Patently-O Bits & Bytes by Lawrence Higgins

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

24 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. When we hired “HIM” or thought it was us that in fact hired him. We were sadly mistaken. How can a slave have hired anyone?
    So when the Court asked me what “HE” had done I didn’t know it was a weight measure as in “LB”. So I was really expecting help from the Court because of the Case being so HUGE, I was afraid to go forward because I didn’t know all he had done by POUNDING as in “LB” my Casket shut!
    My Bankruptcy Atty. STRIKE THAT! Their Bankruptcy Atty. lied to us when he told us we were in fact his Clients! Is that why he was never at the opening or never answered me or my calls. Or Jim always spoke with Bethany instead of him. And My husband also being on the Turnip Truck right along side me. so every time he told me he was speaking with Bethany, I never till my morning Drive did I put that scenario all together. Too bad for you!
    I contacted the Fla. Bar too many times and the VA. Bar the same. so i will wait till i get a response and then I will just mail a copy of it for L about him and B. Well that will be three of the Birds.

  2. Doing that, you just give it all away, and get nothing in return.

    shhhh – you are spilling the “Why buy the cow when you can get the milk for free” mentality

  3. Good point from EG. In the run up to AIA, I urged that “absolute obviousness” as somebody here termed it, turbo-charges FtF. Far from harmonising with ROW, AIA overtakes ROW and replaces FtI with something that is a much more aggressive prompter of a race to the PTO than is ROW-style FtF.

    In ROW, it is crazy to rush to the PTO with ill thought out, less than fully enabled disclosures. Doing that, you just it all away, and get nothing in return. But with FItF, who knows.

  4. “Will the number of Provisional Patent Applications Filed Increase”?

    Inevitably under the AIA, Lawrence, unless, for example, you want to spend lots of bucks on filing fees for non-provisionals, start patent term ticking early, and worse yet, lose whatever rights you might have partially or even completely. Getting those provisional “date stakes” in the ground early under the first to file regime of the AIA will be an important strategy to avoid being done in partially (or even completely) by “intervening 3rd party prior art” (remember that that “intervening 3rd party prior art” is not just a “novelty” barrier but also an “obviousness” barrier).

  5. Why file anything in the soon-to-become crappy US Patent system, once the finest in the world. A satellite office in Detroit? That I want to see. A pinnacle of efficiency I’m sure. Endless post grant opposition?

    Why not just file in Russia?

    This is what Chicago-style Democratic politics gets you – epic failure.

  6. It deals in bits and bytes, the 1′s and 0′s of digital data.

    When you save a file, Bitcasa writes those 1′s and 0′s to its server-side infrastructure in the cloud. It doesn’t know anything about the file itself, really. It doesn’t see the file’s title or know its contents. It doesn’t know who wrote the file. And because the data is encrypted on the client side, Bitcasa doesn’t even know what it’s storing.

  7. This is simply horrible. Patent numbers will remain on products after the patent has expired! Think of how damaging this will be to competition. Imagine how confused customers will be! Think of the children!

  8. IMHO the best advice is probably to file a provisional but not to publish. If you publish before filing you pretty much ditch your foreign rights, as you always have. There are grace periods in other countries, but with major limitations. AFAIK you have 6 months grace in Japan for disclosures by the inventor, but I don’t know exactly what the law says (it’s in Japanese!). As for Europe, you have six months grace only for international exhibitions that meet the definition in the treaty on international exhibitions, but not for any other form of disclosure, which is such a narrow circumstance that most people act as if there were no grace period. OTOH, filing a provisional should preserve your rights without that problem. IOW, if you want to preserve your foreign rights, then no change. If you do publish before filing, then as before, you are stuck with the US, and as before, your disclosure antedates the prior art as long as it wasn’t more than 12 months before you filed. La plus ca change, la plus c’est la meme chose.

  9. RE: False Marking
    Under the new law, it is no longer a violation of the false marking statute to mark a product with the number of a patent that did cover the product but now is expired. See H.R. 1249 Sec. 16(b)(3).

  10. …which is fine except that, until last week, I was being told exactly the opposite.

    For years I have been assured that ROW FtF is a system that lays waste to the patent law landscape by forcing inventors to file ill thought through, premature, speculative filings that are vastly inferior to the well thought through mature sufficient and enabled filings that characterize the American First to Invent system.

    So, Mal and Bindman, which is it really?

  11. I ask, under AIA can one simply change the last word from “invent” to “publish”? If so then, again, inventors are going to get hurt.

    We are sliding down the slippery slope away from the true Quid Pro Quo of real patent tights for a disclosure (with no disclosure if no patent) to an environment of Disclose Disclose Disclose under the threat of “no Patent.”

    In the face of the adage of “Why buy the cow when you can get the milk for free,” the government’s response seesm to be: “You better have my free glass of milk chilled. And I want two chocolate chip cookies with that.”

  12. First question to client:
    Is this US only, or will you also file elsewhere…. ?

    IF US only, then much of the hype about publishing and filing a quickie provisional can be swallowed without the patent portfolio dying..

    IF coverage outside of the US is desired, seems like you better take your time and get the FULL and COMPLETE specification and WELL STRUCTURED CLAIMS – or you will ultimately be DEAD in China and Europe.

    Why the rush ??????

  13. Only the United States may sue for statutory damages

    Did you hear that one of Obama’s methods of funding his nearly half trillion jobs program is that he his going to take over all of the false marking suits? I think that since only the US now can bring suit, that they don’t have to share halfsies with anyone and they will be pushing for maximum penalities against all of those evil mismarkers (watch out for that new appeal, Solo Cup). In fact, one of the jobs programs is to pay people to go looking for items with expired patent marks.

  14. MD Mind you, there is still 18 months, for American patent attorneys to work out how adequately to protect the interests of inventors, in a First to File landscape.

    The good news for inventors is that there are a lot of us American patent attorneys who have been obtaining patents for clients in the rest of the world for many years, including dealing with the onerous new matter issues that arise in the EP and the heightened written description requirements relating to biotech apps. It’s not rocket science to make apps fly under such regimes; it’s just a bit of a pain in axx. Flakiness is punished.

  15. Higgins writes:

    “If the provisional does not adequately the invention as claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.”

    Mark his words. Inventors are going to get hurt and feel themselves to have been betrayed by the law.

    Anon picks up on: “…an inventor could experiment and wait to file a patent application as long as he/she was the first to invent”. I ask, under AIA can one simply change the last word from “invent” to “publish”? If so then, again, inventors are going to get hurt.

    Mind you, there is still 18 months, for American patent attorneys to work out how adequately to protect the interests of inventors, in a First to File landscape.

  16. “Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent.”

    What about the 1 year statutory bar? Even with the old first to file, and assuming no disclosures outside of patent applications, if someone else files for a patent on the same thing, you lose patent protection under the old system: a) the other party’s patent application is published more than 1 year before you file or b) the other party’s patent issues more than 1 year before you file.

    The 1 year statutory bar really meant that there is very little practical difference between the new and old systems

  17. “Under the America Invents Act, “Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

    It’s funny because it was just as NAL was persuading me that false marking was a sin against go d and all that was holy, including these united states, and I was gearing up to start trolling false marking suits they pull the rug right out from under me. :(

  18. Applicants should take caution because…

    of the various landmine style timebombs, including but definitely not limited to the notion of “as claimed” which generally replaces the “as disclosed” in order to receive a priority date. Provisionals, which by law still do not require claims, may be a triggering event for one of these landmines ( how can one section provide priority without a requirement of claims and yet the new reformulated law require claims…?

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