If you need a window into United States and Trademark Office (USPTO) operations or have a question about when to expect USPTO actions (e.g., Office actions), I would visit the USPTO Data Visualization Center Patent Dashboard. Don't forget to scroll down this lengthy web page, it is packed full of information!
Copyright © 2013 Robert Moll. All rights reserved.
Saturday, January 26, 2013
Monday, January 21, 2013
U.S. Design Patents - Protecting Product Appearance
Patent attorneys tend to focus on utility patents rather than design patents. Utility patents issue for "any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof." Design patents issue for "any new, original and ornamental design for an article of manufacture." In short, a utility patent protects a product's function while a design patent protects a product's looks.
Why do design patents get little attention? Part of the problem is the common myth that a design patent's narrow protection translates into little value. Detractors ask don't they merely prevent exact copying of the invention shown in the drawings? When assessing patentability, aren't we limited to considering ornamental features, and not able to leverage functional features contributing to performance? Can't a defendant readily design around to avoid infringement? Yes, it is hard to argue in favor of design patents, but somehow companies like to copy products that look cool. How much is that copying worth? Sometimes a lot. For example, about $500 million in damages in Apple v. Samsung was due to infringement of design patents.
Why don't they command more respect? Some patent attorneys are to blame as they raise such questions. Most patent attorneys like technical and legal challenges. We want to write a detailed document that elucidates a complex technology so even a layperson understands it, admires it, and upholds it in court. And yes we like an undertaking that can justify our legal fees!
But a design patent -- what's the challenge? It's more work than a trademark application, but isn't a design application: (1) a design application transmittal form; (2) an inventor's declaration; (3) a title; (4) a brief specification with a statement what is claimed is shown in the drawings; and (5) the drawings? Even prosecution is simple compared to utility applications. Professor Dennis Crouch recently noted in Design Patents are Still Relatively Quick "the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents issue without substantive rejection or amendment."
They are also inexpensive to prepare (AIPLA Economic Survey 2011 says the median price is $1500 in 2010) and prosecute: we compare the design drawings to prior drawings during prosecution. And the PTO typically allows the design application or issues rejections that can be overcome by amendment. Of course you need to foreign file within six months of filing in the USPTO, and remember the patent term runs 14 years from the issue date, soon to be 15 years.
On the other hand, I don't think one can delegate the preparation of design patents entirely to an assistant, because the scope of the protection is a legal judgment. It relates to the content of the drawings. In fact, the content matters a great deal when it comes time to determine whether or not a design patent is infringed. A design drawing should not include any superfluous information (e.g., patent owner's name). Trust me the patent owner's name won't be anywhere on the accused product. Structures that are not part of the design can be shown by broken lines to avoid unduly narrow protection. Thus, the design patent may (should) cover only a part of the entire article. For example, if you seek to protect a computer icon with a design patent, showing other icons on the same desktop is a really bad idea! Because design patents are inexpensive, protect against exact copying, and can be surprisingly valuable when the patented product looks cool, I expect many to follow Apple to get design patents to protect the way a product looks.
Copyright © 2013 Robert Moll. All rights reserved.
Why do design patents get little attention? Part of the problem is the common myth that a design patent's narrow protection translates into little value. Detractors ask don't they merely prevent exact copying of the invention shown in the drawings? When assessing patentability, aren't we limited to considering ornamental features, and not able to leverage functional features contributing to performance? Can't a defendant readily design around to avoid infringement? Yes, it is hard to argue in favor of design patents, but somehow companies like to copy products that look cool. How much is that copying worth? Sometimes a lot. For example, about $500 million in damages in Apple v. Samsung was due to infringement of design patents.
Why don't they command more respect? Some patent attorneys are to blame as they raise such questions. Most patent attorneys like technical and legal challenges. We want to write a detailed document that elucidates a complex technology so even a layperson understands it, admires it, and upholds it in court. And yes we like an undertaking that can justify our legal fees!
But a design patent -- what's the challenge? It's more work than a trademark application, but isn't a design application: (1) a design application transmittal form; (2) an inventor's declaration; (3) a title; (4) a brief specification with a statement what is claimed is shown in the drawings; and (5) the drawings? Even prosecution is simple compared to utility applications. Professor Dennis Crouch recently noted in Design Patents are Still Relatively Quick "the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents issue without substantive rejection or amendment."
They are also inexpensive to prepare (AIPLA Economic Survey 2011 says the median price is $1500 in 2010) and prosecute: we compare the design drawings to prior drawings during prosecution. And the PTO typically allows the design application or issues rejections that can be overcome by amendment. Of course you need to foreign file within six months of filing in the USPTO, and remember the patent term runs 14 years from the issue date, soon to be 15 years.
On the other hand, I don't think one can delegate the preparation of design patents entirely to an assistant, because the scope of the protection is a legal judgment. It relates to the content of the drawings. In fact, the content matters a great deal when it comes time to determine whether or not a design patent is infringed. A design drawing should not include any superfluous information (e.g., patent owner's name). Trust me the patent owner's name won't be anywhere on the accused product. Structures that are not part of the design can be shown by broken lines to avoid unduly narrow protection. Thus, the design patent may (should) cover only a part of the entire article. For example, if you seek to protect a computer icon with a design patent, showing other icons on the same desktop is a really bad idea! Because design patents are inexpensive, protect against exact copying, and can be surprisingly valuable when the patented product looks cool, I expect many to follow Apple to get design patents to protect the way a product looks.
Copyright © 2013 Robert Moll. All rights reserved.
Saturday, January 19, 2013
USPTO Sets or Adjusts Patent Fees 2013
On January 18, 2013, the Federal Register published the USPTO patent fees as authorized by the America Invents Act. Many of the PTO fees will become effective on March 19, 2013.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 17, 2013
Solutions to the Software Patent Problem - Conference Materials
On November 16, 2012, Santa Clara University staged a conference Solutions to the Software Patent Problem. After attending I posted: Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012.
Today, SCU emailed the conference materials:
View the videos
Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)
Speaker essays. Also check out the related series of essays published in Wired.com Opinion
Media coverage of the event
Results of the audience polls about which solutions they liked best
Other conference resources
The conference page provides a one-stop inventory of all of these resources.
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/
Copyright © 2013 Robert Moll. All rights reserved.
Today, SCU emailed the conference materials:
View the videos
Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)
Speaker essays. Also check out the related series of essays published in Wired.com Opinion
Media coverage of the event
Results of the audience polls about which solutions they liked best
Other conference resources
The conference page provides a one-stop inventory of all of these resources.
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, January 15, 2013
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.
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, January 13, 2013
IBM Chief Patent Counsel Manny Schecter's Why Patents Matter
Because IBM has received more US patents than any company for 20 consecutive years, it is worth understanding its viewpoint. Manny Schecter IBM's Chief Patent Counsel, leading IBM's patent effort for decades, wrote an article: Why patents matter that may reflect IBM's viewpoint. He believes the critics of the U.S. patent system are overreacting, don't understand the system, the America Invents Act is just coming into play, and the smartphone patent war merely repeats other disruptive periods in America's history. Sure vocal critics would not like being tagged as "overreacting" and "ignorant" of how the system works. But what may be even harder for them is Mr. Schecter's views may represent the "silent majority."
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, January 11, 2013
InterDigital v. ITC and Nokia - Patent Licensing Satisfies Domestic Industry Required for ITC Relief
Yesterday, in InterDigital v. ITC and Nokia, the Federal Circuit held that non-practicing entity InterDigital's patent licensing alone met the domestic industry requirement of Section 337 of the Tarriff Act of 1930, 19 USC 1337(a)(2) and 1337(a)(3). The Federal Circuit also stated the statute does not require physical articles be made in the USA. This decision poses an obstacle to the effort to reduce the impact of non-practicing entity (NPE) lawsuits in the ITC. For more detail on the lobbying, see an earlier post: Lobbying to Block ITC from Hearing Non-practicing Entities
So I expect NPEs will continue to file lawsuits at the ITC seeking injunctive relief apart from EBay considerations until (1) the domestic industry requirement is rewritten, or (2) the SCOTUS reverses the InterDigital interpretation of the domestic industry requirement. But I don't expect many NPEs to successfully assert SEPs in the ITC given the ITC only grants exclusion orders.
Copyright © 2013 Robert Moll. All rights reserved.
So I expect NPEs will continue to file lawsuits at the ITC seeking injunctive relief apart from EBay considerations until (1) the domestic industry requirement is rewritten, or (2) the SCOTUS reverses the InterDigital interpretation of the domestic industry requirement. But I don't expect many NPEs to successfully assert SEPs in the ITC given the ITC only grants exclusion orders.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 10, 2013
Mobile Computing Patent War Drives US Patent Grants & 50 Top Companies in 2012
The mobile computing patent war appears to be playing a role in US patent grants in 2012: IBM #1, Samsung #2, Microsoft #6, Google #21, and Apple #22.
See IFI CLAIMS® Service reports: 2012 Top 50 US Patent Assignees
See New York Times: The 2012 Patent Rankings: IBM on Top (Again), Google and Apple Surging
Also see The Boston Consulting Group: The Most Innovative Companies 2012
Copyright © 2013 Robert Moll. All rights reserved.
See IFI CLAIMS® Service reports: 2012 Top 50 US Patent Assignees
See New York Times: The 2012 Patent Rankings: IBM on Top (Again), Google and Apple Surging
Also see The Boston Consulting Group: The Most Innovative Companies 2012
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, January 8, 2013
DOJ & USPTO Policy Statement on Remedies for Standards-Essential Patents Subject to FRAND
The FTC and DOJ/USPTO have different opinions on what should trigger an injunction for infringement of a standard essential patent (SEP).
See the FTC press release: Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search.
See U.S. Department of Justice, Antitrust Division (DOJ) and the U.S. Patent and Trademark Office (USPTO) Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.
Also see McDonnell Boehnen Hulbert & Berghoff LLP's article: FRAND and Injunctive Relief: Exploring a Standard-Essential Patent Owners Right to Injunctive Relief
Copyright © 2013 Robert Moll. All rights reserved.
See the FTC press release: Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search.
See U.S. Department of Justice, Antitrust Division (DOJ) and the U.S. Patent and Trademark Office (USPTO) Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.
Also see McDonnell Boehnen Hulbert & Berghoff LLP's article: FRAND and Injunctive Relief: Exploring a Standard-Essential Patent Owners Right to Injunctive Relief
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, January 6, 2013
America Invents Act - USPTO Final Rules for Micro Entity Provisions
On December 19, 2012, the USPTO published its final rules to implement micro entity provisions of the America Invents Act (AIA).
If you are a startup or an individual inventor, it is worth becoming familiar with these rules as a micro entity can save 75% on certain PTO fees in the future.
So what is a micro entity? 35 U.S.C. 123(a) provides a "micro entity" is an applicant who can certify it (1) qualifies as a small entity as defined 37 CFR 1.27; (2) has not been named an inventor on four previously filed U.S. nonprovisional patent applications; (3) did not, in the calendar year preceding the calendar year in which the application fee is being paid, have a gross income, as defined by 26 U.S.C. 61(a), exceeding three times the median household income for that preceding year (or as reported to the Census Bureau). So if you paid the fee in 2013 you would look at U.S. median household incomes in 2012.
I found a NYT article U.S. Income Gap Rose, Sign of Uneven Recovery stating the US median household income was $50,054 in 2011. Since US median household income has slightly decreased in recent years, it suggests falling under $150,000 may suffice. Note this is just a guess and if you have a link to official data for 2012, please email it so I can give a more accurate income number.
Also my practice is to pay the larger amount on PTO fees unless the applicant is clearly qualified. It may appear to be waste, but courts have been quite harsh to applicants who paid small entity fees improperly. I imagine similar scenarios for a micro entity that makes that type of mistake.
Can you take advantage of the micro entity fee reduction today? Unfortunately, not yet. The micro entity rules will be effective on March 19, 2013, and the micro entity fee schedule is expected in Spring 2013.
Copyright © 2013 Robert Moll. All rights reserved.
If you are a startup or an individual inventor, it is worth becoming familiar with these rules as a micro entity can save 75% on certain PTO fees in the future.
So what is a micro entity? 35 U.S.C. 123(a) provides a "micro entity" is an applicant who can certify it (1) qualifies as a small entity as defined 37 CFR 1.27; (2) has not been named an inventor on four previously filed U.S. nonprovisional patent applications; (3) did not, in the calendar year preceding the calendar year in which the application fee is being paid, have a gross income, as defined by 26 U.S.C. 61(a), exceeding three times the median household income for that preceding year (or as reported to the Census Bureau). So if you paid the fee in 2013 you would look at U.S. median household incomes in 2012.
I found a NYT article U.S. Income Gap Rose, Sign of Uneven Recovery stating the US median household income was $50,054 in 2011. Since US median household income has slightly decreased in recent years, it suggests falling under $150,000 may suffice. Note this is just a guess and if you have a link to official data for 2012, please email it so I can give a more accurate income number.
Also my practice is to pay the larger amount on PTO fees unless the applicant is clearly qualified. It may appear to be waste, but courts have been quite harsh to applicants who paid small entity fees improperly. I imagine similar scenarios for a micro entity that makes that type of mistake.
Can you take advantage of the micro entity fee reduction today? Unfortunately, not yet. The micro entity rules will be effective on March 19, 2013, and the micro entity fee schedule is expected in Spring 2013.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, January 4, 2013
USPTO Seeks Software Community's Input on Software Patents
On January 3, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register that it "seeks to form a partnership with the software community to enhance the quality of software-related patents ..." and bring the stakeholders together through a series of roundtable discussions. The first roundtable will cover three topics:
Topic 1: Establishing Clear Boundaries for Claims That Use Functional Language
Topic 2: Future Discussion Topics for the Software Partnership
Topic 3: Oral Presentations on Preparation of Patent Applications
The roundtable discussion will be at Stanford University 9 am - noon PST, February 12, 2013, and at NYU 9 am - noon EST, February 27, 2013. See Federal Register Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents for details and requirements to register and submit comments.
Copyright © 2013 Robert Moll. All rights reserved.
Topic 1: Establishing Clear Boundaries for Claims That Use Functional Language
Topic 2: Future Discussion Topics for the Software Partnership
Topic 3: Oral Presentations on Preparation of Patent Applications
The roundtable discussion will be at Stanford University 9 am - noon PST, February 12, 2013, and at NYU 9 am - noon EST, February 27, 2013. See Federal Register Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents for details and requirements to register and submit comments.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 3, 2013
Google Agrees to Change Business Practices to Resolve FTC's Concerns
On January 3, 2013, the FTC announced it has reached an agreement with Google to change some business practices. The agreement, reached after 19 months of investigation, grants competitors the ability to license Google's standard-essential patents (e.g., obtained from the Motorola Mobility acquisition) at fair, reasonable, and non-discriminatory (FRAND) terms. Google cannot seek injunctions of the SEP unless the infringer is unwilling to license the SEP under FRAND and follows certain procedures. The FTC's concern was granting injunctions based on SEPs would be used to hold up competitors in an industry where interoperability is required to compete. The agreement also gives advertisers greater flexibility to use rival search engines.
The FTC's press release Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search has the details and links to the related papers.
Copyright © 2013 Robert Moll. All rights reserved.
The FTC's press release Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search has the details and links to the related papers.
Copyright © 2013 Robert Moll. All rights reserved.
Monday, December 31, 2012
Patent Planet's Most Popular Posts - December 2011 - 2012
Almost midnight in Los Altos, California. I am struggling with the task of writing up a summary of the most important patent news in 2012. Hmm lots of material to consider (212 published posts plus 11 draft posts). Finally, I decided to take the easier route: let Blogger Stats do the work. Yes, that's my ticket out of here!
Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:
1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
2. Failure to Patent Mark - Losing Easy Money
3. Third Party Preissuance Submissions of Prior Art
4. The Banana Grab - Market Share Can Change
5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google
6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
7. Board of Patent Appeals Backlog Enormous and Growing
8. USPTO Satellite Office in San Jose Delayed
9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
10. America Invents Act - Final Rules for Third Party Preissuance Submissions
Happy New Year!
Based on total pageviews - the top ten posts on Patent Planet from December 2011 - 2012:
1. WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101
2. Failure to Patent Mark - Losing Easy Money
3. Third Party Preissuance Submissions of Prior Art
4. The Banana Grab - Market Share Can Change
5. Patent Reexamination Has Arrived for Both Parties - Oracle v. Google
6. America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
7. Board of Patent Appeals Backlog Enormous and Growing
8. USPTO Satellite Office in San Jose Delayed
9. Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
10. America Invents Act - Final Rules for Third Party Preissuance Submissions
Happy New Year!
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, December 25, 2012
USPTO Annual Report 2012
The USPTO released its annual report: USPTO Performance and Accountability fiscal year 2012 on it's strategy, operation and performance.
Here are some findings from the report:
The patent applications filed have mostly increased the last five years (FY 2008 - 496,886, FY 2009 - 486,499, FY 2010 - 509,367, FY 2011 - 537,171, and FY 2012 - 565,406).
The total backlog of over a million applications pending is basically undiminished from 2008 to 2012.
The approach of increasing the number of examiner (e.g., 7,935 examiners in FY 2012) has reduced the backlog of cases awaiting a first action from about 750,000 in FY 2008 to about 600,000 in FY 2012.
The first action pendency was 21.9 months in FY 2012, which although not "fast" looks good compared to FY 2011 - 28 months, FY 2010 - 25.7 months, FY 2009 - 25.8 months, and FY 2008 - 25.6 months.
The 12 month rolling average allowance rate is 51% in September 2012 which is higher than the same allowance rate of 44% in October 2008.
The total patent pendency FY 2012 - 32.4 months, the result of a decrease the last few years, matches FY 2008 - 32.2 months.
Copyright © 2012 Robert Moll. All rights reserved.
Here are some findings from the report:
The patent applications filed have mostly increased the last five years (FY 2008 - 496,886, FY 2009 - 486,499, FY 2010 - 509,367, FY 2011 - 537,171, and FY 2012 - 565,406).
The total backlog of over a million applications pending is basically undiminished from 2008 to 2012.
The approach of increasing the number of examiner (e.g., 7,935 examiners in FY 2012) has reduced the backlog of cases awaiting a first action from about 750,000 in FY 2008 to about 600,000 in FY 2012.
The first action pendency was 21.9 months in FY 2012, which although not "fast" looks good compared to FY 2011 - 28 months, FY 2010 - 25.7 months, FY 2009 - 25.8 months, and FY 2008 - 25.6 months.
The 12 month rolling average allowance rate is 51% in September 2012 which is higher than the same allowance rate of 44% in October 2008.
The total patent pendency FY 2012 - 32.4 months, the result of a decrease the last few years, matches FY 2008 - 32.2 months.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, December 22, 2012
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.
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.
Friday, December 21, 2012
Apple v. Samsung - European Commission Accuses Samsung of Patent Abuse
Today, the BBC reports EU accuses Samsung of patent abuse in Apple lawsuits. Note this is the European Commission's preliminary view and a final ruling will issue after Samsung presents its defense.
Thanks to Alan Cooper for forwarding this article just now.
Copyright © 2012 Robert Moll. All rights reserved.
Thanks to Alan Cooper for forwarding this article just now.
Copyright © 2012 Robert Moll. All rights reserved.
Nokia and RIM Settle All Patent Disputes
Nokia and RIM enter into new patent license agreement.
Not much detail in the press release, but sounds like Nokia owner of 10,000 patent families is the winner. "The financial structure of the agreement includes a one-time payment and on-going payments, all from RIM to Nokia."
I expect more patent settlements of a global nature in 2013. Companies have gotten over the hurdle of thinking they can use other companies patents without a license and are well aware of the expense of patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Not much detail in the press release, but sounds like Nokia owner of 10,000 patent families is the winner. "The financial structure of the agreement includes a one-time payment and on-going payments, all from RIM to Nokia."
I expect more patent settlements of a global nature in 2013. Companies have gotten over the hurdle of thinking they can use other companies patents without a license and are well aware of the expense of patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, December 17, 2012
CLS Bank v. Alice Corp. - US Government's Amicus Brief Addressing Software Patents
On December 9, I posted CLS Bank v. Alice Corp. - Amici Briefs Addressing Software Patents that gave links to Google et al. and EFF's amici briefs that attempt to guide the Federal Circuit on the topic of software patent eligibility.
Today, Professor Crouch states in his article Patenting Software: Obama Administration Argues "Sometimes" that the United States amicus brief "rejects the idea that software per se represents patentable subject matter but is favorable toward the patenting of computerized applications that either improve computer performance, use technology in a unique technologic way, or transform the local environment." The U.S. brief "suggests a claim-by-claim subject matter analysis that begins with claim construction and only then asks whether the challenged claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself."
Professor Crouch notes the U.S. brief lists "factors that the government sees as important in making that determination:
To this I add a few observations on the proposed test and factors:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and
a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.
Maybe we should return to the Inventions Patentable statute, 35 USC 101, that Judge Giles Rich and P.J. Federico drafted in 1952: Whoever invents or discovers any new and useful process, machine, manufacture ... or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." No, we can't do that - it's much too simple.
Copyright © 2012 Robert Moll. All rights reserved.
Today, Professor Crouch states in his article Patenting Software: Obama Administration Argues "Sometimes" that the United States amicus brief "rejects the idea that software per se represents patentable subject matter but is favorable toward the patenting of computerized applications that either improve computer performance, use technology in a unique technologic way, or transform the local environment." The U.S. brief "suggests a claim-by-claim subject matter analysis that begins with claim construction and only then asks whether the challenged claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself."
Professor Crouch notes the U.S. brief lists "factors that the government sees as important in making that determination:
- Is the computer only nominally or tangentially related to the performance of the invention?
- Is the computer generically recited or, instead are specific, unconventional computer equipment or tools required?
- Is the invention focused primarily on non-technological fields or does the invention improve the ability of a computer to function as a computer?
- Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways?
- Is the abstract idea merely described within a particular environment or is the abstract idea part of an invention that transforms its environment.
- Are the computer related elements merely conventional steps described at a high level of generality in a way that would be employed by anyone wanting to apply the abstract idea."
To this I add a few observations on the proposed test and factors:
- The U.S amici brief is designated as not in favor of either party, but seems to favor the defendant when you consider how the factors might apply to the representative claim 1:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and
a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.
- What unconventional computer equipment or tools do you require for patent eligibility?
- Trying to resolve whether a claim is too abstract by analyzing if the computer is only nominally or tangentially related to the performance of the invention may engender arguments: "my client's invention is substantially and directly related to the performance of the invention," to which the defendant replies "it is not" and "it is too!"
- The only way to avoid falling into a non-technological field is to improve the ability of a computer to function as a computer? Computer performance based patent eligibility? And in terms of improving the ability, doesn't software improve the ability of a general purpose computer to function as a computer? If we mean only hardware performance doesn't this eliminate many software patents and much of the subject matter described in U.S. Patent Class 707 Data Processing: Database and File Management, Data Structures, or Document Processing?
- Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways? Referring to the first condition, computer software is often used for "automation" and "communication" functions so it sounds like many software patent claims would be ineligible. On the other hand, the second condition implies a claim need only recite the software manipulates particular data in a particular, specific and useful way. Thank God, my software doesn't manipulate just any old data, it's particular, yes and it's not manipulating non-particular data in a non-useful way either. Good, my patent claim must be eligible! But wait my claim also involves automation and communication, now what?
- Is this abstract idea merely described within a particular environment or is the abstract idea part of an invention that transforms its environment. Now you have me confused ... I thought abstract meant not patent eligible and not abstract meant eligible. But now you tell me it is all about transforming the environment, and doing it in a particular environment is not going to help out? I must transform the environment? Okay, how about this: my computer software runs on a bunch of servers that kick out a lot of heat. Doesn't raising the temperature in my server room transform (i.e., cold to hot) the environment? What's transform mean again?
Maybe we should return to the Inventions Patentable statute, 35 USC 101, that Judge Giles Rich and P.J. Federico drafted in 1952: Whoever invents or discovers any new and useful process, machine, manufacture ... or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." No, we can't do that - it's much too simple.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, December 15, 2012
FTC and DOJ Workshop - Patent Assertion Entities - Revisited
On November 25, 2012, I posted an article that the FTC and DOJ was hosting a free workshop on December 10 to consider the impact of patent assertion entities (PAEs) on innovation and competition and if the PAEs raise antitrust issues.
If you are interested in what leading academics, attorneys, economists, and industry representatives had to say, please see their videos and slide presentations at the Patent Assertion Entity Activities Workshop Page.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, December 11, 2012
Europe Patent System - Unitary Patent and Patent Court
Today, the European Parliament approved a patent package that includes a unitary patent, a language regime, and a unified patent court. The unitary patent would give protection in 25 EP member states. The application would be in English, French, German, or require translation into one of these languages. The unified patent would be enforced in one of a set of trial courts. This patent package would enter into force on January 1, 2014 or after the United Kingdom, Germany, and France and ten other countries ratify the package, whichever is latest. It's hard to predict if this package will be ratified given Europe's debate on this topic for over 30 years. However, if it's ratified, it's expected to reduce the large cost of patent protection in Europe up to 80%. Spain and Italy are outside this regime but may join later.
See the EP press release: Parliament approves EU unitary patent rules
See ars technica: After decades of discussion, EU votes for unified patent system
See NY Times: Europe Reaches Agreement on System for Patents
Copyright © 2012 Robert Moll. All rights reserved.
See the EP press release: Parliament approves EU unitary patent rules
See ars technica: After decades of discussion, EU votes for unified patent system
See NY Times: Europe Reaches Agreement on System for Patents
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, December 9, 2012
CLS Bank v. Alice Corp. - Amici Briefs Addressing Software Patents
Software patent eligibility is a controversial topic today.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility highlight this controversy.
The Federal Circuit granted CLS Bank International's petition for a rehearing en banc, vacated the decision on software patent eligibility, reinstated the appeal, and invited the parties and amici to file briefs addressing the following questions:
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
Now the amici briefs are arriving. On December 6, King & Spalding filed an amicus brief on behalf of some leading tech companies: Google Inc., Dell Inc., Facebook, Inc., Homeaway, Inc., Intuit Inc., Rackspace Hosting, Inc. Red Hat, Inc., and Zynga Inc. at the Court of Appeals for Federal Circuit.
See the Google et al. brief as well as the Electronic Frontier Foundation's brief in the Wall Street Journal AllThingsD.com article: Facebook, Google and Others Rally Against Sweeping Claims in Financial Patent Case. Thanks to Alan Cooper for sending this article!
For details see my earlier post: CLS Bank v. Alice - Federal Circuit Revisits Test for Software Patent Eligibility
Copyright © 2012 Robert Moll. All rights reserved.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility highlight this controversy.
The Federal Circuit granted CLS Bank International's petition for a rehearing en banc, vacated the decision on software patent eligibility, reinstated the appeal, and invited the parties and amici to file briefs addressing the following questions:
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
Now the amici briefs are arriving. On December 6, King & Spalding filed an amicus brief on behalf of some leading tech companies: Google Inc., Dell Inc., Facebook, Inc., Homeaway, Inc., Intuit Inc., Rackspace Hosting, Inc. Red Hat, Inc., and Zynga Inc. at the Court of Appeals for Federal Circuit.
See the Google et al. brief as well as the Electronic Frontier Foundation's brief in the Wall Street Journal AllThingsD.com article: Facebook, Google and Others Rally Against Sweeping Claims in Financial Patent Case. Thanks to Alan Cooper for sending this article!
For details see my earlier post: CLS Bank v. Alice - Federal Circuit Revisits Test for Software Patent Eligibility
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, December 6, 2012
Patent Law Treaty and Hague Agreement Regarding International Registrations of Industrial Designs
On December 5, the House of Representatives passed S. 3486 to implement the Hague Agreement Concerning Industrial Designs Patent Law Treaty (Hague Agreement) and the Patent Law Treaty (PLT). The bill awaits President Obama's signature.
The Hague Agreement lengthens the current design patent term from 14 to 15 years from the grant date. It also allows filing for protection of up to 100 designs in a single application at the USPTO as long as in the same classification under Locarno Agreement to obtain design protection in all countries that adopt the treaty. Note this is expect to help protect design owners against knockoffs. Further, it retains the current nonobvious requirement for design patents, which patent scholar Harold Wegner suggests is inconsistent with TRIPS. A request and payment at WIPO's International Bureau will renew a design registration. The bill will add Chapter 38 International Design Applications, 35 USC 381-390.
The PLT amends 35 USC 111(a) to reduce some requirements for a nonprovisional to get a filing date. For example, a nonprovisional application will no longer require at least one claim for a filing date, but still requires payment of fees, an oath or declaration, and at least one claims within the time set by the Director to avoid abandonment.
Under new 35 USC 111(c), the Director may prescribe the conditions for filing an application with a reference to a prior filed application, but will abandon an application for failure to submit a specification within the prescribed period.
Updated February 11, 2014: The Patent Law Treaties Implementation Act of 2012.
Copyright © 2012 Robert Moll. All rights reserved.
The Hague Agreement lengthens the current design patent term from 14 to 15 years from the grant date. It also allows filing for protection of up to 100 designs in a single application at the USPTO as long as in the same classification under Locarno Agreement to obtain design protection in all countries that adopt the treaty. Note this is expect to help protect design owners against knockoffs. Further, it retains the current nonobvious requirement for design patents, which patent scholar Harold Wegner suggests is inconsistent with TRIPS. A request and payment at WIPO's International Bureau will renew a design registration. The bill will add Chapter 38 International Design Applications, 35 USC 381-390.
The PLT amends 35 USC 111(a) to reduce some requirements for a nonprovisional to get a filing date. For example, a nonprovisional application will no longer require at least one claim for a filing date, but still requires payment of fees, an oath or declaration, and at least one claims within the time set by the Director to avoid abandonment.
Under new 35 USC 111(c), the Director may prescribe the conditions for filing an application with a reference to a prior filed application, but will abandon an application for failure to submit a specification within the prescribed period.
Updated February 11, 2014: The Patent Law Treaties Implementation Act of 2012.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, December 4, 2012
America Invents Act - Proposed Bill H.R. 6621 Technical Amendment to AIA
On November 30, Congressman Smith introduced a bill H.R. 6621 to change language in the America Invents Act (AIA).
Some refer to it as a "technical amendment" that corrects errors in the AIA. However, it buries a provision that will eliminate many if not all pre-GATT applications (i.e., about 200 applications filed before June 7, 1995) if they fail to issue as US patents within one year of the bill's enactment. It does this by rendering them ineligible for a patent term that runs 17 years from grant date. Instead their patent term would only run 20 years from filing date. Even if only 0.02% of all pending applications (e.g., 1.2M) are affected, it sounds like some want to eliminate or greatly reduce their patent terms. Do the math!
On the other hand, it doesn't seek to change the estoppel standard for post grant review, which is wise given the arguments raised in its favor. See e.g., Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.
Copyright © 2012 Robert Moll. All rights reserved.
Some refer to it as a "technical amendment" that corrects errors in the AIA. However, it buries a provision that will eliminate many if not all pre-GATT applications (i.e., about 200 applications filed before June 7, 1995) if they fail to issue as US patents within one year of the bill's enactment. It does this by rendering them ineligible for a patent term that runs 17 years from grant date. Instead their patent term would only run 20 years from filing date. Even if only 0.02% of all pending applications (e.g., 1.2M) are affected, it sounds like some want to eliminate or greatly reduce their patent terms. Do the math!
On the other hand, it doesn't seek to change the estoppel standard for post grant review, which is wise given the arguments raised in its favor. See e.g., Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, December 2, 2012
Jeruss - Effects of Patent Monetization Entities on US Litigation
In The America Invents Act 500: Effects of Patent Monetization Entities on US Litigation Sara Jeruss of Lex Machina Inc., Robin Cooper Feldman of University of California Hastings College of the Law, Joshua H. Walker of Simpson Thacher & Bartlett LLP, Stanford Law School wrote an interesting paper that will be published in Duke Law & Technology Review.
The article explores non-practicing entities (NPE) or patent trolls or what they call patent monetizers affect on U.S. patent litigation. Although Professor Feldman is not the lead author, it bears her signature in terms of meticulous research, transparent assumptions, and careful conclusions.
The article flowed out of Congress' mandate for the Government Accountability Office (GAO) to study the effects of non-practicing entities on patent litigation. Using Lex Machina's database they collected and coded a set of patent lawsuits filed over the past five years then analyzed what it meant.
Key findings? Patent monetizers' lawsuits increased from 22% to nearly 40% of the cases in the last five years. Universities are not that big of a player, accounting for only 0.2% of the lawsuits. Patent monetizers tend to settle prior to a summary judgment decision, which points to what may be involved. Even though it calls NPE's "modern villains" of the system, it doesn't resolve for me whether patent monetizers are bad or good for the US, but does confirm their rising participation in patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
The article explores non-practicing entities (NPE) or patent trolls or what they call patent monetizers affect on U.S. patent litigation. Although Professor Feldman is not the lead author, it bears her signature in terms of meticulous research, transparent assumptions, and careful conclusions.
The article flowed out of Congress' mandate for the Government Accountability Office (GAO) to study the effects of non-practicing entities on patent litigation. Using Lex Machina's database they collected and coded a set of patent lawsuits filed over the past five years then analyzed what it meant.
Key findings? Patent monetizers' lawsuits increased from 22% to nearly 40% of the cases in the last five years. Universities are not that big of a player, accounting for only 0.2% of the lawsuits. Patent monetizers tend to settle prior to a summary judgment decision, which points to what may be involved. Even though it calls NPE's "modern villains" of the system, it doesn't resolve for me whether patent monetizers are bad or good for the US, but does confirm their rising participation in patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, November 30, 2012
PTO Seeking Transparency in Patent Ownership Roundtable
The PTO is considering regulations to require greater transparency concerning ownership of patents and patent applications. I am interested to see patent aggregators or patent monetizers views on this topic.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
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