a variety of sources, including (according to Cloem) 70,000,000 patent documents. Its algorithms then brute force together lists of 'new' patent claims, which can then be filed and used offensively or defensively."

Tech Dirt concludes "Cloem's business model seems custom-built for patent trolls who will be able to "expand" their already-broad patents to nail down even more IP turf. Cloem's service also makes it easy for non-inventors to jam up patent offices with me-too "inventions" based on minor iterations of existing patents."

In my opinion, the business model has significant issues:

Inventorship - The software generated claims make murky who invented. Can we safely conclude the inventor of the seed claim invented the computer generated set of claims? I am doubting the authors of the software intend to be named as inventors, read any part of the application, or interact with the inventors of the seed claim. So how could this business model scale?

Reordering steps of a method - In general, the order the steps are recited in a method claim does not dictate a certain order. Yet the assumption is reordering the steps gets you different protection.

Lack of accounting for prior art - You must be aware of the prior art to draft a claim that maximizes the protection.

No value in filing dozen of nearly identical patents - Filing dozens of nearly identical patents will only trigger double patenting rejections and if not caught in examination will serve as a valid defense in court.

No perceived users - Cloem is not a startup, but the article doesn't identity a single patent troll that uses the software much less file dozens of nearly identical patents with thousands of claims using this software.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, March 24, 2015

Mullin - Life360 CEO tells others how to beat patent trolls in three not-so-easy steps

In Life360 CEO tells others how to beat patent trolls in three not-so-easy steps, Mr. Joe Mullin passes along the CEO's advice on how to beat patent trolls: "go nuclear" which means publicize the law firms and trolls involved, share the prior art with others in your industry, and "go with your gut" knowing you fight for what is right.

Whatever you think about this advice, my question is why doesn't the article talk about the option of filing a petition to invalidate the patents in the USPTO? Maybe this occurred, but the article never mentions it. It talks about sharing prior art, but the case was won on non-infringement. Either way about 2/3 of patents litigated in court have a concurrent USPTO proceeding (e.g., inter partes review). Thus, whatever happened here, many defendants are turning to this approach to invalidate patents and significantly reduce costs when the court stays the litigation.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, March 23, 2015

USPTO - Patent Quality Summit March 25 - 26

The USPTO has announced a Patent Quality Summit at the USPTO headquarters in Alexandria, VA on March 25 - 26, 2015. Each segment will be also accessible on WebEx. The intent is to provide an opportunity for the public to discuss proposals to ensure efficient prosecution and issuance of the highest quality of patents.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, March 17, 2015

Stanford Law School - The PTO and Courts - April 17-18

Stanford Program in Law, Science & Technology, Samsung, and Stanford Technology Law Review are co-sponsoring The PTO and the Courts on April 17-18.

This event will discuss administrative procedures (e.g., inter partes review, post-grant review, and covered business methods) before the USPTO as an alternative or a concurrent procedure with litigation.

It's open to the public and free, but Stanford recommends registration.

April 17 will feature judges, lawyers, and academics speaking on issues lawyers face, and April 18 will feature academics.

Here is a list of speakers confirmed for April 17:
  • Steve Baughman, Ropes & Gray LLP
  • Judge Scott Boalick, USPTO
  • Aaron Capron, Finnegan, Henderson, Farabow, Garrett & Dunner
  • Judge Peter Chen, USPTO
  • Professor Dennis Crouch, University of Missouri School of Law
  • Andy Culbert, Microsoft
  • Professor John Duffy, University of California, Irvine
  • Ian Feinberg, Feinberg, Day Alberti & Thompson
  • Professor Robin Feldman, Hastings College of the Law
  • Judge Paul Grewal, United States District Court Northern District of California
  • Naveen Modi, Paul Hastings
  • Judge Kimberly Moore, United States Court of Appeals for the Federal Circuit
  • David O'Brien, Haynes and Boone
  • Karl Renner, Fish & Richardson
  • Sasha Rao, Maynard Cooper & Gale
  • Clement Roberts, Durie Tangri
  • Laura Storto, Genentech, Inc.
  • Lee Van Pelt, Van Pelt, Yi & James
Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, March 11, 2015

PTAB - Effective Use of Claim Grouping in Appeals

The Patent Trial and Appeal Board (PTAB) published an article Effective Use of Claim Grouping in Appeals that presents how to effectively present arguments to the Board.

The article states "when transitioning from examination to appeal, an appellant moves from negotiating patentable claims to resolving disputed patentability issues. The appeal brief normally is the Board’s first exposure to an appellant’s case, and it is the appellant’s first opportunity to persuade the panel to rule in its favor. Therefore, an appellant should take care to craft a clear and persuasive brief that quickly educates the Board panel about the issues and technology, and focuses on appellant’s strongest arguments, while avoiding the introduction of any new issues."

Although the article has some good advice -- focus most if not all of your appeal brief on winning issues, I think its advice to group claims is risky because many PTAB decisions use claim groupings as a mechanism to support affirmance of rejection of the entire group.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, March 8, 2015

Los Altos Town Crier - Robert Showen - Los Altos Scientist and Inventor of the Year 2014

I suggested reading Los Altos scientist named inventor of the year 2014 for a story on how US patents can play a role in a tech startup.

The Silicon Valley Intellectual Property Lawyers Association named Robert Showen for his inventions for ShotSpotter Inc. (now SST Inc.), a gunfire alert and analysis company, which has set up a vast network of microphones that detect gunfire, record the audio, map the location and send alerts to local patrol officers. It had a humble beginning with a computer on the grand piano connected to the rest of the prototype set up in rooms of his house, but is now a system implemented in 90 cities across the United States to reduce gun violence.

"'It was sort of a shot out of the blue,' Showen said of the honor. 'I hadn’t expected it.'"

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, February 24, 2015

USPTO - Deputy Director Michelle Lee - Initiatives in 2015

Deputy Director Michelle Lee recently visited the Brookings Institution to talk about the USPTO's plans for 2015. For details see the USPTO video and Patent Quality Initiative.

Deputy Director Lee stated: "I've seen firsthand from the business side the importance that patents play, the exclusionary right they give, the protections they give innovators, businesspeople, and startups at the very early stages. If you're entering a market that is highly competitive, you need to have the assurance that you will have protection as you go up against some very steep and oftentimes well-funded competition. So for the USPTO to issue those patents promptly and accurately is critically important so that people invest in these developments."

This is absolutely right! Startups need great patents to penetrate markets. I would add that proposals to reform US patent law to defeat "patent trolls" should be viewed with the skepticism reserved for any other self-serving corporate lobbying. Why do large companies want to weaken US patents? To reduce patent license costs. You just say no to many efforts to license a patent, then knock down the audacious few who seek to enforce patent rights in court with favorable laws passed by Congress.

Copyright © 2015 Robert Moll. All rights reserved.

National Law Review - IEEE Clarifies RAND Commitment for Standard-Essential Patents: Institute of Electrical and Electronics Engineers

Tonight, I suggest reading the National Law Review article IEEE Clarifies RAND Commitment for Standard-Essential Patents: Institute of Electrical and Electronics Engineers, which describes the IEEE's policy change for patents relating to IEEE standards that was approved on February 8, 2015.

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, February 18, 2015

Professor Robin Feldman - Kimble v. Marvel Enterprises - Royalty Payments Beyond the Patent Term?

Professor Robin Feldman filed a Supreme Court amicus brief in Kimble v. Marvel Enterprises which is before the U.S. Supreme Court. This case reviews whether a patent owner's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se. 

Some of the highlights from that brief co-authored with professor Alice Armitage:

"The case concerns contracts in which the patent holder insists on receiving royalty payments after the patent expires. The doctrine of patent misuse, however, frowns on attempts to expand the time or scope of the patent.

Over the last few decades, some lower courts have tried to eliminate the doctrine of patent misuse by holding that patent misuse exists only if the behavior rises to the level of an antitrust violation

Petitioners in this case ask the Supreme Court to apply the antitrust rule of reason to patent misuse cases. The antitrust rule of reason, which is complex and burdensome, is commonly perceived to be the death knell for any antitrust case and would certainly be the death knell for patent misuse cases

In the brief, Professor Feldman argues that patent law is not antitrust law, and antitrust tests are not appropriate for patent law questions.

Antitrust law is primarily concerned with parties that have market power, but the patent rules apply to all patent holders, regardless of whether they have market power; One cannot ask the patent office to extend the patent for a few years because 20 years is not long enough to determine its true value. That is a decision for Congress to make.

Nothing changes if the 20-year term is ill-suited for a particular industry, such as the life sciences. (A number of life science groups have filed amicus briefs as ell.) Any arguments to this effect are appropriately directed to Congress.

It is certainly true that when the patent term ends, the patent holder will no longer be able to exclude all others from the use of its invention. With the patent system, however, every potential innovator matters. A contract provision that limits the capacity and incentive for even one potential innovator to make scientific leaps after the expiration of the patent disrupts the balances created by Congress in the Patent Act.

Professor Feldman urges the Court to clarify that antitrust principles are not appropriate for a patent law, and to allow the courts to develop flexible approaches, based on patent principles, to this types of licensing issues."

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, February 17, 2015

USPTO - Emod Idea Scale - Comments on Electronic Business Center (EBC)

Nearly everything at the USPTO is online today so our experience good or bad depends on the website interface. Apparently, the USPTO is aware of this and has recently upgraded the website, which so far is in my experience better. If you see things that could be better, I suggest visiting the USPTO e-commerce modernization project which has comments on what users find difficult, unexplainable, and think might improve the electronic business center (EBC).

I think this e-commerce modernization page is buried from the public view given the scale of the USPTO's web site. If the USPTO wants more user input, it should extend the ability to enter comments (yes it will need spam filtering) on the pages where the users go. Perhaps some tracking can be used to see where people are puzzled or having to work around issues so the USPTO can improve something many use regularly.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, February 15, 2015

USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories

The USPTO announced US applicants will be able to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple countries on or about May 13, 2015.

Under the Hague system for the protection of industrial designs, US applicants will be able to register up to 100 designs in over 62 territories. Hopefully, this will greatly lower the cost of seeking foreign patent protection on designs.

Here is details from the USPTO announcement:

"U.S. innovators will soon have more options for pursuing multijurisdictional protection for new industrial designs

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs). This marks the last step in the membership process for the United States to become a Member of the Hague Union. The treaty will go into effect for the United States on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions where industrial design rights are desired. When the Hague Agreement enters into force for the United States, it will be possible for U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies. The Hague system for the protection of industrial designs provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application.

“U.S. accession to the Geneva Act of the Hague Agreement will provide applicants with the opportunity for improved efficiencies and cost savings in protecting their innovative designs in the global economy,” said Deputy Under Secretary for Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We are extremely excited about joining the Hague Union and contributing to the continued expansion and development of the Hague system which facilitates protection of industrial designs in design registration and examination systems alike.”

The Hague system offers applicants increased filing efficiencies and potential cost savings in pursuing protection for their innovative industrial designs. As envisioned under the Geneva Act, the United States will continue to substantively examine design applications and to grant design rights in the form of U.S. design patents, whether the application is filed pursuant to the Hague Agreement or as a United States design patent application.
USPTO will soon publish the Final Rules governing USPTO processing and examination of international design applications filed pursuant to the Hague Agreement in the Federal Register. The Agreement, Title I of the Patent Law Treaties Implement Act of 2012 (the implementing legislation for the Hague Agreement in the United States), and the USPTO’s Final Rules are all expected to go into effect on May 13, 2015. U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term.

The Hague system (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs) is expected to experience significant growth over the next few years with recent and expected additions of several countries to the member list. In addition to United States membership taking effect on May 13, 2015, South Korea became a member effective July 1, 2014, and Japan is expected to become a member in the same time period as the United States. Canada, China, and Russia are also among the countries exploring membership in the near future.

For non-press inquiries please contact David Gerk, Patent Attorney, Office of Policy and International Affairs (OPIA) at 571-272-9300."

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, February 12, 2015

USPTO - New Website - How to Guide

The USPTO has published some guidance on using its new website:

"You’ve probably seen the new user-friendly www.uspto.gov by now, and we want to make sure you know about the easy navigation tools it offers. If you would like to take a quick look at the new shortcuts, please visit About the USPTO Website where you will find a video tour of these features.

                                                          .  .  .

The new navigation makes it easier to access information about our services and learn how to accomplish tasks; for example, the Quick Links menu will connect you to the most heavily used tools for searching, filing, paying, or checking on the status of an application. We’ve also grouped together materials for specific audiences such as inventors, patent agents, and educators. In addition, the new site is responsive across more devices, such as tablets and mobile phones. This redesign is the first phase of our work to upgrade users’ USPTO online experience. Future phases will improve our 'transactional sites'—the online tools and systems where you conduct business with the USPTO, such as filing for your trademark registration or paying the fees for your patent."
 
Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, February 11, 2015

Federal Circuit - In re Cuozzo Speed Technologies, LLC - Affirms PTAB Decision on Institution of IPR and Broadest Reasonable Interpretation of Claims

In In re Cuozzo Speed Technologies, LLC, the Federal Circuit upheld the Patent Trial and Appeal Board (PTAB) decision on two issues:

1.  A decision to institute an inter partes review (IPR) is non-appealable, since 35 USC § 314 precludes all review stating a determination to institute an inter partes review shall be final and non-appealable. The Federal Circuit did leave the door open to challenge a decision if a mandamus shows PTAB "clearly and indisputably exceeded its authority" in granting a petition to institute IPR.

2.  Patent claims must be construed under the broadest reasonable interpretation, because Congress granted the USPTO authority to set the standard for claim construction in an IPR, the USPTO has long construed claims under BRI in PTO proceedings (e.g., reexamination, prosecution, and reissue), and a patent owner can amend patent claims at least according to the rules even if not in practice.

Judge Newman dissented from the majority stating claims in IPR should be interpreted narrowly as in court and 35 USC § 314(d) does not bar an appeal on institution of IPR, since it is intended to protect patent owners from harassing filings.

Copyright © 2015 Robert Moll. All rights reserved.