IP Watchdog - Christmas Gifts for Patent Attorneys and Inventors - One More to the List - David Hricik and Mercedes Meyer Patent Ethics: Prosecution

Today, Gene Quinn of IP Watchdog says "no need to panic" and lists: Christmas Gifts for Patent Attorneys and Inventors.

I am not looking for a gift, but wish to add: David Hricik and Mercedes Meyer Patent Ethics: Prosecution (2016-2017). As stated in chapter 1: "This book comprehensively addresses ethical issues that face patent lawyers, patent agents, companies, and firms that prosecute and opine about patents. This edition also now includes a chapter devoted to post-disposition proceedings, including inter partes review under the AIA."

Not seeing anything like it on Amazon I ordered the Kindle version this week. I am still browsing this substantial book, but so far it appears very useful. I suggest review of the table of contents on Amazon to see what's covered. My mild criticism is this Kindle book is expensive, but still consider it money well spent given what's at stake. It's not the issues on "our ethics radar" that tend to cause problems -- it's the issues that aren't. This book should help spot ethics issues before they cause harm, which is "a gift that keeps on giving."

Copyright © 2018 Robert Moll. All rights reserved.

Stanford Program in Law, Science & Technology - The Changing Patent Landscape Conference - October 7, 2016

Stanford Program in Law, Science & Technology and Samsung Electronics are co-sponsoring a conference: The Changing Patent Landscape 8:30 am - 4:15 pm tomorrow.

Here's the details: "The patent system has gone through some dramatic changes in the last decade. This conference will explore the impact of those changes on patent litigation, patent prosecution, and management, and will look at alternatives to patent protection.

Topics that will be covered at the conference include:

o The Changing Nature of Patent Prosecution and PTO Review
o The Changing Nature of Patent Litigation
o What Does the Future Hold?

Keynote Speaker - Chief Judge David P. Ruschke, USPTO

Speakers

o Judge Leonard Davis, Fish & Richardson P.C.
o Christen Dubois, Facebook
o Kenneth S. Korea, Samsung Electronics
o Kathy Ku, Stanford University
o Mark A. Lemley, Stanford Law School; Durie Tangri LLP
o Sonal N. Mehta, Durie Tangri LLP
o Lisa Larrimore Ouellette, Stanford Law School
o James Pooley, Orrick, Herrington & Sutcliffe
o Ashok Ramani, Keker & Van Nest LLP
o Teresa S. Rea, Crowell & Moring LLP
o Lee Van Pelt, Van Pelt, Yi & James LLP
o Judge Christa Zado, Silicon Valley USPTO"

It is free and open to the public at the Paul Brest Hall, Munger Graduate Residences.

Registration: http://web.stanford.edu/dept/law/forms/oct7_patentconference.fb

Copyright © 2016 Robert Moll. All rights reserved.

America Invents Act - USPTO's AIA Blog - Guidance on Patent Prosecution

If you want guidance on the nuts and bolts of patent prosecution under the America Invents Act (AIA), you should visit the AIA Blog of the United States Patent and Trademark Office.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO Opens Patent Prosecution Highway with Taiwan Intellectual Property Office

On December 21, 2012, the USPTO announced its Patent Prosecution Highway (PPH) partnership with the Taiwan Intellectual Property Office.

The USPTO says, "Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently."

Note on May 25, 2010, the USPTO eliminated the fee for a petition to make special under PPH so it sounds like a good deal.

However, I am not sure how certain circumstances would play out under the US-Taiwan PPH partnership, because PPH is not mentioned in 37 CFR nor in Title 35. For example, if you initially file in the USPTO then file in Taiwan can you use a favorable Taiwanese ruling to fast track the US prosecution (i.e., swap who is the first Office)? This would be desirable, given the USPTO is backlogged and Taiwan is not a member of the PCT and requires a Taiwanese filing within 12 months of the US filing date. Admittedly this issue may only pertain to this PPH partnership because other partnerships among PCT members permit a second application filing up to 30 months from the priority date.

PPH seems to assume participating countries have similar patentability standard. Otherwise, why fast track examination of one country's application based on another country's patentability rulings? Yet even the USPTO and EPO have important differences especially on patentability of software related invention.

In addition, the USPTO has high standards on the content of applicant's petition to expedite examination of an application. Given this is it factually correct to say all claims of a second application "correspond" to a single allowable claim in a first filed application? PPH seems to stretch the term "correspond." Is it a problem? What if the applications overlap but are not identical? Could a defendant successfully argue applicant's statement that claims correspond is false rendering the US patent unenforceable in court? I am not sure and litigation is a harsh place to find out.

Copyright © 2012 Robert Moll. All rights reserved.

PTO Moved to Intervene as Defendant and Counterclaim Plaintiff in Copyright Infringement Action Against Patent Law Firm

On June 12, the Patent and Trademark Office (PTO) moved to intervene as a defendant and counterclaim plaintiff in a lawsuit against the patent firm, McDonnell Boenen Hulbert & Berghoff LLP that John Wiley & Son accuses of copyright infringement in filing publications in information disclosure statements.

The PTO states copying or distribution of copyrighted material is a necessary and incidental part of patent prosecution and the damages sought by John Wiley & Son interfere with laws that exist to implement the Constitution’s goal for Congress to promote the progress of the useful arts (i.e., technology). The PTO's counterclaim for declaratory relief of non-infringement and fair use also argues the publications are submitted solely for their ideas and factual content and not for any expressive content.

I hope this can be resolved favorably for the public. Disclosure of non-patent literature is required in some cases to meet applicant's duty to disclose material literature of which they are aware to support examination. To make applicants pay fees (large or nominal) to each of the many publishers will be expensive for applicants or will cause some non-risk adverse applicants to disclose less non-patent literature which will not benefit the public.

Copyright © 2012 Robert Moll. All rights reserved.

WIldTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101

The Supreme Court is pushing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012)(Mayo) as the standard to use in assessing whether software/Internet related subject matter is eligible for patent protection.

In WildTangent v. Ultramercial, the Supreme Court recently wrote: The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo.

The question presented? Whether, or in what circumstances, a patent's general and indeterminate references to 'over the Internet' or at 'an Internet website' are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 USC 101? Supreme Court Rule 14 requires the questions presented for review should not be argumentative, but apparently it didn't matter.

In Mayo, the Supreme Court rejected a medical diagnostic patent as encompassing an unpatentable law of nature once you remove the conventional steps. Justice Breyer's analysis dissects the claim: (1) to determine what is conventional in the claim; (2) to subtract the conventional part from the claim; and (3) to determine if the remaining part of the claim sets forth a law of nature (i.e., scientific principle). If the answer is yes to (3), the claim is ineligible for a patent according to Justice Breyer, since judicial law says you can't patent a law of nature. However, this conflates the patent eligibility of 35 USC 101 with the rejected point of novelty test.

The Federal Circuit had held US Patent No. 7,346,545 (the '545 patent) patentable subject matter. It relates to a particular method of giving a copyrighted product to a consumer for watching an advertisement over the Internet.

Claim 1 is representative for this analysis:

1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Frankly, Judge Rader understands 35 USC 101 and correctly held claim 1 patentable, since it requires a computer executing a software program with considerable complexity. This is not an abstract idea. It may have not been so great, however, to say the '545 patent discloses a practical application of an idea, because it sounds like State Street rather than In re Bilski. Anyway, now that the Federal Circuit has to deal with the GVR, it will be reconsidering whether or not claim 1 is patentable subject matter under 35 USC 101. At least the Federal Circuit refused the temptation to talk about the gist of the '545 patent being an idea that advertising can be used as a form of currency. Too often the press, the courts, and the patent community give a pithy summary of the claim that sticks to everyone's mind and never get back to the actual claim language, which impacts the legal analysis.

35 USC 101 does not support the Supreme Court's willingness to jump into the long standing software patent debate (Congress had an opportunity to legislate software patents out of existence in the recently passed America Invents Act, but remained silent), and require the Federal Circuit instead apply this new Mayo test that dissects a patent claim, discards whatever a court thinks is conventional then determines subject matter eligibility with whatever remains in the claim. Instead, Mayo's point of novelty patent eligibility test merely helps the Supreme Court implement its desire to rein in patents.

Copyright © 2012 Robert Moll. All rights reserved. 

Professor Tu's Empirical Study of Examiner Allowance Rates

Dr. Tu, associate professor of law at West Virginia University, investigated the prosecution of every US patent issued over the last decade. The results are discussed in Luck/Unluck of the Draw: An Empirical Study of Examiner Allowance Rates an article forthcoming in the Stanford Technology Law Review. It appears that the article which Patently-O cited here has struck a nerve receiving 173 comments in Patently-O as of tonight.

This article supports that the final outcome of a patent application depends on the examiner as much as the applicable law, the merit of the invention, and the skill of the inventor(s) and patent attorney in preparing and prosecuting the application.

In this article, Dr. Tu identifies two populations of examiners that may be harming the USPTO: (1) some senior examiners (e.g., 5+ years in the PTO) that tend to act as a “rubber stamp” by allowing patents with little review and/or minor or no amendments to the claims; and (2) some junior examiners (e.g., less than 5 years in the PTO) that reject many “good” patent applications.

Dr. Tu notes the USPTO has an incentive system that generates these different populations of examiners.

Copyright © 2012 Robert Moll. All rights reserved.