Note USPTO fees increase on October 5, 2012.
For details current USPTO fee schedule and new USPTO fee schedule.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, September 30, 2012
Thursday, September 27, 2012
Ariosa Diagnostics v. Isis Innovation Limited - Incomplete Petition for Inter Partes Review - No Filing Date Granted!
Part of being a patent lawyer is understanding how the new PTO rules will be implemented. Of course with the new post grant proceedings available on September 16, 2012, we have many new rules plus a new decision-making body, the Patent Trial and Appeal Board (PTAB).
How will PTAB interpret the new rules relating to inter partes review?
We only have one decision on what is required for a petition to obtain a filing date, but for what it is worth Ariosa Diagnostics v. Isis Innovation Limited suggests the PTAB can play hardball.
After Ariosa Diagnostics (Petitioner) filed a petition for inter partes review of U.S Patent No. 6,258,540, owned by Isis Innovation Limited, the PTAB decided the petition would not be granted a filing date because it had the following deficiencies: (1) Exhibits 1011, 1012, 1028, and 1030 didn't match the Exhibit List; (2) the Exhibit List stated Exhibits 1029 and 1032 were "Intentionally Left Blank," but they weren't blank (Exhibit "1029" was a duplicate of Exhibit 1027 and Exhibit "1032" was a duplicate of Exhibit 1031); (3) Petitioner's addresses (e-mail, postal and hand delivery) and phone were missing; and (4) the Petition failed to clearly designate lead and back-up counsel.
OK. The Ariosa attorneys did not submit a "perfect" petition. 37 CFR 42.106 says to be granted a filing date the petition for inter partes review must include the required inter partes fee (37 CFR 42.103), the petitioner must serve the petition and exhibits on the patent owner (37 CFR 42.105), the content of the petition must identity of the challenged claims, the basis for the challenge the evidence supporting the challenge, and a certification that the petititioner is not barred or estopped from filing the petition (37 CFR 42.104).
The PTAB decision doesn't refer to 37 CFR 42.105, but it appears the PTAB may consider the mixed up exhibits and list a failure to "serve exhibits" on the patent owner. I think people will now be triple checking their exhibit lists, exhibits, and other petition papers to ensure getting a filing date.
One last question: If the Petitioner's addresses (e-mail, postal and hand delivery) and phone are missing, did they get the Notice of Incomplete Petition?
Copyright © 2012 Robert Moll. All rights reserved.
How will PTAB interpret the new rules relating to inter partes review?
We only have one decision on what is required for a petition to obtain a filing date, but for what it is worth Ariosa Diagnostics v. Isis Innovation Limited suggests the PTAB can play hardball.
After Ariosa Diagnostics (Petitioner) filed a petition for inter partes review of U.S Patent No. 6,258,540, owned by Isis Innovation Limited, the PTAB decided the petition would not be granted a filing date because it had the following deficiencies: (1) Exhibits 1011, 1012, 1028, and 1030 didn't match the Exhibit List; (2) the Exhibit List stated Exhibits 1029 and 1032 were "Intentionally Left Blank," but they weren't blank (Exhibit "1029" was a duplicate of Exhibit 1027 and Exhibit "1032" was a duplicate of Exhibit 1031); (3) Petitioner's addresses (e-mail, postal and hand delivery) and phone were missing; and (4) the Petition failed to clearly designate lead and back-up counsel.
OK. The Ariosa attorneys did not submit a "perfect" petition. 37 CFR 42.106 says to be granted a filing date the petition for inter partes review must include the required inter partes fee (37 CFR 42.103), the petitioner must serve the petition and exhibits on the patent owner (37 CFR 42.105), the content of the petition must identity of the challenged claims, the basis for the challenge the evidence supporting the challenge, and a certification that the petititioner is not barred or estopped from filing the petition (37 CFR 42.104).
The PTAB decision doesn't refer to 37 CFR 42.105, but it appears the PTAB may consider the mixed up exhibits and list a failure to "serve exhibits" on the patent owner. I think people will now be triple checking their exhibit lists, exhibits, and other petition papers to ensure getting a filing date.
One last question: If the Petitioner's addresses (e-mail, postal and hand delivery) and phone are missing, did they get the Notice of Incomplete Petition?
Copyright © 2012 Robert Moll. All rights reserved.
Monday, September 24, 2012
Intellectual Ventures Settles Memory Chip Patent Infringement Lawsuits with SK Hynix and Elpida Memory
The Wall Street Journal Law Blog reports Intellectual Ventures settled its memory chip patent infringement suits brought in late 2010 against Korean based SK Hynix and Japanese based Elpida Memory in the ITC and Western district court of Washington.
For details see as follows: Intellectual Venture Reaches Patent Deal with Chip Makers
Copyright © 2012 Robert Moll. All rights reserved.
For details see as follows: Intellectual Venture Reaches Patent Deal with Chip Makers
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, September 23, 2012
America Invents Act - Inventor's Oath or Declaration and Filing By Other than Inventor
The USPTO published the final rules to implement the America Invents Act (AIA) sections on inventor's oath or declaration, 35 USC 115, and filing by other than inventor, 35 USC 118. The final rules are effective for all U.S. patent applications filed on or after September 16, 2012.
Here are some key changes under the final rules:
It introduces a new inventor declaration form: PTO/AIA/01.
The inventor's declaration raises the need to remind inventors that they must review and understand the application and have a duty to disclose known prior art to the examiner. The new declaration language is quite brief and merely states the application was made or authorized to be made by me, I am the original inventor or an original joint inventor of a claimed invention in the application, and willful false statements made in the declaration are punishable by fine or imprisonment or both.
The new declaration form may trap some applicants. Although the new declaration form is silent, 37 CFR 1.63(c) requires that an oath or declaration may not be executed unless the inventor reviews and understands the application and is aware of the duty to disclose prior art. The USPTO should consider reintroducing these statements in the new declaration form to ensure applicants are aware of these requirements.
The new declaration only permits the signature of one inventor. Thus, an application with N inventors requires filing N forms.
The new declaration has no line for citizenship.
It will be advisable to file an Application Data Sheet (ADS) (listing the name, residence, and address of each inventor) in many applications.
An applicant can postpone filing the new declaration until allowance as long as an ADS was filed before examination.
The final rules permit assignees to file applications without filing a petition when an inventor is dead, insane, cannot be found or refuses to sign the inventor's declaration. The assignee needs to just file a substitute statement before the issue fee is paid: Form PTO/AIA/02
Copyright © 2012 Robert Moll. All rights reserved.
Here are some key changes under the final rules:
It introduces a new inventor declaration form: PTO/AIA/01.
The inventor's declaration raises the need to remind inventors that they must review and understand the application and have a duty to disclose known prior art to the examiner. The new declaration language is quite brief and merely states the application was made or authorized to be made by me, I am the original inventor or an original joint inventor of a claimed invention in the application, and willful false statements made in the declaration are punishable by fine or imprisonment or both.
The new declaration form may trap some applicants. Although the new declaration form is silent, 37 CFR 1.63(c) requires that an oath or declaration may not be executed unless the inventor reviews and understands the application and is aware of the duty to disclose prior art. The USPTO should consider reintroducing these statements in the new declaration form to ensure applicants are aware of these requirements.
The new declaration only permits the signature of one inventor. Thus, an application with N inventors requires filing N forms.
The new declaration has no line for citizenship.
It will be advisable to file an Application Data Sheet (ADS) (listing the name, residence, and address of each inventor) in many applications.
An applicant can postpone filing the new declaration until allowance as long as an ADS was filed before examination.
The final rules permit assignees to file applications without filing a petition when an inventor is dead, insane, cannot be found or refuses to sign the inventor's declaration. The assignee needs to just file a substitute statement before the issue fee is paid: Form PTO/AIA/02
Copyright © 2012 Robert Moll. All rights reserved.
Monday, September 17, 2012
Manual of Patent Examining Procedure - August 2012
The USPTO has published the latest revision of the Manual of Patent Examining Procedure (MPEP), Eighth Edition, Revision 9 (August 2012).
The MPEP is based on 37 Code of Federal Regulations, the PTO rules, and Title 35 of the United States Code, the federal patent law.
The MPEP gives detailed guidance to patent attorneys, agents and examiners to help interpret the rules and laws in situations that may arise during the prosecution of a patent application in the PTO. For example, Chapter 2100 of the MPEP gives detailed guidance how to persuade an examiner as to the basis for granting a patent for a given US patent application. I have found it very helpful at times in my practice as a patent attorney.
The USPTO has promised to update the MPEO online frequently and in a matter of hours rather than weeks and months, which I expect will reduce the utility of the paper version.
Here is the latest revision of the MPEP
Copyright © 2012 Robert Moll. All rights reserved.
The MPEP is based on 37 Code of Federal Regulations, the PTO rules, and Title 35 of the United States Code, the federal patent law.
The MPEP gives detailed guidance to patent attorneys, agents and examiners to help interpret the rules and laws in situations that may arise during the prosecution of a patent application in the PTO. For example, Chapter 2100 of the MPEP gives detailed guidance how to persuade an examiner as to the basis for granting a patent for a given US patent application. I have found it very helpful at times in my practice as a patent attorney.
The USPTO has promised to update the MPEO online frequently and in a matter of hours rather than weeks and months, which I expect will reduce the utility of the paper version.
Here is the latest revision of the MPEP
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, September 12, 2012
America Invents Act - USPTO Final Rules for Derivation
The USPTO published final rules to implement the America Invents Act (AIA) derivation proceedings.
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."
The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.
The final rules will be effective on March 16, 2013.
Here are a few sources of additional information on derivation:
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."
The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.
The final rules will be effective on March 16, 2013.
Here are a few sources of additional information on derivation:
- The USPTO's 116-page document: Changes to Implement Derivation Proceedings
- Eight AIA roadshows in September 2012
- Lead Administrative Patent Judge, Sally G. Lane; Administrative Patent Judge, Sally C. Medley; Administrative Patent Judge, Richard Torczon; and Joni Y. Chang, Administrative Patent Judge, Board of Patent Appeals and Interferences by telephone at (571) 272-9797
Monday, September 10, 2012
America Invents Act - Last Day to File Inter Partes Reexamination Requests is September 15, 2012
The USPTO issued a federal register notice here reminding that the last day to file a request for inter partes reexamination is September 15, 2012.
If the request fails to obtain a filing date, the notice states the USPTO cannot be relied upon to notify in time to file corrected papers. It warns a request (or corrected request) submitted on or after September 16, 2012, will not be accorded a filing date, and will not be granted.
Yes, it's a sharp transition, but also gives last minute requesters guidance.
Copyright © 2012 Robert Moll. All rights reserved.
If the request fails to obtain a filing date, the notice states the USPTO cannot be relied upon to notify in time to file corrected papers. It warns a request (or corrected request) submitted on or after September 16, 2012, will not be accorded a filing date, and will not be granted.
Yes, it's a sharp transition, but also gives last minute requesters guidance.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, September 6, 2012
America Invents Act - USPTO Q&A Final and Proposed Rules
If you have questions regarding the America Invents Act (AIA) you may want to attend the free USPTO Webinar on the final and proposed rules 12:30 - 1:30 pm ET, Friday, September 7, 2012.
Director David Kappos, Commissioner for Patents Peggy Focarino, GC Bernard Knight, Chief Judge James Smith, and Lead Judge Michael Tierny will answer questions regarding the inventor's oath/declaration, preissuance submissions, supplemental examination, post grant review, and inter partes review.
Here's what you need to attend:
Event number: 990 842 706
Event password: 123456
Event link for attendees: USPTO Webinar on Final and Proposed Rules
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, September 5, 2012
America Invents Acts - Electronic Filing System for Post-Grant Procedures - USPTO Free Seminar September 6, 2012
If you plan to file papers in the new post-grant procedures (e.g., post-grant review, inter partes review, and the transitional program for business methods), you may want to attend the Patent and Trial and Appeal Board's seminar. The Board plans to preview how to file papers using the new electronic file system.
The USPTO will preview:
The USPTO press release: PRPS Public Preview - Patent Review Processing System Preview gives the details on how to sign up.
Copyright © 2012 Robert Moll. All rights reserved.
The USPTO will preview:
- An overview of the new trials available on September 16, 2012
- An overview of the Patent Trial and Appeal Board home page resources
- A panel presentation on the Patent Review Processing System (PRPS) filing and record management system
- A Q&A session
The USPTO press release: PRPS Public Preview - Patent Review Processing System Preview gives the details on how to sign up.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, September 4, 2012
America Invents Act - USPTO Seeks Public Comment on Proposed Fees
The America Invents Act (AIA) grants the USPTO authority to set fees that reflect the actual costs of services while maintaining resources to reduce backlog and pendency, and perform its core mission.
Today, the USPTO announced it seeks public comment on its proposed patent fee schedule.
Surprisingly, the USPTO proposes to reduce fees "at least 22% lower for routine patent process-- i.e., filing search, examination, publication, and issue fees-- than the current fee schedule."
The lower fees are designed to reduce the cost of entry into the patent system, and make it easier for startups to get financed, hire employees, and bring goods and services to the marketplace.
The proposed fees will implement 75% discount for many fees of microentities (individual inventors and small ventures) and expand fees eligible for the 50% small entity reduction.
In contrast, the USPTO proposes to increase fees (large entity pay $770 surcharge) for filing a second or subsequent request for continued examination (RCE) to discourage (or at least not encourage) filing multiple RCEs which may in turn help to reduce the backlog.
This announcement opens a 60-day public comment period. Following the comment period, the USPTO will prepare a final fee schedule, which will be effective no less than 45 days after it is published.
For the USPTO Press Release click here.
For the USPTO proposed fee schedule click here.
Copyright © 2012 Robert Moll. All rights reserved.
Today, the USPTO announced it seeks public comment on its proposed patent fee schedule.
Surprisingly, the USPTO proposes to reduce fees "at least 22% lower for routine patent process-- i.e., filing search, examination, publication, and issue fees-- than the current fee schedule."
The lower fees are designed to reduce the cost of entry into the patent system, and make it easier for startups to get financed, hire employees, and bring goods and services to the marketplace.
The proposed fees will implement 75% discount for many fees of microentities (individual inventors and small ventures) and expand fees eligible for the 50% small entity reduction.
In contrast, the USPTO proposes to increase fees (large entity pay $770 surcharge) for filing a second or subsequent request for continued examination (RCE) to discourage (or at least not encourage) filing multiple RCEs which may in turn help to reduce the backlog.
This announcement opens a 60-day public comment period. Following the comment period, the USPTO will prepare a final fee schedule, which will be effective no less than 45 days after it is published.
For the USPTO Press Release click here.
For the USPTO proposed fee schedule click here.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, August 29, 2012
USPTO Satellite Office in San Jose Delayed
On July 2, 2012, the USPTO announced plans to open a satellite patent office in San Jose, California. I posted on this here. I noticed on Google statistics, a number of readers were interested in this news.
Today, the SF Chronicle reports we face delay: Patent office in San Jose may take time. No one is legally "out of bounds" because the America Invents Act (AIA) only requires the satellite offices open no later than September 16, 2014. At the same time, the SF Chronicle notes progress is lacking. Representative Zoe Lofgren's office reports they are scouting around for temporary space to "plug in some computers." Meanwhile, Detroit's satellite patent office is open for business.
Copyright © 2012 Robert Moll. All rights reserved.
Today, the SF Chronicle reports we face delay: Patent office in San Jose may take time. No one is legally "out of bounds" because the America Invents Act (AIA) only requires the satellite offices open no later than September 16, 2014. At the same time, the SF Chronicle notes progress is lacking. Representative Zoe Lofgren's office reports they are scouting around for temporary space to "plug in some computers." Meanwhile, Detroit's satellite patent office is open for business.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, August 27, 2012
Professor Hricik: 35 USC 101 Is Not An Invalidity Defense
Today, one of the most controversial topics in US patent law is whether software related inventions are patent eligible. To analyze whether the software patent is eligible, courts recite 35 USC 101, discuss the case law, then discuss whether the claim relates to an abstract idea. Too often the claim is paraphrased which can be a slippery slope, because one can always strip away claim limitations until an "invention" is too abstract then conclude it is ineligible.
Today, Professor Hricik argues courts have assumed non-statutory subject matter is an invalidity defense. Yet 35 USC 282(b) lists the following defenses: noninfringement, absence of liability for infringement, or unenforceability, and the invalidity of any patent on any ground specified in part II as a condition for patentability. When you turn to part II you see 35 USC 102 and 35 USC 103. It also says failure to comply with 35 USC 112 except the best mode is defense. The upshot is 35 USC 282 omits any mention of 35 USC 101! In other words, courts have assumed 35 USC 101 is an invalidity defense for many years when 35 USC 282 listing all defenses says no such thing.
Professor Hricik has an important point. The case law should be subject to the federal statutes it purports to interpret. And there are canons of construction that apply to federal statutes. Professor Hricik appears to use a modified version of a canon that the inclusion of "one" (35 USC 102, 103, and 112) indicates an intent to exclude "the others" (35 USC 101). So the fact many courts have held 35 USC 101 is an invalidity defense over the years does not mean they are right.
See Professor Hricik's post: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
Copyright © 2012 Robert Moll. All rights reserved.
Today, Professor Hricik argues courts have assumed non-statutory subject matter is an invalidity defense. Yet 35 USC 282(b) lists the following defenses: noninfringement, absence of liability for infringement, or unenforceability, and the invalidity of any patent on any ground specified in part II as a condition for patentability. When you turn to part II you see 35 USC 102 and 35 USC 103. It also says failure to comply with 35 USC 112 except the best mode is defense. The upshot is 35 USC 282 omits any mention of 35 USC 101! In other words, courts have assumed 35 USC 101 is an invalidity defense for many years when 35 USC 282 listing all defenses says no such thing.
Professor Hricik has an important point. The case law should be subject to the federal statutes it purports to interpret. And there are canons of construction that apply to federal statutes. Professor Hricik appears to use a modified version of a canon that the inclusion of "one" (35 USC 102, 103, and 112) indicates an intent to exclude "the others" (35 USC 101). So the fact many courts have held 35 USC 101 is an invalidity defense over the years does not mean they are right.
See Professor Hricik's post: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
Copyright © 2012 Robert Moll. All rights reserved.
Friday, August 24, 2012
Apple v. Samsung - Samsung Infringes Apple Patents
Wired: Jury Rules Samsung Violated Apple Patents
Ars Technica: Apple v. Samsung verdict is in: $1 billion loss for Samsung
CNET: Apple v. Samsung Verdict Live
The Verge: Live: Apple vs. Samsung: jury decision
Copyright © 2012 Robert Moll. All rights reserved.
Ars Technica: Apple v. Samsung verdict is in: $1 billion loss for Samsung
CNET: Apple v. Samsung Verdict Live
The Verge: Live: Apple vs. Samsung: jury decision
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, August 23, 2012
America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
A brief reminder the America Invents Act (AIA) makes major changes to patent reexamination on September 16, 2012.
If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.
If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.
Copyright © 2012 Robert Moll. All rights reserved.
If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.
If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, August 21, 2012
Google's Position on Software Patents?
I have been a fan of the Google search engine for years. It has helped level the playing field for small businesses. Patent Planet would be "invisible" on the Web, but for PageRank. I don't pay for Google advertising yet clients continue to find me searching on Google.
Google search engine is also a phenomenal tool for finding obscure information. If I need to review a point of law (e.g., how should a terminal disclaimer be processed on a jointly owned application, and will it raise a standing issue later?), it is better to search on Google than inside a massive document such as the Manual of Patent Examining Procedure (MPEP). Let Google take me to the right page out of several thousand pages.
Or around the house, if something goes wrong with an appliance (e.g., the Subzero refrigerator is blinking, but appears to be at the right temperatures), should I call a repairman today or can it wait? If a DVD gets stuck in the MacBook Pro, should I grab it with tweezers and/or shake the computer. Google search results tells me neither. You should reboot while holding down eject button and if necessary use a credit card to depress the DVD. Or if an iPhone gets wet when I jump in the pool to pull a kid out of danger, is it salvageable? Google search indicates skip blow drying it, and head to the AT&T retailer for an upgrade. In many situations, Google has saved time and money.
Further, Google has generated tremendous wealth for shareholders, and given us YouTube, Google scholar, and Google docs, etc.
What's less certain is Google's patent strategy.
Google's strategy has changed radically since 1998. This month Google subsidiary Motorola Mobility sued Apple for infringement of seven US patents in the ITC. Earlier this year Google loaned/transferred US patents to Android partner HTC to sue Apple. Google has filed for thousands of software patents. Google's SEC papers indicate it paid $5.5 billion for thousands of computer related patents and technology when it paid $12.5 billion for Motorola Mobility. It appears Google is engaging in mutually assured destruction with respect to Apple.
At the same time Google appears to stockpile and assert patents, it makes statements that they are suspect in the press: (1) Google's GC Kent Walker tells us that software patents don't help innovation in Software patents 'gumming up innovation'; and (2) Google's public policy Director Pablo Chavez suggests software patents are problematic: Google: Time to ditch our current software patent system?
Copyright © 2012 Robert Moll. All rights reserved.
Google search engine is also a phenomenal tool for finding obscure information. If I need to review a point of law (e.g., how should a terminal disclaimer be processed on a jointly owned application, and will it raise a standing issue later?), it is better to search on Google than inside a massive document such as the Manual of Patent Examining Procedure (MPEP). Let Google take me to the right page out of several thousand pages.
Or around the house, if something goes wrong with an appliance (e.g., the Subzero refrigerator is blinking, but appears to be at the right temperatures), should I call a repairman today or can it wait? If a DVD gets stuck in the MacBook Pro, should I grab it with tweezers and/or shake the computer. Google search results tells me neither. You should reboot while holding down eject button and if necessary use a credit card to depress the DVD. Or if an iPhone gets wet when I jump in the pool to pull a kid out of danger, is it salvageable? Google search indicates skip blow drying it, and head to the AT&T retailer for an upgrade. In many situations, Google has saved time and money.
Further, Google has generated tremendous wealth for shareholders, and given us YouTube, Google scholar, and Google docs, etc.
What's less certain is Google's patent strategy.
Google's strategy has changed radically since 1998. This month Google subsidiary Motorola Mobility sued Apple for infringement of seven US patents in the ITC. Earlier this year Google loaned/transferred US patents to Android partner HTC to sue Apple. Google has filed for thousands of software patents. Google's SEC papers indicate it paid $5.5 billion for thousands of computer related patents and technology when it paid $12.5 billion for Motorola Mobility. It appears Google is engaging in mutually assured destruction with respect to Apple.
At the same time Google appears to stockpile and assert patents, it makes statements that they are suspect in the press: (1) Google's GC Kent Walker tells us that software patents don't help innovation in Software patents 'gumming up innovation'; and (2) Google's public policy Director Pablo Chavez suggests software patents are problematic: Google: Time to ditch our current software patent system?
Copyright © 2012 Robert Moll. All rights reserved.
Apple v. Samsung - Closing Arguments
For a summary of closing arguments in the Apple v. Samsung patent case, you should read CNET: Apple's closing shot hits as Samsung 'copycat' docs.
Copyright © 2012 Robert Moll. All rights reserved.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, August 19, 2012
Google's Patent Search Tool - Improvements in 2012
Google deserves a big thank you for improvements to the Google patent search tool in 2012.
Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.
However, Google announced improvements to Google Patents worth noting including:
It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.
Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.
However, Google announced improvements to Google Patents worth noting including:
- Plans to allow searching the entire body of US patents and work with the PTO to add to its repository of USPTO bulk data. Hopefully this will be fixed. Incompleteness is the reason it cannot be a stand alone searching tool today.
- A Prior Art Finder that allows a single click on a "Find prior art" button to search on Google Patents, Google Scholar, and Google Books. Note the button appears at the top of the display when you open a patent on the list of search results. This is another way to find relevant documents beyond the search query initially invoked.
- Searching on the European Patent Office database. This makes a more convenient to search the EPO database in conjunction with a Google patent search.
- Google Translate improvements to eliminate the language barrier of EPO documents written in parallel languages, e.g., English, French, and German.
It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.
Saturday, August 18, 2012
America Invents Act - USPTO Publishes Final Rules Post-Grant Procedures
On August 14, 2012, the USPTO published its final rules on post-grant procedures for challenging US Patents. If you want to learn more about the rules governing post-grant challenges in the PTO, I suggest starting with this article:
PTO's Final Rules for Post-Grant Challenges Show Little Change From Original Proposals - Bloomberg BNA
Bloomberg BNA published the rules (here), which become effective on September 16, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
PTO's Final Rules for Post-Grant Challenges Show Little Change From Original Proposals - Bloomberg BNA
Bloomberg BNA published the rules (here), which become effective on September 16, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, August 12, 2012
Apple v. Samsung - News Coverage August 6 - 10, 2012
If you are interested in what happened last week in the Apple v. Samsung patent infringement trial:
August 6, 2012:
Disruptions: At Its Trial, Apple Spills Some Secrets - NY Times
Apple expert says Samsung infringed patents but gets relentless grilling in court - San Jose Mercury News
August 7, 2012:
Apple witness: Samsung copied patents - SF Chronicle
The iPhone patent Steve Jobs particularly cared about - inertial scrolling - Network World
Apple product design witness says Samsung infringed patents - Washington Post
Disruptions: At Its Trial, Apple Spills Some Secrets - NY Times
Apple expert says Samsung infringed patents but gets relentless grilling in court - San Jose Mercury News
August 7, 2012:
Apple witness: Samsung copied patents - SF Chronicle
The iPhone patent Steve Jobs particularly cared about - inertial scrolling - Network World
Apple product design witness says Samsung infringed patents - Washington Post
August 8, 2012:
Apple-Samsung patent trial: 'I mistook one for the other,' designer says - San Jose Mercury News
Payback: Samsung says Apple destroyed evidence - CNET
Apple-Samsung patent trial: 'I mistook one for the other,' designer says - San Jose Mercury News
Payback: Samsung says Apple destroyed evidence - CNET
August 9, 2012:
Apple patent trial: Samsung scrutinised iPhone to improve Galaxy - ZDNet
Samsung's Analysis of iPhone Hits Trial File - WSJ
Apple patent trial: Samsung scrutinised iPhone to improve Galaxy - ZDNet
Samsung's Analysis of iPhone Hits Trial File - WSJ
August 10, 2012:
Apple Licensing Offer to Samsung Quantified in Patent Case - WSJ (blog)
Copyright © 2012 Robert Moll. All rights reserved.
Apple Licensing Offer to Samsung Quantified in Patent Case - WSJ (blog)
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, August 11, 2012
America Invents Act - Final Rules for Citation of Prior Art and Written Statements and Reexamination Estoppel
The PTO announced final rules to implement post patent provisions in the America Invents Act (AIA): the citation of prior art and written statements and the estoppel attaching to an ex parte reexamination request filed after a final decision in an inter partes review or post grant review. The provisions are effective on September 16, 2012, and will apply to any U.S. patent issuing before, on, and after September 16, 2012. The Federal Register Notice on the final rules is here.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, August 10, 2012
Kodak Patent Auction - Low Bids and No Bidding War
Tonight, the Wall Street Journal article Kodak Patent Bidding Is Tame tells us Kodak's patent auction has not generated the bids Kodak expected. Instead, all initial bids are low, no apparent bidding war is ongoing like occurred over the Nortel patents, the bids are for a subset of the 1,100 Kodak patents and well below $500 million.
Note if you enter the article through Google news you get the full article, but the WSJ only gives you a snippet of the article apparently to encourage us to become paid subscribers.
Note if you enter the article through Google news you get the full article, but the WSJ only gives you a snippet of the article apparently to encourage us to become paid subscribers.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, August 9, 2012
Apple v. Samsung - iPhone Innovation Revealed at Trial
Smart inventors may have different characteristics, but in my experience many have something in common: they can't stop inventing.
As a patent attorney working with budgets, I initially found it a bit frustrating-- the invention kept evolving or even fundamentally changed between drafting sessions. But later I realized the same restless mind unwilling to live with a problem leading to the initial invention drove the inventor to improve the solution.
Tonight, Alan Cooper sent an article CNN Money 19 incredible Apple secrets revealed in court reminding me that the best inventors continually innovate. The article notes that the Apple v. Samsung trial has lifted secrecy surrounding Apple product development. It shows the final design of the Apple iPhone did not come after a few iterations. No, the photos and article show it was the multiyear major effort involving generation of many "good" intermediate designs that were rejected.
Apple's advantage? It's ability to reject many good designs that stood before the final design.
Copyright © 2012 Robert Moll. All rights reserved.
As a patent attorney working with budgets, I initially found it a bit frustrating-- the invention kept evolving or even fundamentally changed between drafting sessions. But later I realized the same restless mind unwilling to live with a problem leading to the initial invention drove the inventor to improve the solution.
Tonight, Alan Cooper sent an article CNN Money 19 incredible Apple secrets revealed in court reminding me that the best inventors continually innovate. The article notes that the Apple v. Samsung trial has lifted secrecy surrounding Apple product development. It shows the final design of the Apple iPhone did not come after a few iterations. No, the photos and article show it was the multiyear major effort involving generation of many "good" intermediate designs that were rejected.
Apple's advantage? It's ability to reject many good designs that stood before the final design.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, August 5, 2012
SHIELD - Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012
In view of 35 USC 285 allowing for attorney fees in exceptional cases, Congressman DeFazio's bill: "Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012" strikes me as superfluous with a highfalutin title to boot. Congressman DeFazio refers to this bill as the SHIELD Act, and proposes a patent owner of a software or hardware patent pay all litigation costs including attorney fees if a court later thinks a patent owner did not have a reasonable likelihood of succeeding. Congressman Chaffet is co-sponsoring the bill.
What about defenses that did not have a reasonable likelihood of succeeding? Should patent owners have a claim to defendant paying its attorney fees? Apparently not under the SHIELD Act.
The SHIELD bill also defines software broadly as "a process that could be implemented in a computer" regardless of whether or not computer is mentioned in the patent so this bill may have more reach than one might expect.
Congressman DeFazio talks lots about how patent trolls are harming small high tech companies in his press release here, but the language of the bill has no such limitations. "Patent trolls don’t create new technology and they don’t create American jobs,” said DeFazio. “They pad their pockets by buying patents on products they didn’t create and then suing the innovators who did the hard work and created the product. These egregious lawsuits hurt American innovation and small technology start ups, and they cost jobs. My legislation would force patent trolls to take financial responsibility for their frivolous lawsuits."
The bill not only fails to limit its application to trolls, it may prevent small businesses from pursuing rightful claims of patent infringement against a large company with greater resources to litigate even the meritious claim to death, e.g., in discovery and to apply to court for the small company to pay its costs of defense.
Congressman DeFazio's proposal fails to suggest how it squares with the American Rule: each party is responsible for paying its own attorney's fees unless a statute allows assessment of attorney fees against the other person. But such are the times. Special interests run to Congress and Congress proposes laws to placate them even when interests run contrary to many decades of court cases and 35 USC 285.
I am not expecting this bill to pass, but expect if it does it will serve well as a "big company club."
Copyright © 2012 Robert Moll. All rights reserved.
What about defenses that did not have a reasonable likelihood of succeeding? Should patent owners have a claim to defendant paying its attorney fees? Apparently not under the SHIELD Act.
The SHIELD bill also defines software broadly as "a process that could be implemented in a computer" regardless of whether or not computer is mentioned in the patent so this bill may have more reach than one might expect.
Congressman DeFazio talks lots about how patent trolls are harming small high tech companies in his press release here, but the language of the bill has no such limitations. "Patent trolls don’t create new technology and they don’t create American jobs,” said DeFazio. “They pad their pockets by buying patents on products they didn’t create and then suing the innovators who did the hard work and created the product. These egregious lawsuits hurt American innovation and small technology start ups, and they cost jobs. My legislation would force patent trolls to take financial responsibility for their frivolous lawsuits."
The bill not only fails to limit its application to trolls, it may prevent small businesses from pursuing rightful claims of patent infringement against a large company with greater resources to litigate even the meritious claim to death, e.g., in discovery and to apply to court for the small company to pay its costs of defense.
Congressman DeFazio's proposal fails to suggest how it squares with the American Rule: each party is responsible for paying its own attorney's fees unless a statute allows assessment of attorney fees against the other person. But such are the times. Special interests run to Congress and Congress proposes laws to placate them even when interests run contrary to many decades of court cases and 35 USC 285.
I am not expecting this bill to pass, but expect if it does it will serve well as a "big company club."
Copyright © 2012 Robert Moll. All rights reserved.
Friday, August 3, 2012
Apple v. Samsung - News Coverage July 30 to August 3, 2012
If you are interested in what happened this week in the Apple v. Samsung patent infringement trial:
August 3, 2012:
Trial gives a sneak peek into Apple's inner workings - CNN Tech - Thanks for the link Alan Cooper!
Tough talk for Samsung's lawyers, but no sanctions - ars technica
August 2, 2012:
Apple Says It Will Seek Sanctions Over Samsung Statement - Businessweek
August 1, 2012:
Apple-Samsung trial involves design - SF Chronicle
Patent Dispute: Apple claims Samsung stole iPhone technology - Christian Science Monitor
July 31, 2012
July 30, 2012
Copyright © 2012 Robert Moll. All rights reserved.
Monday, July 30, 2012
Applicants Must Consent to Release PTO Search Results of Unpublished Applications to the EPO
The European Patent Office (EPO) requires search results from a priority application be filed with the EPO if the European application that claims priority was filed on or after January 1, 2011. See Amended Rule 141(1) EPC.
Last year the USPTO and EPO agreed the USPTO would deliver its search results to the EPO at no charge to applicants. For details see Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office, 76 FR 82279 (December 30, 2011).
Tonight the USPTO reminds applicants must consent to release search results of an unpublished US patent application to avoid delivery charges.
Copyright © 2012 Robert Moll. All rights reserved.
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