FTC Seeks Public Comments on Proposed Information Requests to Patent Assertion Entities

On September 27, the FTC stated in a press release that it "seeks to examine patent assertion entities and their impact on innovation, competition," and "is soliciting public comments on proposed information requests to Patent Assertion Entities ("PAEs") and other entities asserting patents in the wireless communications sector, including manufacturers and other non-practicing entities and organizations engaged in licensing."

The FTC defines a PAE as a firm that purchases patents then attempts to generate revenue by asserting the patents against those using the patented technology.

The FTC states the public comments will be considered before compulsory process orders seek information from PAEs and other entities concerning patent acquisition, litigation, and licensing practices.

Copyright © 2013 Robert Moll. All rights reserved.

US Supreme Court Certiorari - Octane Fitness v. Icon Health and Fitness - Exceptional Cases Under 35 USC 285 and Attorney Fees

On September 5, Mary Dwyer of the SCOTUS Blog stated the petition of the day relates to the Federal Circuit's nonprecedential decision in Octane Fitness v. Icon Health and Fitness. If the Supreme Court takes the case, it may increase the likelihood that a losing patent assertion entity case is held exceptional under 35 USC 285 resulting in an attorney fee award.

The issue is framed: Whether the Federal Circuit’s promulgation of a rigid and exclusive two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriates a district court’s discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court’s precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants.

See the papers, orders, and proceedings at SCOTUS blog page.

Updated October 1, 2013: Petition Granted.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - After Final Consideration Pilot Program 2.0 Extends to December 14, 2013

Here's good news from the USPTO: the After Final Consideration Pilot Program 2.0 (AFCP 2.0), scheduled to expire on September 30, 2013, will extend through December 14, 2013. AFCP 2.0 remains as implemented on May 13, 2013.

I was surprised USPTO - the After Final Consideration Pilot Program 2.0 to reduce RCEs had many pages views, but should not have been given applicants seeking broad claims often face a final Office action. Before AFCP, a final Office action triggered not-so-happy choices: (1) file an appeal and wait years for the Board to hear your appeal; (2) file a request for continued examiner (RCE) which has a non-trivial fee and wait months for reexamination; or (3) file a reply without substantive claim amendments and argue the examiner should reconsider his or her decision. When you look at those choices, AFCP 2.0 looks pretty good. As long as you meet the requirements, it gives a framework for after final negotiations that could lead to prompt allowance and save a RCE fee. For details see www.uspto.gov/patents/init_events/afcp.jsp.

Copyright © 2013 Robert Moll. All rights reserved.

NYT Article - Tech Giants Fear Spread of Patent Wars to Europe?

In Tech Giants Fear Spread of Patent Wars to Europe, the NY Times reports certain tech companies wrote a letter to European Officials that expresses concern patent trolls will take advantage of a unified patent court slated to open in Europe in 2015.

The article says "executives of some of the companies that sent the letter said one of their concerns was that court-shopping by patent trolls in some smaller European countries could turn parts of the Continent into the equivalent of the Eastern District of Texas. That federal court jurisdiction has become an American capital of patent litigation known for sympathetic juries and speedily moving cases." So do I have this right? One of their concerns is the Eastern District of France in 2015?

More seriously, the tech companies letter raises some good points: bifurcation of infringement from validity in different courts might enable an unscrupulous plaintiff to get a infringement ruling, along with an injunction barring products from most of Europe market, before validity is determined. Although we don't have this problem we do have courts finding infringement following by the USPTO holding the patent invalid in reexamination and post-grant proceedings. Also the letter mentions the problem of injunctive relief being used to extract excessive royalties from companies fearing business disruption.

I am not sure this letter expresses much confidence in Europe's ability to identify and handle these types of problems. On the other hand, US companies tend to be on the cutting edge for patent problems and understandably want to pass along what has been painful in the States.

Thanks to Alan Cooper for the article!

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - Software Partnership - Berkeley, CA - October 17, 2013

Today, the USPTO notified that it plans to "host its next Software Partnership meeting on Thursday, October 17, 2013, at the U.C. Berkeley School of Law in Berkeley, California. The public meeting will serve as an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for an informal discussion on topics specific to the software community."

For more information read the USPTO press release. Note if you are not accepted to attend or can't get to UC Berkeley, the USPTO has promised to WebEx the live event, which runs from 8:30 am to 12:30 pm. See the USPTO web site for access details before the meeting.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - Patent Application Initiatives - To Support and Advance Examination

The USPTO has a patent application initiative web page listing the options to advance and support examination of U.S. patent applications. The USPTO states the following:

"Applicants now have a single website location to compare the various patent application initiatives that are available prior to examination, during examination, or after close of prosecution. Applicants can easily evaluate and contrast the benefits of participating in patent initiatives using a comprehensive matrix of initiatives and convenient links to detailed information pages. The website also provides direct access to applicant assistance for addressing questions about these initiatives.

For more information see Patent Application Initiatives.

Copyright © 2013 Robert Moll. All rights reserved.

Professor Colleen Chien - What To Do If You Get A Patent Troll Demand

Santa Clara University associate professor Colleen Chien has an interesting article What To Do If You Get A Patent Troll Demand in TechCrunch based on a detailed report Patent Assertion and Startup Innovation that examines 134 VCs and 173 startups' experiences with patent assertion from NPEs or patent trolls. Note the sample size was based on a total of 6,636 addressees not counting opt-outs and bounced emails and not specific to any industry. See the report for methodology and details.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - America Invents Act Forum on September 16, 2013

On September 4, the USPTO announced plans to host a America Invents Act Forum to answer questions regarding specific provisions of the America Invents Act (AIA) at the USPTO Campus, Madison North Auditorium, 600 Dulany Street, Alexandria, VA from 1 pm - 5 pm ET on September 16, 2013.

The event will be also webcast live through the USPTO website. More information, including directions, webcast login instructions, meeting agenda and RSVP details can be found on the AIA microsite.

The USPTO states "experts from the Patent Business Unit and administrative patent judges from the Patent Trial and Appeal Board (PTAB) will discuss various provisions of the patent law, focusing on filings made during the past several months with tips for compliance.  In particular, the agency will address prioritized examination (aka Track One), preissuance submissions, inventor's oath/declaration, supplemental examination, micro-entity discount, first-inventor-to-file, and the administrative trials. Attendees will have the opportunity to ask questions during each segment."

For more information, send email to Janet.Gongola@uspto.gov or call 571-272-8734.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - IP Awareness Assessment

If you are interested in knowing more about IP without receiving a legal bill from your attorney, you may want to check out this new feature on the USPTO web site. The USPTO and the National Institute of Standards and Technology Manufacturing Extension Partnership developed an online IP Awareness Assessment which covers IP strategies, best practices, international IP rights, IP asset tracking, licensing technology to others, and using technology of others. It covers five categories of IP: copyright, design patents, trademarks, trade secrets, and utility patents. The assessment is free and takes 10-30 minutes.

Copyright © 2013 Robert Moll. All rights reserved.

Microsoft Acquisition of Nokia - It is Better to License Than Sell the Patents

Today, the big tech news was Microsoft's acquisition of Nokia's handset business for $5B. Unlike Google's acquisition of Motorola Mobility, Nokia did not sell its patents. Instead, Nokia granted Microsoft a 10-year license for $1.6B. In Reuters, Dan Levine explains why that makes sense in Why Nokia didn't sell its patents to Microsoft.

Copyright © 2013 Robert Moll. All rights reserved.