Tuesday, June 30, 2015

Stanford Technology Law Review - Functional Claiming and the Patent Balance

I suggest reading David Kappos and Christopher P. Davis' Functional Claiming and the Patent Balance in the recently published Stanford Technology Law Review volume 18, issue 2. Functional claiming has become an important issue in software patenting.

See STLR online for other IP articles.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Google Chrome No Longer Able to Access EFS-Web and Private PAIR After September 2015

On June 22, the USPTO announced "Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts your ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that will allow you to use the Java plug-in so that you can continue to log into EFS-Web and Private PAIR: https://support.google.com/chrome/answer/6213033(link is external).

This workaround will only work through September 2015, when Google Chrome plans to end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users using version 45 and above will no longer be able to use the workaround and thus will not be able to log into EFS-Web or Private PAIR.  Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit https://java.com/en/download/faq/chrome.xml(link is external)."

Let's see if Google develops a permanent solution for Chrome users that require these USPTO services.

Also the USPTO announced PAIR is unavailable 4:30 to 5:30 AM Eastern daily, i.e., no problem.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, June 29, 2015

FOSS Patents - US Supreme Court Denies Google's Petition on Android's Use of Oracle's Java API

I suggest reading Oracle v. Google Android-Java copyright case goes back to San Fran: Supreme Court denies Google petition at FOSS Patents. Google's petition for certiorari (Supreme Court review) has failed despite substantial efforts and numerous amici briefs arguing Oracle's Java API are a method of operation rather than copyrightable subject matter. The case next considers if Google's use of the APIs in Android is nonetheless a "fair use." FOSS Patents expects Google will lose.

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, June 27, 2015

USPTO - Patent Quality - Examiner Interviews & USPTO Tools - Tuesday, July 14

The USPTO announced Face-to-Face Examiner Interviews: A Demonstration of USPTO Tools runs noon - 1 pm Eastern, July 14.

In this second webinar in the Patent Quality series, the USPTO Director Timothy Callahan will demonstrate: "USPTO tools for virtual, face-to-face interviews and discussing various initiatives for enhancing the quality of examiner-Applicant interviews while collecting feedback and listening for new stakeholder ideas on the same."

Note - USPTO interviews are an important tool for reducing costs of patenting. 

In case you missed it, the first webinar was held on June 9: Clarity of the Record and videos and slides. Deputy Commissioner for Patent Examination Policy Drew Hirshfeld discussed examiner training on 35 U.S.C § 112, functional claiming, which is an important topic in software patenting, making the record clear, and the USPTO's clarity of record quality initiative.

Copyright © 2015 Robert Moll. All rights reserved.

Friday, June 26, 2015

Supreme Court - Kimble v. Marvel Entertainment - Patent Owner Cannot Charge Royalties After Term Expires

In Kimble v. Marvel Entertainment, LLC, the U.S. Supreme Court declined to overrule its earlier decision in Brulotte v. Thys Co. that a patent owner cannot charge royalties for use of a patented invention after the patent term expires.

Brulotte has been the law for fifty years so I don't think this recent decision is that surprising. Perhaps more interesting is the fact the Supreme Court granted little credit to the economic arguments raised to overrule Brulotte and the idea "bad economics" should trump long standing US patent law.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, June 16, 2015

PTAB - Expediting Ex Parte Appeal

The USPTO announce a pilot program where the Patent Trial and Appeal Board (PTAB) will expedite an ex parte appeal if appellant withdraws another appeal (e.g., abandons or files a RCE).

The pilot program is available to June 16, 2016 or PTAB expedites 2,000 appeals, whichever occurs first.

Here's the USPTO announcement:

"The PTAB is pleased to announce a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (Board) to expedite review of one appeal in return for withdrawing another appeal. The Expedited Patent Appeal Pilot will allow appellants having multiple ex parte appeals currently pending before the Board to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals pending before the Board. Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge under 37 C.F.R. § 41.3. The Office has waived the petition fee and provided a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition."

For more information refer to the Federal Register Notice and PTAB web page.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, June 15, 2015

USPTO - Improvements to Private PAIR

Today, the USPTO announced improvements to Private PAIR, which gives online access to records of unpublished patent applications:
"Users can now self-administer, in real time, a number of routine administrative tasks that previously required the submission of a paper form. The new Private PAIR features enable self-administration of the following items:
  • Entity status changes (Micro, Small, or Regular Undiscounted)
  • Update Correspondence Address
  • Update Maintenance Fee Address
  • Request a new customer number
Entity status and correspondence address updates will be visible in the transaction history, and a copy of each change request will be uploaded to the Image File Wrapper (IFW).

Users may notice that all applications are set to Regular Undiscounted entity status by default upon initial filing until the application completes formalities review. Once this review is complete, the entity status will be updated based on any assertion of small or micro entity status.

The Address & Attorney/Agent tab has also been enhanced to include complete information for Correspondence Address, Maintenance Fee Address and Power of Attorney information."

Learn more at the PAIR Announcements page.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, June 9, 2015

USPTO - Progress on Intellectual Property (IP) Rights

In a blog post, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee addresses IP rights issues in China:

"It was clear during my recent trip to Beijing, China, that the timing for the visit could not have been better. China is at a crossroads in its economic evolution, and as such governmental officials are considering changes to every aspect of intellectual property law. After a series of high-level meetings, what was clear to both me and my China team—led by Senior Counsel Mark Cohen—was an increased recognition in China of the value of IP to the nation’s economic ambitions. It is through a mutual respect for the importance of IP rights and protections that U.S. companies will be able to fully and successfully compete in the Chinese market.

From May 25th to the 27th, I met with senior leaders across China’s IP landscape, starting with Vice Premier Wang Yang. The Vice Premier stated quite clearly that China aspires to be an innovation-based economy. China is no longer content with manufacturing goods invented by others, he and other leaders said, as the country aims to move up the economic value chain and compete in the global marketplace of inventors. As such, we were told that China recognizes that improving IP rights and enforcement is not just in the interest of the U.S., it is also in the interest of China. We heard this not just from the Vice Premier but in meetings with China’s State Intellectual Property Office (SIPO), the Ministry of Commerce (MofCOM), the State Administration for Industry and Commerce (SAIC), the National People’s Congress (NPC), and the Supreme People’s Court (SPC).

Much progress needs to be made in China in all forms of IP law, from patents and trademarks, to copyrights and trade secrets. I made clear in my meetings that we seek to work with China to develop a market-oriented, business-driven innovation environment that allows businesses the freedom to license and contract as conditions warrant. Those businesses need to be free from governmental interference in an environment comprising transparency and rule of law. Already assisting U.S. businesses in China are three USPTO IP attach├ęs, including Beijing-based Joel Blank, who was part of my delegation.

We discussed with our counterparts China’s new IP specialized courts, offering input on how to ensure this reform guarantees justice for IP owners. We pushed for reforms to ensure effective protection and enforcement of trade secrets that would include revisions to its criminal law. We emphasized the need for increased protection for copyright and trademark owners while recognizing the importance of reforms already enacted, offering feedback on further reform efforts being discussed in China on those issues. And we did so, in each case, by emphasizing how these changes would be mutually beneficial for both countries.

I also had the unique opportunity to meet with U.S. industry representatives while in Beijing. It’s invaluable to hear about the IP challenges and issues faced by those “on the ground,” and to discuss the ways in which the U.S. government can help them.

This visit built on a successful trip by Deputy Director Russell Slifer to the IP5 Heads meeting in Suzhou, China, a week earlier. Along with signing a Memoranda of Cooperation with the Korean IP Office and the Japanese Patent Office, Deputy Director Slifer met with SIPO Commissioner Shen Changyu. Deputy Director Slifer and I had just hosted Commissioner Shen at the USPTO in April, and I had a productive meeting with him on this recent trip.

During that meeting, I signed a Memorandum of Understanding with Commissioner Shen that commits the USPTO and SIPO to a general framework of bilateral cooperation. We both committed to educational programs on how best to protect patents in each country’s legal system, and could organize activities related to USPTO programs such as the Patent Prosecution Highway and the Global Dossier initiative. SIPO and the USPTO process more patent applications than any of the other IP offices in the world, and I am encouraged by the furthering of our agencies’ collaboration.

As evidence of this collaboration, SIPO also participated in a cause close to my heart. On May 25, I gave a speech at Columbia University's East Asia Center in Beijing to an audience of 60 people, mostly women between the ages of 25 and 40, on the importance of women in STEM (science, technology, engineering, and mathematics) fields. A representative from SIPO echoed my remarks, and emphasized the link between a strong STEM education system and an innovative society.

Engagement with SIPO—and Chinese policymakers more broadly—will continue later this year with the next meeting of the U.S.-China Joint Commission on Trade and Commerce that I co-chair with Deputy U.S. Trade Representative Robert Holleyman. This trip helped lay the groundwork for that very important bilateral trade dialogue, in which IP is a top priority. We’re moving forward on plans for that meeting with a commitment to continue to encourage China’s evolution to an innovative economy that increasingly respects and promotes IP rights."

Copyright © 2015 Robert Moll. All rights reserved.