Tuesday, June 24, 2014

USPTO to Host Software Partnership Meeting

The United States Patent and Trademark Office (USPTO) will host its next Software Partnership meeting Tuesday, July 22, 2014. The public is invited to attend. Software Partnership meetings are an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for an informal discussion of many topics specific to the software community.

The meeting will be at the USPTO in Alexandria, Virginia, from 1:00 pm – 4:30 pm.

As stated in the USPTO press release:

On June 4, 2013, the White House issued five executive actions designed to reduce abusive litigation and level the playing field for innovators. The second of the five executive actions focuses on clarity in patent claims and functional claiming in patents. The meeting on July 22 will feature a focused discussion on claim clarity and functional language. In particular, USPTO officials at the meeting will present details of four examiner training modules on functional language, discussed below, that were delivered this past year, and will provide an opportunity for an interactive discussion on the goals and effectiveness of the training.  A stakeholder presentation on claim clarity will follow. The public will have an opportunity to provide input on the training and ask questions regarding claim clarity. Public attendees are invited to provide individual input on these topics and additional ideas during the interactive discussion portion of the meeting.

The training modules that will be discussed cover the basics of interpreting functional limitations under 35 U.S.C. § 112(f) (so-called “means-plus-function” claim limitations), including identifying when § 112(f) is or is not invoked, establishing the broadest reasonable interpretation of the limitation, and determining whether a § 112(f) limitation, especially a software-related limitation, has definite boundaries. The training also provides tools for examiners to clarify the prosecution record and thereby positively affect the clarity of the claims. The training that will be the focus of the Software Partnership Meeting discussion is publicly available on USPTO’s website at the Examiner Guidance and Training Materials webpage. In addition to a detailed discussion of the USPTO’s efforts on executive action #2 on claim clarity and functional claiming, the USPTO will also provide updates on the other executive actions.

Media is welcome to attend the event. Others must submit a request to attend, as space is limited. The event will be available for viewing via WebEx. For more information and to register by email, visit the event page on the USPTO website."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, June 19, 2014

USPTO - Request for Comments on Virtual Marking

On June 16, 2014, the USPTO published a notice seeking public comments on virtually marking.

The America Invents Act (AIA) provides for virtual marking as an alternative to physically marking to give notice to the public that a product is subject to patent protection.

As stated in the notice:

"United States patent law provides that marking a product with a patent number gives the public notice of a patent. Under 35 U.S.C. 287(a), if a patented product is not marked with the patent number by the patent owner, damages for infringement will be limited to the time period after the patent owner gives actual notice to an alleged infringer.

Section 16 of the AIA provides a new way to comply with the requirements for patent marking by allowing patentees to mark their products virtually rather than physically. Instead of printing the actual patent number on the product, businesses can display the term “patent” or “pat.” along with an accompanying URL address of a Web site where the actual patent number will be located.

Section 16 of the AIA also requires the Director of the USPTO to prepare a report for Congress analyzing:

(A) The effectiveness of “virtual marking” as an alternative to the physical marking of articles;

(B) whether such virtual marking has limited or improved the ability of the general public to access information about patents;

(C) the legal issues, if any, that arise from such virtual marking; and

(D) the deficiencies, if any, of such virtual marking.

The report is due to Congress not later than three years after the date of enactment of the AIA, which is September 16, 2014.

Interested members of the public are invited to submit written comments they deem relevant to the above-mentioned issues. The USPTO would particularly welcome observations and comments on any of the following topics:
1. Experiences with creating and maintaining adequate and effective virtual marking Web sites;
2. effectiveness of virtual marking, including experiences using virtual marking Web sites to locate relevant patent information;
3. challenges presented by virtual marking in providing sufficient notice to the public, including sufficiently associating patent numbers with the corresponding product within the virtual marking Web site;
4. economic impacts of virtual marking, including costs differences between physical marking and virtual marking;
5. advantages and disadvantages of virtual marking in comparison with physical marking;
6. identification of other practical or legal concerns with virtual marking; and
7. any other issues or experiences regarding virtual marking.

Commenters are requested to include information identifying how they are impacted by virtual marking, e.g., whether they are patent owners, licensees, or any other type of user, business, or manufacturer."

Copyright © 2014 Robert Moll. All rights reserved.

Friday, June 13, 2014

Elon Musk - All Our Patents Are Belong to You?

In All Our Patents Are Belong to You Elon Musk explains why he is giving away the entire Tesla patent portfolio to grow the market for electric cars. It might be just the thing to grow a nascent market, but who knows. It is also less sweeping than it sounds as the dedication is conditioned on competitors acting in "good faith." Does that mean Tesla can still enforce the patents as long as it is sued first, that is, defensively? Whatever the case, this is a bold step as the Tesla patents I have read seem to be well written and on commercially important topics (i.e., valuable). One wonders why Tesla didn't simply license the patents for a zero fee for a certain time period.

Despite the hero worship in the comments to Mr. Musk's post, this "patent dedication" may not have the desired affect. How much of the automakers' decision to enter the electric car market is based on the barrier presented by Telsa's patents? My guess is this patent risk factor is far outweighed by current unfavorable economics. I hope we all drive electric cars in the future, but if you buy a Tesla and cannot tap into a free charging station let me know how much your electric bill increases.

Tesla's competitors may be able to freely use Tesla's patented technology, because of the doctrine of equitable estoppel. Furthermore, even if Tesla thinks it smart, what about the competitors? I guess they can take advantage as long as they act in good faith.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, June 9, 2014

Michelle K. Lee - Progress Continues with Our Patent Trial and Appeal Board

Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, had an interesting blog post Progress Continues with Our Patent Trial and Appeal Board:

"Transparency and public involvement in building an even better patent system are hallmarks of this administration and pervade all aspects of the USPTO. A current example of that is the ambitious outreach the Patent Trial and Appeal Board, or PTAB, is conducting with the public. The Board is in the middle of a series of eight roundtables to engage the public about our AIA trial proceedings, our continued hiring of new judges, and our redesigned PTAB web pages, which contain decisions, operating procedures, and interesting statistics to date. Several hundred engaged individuals have already attended our first few roundtables over the last two weeks."

Ms. Lee noted at "these roundtables, we’re particularly focused on receiving feedback on our new trial proceedings created by the Leahy-Smith America Invents Act of 2011. The statute set the framework for these trial proceedings, and the agency promulgated rules and issued guidance thereafter. In promulgating those rules and guidance, the agency worked carefully and diligently, issuing final rules and guidance in a mere one year after the AIA became law. Those rules and guidance were implemented after the USPTO visited 18 cities to solicit input from our stakeholders, just as we are doing now. Also, when we issued the AIA final rules, we committed to re-visiting the rules and guidance after both the Board and the public operated under them for some period."

Ms. Lee stated it was time to revisit the rules as "PTAB began conducting inter partes review and covered business method review proceedings nearly 18 months ago. During this time, the Board has received more than 1,200 petitions, issued more than 500 decisions on whether to institute a trial, and released more than 40 final written decisions following a trial. For such a short period of time, that is a lot of hands-on experience, and the Board has gained a fair amount of wisdom about these processes as a result. But we know that participants in these new AIA proceedings, as well as seasoned observers of our patent system, have also been focused on these new trials and have their own wisdom to share. Through these roundtables, we are hearing from interested parties their thoughts on what we can do to make trial proceedings even more effective going forward by adjusting the rules and guidance where necessary."

"Each roundtable is staffed by at least five administrative patent judges per city (APJs). The roundtables begin with an overview of trial statistics and lessons learned followed by a mock conference call centered on motions for discovery and amendments. The overview provides a framework for the trials, while the mock conference call showcases successful techniques for winning a motion as well as missteps to avoid. The roundtables end with a panel discussion featuring APJs and local practitioners with experience and knowledge about the AIA trials. The purpose of the panel discussion is to break down the trial process and identify strengths and places for improvement. Nothing about the AIA trials is carved in stone, so the opportunity is upon us to work together to hone the AIA trials system into a true alternative to district court litigation for challenging patent validity."

"Apart from the roundtables, I’m pleased to note that PTAB continues to have great success in hiring talented new judges with strong and relevant technical and legal backgrounds. We are moving fast toward our goal of adding 60 new judges for a grand total of 200 by June 1st. New judges are joining not only at the Alexandria headquarters but also at all of the satellite office locations, namely Detroit, Denver, Dallas, and Silicon Valley. As the first director of our Silicon Valley office, I was honored to work beside the stellar judges that had already joined PTAB in service to the innovation community. If you think you have what it takes to make an excellent PTAB judge, we encourage you to apply. To learn more please visit www.usajobs.gov.

Speaking of the web, PTAB has overhauled its pages on our website, making it easier to locate information about AIA trials, ex parte appeals, statistics, operating procedures, and rulings. Additionally, PTAB is posting timely articles, such as tips for filing a preliminary patent owner statement in an AIA trial and testimonials about life as a PTAB judge."

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, June 7, 2014

Patent troll on the verge of winning 1 percent of iPhone revenue

In Patent troll on the verge of winning 1 percent of iPhone revenue, Joe Mullin reports Apple is still unsuccessfully fighting an 0.98% royalty rate to be paid to VirnetX for patent infringement by FaceTime and VPN On Demand.

In 2012, Apple lost and was ordered to pay $368 million (which Mullin says could be an annual cost) and lost its inter partes review case on June 5, 2014, because the judges held that RPX which engaged a law firm to file the petition was determined to be a proxy for Apple which was barred from filing the IPR petition more than one year after the infringement complaint. See PTAB decision.

The PTAB determined Apple was the real-party-in interest behind the RPX petitions and denied them as time-barred. Contrary to the requirements of 35 USC 315(b), the RPX petitions were filed more than 1 year after the date on which the real party in interest Apple was served with a complaint alleging patent infringement. Thus, the IPRs could not be instituted.

This article is worth reading for those considering using a third party as a proxy and highlights the risk of not filing an IPR petition timely after being sued.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, June 4, 2014

US Supreme Court - Nautilus v. Biosig Instruments - Definiteness Requirement

Because the public must understand the patent claims to determine what requires a license from the patent owner, 35 USC 112, paragraph 2, requires the specification conclude with one or more claims that "particularly point out and distinctly claiming" the subject matter which the applicant regards as the invention. In short, the patent claims must be definite to be valid under 35 USC 112.

In recent years, the Federal Circuit has held a patent claim is definite as long as the claim is "amenable to construction" and not "insolubly ambiguous."

On June 2, 2014, the US Supreme Court held in Nautilus v. Biosig Instruments involving a patent claiming a heart rate monitor used with exercise equipment that "the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the "insolubly ambiguous" standard, we hold that a patent is invalid for indefiniteness if it's claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention."

In short, the US Supreme Court has made it easier to challenge the validity of patent claims for indefiniteness, which was not a viable defense until recently. 

Copyright © 2014 Robert Moll. All rights reserved.

Monday, June 2, 2014

WSJ - 5 Reasons Patents Are On the Rise

Today, the WSJ Rani Molla reports 5 Reasons Patents Are On the Rise.

Rani Molla: "The rise in patent applications has accelerated in recent years — and isn’t necessarily because of increased innovation. Patent law has come to the forefront as so-called patent trolls have increased litigation and as the Supreme Court considers whether software — a huge issue for Silicon Valley — can be patented or not. Today, the Supreme Court reversed a previous ruling in a web technology patent case that will make it harder for companies to sue rivals for encouraging patent infringement. Still, as the number of patents rises so do the stakes. Here’s a look into some reasons for the rise in patents."

Copyright © 2014 Robert Moll. All rights reserved.

Friday, May 30, 2014

Allison et al. Understanding the Realities of Modern Patent Litigation

If you are interested in U.S. patent litigation, I recommend John Allison, Mark Lemley, and David Schwartz's article Understanding the Realities of Modern Patent Litigation which will be published in the Texas Law Review.

Here's the abstract of the article:

"Sixteen years ago, two of us published the first detailed empirical look at patent litigation. In this Article, we update and expand the earlier study with a new hand-coded data set. We evaluate all substantive decisions rendered by any court in every patent case filed in 2008 and 2009 — decisions made between 2009 and 2013. We consider not just patent validity but also infringement and unenforceability. Moreover, we relate the outcomes of those cases to a host of variables, including variables related to the parties, the patents, and the courts in which those cases were litigated. The result is a comprehensive picture of the outcomes of modern patent litigation, one that confirms conventional wisdom in some respects but upends it in others. In particular, we find a surprising amount of continuity in the basic outcomes of patent lawsuits over the past twenty years, despite rather dramatic changes in who brought patent suits during that time."

The authors noted the "overall picture painted by our data is complex. In many ways, patent litigation is rather different than it was when we conducted our original study. The top districts for patent litigation—the Eastern District of Texas and the District of Delaware—were not nearly as important twenty years ago. The Markman hearing did not exist in our original study. Patent assertion entities (referred to by some as “patent trolls”) were a minor feature of patent litigation in the 1990s. And the most successful validity challenges today—patentable subject matter and indefiniteness—were virtually unknown twenty years ago."

The authors stated that "ten years ago, Janicke and Ren found that patentees won only 25% of decided cases; we find that number virtually unchanged today. Forty-six percent of patents whose validity was decided in the 1990s were held invalid; today the invalidation rate is 43%. Much has changed about patent law, but the overall dynamics of patent litigation—in which patentees win at trial but not on summary judgment, and in which patentees win each individual issue but lose overall—remain remarkably similar to the patent litigation we studied twenty years ago."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, May 26, 2014

Joe Mullin - How the Patent Trolls Won in Congress - A Brief Comment

In How the patent trolls won in Congress, Joe Mullin reports that "trial lawyers and pharma companies teamed up to stop change to patent laws." This account of what stopped patent reform strains credibility.

The article revolves around anti-patent people who felt surprised and frustrated that patent reform did not pass this year. It stops short of exploring why people opposed the reform due to obstacles it raised for small businesses enforcing their patent rights. Instead it focuses on frustrated lobbyists who recount bitter disappointment on a done deal thwarted and multiple unnamed sources who blame Senator Reid as caving to special interests.

What's the evidence for this amazing claim that trial lawyers influenced Senator Reid? The article notes securities litigators met to raise funds for Senator Reid's campaign in 2010. How does this relate to patent reform in 2014? We are supposed to see Senator Reid as beholden to trial lawyers of all types now and forever. Why big pharma is to blame is not articulated.

I guess when you fail as a lobbyist, you go into damage control, casting blame on somebody (make that anybody) to avoid the perception that you failed. After all you don't want to "lose your reputation" as being effective at tailoring the law to meet your client's objectives since it could eliminate your next lucrative lobbying job.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, May 22, 2014

Congress' Patent Reform Stalls for Lack of Consensus

Congressional patent reform has stalled for lack of consensus. More specifically, on May 21, 2014, Senator Patrick Leahy (D-Vt.), Chairman, Senate Judiciary Committee, stated the following:

"We have been working for almost a year with countless stakeholders on legislation to address the problem of patent trolls who are misusing the patent system. This is a real problem facing businesses in Vermont and across the country.

Unfortunately, there has been no agreement on how to combat the scourge of patent trolls on our economy without burdening the companies and universities who rely on the patent system every day to protect their inventions.  We have heard repeated concerns that the House-passed bill went beyond the scope of addressing patent trolls, and would have severe unintended consequences on legitimate patent holders who employ thousands of Americans.

I have said all along that we needed broad bipartisan support to get a bill through the Senate. Regrettably, competing companies on both sides of this issue refused to come to agreement on how to achieve that goal.

Because there is not sufficient support behind any comprehensive deal, I am taking the patent bill off the Senate Judiciary Committee agenda.  If the stakeholders are able to reach a more targeted agreement that focuses on the problem of patent trolls, there will be a path for passage this year and I will bring it immediately to the Committee.

We can all agree that patent trolls abuse the current patent system.  I hope we are able to return to this issue this year."

In my opinion, the proposed patent reform raised real obstacles (e.g., attorney fee shifting) for legitimate licensing and enforcement of patents. The goal of the legislation was purportedly to deal with patent trolls, but it would have impacted the patent rights of small businesses and startups. Hopefully, Congress will spend the time to study a tricky problem leading to laws that precisely target patent trolls rather than harm the sector of the American economy that creates jobs.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, May 20, 2014

PTAB - How to Make Successful Claim Amendments in AIA Trials

At the AIA Trials conference at Santa Clara Law school on April 29, 2014, the Patent Trial and Appeal Board (PTAB) administrative judges noted it is difficult to amend claims during an inter partes review (IPR), post-grant review (PGR), or covered business methods (CBM) review (i.e., the AIA proceedings).

Part of the problem appears to be attorneys are confusing claim amendment practice in AIA trials with that employed in patent prosecution. In prosecution of a US patent application one can freely amend a claim before the final Office action as long as the amended claim meets the requirements of 35 USC 112. Once amended, the burden shifts to the examiner to establish how the amended claim is unpatentable. In IPR, PGR, or CBM proceedings, the patent owner can only file a motion proposing to amend a claim then bears the burden to show the claim is patentable. For whatever reason, patent owners are having a difficult time meeting these two requirements and are not getting any claim amendment entered in the AIA proceedings, which can invalidate the patent claim.

For tips on how to succeed on getting amendments entered, please see USPTO Message from PTAB: How to Make Successful Claim Amendments in AIA Trial Proceedings

Updated May 22, 2014: We now have exactly one case where the motion to amend claims was permitted. Although these are relative new proceedings, the comment during the conference that "it is difficult to amend claims in an AIA trial" understates the difficulty patent owners currently face. 

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, May 18, 2014

WSJ Apple Got Sued the Most Over Patents Last Year

On May 16, the WSJ reports Data Point: Apple Was Sued the Most Over Patents in 2013. In 2013, Apple was sued 59 times and Amazon 50 times for U.S. patent infringement.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, May 16, 2014

Apple and Google Settle Patent Infringement Cases

Today, Reuters reports Apple, Google settle smartphone patent litigation. Apple and Google did not agree to cross-licensing any IP so this doesn't preclude other patent infringement cases.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, May 14, 2014

EFS Web Unavailable All Day?

Today, I was planning to file papers using the USPTO Electronic Filing System (EFS) Web and seeking to show EFS Web is the "efficient way to file." The computer hanging kind of blew that presentation. We tried to upload the papers twice more that morning. Finally, late in the afternoon, the USPTO published that EFS web was unavailable for follow on submissions. I think the non-availability should have been posted earlier. In any event, I have learned to file well in advance of due date so it was not a big deal.

To this some might say "Bob if you don't have anything nice to say don't say anything at all!" Okay, but sometimes you have to say something to make things better. And this is my attempt to make things better. However, until the USPTO gets higher availability, I think most would agree with me that filing on the last day is not the safest strategy with EFS Web.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, May 12, 2014

Federal Circuit Holds Java API's Copyrightable Revisited

On May 11, I posted FOSS Patents article on the Federal Circuit holding the Java application programming interface (API) copyrightable. The result is surprising to the software community so I want to give more information. Here's the Federal Circuit decision for Oracle v. Google and an article: Has US Court Killed API economy? commenting on the decision.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, May 6, 2014

America Invents Act (AIA) Patent Trial and Appeal Board - AIA Trial Roundtable in Denver and Webcast on May 8

The Patent Trial and Appeal Board (PTAB) is concluding the AIA Trial Roundtables in Denver on Thursday, May 8.

I was able to attend the roundtable in Silicon Valley a week ago, and enjoyed the presentations and mingling with the patent community. If you are outside the Denver area, you should catch the webcast that starts at 1 pm MDT. The USPTO has done an excellent job of preparing for the roundtables!

Here is the access link to watch, learn, and share feedback with the administrative patent judges (APJs) about the AIA trials: http://www.cba-cle.org/uspto.html

As stated in the reminder, "the program is broken into three segments, so feel free to join for any or all of them:
Segment 1 (one hour): lecture to highlight trial filing statistics and lessons learned about inter partes review and covered business method review proceedings
Segment 2 (one hour): mock conference call focused on a motion to amend the claims and a motion for additional discovery
Segment 3 (approximately 1.5 hours): panel discussion with expert AIA trial practitioners and APJs covering all phases of the trial process."

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, May 4, 2014

USPTO - Glossary Pilot Program

The USPTO is launching a Glossary Pilot Program to study how a glossary in the specification of a patent application may facilitate examination and ultimately improve the clarity of the patent claims.

The Glossary Pilot Program will run for six months from June 2, 2014 or until the USPTO accepts 200 petitions to be in the program, whichever is first, and may be modified and/or renewed for another six months after that.

The big hurdle is one of subject matter. To be eligible for the program, the application must be classified under Technology Centers 2100 (computer architecture, software & information security), 2400 (computer networking, multiplexing, cable, and security) 2600 (communications), or 3600 (business methods).

Applications writing a glossary and accepted into the program will get expedited processing for up to the first Office action. It might make sense if you can write the glossary so it does not become a claim construction tool for defendant's use at the Markman hearing.

For the details see the Federal Register Notice Glossary Pilot Program

Copyright © 2014 Robert Moll. All rights reserved.

Friday, May 2, 2014

Federal Jury Decides Samsung Only Pays $119.6 million for Infringement of Apple Patents

Today, the WSJ reports a jury ordered Samsung should pay $119.6 million for infringement of Apple's patents. Given Apple sought more than $2 billion, looks like a favorable result for Samsung. For details see Verdict Seen as Token Apple Victory, Boost for Samsung. Next up whether Apple will be granted an injunction by Judge Lucy Koh banning infringing Samsung products.

Updated May 5, 2014: Samsung ordered to pay Apple just $120 million for infringing patents

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, April 30, 2014

Supreme Court Oral Hearing on Joint Infringement in Limelight Networks v. Akamai Technologies

Today, the U.S. Supreme Court held an oral hearing in Limelight Networks v. Akamai Technologies.


As a reminder, the parties frame the issues this way: patent owners Akamai and MIT state the issue is whether a party may be liable for patent infringement under 35 U.S.C. § 271(a) or § 271(b) when two or more entities perform all of the steps of a process claim. Accused infringer Limelight Networks states the issue is whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).


Copyright © 2014 Robert Moll. All rights reserved.

Monday, April 28, 2014

Supreme Court Oral Hearing on Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Today, the U.S. Supreme Court held an oral hearing in Nautilus, Inc. v. Biosig Instruments Inc.

Here's a copy of the written transcript of the oral hearing.

As a reminder, Biosig states the question presented to the Supreme Court is (1) whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and (2) whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.

Nautilus states the question presented is (1) does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations— so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming, and (2) does the presumption of validity dilute the requirement of particular and distinct patent claiming?

For background: Supreme Court Grants Review of Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, April 26, 2014

Expediting Examination of U.S. Design Patent Applications - Capturing the Value at the Front of the Patent Term

Applicants are seeking U.S. design patents at record rates, but it is important to understand that design patents may be valuable for only a short time. I am not speaking of the 14-year design patent term, but the fact the world may initially "love" a design than view it as "out of date" just a few years later. For example, each new version of the iPhone somehow makes prior versions look out of date.

Thus, when the design relates to rapidly evolving technology, expediting examination may be important to quickly capture that commercial value and prevent infringement. Although the PTO examines design applications faster than utility applications, expediting examination of design applications may be worth it in certain cases.

Thus, 37 CFR  § 1.155(a), effective since September 8, 2000, established a procedure for applicants who conducted a preliminary examination search and request expedited examination along with the 37 CFR 1.17(k) fee:

(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination:

(1) The application must include drawings in compliance with § 1.84;
(2) The applicant must have conducted a preexamination search;
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.

(b) The Office will not examine an application that is not in condition for examination (e.g, missing basic filing fee) even if the applicant files a request for expedited examination under this section.

Another mundane patent procedure? Maybe, but it could increase the chance a design patent will be granted before the world moves on to something new!

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, April 24, 2014

Professor Hricik - Patent Attorneys Become Inventors?

Tonight, I am reading Professor Hricik's article Save a Little Room For Me: The Necessity of Naming as Inventors Practioners Who Conceive of Claimed Subject MatterMy comments will be brief.

The article is worth reading if you are a patent attorney or agent preparing US patent applications. If nothing else it will increase awareness of the issue and give guidance on how to handle a practitioner's inventive contribution to a claim of an application.

As a matter of practice, I think it's better to conduct an inventor interview so you don't increase the possibility of contributing to the conception of an invention. Ask questions rather than suggest things and listen more than talk. However, if you have contributed inventive material, Professor Dolak's proposal appears to be right: (1) add your name as an inventor to the application to satisfy US requirements that all inventors be named, and (2) assign your entire ownership to the client to satisfy your fiduciary duty.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, April 22, 2014

Josh Lowensohn - Samsung hopes to make FaceTime a headache for Apple

Tonight, let's catch up on Samsung's counter-offense against Apple in the mobile computing patent war. See Josh Lowensohn's article Samsung hopes to make FaceTime a headache for Apple.

Given Apple is seeking over $2 billion for patent infringement, Samsung seeking $6.9 million doesn't sound like much of a lever for overall settlement. The PR angle is not too good either as Samsung purchased these patents from third parties. Samsung is an innovative company, but this lawsuit is not highlighting that fact.

Copyright © 2014 Robert Moll. All rights reserved.