November 2011

Divided Patent Ownership, Equitable Title, and Failed Assignments

by Dennis Crouch

Gellman v. Telular Corp. (Fed. Cir. 2011)

Issues of standing continue to arise in patent infringement litigation. Well established precedent requires that plaintiffs suing for infringement collectively hold "all substantial rights" in the patent being asserted. Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24 (1923). Thus, if two entities jointly own a patent, standing would only be proper if both entities jointly filed the infringement action. A lesser explored area of the law relevant to this case involves the requirements to prove ownership and the potential burden-shifting effect of assignment recordation.

Gellman's lawsuit involves U.S. Patent No. 6,075,451 which lists Mayer Lebowitz and Jim Seivert as co-inventors. (Seivert's name is misspelled as Sievert on the patent document). Both inventors are now dead. Lebowitz's rights to the patent are being held in trust and the trustee has argued that Seivert's rights to the patent were previously assigned to Lebowitz as well. Supporting that assertion is an assignment from Seivert to Lebowitz that was recorded in the USPTO assignment database in 1998. Unfortunately for the Lebowitz Trust, the assignment document filed with the PTO had a blank signature line and the Trust has been unable to produce any evidence that the assignment document was ever signed.

Three important consequences flow from a conclusion that Seivert never transferred his interest to Lebowitz. First, Seivert's heirs,  beneficiaries, or their assigns now share ownership in the patent. In this case, it appears that Seivert did not designate a beneficiary and therefore ownership is split amongst his heirs according to state intestate law. Second, the Lebowitz trust has no standing to sue because it does not hold substantially all interests in the patent. Third, absent prior agreement, each co-owner of a patent has the full right to offer a license to the defendants to practice the invention, normally without any accounting or compensation to the other patent owners. Here, in a filing with the district court the defendants have asserted that they have each obtained a patent license and release from the Seivert estate.

The Lebowitz Trust (Gellman) made two additional arguments in an attempt to prove that rights had been transferred: (1) the consulting contract and (2) the hired-to-invent doctrine.

The consulting agreement between Seivert and Lebowitz included a clause that any “ideas, discoveries, [or] inventions” by Seivert “shall be and remain the exclusive property” of Lebowitz. And, in addition, Seivert agreed “to execute any and all assignments” necessary.  The agreement had a major problem in that the only record available was unsigned.  In examining the contract, the Federal Circuit additionally found that the agreement was inadequate to prove that a transfer occurred even if it had been properly executed. In particular, the court indicated that the future promise to execute an assignment suggested that no transfer had previously occurred.  The court wrote (I would argue incorrectly) that “[o]therwise, the 'execute any and all assignments' language in the contract is surplusage without relevant meaning.”

In reading the promise to assign, the court agreed that it may create an equitable claim to title in favor of Lebowitz.  However, the law is clear that equitable title is insufficient to confer standing.

Of note, the court's interpretation of the contract appears to be based entirely upon Federal Circuit law rather than state law.

Hired to Invent: Normally patent rights are held by the inventors until those rights are assigned in a written agreement.  This is true even when the inventor is an employee and the invention was created within the scope of the employment. There are a few limited exceptions to this practice that transfer patent rights through operation of law rather than through written assignment. One historic exception is the “hired-to-invent” doctrine that some courts have used to transfer ownership of patent rights to an employer when the employee is hired to make a particular invention. See, e.g., Solomons v. United States, 137 U.S. 342, 346 (1890). This hired to invent doctrine cannot help the Lebowitz Trust here because the doctrine has been interpreted to create “creates only an obligation for the employee to assign to his employer.”

Affirmed. Case Dismissed for Lack of Standing.

Next Steps: If the Lebowitz Trust wants to pursue the lawsuit, it will need to first force transfer of rights from the Seivert estate and then refile the suit against the accused infringers.

Patently-O Bits & Bytes by Lawrence Higgins

USPTO's Steve Jobs Exhibit
  • On November 16th the USPTO unveiled the Steve Jobs exhibit, highlighting the Patents and Trademarks of Steve Jobs. "This exhibit commemorates the far-reaching impact of Steve Jobs' entrepreneurship and innovation on our daily lives," said David Kappos. "His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace." The exhibit features more than 300 of the patents that Steve bear Steve Jobs name. The exhibit will run through January 15, 2012 and is free and open to the public. [Link] [Link]
Kauffman Foundation
   
  • The Ewing Marion Kauffman Foundation is pleased to announce that the nomination period is now open for the Kauffman Junior Faculty Fellowship in Entrepreneurship Research (KJFF). The Kauffman Foundation will award up to seven Junior Faculty Fellowship grants to junior faculty members in the United States whose research has the potential to make significant contributions to the body of literature in entrepreneurship. Each Fellow's university will receive a grant of $40,000 over two years to support the research activities of the Fellow. Nominees must be tenured or tenure-track junior faculty members at accredited U.S. institutions of higher education who received a Ph.D. or equivalent doctoral degree between January 1, 2007 and December 31, 2010. [Link]
Northern District of California
  • The Court is considering adopting a new Civil Local Rule 5-4 that will address the requirements for electronic filing and abrogating General Order 45. The new rule reflects the evolution of the e-filing program and more accurately captures the current requirements than does the general order which was written in 2003 shortly after the inception of the e-filing program. Comments may be submitted by sending an e-mail to evidence@cand.uscourts.gov before 5:00 p.m. (PST) on December 14, 2011. View the notice and the draft rule: [Link].
  • On November 10, 2011, the District and Magistrate Judges of the Northern District of California adopted General Order 67, promulgating new procedures for the assignment of patent cases. In order to allow necessary changes to be made to the District's computer-based case assignment system, the new procedures will become effective on January 1, 2012. Earlier in 2011, the Northern District successfully applied to the Administrative Office of the United States Courts for designation as a participating district in the Patent Pilot Program. District Judges participating in the program are: Chief District Judge James Ware, Senior District Judge Ronald Whyte, District Judge Jeffrey S. White, District Judge Lucy Koh and District Judge Edward Davila.
  • Although the implementing patent pilot statute refers to District Judges as pilot judges, the Northern District has taken the position that the patent pilot statute does not supersede statutes that allow Magistrate Judges to handle any case pursuant to consent by the parties. Therefore, as the following Magistrate Judges have a particular interest in presiding over patent cases and subject to consent of the parties, the Court will strive to increase the number of patent cases assigned to these judges: Magistrate Judge Elizabeth Laporte, Magistrate Judge Joseph C. Spero, Magistrate Judge Laurel Beeler, Magistrate Judge Donna M. Ryu, Magistrate Judge Paul Grewal, Magistrate Judge Jacqueline Scott Corley and Magistrate Judge Nathanael Cousins. In the remaining weeks of 2011, members of Judge Koh's committee will hold a series of meetings with local bar associations to discuss the new procedures. View the notice and the text of General Order 67: [Link].
Patent Jobs:
  • Young Basile is searching for a patent attorney with 1-4 years of experience and a degree in EE or CS. [Link]
  • Singleton Law Firm is looking for a patent attorney/agent to work in the electrical area. [Link]
  • Coats & Bennett is seeking a patent attorney with a degree in EE and at least 2 years of patent prep and prosecution experience. [Link]
  • Sheppard Mullin is seeking 2 attorneys (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • McDermott Will & Emery is searching for an associate with 2-5 years of patent litigation experience. [Link]
  • Howard & Howard is seeking a patent attorney with 3-9 years of experience in patent prep and prosecution and a chemical background. [Link]
  • Patterson Thuente IP is looking for a patent attorney with a minimum of 2 years experience in patent prosecution for high tech clients. [Link]
  • Michaud-Kinney Group is searching for an IP associate with an electrical or mechanical background and at least 3 years of experience in patent prep and prosecution. [Link]
  • O'Brien Jones is looking for patent attorneys/agents with 2-5 years of experience. [Link]
  • Buether Joe & Carpenter is seeking 1 or more attorneys with patent infringement litigation experience. (5 or more years of patent litigation experience preferred) [Link]
  • Cantor Colburn is searching for a patent attorney with an advanced degree in organic chemistry and at least 2 years of patent drafting experience. [Link]
Upcoming Events:
  • On December 1, 2011, the Institute for Intellectual Property and Social Justice (IIPSJ) will co-present with the United States Patent and Trademark Office (USPTO) the Second National IP Empowerment Summit. The IIPSJ/USPTO IP Empowerment Summit will serve the general public and intellectual property professional and activist community in educating and empowering minority and marginalized artists, inventors, entrepreneurs, and other IP stakeholders in underserved communities. The Summit will provide practical information and presentations for creators and inventors regarding the development, protection, and exploitation of their own innovative and creative works as well as works and inventions in the public domain. [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The Lawyers Association of Kansas City will be presenting a 4 hour CLE on changes to US patent law under the America Invents Act at the offices of Lathrop & Gage in Kansas City, MO on Thursday, Dec. 8, 2011 from 1pm to 5pm. Presenters include: Kent Erickson, Bryan Stanley, and John Garretson. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "Collection, Review, and Production of Your Client's Electronic Information," presented by Shane Delsman on December 14, 2011 at 12:00 noon EST. The webinar will cover topics including collecting electronically stored information (ESI) for further use in the e-discovery process; processing collected ESI; reviewing ESI for relevance and privilege; producing ESI in appropriate forms and storage media; and how the Federal Rules affect the above procedures. [Link]
  • On December 16, the University of San Diego School of Law will host "A Review of the America Invents Act and its impact on the USPTO," with David Kappos. Kappos will discuss the USPTO's efforts to start implementing the law and also give a broad perspective of the various changes the agency is undertaking to facilitate the public's understanding of regulatory revisions. Also, Leonard Svensson will provide a brief overview of the major changes included in the America Invents Act and what the changes means for the San Diego innovation economy. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

USPTO's Steve Jobs Exhibit
  • On November 16th the USPTO unveiled the Steve Jobs exhibit, highlighting the Patents and Trademarks of Steve Jobs. "This exhibit commemorates the far-reaching impact of Steve Jobs' entrepreneurship and innovation on our daily lives," said David Kappos. "His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace." The exhibit features more than 300 of the patents that Steve bear Steve Jobs name. The exhibit will run through January 15, 2012 and is free and open to the public. [Link] [Link]
Kauffman Foundation
   
  • The Ewing Marion Kauffman Foundation is pleased to announce that the nomination period is now open for the Kauffman Junior Faculty Fellowship in Entrepreneurship Research (KJFF). The Kauffman Foundation will award up to seven Junior Faculty Fellowship grants to junior faculty members in the United States whose research has the potential to make significant contributions to the body of literature in entrepreneurship. Each Fellow's university will receive a grant of $40,000 over two years to support the research activities of the Fellow. Nominees must be tenured or tenure-track junior faculty members at accredited U.S. institutions of higher education who received a Ph.D. or equivalent doctoral degree between January 1, 2007 and December 31, 2010. [Link]
Northern District of California
  • The Court is considering adopting a new Civil Local Rule 5-4 that will address the requirements for electronic filing and abrogating General Order 45. The new rule reflects the evolution of the e-filing program and more accurately captures the current requirements than does the general order which was written in 2003 shortly after the inception of the e-filing program. Comments may be submitted by sending an e-mail to evidence@cand.uscourts.gov before 5:00 p.m. (PST) on December 14, 2011. View the notice and the draft rule: [Link].
  • On November 10, 2011, the District and Magistrate Judges of the Northern District of California adopted General Order 67, promulgating new procedures for the assignment of patent cases. In order to allow necessary changes to be made to the District's computer-based case assignment system, the new procedures will become effective on January 1, 2012. Earlier in 2011, the Northern District successfully applied to the Administrative Office of the United States Courts for designation as a participating district in the Patent Pilot Program. District Judges participating in the program are: Chief District Judge James Ware, Senior District Judge Ronald Whyte, District Judge Jeffrey S. White, District Judge Lucy Koh and District Judge Edward Davila.
  • Although the implementing patent pilot statute refers to District Judges as pilot judges, the Northern District has taken the position that the patent pilot statute does not supersede statutes that allow Magistrate Judges to handle any case pursuant to consent by the parties. Therefore, as the following Magistrate Judges have a particular interest in presiding over patent cases and subject to consent of the parties, the Court will strive to increase the number of patent cases assigned to these judges: Magistrate Judge Elizabeth Laporte, Magistrate Judge Joseph C. Spero, Magistrate Judge Laurel Beeler, Magistrate Judge Donna M. Ryu, Magistrate Judge Paul Grewal, Magistrate Judge Jacqueline Scott Corley and Magistrate Judge Nathanael Cousins. In the remaining weeks of 2011, members of Judge Koh's committee will hold a series of meetings with local bar associations to discuss the new procedures. View the notice and the text of General Order 67: [Link].
Patent Jobs:
  • Young Basile is searching for a patent attorney with 1-4 years of experience and a degree in EE or CS. [Link]
  • Singleton Law Firm is looking for a patent attorney/agent to work in the electrical area. [Link]
  • Coats & Bennett is seeking a patent attorney with a degree in EE and at least 2 years of patent prep and prosecution experience. [Link]
  • Sheppard Mullin is seeking 2 attorneys (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • McDermott Will & Emery is searching for an associate with 2-5 years of patent litigation experience. [Link]
  • Howard & Howard is seeking a patent attorney with 3-9 years of experience in patent prep and prosecution and a chemical background. [Link]
  • Patterson Thuente IP is looking for a patent attorney with a minimum of 2 years experience in patent prosecution for high tech clients. [Link]
  • Michaud-Kinney Group is searching for an IP associate with an electrical or mechanical background and at least 3 years of experience in patent prep and prosecution. [Link]
  • O'Brien Jones is looking for patent attorneys/agents with 2-5 years of experience. [Link]
  • Buether Joe & Carpenter is seeking 1 or more attorneys with patent infringement litigation experience. (5 or more years of patent litigation experience preferred) [Link]
  • Cantor Colburn is searching for a patent attorney with an advanced degree in organic chemistry and at least 2 years of patent drafting experience. [Link]
Upcoming Events:
  • On December 1, 2011, the Institute for Intellectual Property and Social Justice (IIPSJ) will co-present with the United States Patent and Trademark Office (USPTO) the Second National IP Empowerment Summit. The IIPSJ/USPTO IP Empowerment Summit will serve the general public and intellectual property professional and activist community in educating and empowering minority and marginalized artists, inventors, entrepreneurs, and other IP stakeholders in underserved communities. The Summit will provide practical information and presentations for creators and inventors regarding the development, protection, and exploitation of their own innovative and creative works as well as works and inventions in the public domain. [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The Lawyers Association of Kansas City will be presenting a 4 hour CLE on changes to US patent law under the America Invents Act at the offices of Lathrop & Gage in Kansas City, MO on Thursday, Dec. 8, 2011 from 1pm to 5pm. Presenters include: Kent Erickson, Bryan Stanley, and John Garretson. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "Collection, Review, and Production of Your Client's Electronic Information," presented by Shane Delsman on December 14, 2011 at 12:00 noon EST. The webinar will cover topics including collecting electronically stored information (ESI) for further use in the e-discovery process; processing collected ESI; reviewing ESI for relevance and privilege; producing ESI in appropriate forms and storage media; and how the Federal Rules affect the above procedures. [Link]
  • On December 16, the University of San Diego School of Law will host "A Review of the America Invents Act and its impact on the USPTO," with David Kappos. Kappos will discuss the USPTO's efforts to start implementing the law and also give a broad perspective of the various changes the agency is undertaking to facilitate the public's understanding of regulatory revisions. Also, Leonard Svensson will provide a brief overview of the major changes included in the America Invents Act and what the changes means for the San Diego innovation economy. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

USPTO's Steve Jobs Exhibit
  • On November 16th the USPTO unveiled the Steve Jobs exhibit, highlighting the Patents and Trademarks of Steve Jobs. "This exhibit commemorates the far-reaching impact of Steve Jobs' entrepreneurship and innovation on our daily lives," said David Kappos. "His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace." The exhibit features more than 300 of the patents that Steve bear Steve Jobs name. The exhibit will run through January 15, 2012 and is free and open to the public. [Link] [Link]
Kauffman Foundation

   
  • The Ewing Marion Kauffman Foundation is pleased to announce that the nomination period is now open for the Kauffman Junior Faculty Fellowship in Entrepreneurship Research (KJFF). The Kauffman Foundation will award up to seven Junior Faculty Fellowship grants to junior faculty members in the United States whose research has the potential to make significant contributions to the body of literature in entrepreneurship. Each Fellow's university will receive a grant of $40,000 over two years to support the research activities of the Fellow. Nominees must be tenured or tenure-track junior faculty members at accredited U.S. institutions of higher education who received a Ph.D. or equivalent doctoral degree between January 1, 2007 and December 31, 2010. [Link]
Northern District of California
  • The Court is considering adopting a new Civil Local Rule 5-4 that will address the requirements for electronic filing and abrogating General Order 45. The new rule reflects the evolution of the e-filing program and more accurately captures the current requirements than does the general order which was written in 2003 shortly after the inception of the e-filing program. Comments may be submitted by sending an e-mail to evidence@cand.uscourts.gov before 5:00 p.m. (PST) on December 14, 2011. View the notice and the draft rule: [Link].
  • On November 10, 2011, the District and Magistrate Judges of the Northern District of California adopted General Order 67, promulgating new procedures for the assignment of patent cases. In order to allow necessary changes to be made to the District's computer-based case assignment system, the new procedures will become effective on January 1, 2012. Earlier in 2011, the Northern District successfully applied to the Administrative Office of the United States Courts for designation as a participating district in the Patent Pilot Program. District Judges participating in the program are: Chief District Judge James Ware, Senior District Judge Ronald Whyte, District Judge Jeffrey S. White, District Judge Lucy Koh and District Judge Edward Davila.
  • Although the implementing patent pilot statute refers to District Judges as pilot judges, the Northern District has taken the position that the patent pilot statute does not supersede statutes that allow Magistrate Judges to handle any case pursuant to consent by the parties. Therefore, as the following Magistrate Judges have a particular interest in presiding over patent cases and subject to consent of the parties, the Court will strive to increase the number of patent cases assigned to these judges: Magistrate Judge Elizabeth Laporte, Magistrate Judge Joseph C. Spero, Magistrate Judge Laurel Beeler, Magistrate Judge Donna M. Ryu, Magistrate Judge Paul Grewal, Magistrate Judge Jacqueline Scott Corley and Magistrate Judge Nathanael Cousins. In the remaining weeks of 2011, members of Judge Koh's committee will hold a series of meetings with local bar associations to discuss the new procedures. View the notice and the text of General Order 67: [Link].
Patent Jobs:
  • Young Basile is searching for a patent attorney with 1-4 years of experience and a degree in EE or CS. [Link]
  • Singleton Law Firm is looking for a patent attorney/agent to work in the electrical area. [Link]
  • Coats & Bennett is seeking a patent attorney with a degree in EE and at least 2 years of patent prep and prosecution experience. [Link]
  • Sheppard Mullin is seeking 2 attorneys (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • McDermott Will & Emery is searching for an associate with 2-5 years of patent litigation experience. [Link]
  • Howard & Howard is seeking a patent attorney with 3-9 years of experience in patent prep and prosecution and a chemical background. [Link]
  • Patterson Thuente IP is looking for a patent attorney with a minimum of 2 years experience in patent prosecution for high tech clients. [Link]
  • Michaud-Kinney Group is searching for an IP associate with an electrical or mechanical background and at least 3 years of experience in patent prep and prosecution. [Link]
  • O'Brien Jones is looking for patent attorneys/agents with 2-5 years of experience. [Link]
  • Buether Joe & Carpenter is seeking 1 or more attorneys with patent infringement litigation experience. (5 or more years of patent litigation experience preferred) [Link]
  • Cantor Colburn is searching for a patent attorney with an advanced degree in organic chemistry and at least 2 years of patent drafting experience. [Link]
Upcoming Events:
  • On December 1, 2011, the Institute for Intellectual Property and Social Justice (IIPSJ) will co-present with the United States Patent and Trademark Office (USPTO) the Second National IP Empowerment Summit. The IIPSJ/USPTO IP Empowerment Summit will serve the general public and intellectual property professional and activist community in educating and empowering minority and marginalized artists, inventors, entrepreneurs, and other IP stakeholders in underserved communities. The Summit will provide practical information and presentations for creators and inventors regarding the development, protection, and exploitation of their own innovative and creative works as well as works and inventions in the public domain. [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The Lawyers Association of Kansas City will be presenting a 4 hour CLE on changes to US patent law under the America Invents Act at the offices of Lathrop & Gage in Kansas City, MO on Thursday, Dec. 8, 2011 from 1pm to 5pm. Presenters include: Kent Erickson, Bryan Stanley, and John Garretson. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "Collection, Review, and Production of Your Client's Electronic Information," presented by Shane Delsman on December 14, 2011 at 12:00 noon EST. The webinar will cover topics including collecting electronically stored information (ESI) for further use in the e-discovery process; processing collected ESI; reviewing ESI for relevance and privilege; producing ESI in appropriate forms and storage media; and how the Federal Rules affect the above procedures. [Link]
  • On December 16, the University of San Diego School of Law will host "A Review of the America Invents Act and its impact on the USPTO," with David Kappos. Kappos will discuss the USPTO's efforts to start implementing the law and also give a broad perspective of the various changes the agency is undertaking to facilitate the public's understanding of regulatory revisions. Also, Leonard Svensson will provide a brief overview of the major changes included in the America Invents Act and what the changes means for the San Diego innovation economy. [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Are Patent Filings Increasing or Decreasing?

by Dennis Crouch

The USPTO recently reported that in FY2011 and for the first time in history, more than 500,000 patent applications were filed during the fiscal year. 500,000 is a large number, but it turns out that the report of increased patent filings should not be seen as suggesting an increase in innovative activity. Rather, as the charts below demonstrate, the number of new patent filings has actually decreased over the past five years.

112211_1847_DecreasingP1

The dramatic increase in reported application filings shown by the chart above is entirely explained by the USPTO's odd accounting practice that counts the procedural "request for continued examination" (RCE) as a utility application filing. Under US patent procedures, a patent applicant faces a decision point after receiving a final rejection from the patent examiner. Generally, the applicant can (1) appeal the rejection to the administrative board, (2) abandon the application, or (3) file an RCE along with new material regarding patentability of the invention. Once an RCE is filed (along with the required fee), the same patent examiner is ordinarily required to again review the application and give it full consideration as to the patentability of the claimed invention.

As the chart below demonstrates, the number of RCEs filed annually has increased dramatically – almost doubling over the past five years. At the same time, original utility patent application filings have dropped slightly. I.e., patent filings are down. (To be clear, "original" applications as used here also include utility applications that claim priority to US provisional applications, international patent applications (PCTs), and foreign patent applications.)

112211_1847_DecreasingP2

What's the point: A rise in filings is helpful for the USPTO because it allows the agency to justify increased funding requests; to show its stature amongst world patent offices; and to demonstrate that the agency truly serves as a gatekeeper. Unfortunately, the report is not accurate. The positive side of these numbers is that the steady filing numbers should give the PTO breathing room to address the backlog of 1.2 million pending utility patent applications. 

Innovation and Competition Policy

By Dennis Crouch

Professor Herbert Hovenkamp (U. Iowa) is the most influential US antitrust scholar and author of the most cited legal treatise on antitrust law. He has written extensively on all areas of antitrust law, including the intersection between antitrust, innovation, and intellectual property.

Although the antitrust treatise sells for over $3,000, Professor Hovenkamp recently made new casebook on innovation and competition available for a free download (subject to an open source license agreement). The casebook is entitled INNOVATION AND COMPETITION POLICY: CASES AND MATERIALS. Professor Hovenkamp introduces the book as follows:

This book … differs from IP/antitrust casebooks in that it considers numerous sources of competition policy in addition to antitrust, including those that emanate from the intellectual property laws themselves, and also related issues such as the relationship between market structure and innovation, the competitive consequences of regulatory rules governing technology competition such as net neutrality and interconnection, misuse, the first sale doctrine, and the Digital Millennium Copyright Act (DMCA). The author uses this casebook for a three-unit class in Innovation and Competition Policy taught at the University of Iowa College of Law and available to first year law students as an elective.

Major topics include

  • Impact of patent scope on competition;
  • The law of tying;
  • Determining harm to innovation;
  • Competition policy in patent law;
  • Competition policy in copyright and under the DMCA;
  • Restraints on innovation;
  • Misuse of intellectual property;
  • Anticompetitive exclusion;
  • Innovation commons; and
  • Post-sale restraints that involve IP rights.

In the words of Prof. Solum, Download it while its hot!

USPTO Patent Grants

The USPTO appears headed toward another record breaking year in 2011 — issuing more utility patents in 2011 than in any prior year. I project that the PTO will issue about 225,000 utility patents by the end of the year, slightly more than last year’s record number of just under 220,000.  The vast majority of patents issued this year claim priority to at least one earlier patent document such as an international patent application (PCT), US provisional application, or prior US utility application.

PatentlyO121

Data is here.

USPTO Patent Grants

The USPTO appears headed toward another record breaking year in 2011 — issuing more utility patents in 2011 than in any prior year. I project that the PTO will issue about 225,000 utility patents by the end of the year, slightly more than last year’s record number of just under 220,000.  The vast majority of patents issued this year claim priority to at least one earlier patent document such as an international patent application (PCT), US provisional application, or prior US utility application.

PatentlyO121

Data is here.

USPTO Patent Grants

The USPTO appears headed toward another record breaking year in 2011 — issuing more utility patents in 2011 than in any prior year. I project that the PTO will issue about 225,000 utility patents by the end of the year, slightly more than last year’s record number of just under 220,000.  The vast majority of patents issued this year claim priority to at least one earlier patent document such as an international patent application (PCT), US provisional application, or prior US utility application.

PatentlyO121

Data is here.

In re Ricoh Patent Litigation: Costs May Be Awarded For Document Production Databases

By Jason Rantanen

In re Ricoh Company, Ltd. Patent Litigation (Fed. Cir. 2011) Download 11-1199
Panel: Lourie, Bryson, Dyk (author)

After seven years of litigation between Ricoh Co., the patent holder, and Synopsys, Inc., the latter party prevailed via summary judgment of noninfringement, a decision affirmed by the Federal Circuit earlier this year.  After Synopsys's victory on the merits, the district court awarded costs totalling $938,957.72.  Ricoh appealed, challenging three categories of costs as not allowed by 28 U.S.C. § 1920, the relevant authorizing statute.  In ruling on Ricoh's challenges, the Federal Circuit applied the law of the regional circuit (in this case that of the Ninth). 

Costs for Document Production Database: A significant expense of patent litigation is that of document discovery and this case was no exception.  During discovery Ricoh sought production of emails and other documents.  Initially the parties were unable to agree on the form of production, but ultimately agreed that Synopsys would produce documents using Stratify, an e-discovery company that provides document processing, review, production and hosting services.  The district court awarded the full cost of using Stratify as "fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case" under § 1920(4).

On appeal the CAFC agreed with the court's characterization of the costs.  "The act of producing documents is not so narrowly construed as to cover only printing and Bates-labeling a document."  Slip Op. at 6.  "Thus, the costs of producing a document electronically can be recoverable under section 1920(4)."  Id. at 7.  In this case, however, Ricoh and Synopsys had agreed during the litigation to share the costs of using Stratify.  The CAFC held that the agreement was controlling, leading it to reverse the district court's award for Synopsys's share of the database.

Note: Although not explicitly addressed by the panel, the parties' briefs suggest that Synopsys used Stratify as a mechanism for both review and production.  The CAFC's opinion is unclear on whether this should make any difference – it both implies that this dual use does not matter ("We do not consider any of the Stratify database costs to fall into the unrecoverable category of 'intellectual efforts,'" Slip Op. at 7), while at the same time leaving open the future possibility of disallowing certain costs tangential to the production itself. ("In light of our decision, we need not decide if the additional challenged items related to the database were improperly allowed.")

 Copying Costs Must Be Specific: The CAFC also declined to affirm the district court's award of copying costs, citing a lack of specificity in the supporting documentation:

When the prevailing party seeks to recover copying costs related to its own document production, to meet the documentation requirements, the prevailing party must establish, in connection with its proposed Bill of Costs, that the reproduced documents were produced by it pursuant to Rule 26 or other discovery rules; that they were copied at the prevailing party’s expense and at the request of the opposing party; and that the copies were tendered to the opposing party.

Depositions and Translation Costs Allowable: Ricoh also challenged the award of costs associated with depositions that were related to issues other than noninfringement.  The CAFC concluded that allowing costs for these depositions was within the discretion of the district court as it was reasonable to expect they would be used in trial.  It further held that the district court appropriately taxed costs for both  videotaping and preparation of written transcripts, rejecting Ricoh's argument that it was limited to one or the other.  

Holiday Gift List for Patent Attorneys and the Like

Happy Thanksgiving!

It is early in the holiday season, but not for mail-order… I'm also posting this list now to give you ample time to forward the list to potential gift-givers. Here are a dozen holiday gifts for patent law professionals.

  1. Knives? Yes patent attorneys can be excellent cooks if given the right tools and the right cook books. In my home, I use the very best unpretentious inexpensive knives on the market: Swiss Made Victorinox with Fibrox handles. A solid 8-inch chef knife sells for $26 at Amazon. The best cookbook is by Cooks Illustrated.Capture 103111_1657_HolidayGift1
  2. I have not tried this one — The Celluon Magic Cube Laser Projection Keyboard and Touchpad.  This futuristic device works according to independent reviews that I read.  The idea is that a little device wirelessly connects to your computer, phone, or tablet and then uses a laser to project a workable keyboard onto a flat surface! My photo here shows it in use with an iPad, but it works well with non-Apple equipment. $170. Watch it on YouTube.
  3. Making Your Case: The Art of Persuading Judges, by Justice Antonin Scalia and Bryan Garner.  
  4. Kindle is still a good bet. I'd go with either the Kindle Touch 3G (without special offers) or else the new Kindle Fire
  5. Digital Microscope with USB port to plug directly into the computer: Nature + Technology for $99.
  6. Utilikey 6-in-1 tool
  7. A Blue Laser Pointer.
  8. Really strong fridge magnets made of the rare earth metal neodymium. ($8 for 10).
  9. For those long nights at trial: http://www.iamastuffedanimal.com/
  10. Mini-Tripod ($3). MiniTripod
  11. BBQ Skewers: Link ($10)

(Special thanks to Erik Flom of Husch Blackwell for his help in compiling this list.)

 

 

New BPAI Final Rules

by Dennis Crouch

There are now 25,000 ex parte cases pending resolution before the Board of Patent Appeals and Interferences. For the most part, cases being decided today are appeals from final rejections mailed back in 2008 – at a time when the backlog was 80% less than today. And, as the chart below demonstrates, the backlog continues to grow at an alarming pace. Today, the USPTO published a new set of final rules of practice regarding ex parte patent appeals before the Board. The new rules do not directly address the backlog, but do refer to "streamlining" as an important purpose of the rules. As an aside, the recently published FY2011 USPTO Performance Report also fails to mention the BPAI backlog.

112111_2204_BPAIFinalRu1

New Rules: The newly published rules are designed to "streamline" practice before the Board of Patent Appeals and Interferences (BPAI) and only apply to ex parte patent appeals. As published, the rules will become effective in on January 21, 2011. The PTO had previously published a similar final that never went into effect and that is now formally withdrawn.

Changes include:

  • Jurisdiction: The Board will take jurisdiction over appeals automatically upon either the filing of the reply brief or expiration of the reply briefing filing deadline. Examiners will no longer be required to acknowledge the filing of a reply brief before the Board claims jurisdiction. (Historically, awaiting examiner acknowledgement took an average of 55 days).
  • Petitions During Appeal: Under the new rule, any petition (or information disclosure statement) filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends and will not be considered "of record" in the appeal. The primary exception to this is with regard to a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief. In that case, the applicant can await the petition decision and thereby avoid having to file a request for extension of time in which to file the reply brief.
  • New Grounds of Rejection: The rules clarify that an argument in the examiner's answer that uses evidence that was not relied upon in the office action will be considered a new ground of rejection. In addition, a rejection will be considered a "new grounds" when the "basic thrust" of the rejection as presented in the examiner's answer or the Board's decision is different than that presented in the office action. However, an examiner or Board's use of certain extrinsic evidence such as dictionaries will not, according to the new rules, automatically result in a new ground of rejection. The rules also include a loosening of the requirements on requests for re-hearing so that an applicant can present new arguments in a request for rehearing that respond to the merits of a new ground of rejection and allows the applicant to request rehearing for the purposes of arguing that the Board's decision contains an undesignated new ground of rejection.
  • Removal of Briefing Requirements: Removal of several briefing requirements, including statements of the status of claims, the status of amendments, and the grounds of rejection to be reviewed on appeal as well as an evidence appendix or a related proceedings appendix.
  • Claims Being Appealed: The new rule will require the Board to presume that the applicant is appealing all rejected claims.

Bits and Bytes by Dennis Crouch

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Bits and Bytes by Dennis Crouch

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Bits and Bytes by Dennis Crouch

PTO Funding:

  • PTO Funding: The US Joint Select Committee on Deficit Reduction (i.e., the Congressional Super-Committee) is unlikely to come to any agreement before its statutory deadline of November 23, 2011. The result is that the PTO’s allowed expenditures will likely be reduced in the resulting across-the-board cuts.
  • PTO Funding: Senator Kyl had pushed for a USPTO-funding provision in the Super-Committee agreement that would give the agency full authority to spend fees collected. However, that result is unlikely even if an agreement is eventually reached.
  • PTO Funding: As expected, the PTO received a rush of filings in the days leading up to the 15% fee hike on September 26, 2011. The PTO will not be allowed to spend that money because those payments were received in FY2011 and because the PTO had already collected more than its $2.09 billion authorization. Thus, for FY2011, $209 million in fee-revenue will be kept by the Treasury and spent on other governmental programs. The “reserve fund” was not established until the start of FY2012.

Dispute Resolution:

  • Dispute Resolution: Professor S.I. Strong and I both recently joined the Patent Mediation Task Force of the International Institute for Conflict Prevention and Resolution. The Patent Mediation Task Force is chaired by Manny Schecter of IBM. Our Task Force is focusing on both addressing particular hurdles that patent litigation presents for the mediation process and promoting mediation as a valuable tool resolving and narrowing patent disputes.
  • Dispute Resolution: I am also happy to announce that I recently joined University of Missouri’s Center for the Study of Dispute Resolution as a Senior Fellow.

iPad App:

  • iPad App: The folks at Cooper Legal have developed a Patent Portal App for searching for and viewing patents and patent applications.
  • iPad App: Tom Brow has developed an iPad app for logging in to EFS-web and PrivatePAIR.  The app securely transmits your PKI certificate and password to a remote server, which logs you in, then discards the certificate and password.  EFS and PrivatePAIR can then be used as usual, with no further server involvement.  Brow is looking for testers in the private beta.

Evaluating Supplemental Examination

By Jason Rantanen

As seen in the recent Powell v. Home Depot case that Professor Crouch wrote about last week, the net effect of a weakened inequitable conduct doctrine post-Therasense is an increase in the ability of applicants to engage in troubling behavior during patent prosecution.  My colleague Lee Petherbridge and I expressed this concern shortly after Therasense issued, particularly warning about its consequences for patent prosecutors who are arguably worse-off post-Therasense, caught between clients who may be more interested in playing fast and loose with the rules and their own ethical and legal responsibilities.

Therasense was not the only significant development in the area of inequitable conduct this year, however.  The creation of a mechanism for supplemental examination in the Leahy-Smith America Invents Act further alters the landscape of inequitable conduct, and not necessarily in a positive way.  In a short essay recently published in Michigan Law Review First Impressions, Professor Petherbridge and I examine the supplemental examination mechanism created by the AIA and conclude that it may jeopardize American innovation, job creation, and economic competitiveness.

A copy of the piece is available via SSRN.

Patent Models

MousetrapBy Jason Rantanen

As every student of patent law knows, inventors were required to submit a working miniature model of their invention along with their patent application until the late nineteenth-century.  Famous models include those of such iconic inventions as the Whitney cotton gin, the Singer sewing machine, and the Morse telegraph register.  A substantial number of those models still exist, although virtually all are in private collections. 

The Smithsonian Institute recently opened a a two-year exhibition of patent models from the collection of Alan Rothchild, offering everyone an opportunity to view examples of these models.  Entitled "Inventing a Better Mousetrap: Patent Models from the Rothschild Collection," the curated exhibit runs until November 3, 2013.  If you are in Washington D.C., it may be worth your while to wander over to the American Art Museum to check it out. 

Bonus: the Rothchild Peterson Patent Model Museum website has a page explaining what the models are and linking to the patents themselves.  

Federal Circuit Divided on Federal Jurisdiction over Legal Malpractice Claims

Stephen Byrne v. Wood, Herron & Evans (Fed. Cir. 2011)

Byrne’s malpractice claim alleges that his former patent attorneys at WHE failed to secure broad enough patent protection for his weed trimming device. See RE 34,815. In 2004, Byrne sued Black & Decker but lost on summary judgment. In that case, the district court ruled that B&D’s device could not infringe because of it did not include a “generally planar outboard flail stabilizing surface” as required by Byrne’s patent claims.

In the subsequent legal malpractice claim, WHE filed a summary judgment motion arguing that the prosecution history showed clearly that the “generally planar” limitation was necessary in order to distinguish Byrne’s invention from the cited prior art.  WHE also argued that Mr. Byrne’s claim should fail because he had so fully participated in the prosecution, including the addition of that limitation into the claim. In the responsive motion, Byrne filed an affidavit discussing the scope of the cited prior art and arguing that the limitation was not necessary for patentability.  Acting sua sponte, the district court rejected Byrne’s testimony — holding that he was not qualified to offer expert testimony as one of ordinary skill in the art.  Without any rebuttal evidence, the court then granted WHE’s motion for summary judgment of no malpractice.

Jurisdiction over Patent Prosecution Malpractice. In several recent cases, the Federal Circuit has expanded the scope of federal court and Federal Circuit jurisdiction over patent malpractice cases. Writing for a 2–1 majority, Judge O’Malley agreed that stare decisis compels federal jurisdiction in this case, but argued that the jurisdictional law should be revisited for cases like this where the cause of action is based upon state-law (malpractice) and the patent issue is only a question of a hypothetical patent claim.

Indeed, it is only the “special and small category” or “slim category” of cases in which a state law cause of action will trigger federal jurisdiction. . . .

[I]t is difficult to see teh federal interest in determining the validity of a hypothetical patent claim that is ancillary to a state law malpractice action. The outcome of such determinations invariably will rest on case-specific inquiries comparing prior art against patent claims that have not and will never issue. As such, these determinations, which involve only application and not interpretation of patent law, have little or no bearing on other cases. On the other hand, finding federal jurisdiction over malpractice cases involving questions of hypothetical patent claims opens the federal courthouse to an entire class of actions, thereby usurping state authority over this traditionally state law tort issue. . . .

Applying these federalism considerations, several courts either have outright disagreed with our analysis or have found a meaningful distinction when only hypothetical patent rights are at stake. . . . In many cases, the procedural posture prevents us from reviewing these decisions, thus allowing courts simply to ignore our law. We address the issues in this appeal, however, because our existing case law compels us to do so.

This is the type of issue that the Supreme Court tends to hear, and a high quality petition for certiorari would have a good chance of gaining the high court’s attention.  Aiding this theory are the growing number of state and federal court decisions that have criticized the Federal Circuit jurisdictional holdings and the general rarity non-patent-related cases of finding federal question “arising under” jurisdiction where no federal cause of action is alleged. 

On the merits, the Federal Circuit ruled that the lower court abused its discretion by refusing to let the inventor testify regarding the scope and content of the prior art and its relation to the invention. The particular problem with the lower court’s finding was that it made no finding of the qualifications of one of ordinary skill in the art and whether Byrne possessed that level of skill.  In several prior cases, the Federal Circuit has held that inventors typically possess at least ordinary skill in the relevant art and therefore “it is especially inappropriate for the district court to strike Byrne’s affidavit without going through the exercise of identifying the requisite level of skill.”  On remand, the district court will likely hear Byrne’s testimony and consequently reject WHE’s summary judgment motion.

Patently-O Bits & Bytes by Lawrence Higgins

Business Plan Competition

  • The Licensing Executive Society Foundation 2012 International Graduate Student Business Plan Competition registration has started. Graduate students, including MS/MBA/MD/JD/PhD and postdoctoral scholars, from across the globe are invited to register (http://les2012.istart.org) to participate in the 2012 LES Foundation Graduate Student Business Plan Competition, which uniquely focuses on business plans that include an overview of IP assets and describe how those assets will be managed and commercialized to achieve business goals. Student teams will compete to win expenses-paid trips to the Final Round of Competition at the LES (USA & Canada) Spring Meeting in Boston, MA, May 15-17, where they will attend educational sessions, mingle with global IP leaders and compete for the $10,000 Grand Prize and valuable in-kind prizes or the $5,000 Global Award. Runner-up teams receive $1,000. Students receive comprehensive feedback throughout the process from IP business leaders who share valuable expertise earned in the trenches of businesses ranging from start-ups to Fortune 500 companies. [Link]

The American Growth, Recovery, Empowerment and Entrepreneurship (AGREE) Act

  • On November 15, Senators Chris Coons and Marco Rubio introduced a jobs bill, the AGREE Act. Title VI: Protecting American Businesses Against Illegal Counterfeiting, of the Act reads: "The Coons-Rubio bill helps to protect American IP from counterfeit or otherwise infringing commercial activity. Specifically, the bill clarifies the Trade Secrets Act, making it explicitly clear that it is not a crime for federal officials, in the performance of their duties, to share information about suspected infringing products with the right holder of a trademarked good." This language will supposedly allow custom and border patrol agents to determine if merchandise is legitimate by asking the owner of the trademark that appears on the product. Further, Title II: Encouraging Cutting Edge-Research and Innovation, discusses various tax credits for businesses and is supported by BIO and the Semiconductor Industry Association. [Link]

.xxx and Cybersquatting

  • It seems that many universities and companies are playing it safe and are acquiring .xxx domain names. Organizations can currently pre-register .xxx domain names for around $200 dollars. The University of Missouri recently pre-registered mizzou.xxx, missouri.xxx, and missouritigers.xxx, because they do not want people coming across their trademarks on porn sites. It would seem ideal for educational institutions to pre-register .xxx domain names. However, should every trademark owner be so cautious? Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Cybersquatters can cost organizations money and time in their pursuit to try to get rights to a domain name. Therefore, I would think that it would be better to play it safe in this situation, and pre-register .xxx domain names. However, in the near future, there may be some very interesting cases of cybersquatting if an organization fails to pre-register. [Link] [Link]

Patent Jobs:

  • Baker & Hostetler is seeking a patent attorney with 5-8 years of experience. [Link]
  • Hewlett-Packard Company is searching for a patent counsel with a degree in EE, CE, Physics, or CE and 0-6 years of experience. [Link]
  • Hiscock & Barclay is looking for a patent attorney/agent with 3-5 years of experience. [Link]
  • Pramudji Law Group is seeking a patent attorney/agent with at least 2 years of experience and a degree in EE or physics. [Link]
  • Thompson Hine is searching for an associate with 3-5 years of experience and a degree in engineering or physics. [Link]
  • Abel IP is looking for a patent attorney with 4+ years of experience and a background in chemical and/or ceramic materials. [Link]
  • Oblon Spivak is seeking associates with 3-7 years of experience and a background in electrical or mechanical arts. [Link]
  • Shumaker & Sieffert is searching for patent attorneys with 2-5 years of experience and a background in EE, CE, CS, or physics. [Link]
  • Patent GC is looking for a trademark attorney and a patent attorney with an EE or CS background and 10+ years of experience in each case. [Link]
  • Mannava & King is looking for an electrical engineering patent attorney/agent and at least 2 years of experience. [Link]
  • Kacvinsky is seeking lateral associates with 4+ years of patent preparation experience and a degree in EE, CE, or CS. [Link]

Upcoming Events:

  • Has Your ADR Neutral Met Their Disclosure Requirement? Webinar will be held on November 18. The webinar is sponsored by the ABA Section on IP Law and ABA-IPL Young Lawyers Action Group. The program will discuss different ethical conflicts that may arise during IP Mediation/Arbitration and the level of disclosure required by the mediator/arbitrator. The webinar will start at 1:00 PM eastern time and last about 90 minutes. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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

Patently-O Bits & Bytes by Lawrence Higgins

Business Plan Competition

  • The Licensing Executive Society Foundation 2012 International Graduate Student Business Plan Competition registration has started. Graduate students, including MS/MBA/MD/JD/PhD and postdoctoral scholars, from across the globe are invited to register (http://les2012.istart.org) to participate in the 2012 LES Foundation Graduate Student Business Plan Competition, which uniquely focuses on business plans that include an overview of IP assets and describe how those assets will be managed and commercialized to achieve business goals. Student teams will compete to win expenses-paid trips to the Final Round of Competition at the LES (USA & Canada) Spring Meeting in Boston, MA, May 15-17, where they will attend educational sessions, mingle with global IP leaders and compete for the $10,000 Grand Prize and valuable in-kind prizes or the $5,000 Global Award. Runner-up teams receive $1,000. Students receive comprehensive feedback throughout the process from IP business leaders who share valuable expertise earned in the trenches of businesses ranging from start-ups to Fortune 500 companies. [Link]

The American Growth, Recovery, Empowerment and Entrepreneurship (AGREE) Act

  • On November 15, Senators Chris Coons and Marco Rubio introduced a jobs bill, the AGREE Act. Title VI: Protecting American Businesses Against Illegal Counterfeiting, of the Act reads: "The Coons-Rubio bill helps to protect American IP from counterfeit or otherwise infringing commercial activity. Specifically, the bill clarifies the Trade Secrets Act, making it explicitly clear that it is not a crime for federal officials, in the performance of their duties, to share information about suspected infringing products with the right holder of a trademarked good." This language will supposedly allow custom and border patrol agents to determine if merchandise is legitimate by asking the owner of the trademark that appears on the product. Further, Title II: Encouraging Cutting Edge-Research and Innovation, discusses various tax credits for businesses and is supported by BIO and the Semiconductor Industry Association. [Link]

.xxx and Cybersquatting

  • It seems that many universities and companies are playing it safe and are acquiring .xxx domain names. Organizations can currently pre-register .xxx domain names for around $200 dollars. The University of Missouri recently pre-registered mizzou.xxx, missouri.xxx, and missouritigers.xxx, because they do not want people coming across their trademarks on porn sites. It would seem ideal for educational institutions to pre-register .xxx domain names. However, should every trademark owner be so cautious? Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. Cybersquatters can cost organizations money and time in their pursuit to try to get rights to a domain name. Therefore, I would think that it would be better to play it safe in this situation, and pre-register .xxx domain names. However, in the near future, there may be some very interesting cases of cybersquatting if an organization fails to pre-register. [Link] [Link]

Patent Jobs:

  • Baker & Hostetler is seeking a patent attorney with 5-8 years of experience. [Link]
  • Hewlett-Packard Company is searching for a patent counsel with a degree in EE, CE, Physics, or CE and 0-6 years of experience. [Link]
  • Hiscock & Barclay is looking for a patent attorney/agent with 3-5 years of experience. [Link]
  • Pramudji Law Group is seeking a patent attorney/agent with at least 2 years of experience and a degree in EE or physics. [Link]
  • Thompson Hine is searching for an associate with 3-5 years of experience and a degree in engineering or physics. [Link]
  • Abel IP is looking for a patent attorney with 4+ years of experience and a background in chemical and/or ceramic materials. [Link]
  • Oblon Spivak is seeking associates with 3-7 years of experience and a background in electrical or mechanical arts. [Link]
  • Shumaker & Sieffert is searching for patent attorneys with 2-5 years of experience and a background in EE, CE, CS, or physics. [Link]
  • Patent GC is looking for a trademark attorney and a patent attorney with an EE or CS background and 10+ years of experience in each case. [Link]
  • Mannava & King is looking for an electrical engineering patent attorney/agent and at least 2 years of experience. [Link]
  • Kacvinsky is seeking lateral associates with 4+ years of patent preparation experience and a degree in EE, CE, or CS. [Link]

Upcoming Events:

  • Has Your ADR Neutral Met Their Disclosure Requirement? Webinar will be held on November 18. The webinar is sponsored by the ABA Section on IP Law and ABA-IPL Young Lawyers Action Group. The program will discuss different ethical conflicts that may arise during IP Mediation/Arbitration and the level of disclosure required by the mediator/arbitrator. The webinar will start at 1:00 PM eastern time and last about 90 minutes. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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