Sunday, December 29, 2013

Paul Michel - Recollections of Judge Giles S. Rich

Not all readers are familiar with the legacy of Judge Giles S. Rich. If this is the case, you should consider reading Recollections of Judge Giles S. Rich where former Federal Circuit chief judge Paul Michel writes an eloquent tribute to this great man, the oldest full-time appellant judge (95 years old) in American history, and the primary architect of modern U.S. patent law.

Copyright © 2013 Robert Moll. All rights reserved.

Saturday, December 28, 2013

USPTO Updated ADS Form and Forms to Revive a Lapsed Patent or an Abandoned Application Under Patent Law Treaty

The Patent Law Treaty (PLT) entered into force in the United States on December 18, 2013. The PLT is a multilateral treaty to harmonize patent procedures, the form and content of patent applications, and legal representation. My first impression is that it generally helps applicants when they make mistakes.

For example, the USPTO recently notified me that they had new USPTO forms to implement PLT procedures to revive a lapsed patent or an abandoned application:

The USPTO says for help in submitting forms using the electronic filing system (EFS) call the patent electronic business center (EBC) from 6:00 am to 12:00 midnight (ET) Monday - Friday at 1-866-217-9197 or send an email to For information on the forms, email

Copyright © 2013 Robert Moll. All rights reserved.

Friday, December 27, 2013

Google DJ Action of Noninfringement of Rockstar Patents

Alan Cooper and Suzie Lipton sent email that I should consider giving some coverage to what is going on with Google's counter-suit against the Rockstar consortium patents this week.

As most know, Rockstar consortium is a patent holding company that includes as shareholders Apple, Microsoft, and RIM that outbid Google to purchase patents from the bankrupt telecom company Nortel for $4.5 billion. Media suspects Apple and Microsoft are using the Rockstar patents as a proxy to attack the Android ecosystem. Also rumored is the patents are not worth what many bidders thought and some are even up for sale.

There are many articles on this topic, and rumors make it  difficult to know what is true. Part of the problem is the reporting from even stellar journalists mixes up even the basic terminology.

For example, in Google files counter-suit against Rockstar, seeking to avoid East Texas we were told "Rockstar Consortium, a patent-holding company formed from the bankrupt Canadian telecom company Nortel, sued Google and manufacturers of Android phones over patents almost two months ago" and "this week Google filed its counter-attack seeking to invalidate Rockstar's patents" (emphasis added).

I enjoy Mr. Mullin's contributions so I read the article, but found Google's complaint mentioned in the article was not seeking to invalidate Rockstar's patents. Instead, Google filed a Complaint for Declaratory Judgment of Non-Infringement for each of seven patents. It's not that the patent claims shouldn't have issued for invalidity; it's the patent claims don't describe Google's products or processes.

When much happens behind the scenes and one of my favorite journalists doesn't get the facts straight, you need to delve into the original sources of authority and/or wonder if it is not smarter to await further developments.

Copyright © 2013 Robert Moll. All rights reserved.

Monday, December 23, 2013

Electronically Submitting Assignments - No Recording Fee Effective January 1, 2014

Today, I submitted an assignment for recordation in the USPTO. I used the electronic patent assignment system (EPAS) and waited until this week because the USPTO appeared to state it would no longer charge the $40 recording fee for assignments submitted electronically on or after December 18, 2013. However, at the end of the process the USPTO said a $40 recording fee was due. Because I had to meet the three-month deadline, I submitted a $40 payment. Later I re-read the USPTO fee schedule and noted what was trumpeted as a fee revision only pertained to fee codes not the amounts. I note this in case you also found the USPTO fee schedule less than clear.

Copyright © 2013 Robert Moll. All rights reserved.

Sunday, December 22, 2013

Motorola Rushes to the USPTO With Sketchy Drawings - New Matter under 35 USC 132?

In Motorola Rushes Patent Filing for Ugliest Smartwatch, Patently Apple explains "Motorola under Google has to ensure they'll stay on top of new trends this time around" and so rushed a smartwatch application to the USPTO. Patently Apple says we will take the patent filing seriously if it was conceived by their on-site kindergarten class. After I chuckled a bit, I realized there is point to to make about this all too common practice of filing US patent applications with informal drawings.

Many patent attorneys file drawings just like those shown in the Motorola patent application and justify it by saying we wanted to lock in the earliest possible filing date and can always file formal drawings when the USPTO objects to the drawings. However, this approach ignores that if a court holds the amendment to the drawings introduced new matter, any patent claim depending on that drawing is open to a new matter challenge. Will the patent claim be invalidated? It will depend on the scope and nature of the amendments, but in amending the drawings, an applicant cannot introduce subject matter beyond that disclosed in the original application. Further, whatever you save by filing the application with informal drawings will be lost when formal drawings are required. More important, the formal drawing that looks great compared to the informal drawing may have set up an invalidity defense to any patent claim requiring the drawing for support.

Copyright © 2013 Robert Moll. All rights reserved.

Friday, December 20, 2013

USPTO Fees Effective on January 1, 2014

The USPTO changed certain patent fees on December 18, 2013, which will be effective on January 1, 2014.

See the updated USPTO fee schedule here.

For details call the USPTO Contact Center at 800-786-9199 or 571-272-1000.

Copyright © 2013 Robert Moll. All rights reserved.

Sunday, December 15, 2013

Professor David Hricik's Legal Ethics and Non-Practicing Entities Article

Much of the press talks about the lack of ethics of patent trolls, but like many things there is more to the story.

For example, Santa Clara University Law School invited Professor Hricik to speak on legal ethics that face a "patent troll" or non-practicing entity's (NPE) counsel. It sounds like the assumption was to focus on this side, because NPE's have much less discovery than defendants which can be leverage to extract a nuisance settlement.

In preparing for the talk, Professor Hricik realized, and called it counter-intuitive, that the legal ethics issues extend to defendant's counsel in a big way, because they have significant control over how discovery is scheduled, but are typically paid by the hour. For example, they could bifurcate discovery and schedule determinative issues like infringement at the front end of discovery to save money. Yet the NPE's desire the suit not be quickly adjudicated aligns with defendant counsel's desire to "earn" fees during discovery. So if the NPE counsel makes comprehensive discovery, the defendant's counsel may act in a cost ineffective way.

Professor Hricik notes Rule 11 and 35 USC 285 require counsel act ethically. My observation is courts rarely use Rule 11 and Section 285 to police how parties manage discovery. And without court limits, discovery in patent litigation is too often a law firm money maker.

Anyway, I agree with Professor Hricik about ethics obligations running to all parties in NPE litigation, and recommend reading: Legal Ethics and Non-Practicing Entities: Being on the Receiving End Matters too.

Copyright © 2013 Robert Moll. All rights reserved.

Saturday, December 14, 2013

Nest Faces Incumbent Dirty Tricks, Patent Lawsuits & More

In Nest Labs CEO advice: Startup? More like lawyer up, Tony Fadell says startups challenging the incumbents need to prepare not just for competition but dirty tricks:

"They will throw everything under the sun at you, and a lot of it is not cool. In addition to patent lawsuits, they'll trash your products on review sites. Nest Labs has been able to track some one-star reviews back to the facilities of its competitors, and he values having a lawyer who can fight the patent suits."

Yes, but what's an even dirtier trick? Maybe the Goodlatte Innovation Act (HR 3309) that purports to stop patent trolls, but will no doubt intimidate some small companies into not enforcing legitimate patent rights to avoid the risk of paying incumbent's legal bills. Nothing like the threat of shifting your legal bill to send a startup on its way!

How will Goodlatte shift incumbent legal fees to small companies? It proposes mandatory attorney fee shifting in every single case when a court concludes the loser's conduct or claim was not reasonably justified. Each time a defendant wins, the patent owner will face a motion for attorney fees. This is a huge change from 35 USC 285 that requires each party bear its expenses, including attorney fees except in exceptional cases.

Congress appears to be rushing the Goodlatte's bill to passage before smaller entities can oppose it and/or before the Supreme Court can decide two cases on the award of attorney fees in patent cases: Highmark Inc. v. Allcare Management Systems, Inc. and Octane Fitness v. Icon Health and Fitness. It might be smart to hear how the Supreme Court would guide this topic instead of rushing forward to change 35 USC 285.

Copyright © 2013 Robert Moll. All rights reserved.

Wednesday, December 11, 2013

Europe's Top Regulator Warns Nokia - Patent Licensing Will Trigger Antitrust Action

On December 9, Europe's top regulator warned although he approved the $7.2 billion sale of Nokia's business to Microsoft, he was concerned Nokia would attempt to "extract higher returns" from its patents. He said this seeking higher returns (e.g., a higher royalty rate in patent licensing) was behaving "like a patent troll, or "a patent assertion entity" and  he would not tolerate Nokia taking "illegal advantage" of its patents but instead sue it for the antitrust violation. So what can you Nokia do with its patents in Europe? Put them on a bookshelf-- and promise never to assert them.

See Associated Press article EU Warns Nokia Not to Become 'Patent Troll'

Copyright © 2013 Robert Moll. All rights reserved.

Tuesday, December 10, 2013

Donald Chisum's Article - Patents on Computer-Implemented Methods and Systems

Donald Chisum is a patent scholar who taught for many years as a professor at the University of Washington and Santa Clara University Law Schools. He is also the author of the well regarded Chisum on Patents. This 33-volume treatise is the most cited patent law treatise in American history. It stretches on for thousands of pages. On many legal issues, Chisum on Patents and Chisum's Patent Digest are great places to start for a summary of the law and for citations to cases. When I read the cases, I am impressed how accurately Donald Chisum had summarized U.S. patent law.

Today, Donald Chisum published an article Patents on Computer-Implemented Methods and Systems: The Supreme Court Grants Review (CLS Bank) Background Developments and Comments that states the need for the Supreme Court to clarify the test for patent eligibility of computer-implemented methods and systems.

Here's a passage from the article:

"On December 6, 2013, the Supreme Court granted a petition for certiorari,filed by a patent owner, which presented the following question:

Whether claims to computer-implemented inventions–includingclaims to systems and machines, processes, and items ofmanufacture–are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court. AliceCorporation Pty. Ltd. v. CLS Bank International.

That this question warrants Supreme Court deliberation in 2013 is startling and disgraceful. How can such uncertainty exist in the 21st century about so basic a question as the patentability of computer software? Computers, software, anddisputes about intellectual property protection for programming have been around since the 1960s. The statute at issue (Section 101) is unchanged since 1952.

The responsibility lies squarely at the feet of the Supreme Court. Its confusing statements about the patenting of "abstract ideas" have trickled down tothe lower courts, understandably causing disagreements among judges. Regrettably, the result is one of the most serious diseases that can infect the legal system: similar cases are decided differently based solely on the identities of the judges.

A review of recent case law developments beginning primarily with theSupreme Court's 2010 Bilski decision on the patent-eligibility of businessmethods, together with the details of the subject CLS Bank case, shows how dire the situation has become."

It is well worth consideration by the patent community; if someone with intimate familiarity with US patent law says the Federal Circuits fragmented test is so confusing no one knows how to apply it, it is time for the Supreme Court to speak. After all the concept of the current test for patentability of software related inventions appears to hinge on whether a particular judge or set of judges think it is an abstract idea (after ignoring various claim limitations) without any guidance what remains in or out of the claim. Justice Douglas' legacy is to place a cloud over all software related inventions with the abstract idea exception. It works perfectly if you  think patents are suspect monopolies and don't understand computers. 

Copyright © 2013 Robert Moll. All rights reserved.

Monday, December 9, 2013

Stanford Technology Law Review - Design Patents in the Modern World

The Stanford Technology Law Review appears to have joined Berkeley Technology Law Journal as a leader in law review coverage on emerging intellectual property topics.

One emerging topic in US patent law is design patents. The huge damage awards for infringement of design patents in Apple v. Samsung raised the importance of seeking design patents. It also highlighted the need to better understand the law surrounding the patentability, infringement, and remedies of design patents.

Today, Ms. Anna Sallstrom, Editor in Chief, Stanford Technology Law Review, sent me an email noting that STLR is publishing the presentations given in Design Patents in the Modern World conference held at Stanford Law School in 2013. Specifically, the following eight articles by leading scholars will be available online at this winter:

A Response to the Standard Criticisms of Design Patents
by Sarah Burstein

Rights, Remedies, and the Doctrine of Election
by Laura Heymann

Virtual Designs
by Mark Janis & Jason Du Mont

A Rational System of Design Patent Remedies
by Mark Lemley

Functionality and Graphical User Interface Design Patents
by Michael Risch

Progress and Competition in Design
by Katherine Strandburg & Mark McKenna

Law Without Design
by Madhavi Sunder & Peter Lee
(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
by Andrew Torrance & William Seymour

Copyright © 2013 Robert Moll. All rights reserved.

Saturday, December 7, 2013

USPTO After Final Consideration Pilot Extends to September 30, 2014

Here's some good news from the USPTO: the After Final Consideration Pilot 2.0 (AFCP 2.0) program is being extended from December 14, 2013 to September 30, 2014.

As I noted earlier in USPTO - After Final Consideration Pilot Program 2.0 Extends to December 14, 2013, the AFCP 2.0 gives a framework for after final negotiations that can lead to prompt allowance and save a request for continued examination (RCE) fee as long as you meet the requirements. For details on the requirements see

Copyright © 2013 Robert Moll. All rights reserved.

Friday, December 6, 2013

U.S. Supreme Court Grants Certiorari in Alice v. CLS Bank

Today, U.S. Supreme Court granted certiorari in Alice v. CLS Bank to consider the patent eligibility standard for software related inventions. No word on whether the Court will grant certiorari in another software patent eligibility case Ultramercial v. Hulu and Wild Tangent. 

See Mr. Lyle Denniston's Court to rule on patent rights, Joe Mullin's Supreme Court will take up messy ruling from top patent court, and Ashby Jones' Can Software Be Patented? Supreme Court to Decide

See my related articles in 2012 - 2013:

May 21, 2012 - WildTangent v. Ultramercial - Supreme Court Rejects Federal Decision on 35 USC 101

July 29, 2012 - Software Patent Eligibility - Ending 40 Years of Controversy

October 9, 2012 - CLS Bank v. Alice Corp. - Federal Circuit Revisits Test for Software Patent Eligibility

December 9, 2012 - CLS Bank v. Alice Corp. - Amici Briefs Addressing Software Patents

December 17, 2012 - CLS Bank v. Alice Corp. - US Government's Amicus Brief Addressing Software Patents

February 8, 2013 - CLS Bank v. Alice Corporation - Oral Arguments Recording

May 11, 2013 - CAFC - CLS Bank v. Alice - Software Patent Eligibility?

July 31, 2013 - Ultramercial v. Hulu and WildTangent - The Software Patent Eligibility Controversy

Copyright © 2013 Robert Moll. All rights reserved.

Tuesday, December 3, 2013

USPTO - Updated Application Data Sheet Form

The America Invents Act (AIA) presented new AIA forms for US patent applications filed on and after September 16, 2012. Tonight, I will tackle just one and briefly because it is late-- the application data sheet (ADS) required under 37 CFR 1.76. What's an ADS? It is the bibliographic data of a US patent application including inventor, correspondence, application, representative, domestic benefit,  foreign priority and applicant information.

The ADS is lengthy and no fun to complete. But the USPTO promises if I complete an ADS it will reduce data input errors, and I guess transfer responsibility to me. I don't find this compelling, but the USPTO has a way to deal with my reluctance: 37 CFR 1.76(a) states a priority claim in a specification must be also stated in an ADS. Although a priority claim reduces patent term, it also reduces prior art so many applications eligible for continuing application status claim priority.

But the "form fun path" is just starting, since an ADS requires the name of the attorney of record. Initially when I completed an ADA, it appeared an attorney could no longer act in a representative capacity on a continuing application under 37 CFR 1.34. That appears to be no longer the case, but check for yourself as you may need to file a power of attorney form to be the attorney of record. If so, the person signing the power of attorney must prove authorization from the patent application owner. That requires a 37 CFR 3.73 statement of right stating the chain of title and the representative's qualifications.

The USPTO says it provides forms to assist the public, but making an optional form like the ADS mandatory per the new rules can generate unintended consequences -- like Obamacare.

In any event, the USPTO updated the Application Data Sheet (AIA/14) form on November 27, 2013. For assistance e-filing forms contact the Patent Electronic Business Center (EBC) at or call 1-866-217-9197 from 6:00 am to 12:00 midnight (ET) Monday through Friday. Also for more information on USPTO forms generally, send an email to

Copyright © 2013 Robert Moll. All rights reserved.

Sunday, December 1, 2013

Design Patents on Virtual Designs

Virtual Designs to be published in the Stanford Law Review in 2013 appears to be worth reading. Thanks to Professor Dennis Crouch for his Patently-O blog that drew attention to Microsoft IP Fellow Jason J. Du Mont and Indiana University Law Professor Mark Janis's comprehensive article on design patenting of virtual designs such as graphical user interfaces and icons on smartphones and tablets.

Copyright © 2013 Robert Moll. All rights reserved.