Frost Brown Todd LLC, one of the 150 largest law firms in the United States with a top rated Midwest intellectual property practice, seeks a Patent Prosecution Associate with at least 3 years of experience. Applicants should have a degree in Mechanical Engineering, excellent academic credentials, writing and communication skills and be capable of independent and creative work. Initially the candidate will be located in our Cincinnati office with the possibility to relocate to one of our other offices after meeting training requirements.
Contact: To learn more about us and the communities we serve, we invite you to visit our home page at www.frostbrowntodd.com. Send resume, law school and undergraduate transcripts and writing samples to:
Karen Laymance Frost Brown Todd LLC 2200 PNC Center 201 East Fifth Street Cincinnati, Ohio 45202
Wood, Herron & Evans, L.L.P., a Cincinnati-based intellectual property law firm, is seeking an associate to join our growing Cincinnati office of over 50 attorneys. For over 140 years, Wood, Herron & Evans (www.whepatent.com) has served the intellectual property legal interests of technology and consumer product companies of all sizes, government agencies, universities, individuals, and start-up ventures. Many of our clients have been with the firm for decades. The associate will be involved in all aspects of the firm's intellectual property practice with an emphasis on the preparation and prosecution of patent applications within their technical area of expertise.
Our ideal candidate must have a degree in electrical engineering, mechanical engineering, or a closely related field with demonstrable academic success, and must have passed a state bar and be registered to practice before the United States Patent and Trademark Office. Two to four years of legal experience in a law firm or corporate environment are preferred. A candidate must demonstrate exceptional writing and analytical skills. An advanced degree, prior experience as an Examiner, and/or industry experience will be favorably considered. Benefits include a competitive salary; great work environment; medical benefits; and a 401(k)/retirement program.
Contact: Interested candidates should e-mail a cover letter, resume, and transcripts to jobapp@whepatent.com.
Additional Info: Employer Type: Law Firm Job Location: Cincinnati, Ohio
The Los Angeles office of Ladas & Parry, LLP, an international intellectual property law firm, is seeking experienced intellectual property prosecutors with any one of the following: 1) registration as a patent agent/attorney before the USPTO and a bachelor's degree in electrical engineering; 2)registration as a patent agent/attorney before the USPTO, a bachelor's degree in chemistry, and some portable book of business; and 3) at least two years of trademark prosecution experience with a self-supporting book of business.
Contact: if you are interested in applying for any of these positions, please submit your resume and cover letter to atresume@ladas.com.
Additional Info: Employer Type: Law Firm Job Location: Los Angeles, California
The coming year is certain to bring a host of interesting and important changes to patent law that we will continue to write about, and I wish all of Patently-O's readers a prosperous, rewarding, and enjoyable 2011. Not to be overlooked, though, are a few events that occurred during the past few weeks:
Judge Kathleen O'Malley joins the Federal Circuit: Just a few days after the Senate confirmed her nomination, former Northern District of Ohio Judge Kathleen O'Malley was sworn in by Chief Judge Rader. She becomes the tenth active non-senior judge on the court. As an experienced jurist, she will likely have an immediate impact on the court's jurisprudence, although presumably she will not participate in the two currently-pending en banc appeals, TheraSense v. Becton Dickinson and Tivo v. Echostar.
Changes to Federal Rules of Appellate Procedure: On December 1, 2010, three changes to the Federal Rules of Appellate Procedure went into effect. These changes consisted of adding a definition of the term "state" that includes the District of Columbia and United States commonwealths and territories (Fed. R. App. P. 1) and modifying several rules that referred to Federal Rule of Civil Procedure 58(a)(1). These rules now refer to Federal Rule of Civil Procedure 58(a) (the separate document judgment rule) in its entirety. In addition, Fed. R. App. P. 29 now requires more information about who assisted with an amicus brief, including whether a party's counsel authored the brief in whole or in part, whether a party or its counsel contributed money intended to fund preparing or submitting the brief, and the identity of any persons other than the amicus curiae, its members, or its counsel who contributed money that was intended to fund preparing or submitting the brief. The complete list of changes is available in a letter from Jan Horbaly, the CAFC Clerk of Court.
USPTO Opens Detroit Office: As Dennis predicted earlier, on December 16, Director Kappos announced plans to open the first USPTO satellite office in Detroit, Michigan. The office will open in 2011, and represents an effort to broaden the PTO's workforce through geographic diversity. Depending on the success of the Detroit office, the PTO will consider opening additional satellite offices.
Patent Pilot Program for U.S. District Courts: On December 17, Congress gave its final stamp of approval to H.R. 628, which establishes a pilot program to encourage the enhancement of patent case expertise among district court judges. Under the Act, at least six district courts will be designated for the program. Judges in these districts will be able to request to hear cases involving patent issues, although patent cases will still be randomly assigned regardless of whether a judge is so designated. However, non-designated judges may decline to accept a patent case if it is assigned to them, and should this occur the case will be re-assigned to a designated judge. In effect, this program will hopefully provide a slight push towards some judges hearing more patent cases than others (and thus developing more expertise in that area), but stops well short of creating a specialized court of trial judges who hear only patent cases (and, unlike the original bill, in the final version there is no money appropriated for specialized training or clerks for designated judges). The Act also requires periodic reporting of comparison data between designated judges and non-designated judges on issues such as their respective reversal rates by the CAFC.
The coming year is certain to bring a host of interesting and important changes to patent law that we will continue to write about, and I wish all of Patently-O's readers a prosperous, rewarding, and enjoyable 2011. Not to be overlooked, though, are a few events that occurred during the past few weeks:
Judge Kathleen O'Malley joins the Federal Circuit: Just a few days after the Senate confirmed her nomination, former Northern District of Ohio Judge Kathleen O'Malley was sworn in by Chief Judge Rader. She becomes the tenth active non-senior judge on the court. As an experienced jurist, she will likely have an immediate impact on the court's jurisprudence, although presumably she will not participate in the two currently-pending en banc appeals, TheraSense v. Becton Dickinson and Tivo v. Echostar.
Changes to Federal Rules of Appellate Procedure: On December 1, 2010, three changes to the Federal Rules of Appellate Procedure went into effect. These changes consisted of adding a definition of the term "state" that includes the District of Columbia and United States commonwealths and territories (Fed. R. App. P. 1) and modifying several rules that referred to Federal Rule of Civil Procedure 58(a)(1). These rules now refer to Federal Rule of Civil Procedure 58(a) (the separate document judgment rule) in its entirety. In addition, Fed. R. App. P. 29 now requires more information about who assisted with an amicus brief, including whether a party's counsel authored the brief in whole or in part, whether a party or its counsel contributed money intended to fund preparing or submitting the brief, and the identity of any persons other than the amicus curiae, its members, or its counsel who contributed money that was intended to fund preparing or submitting the brief. The complete list of changes is available in a letter from Jan Horbaly, the CAFC Clerk of Court.
USPTO Opens Detroit Office: As Dennis predicted earlier, on December 16, Director Kappos announced plans to open the first USPTO satellite office in Detroit, Michigan. The office will open in 2011, and represents an effort to broaden the PTO's workforce through geographic diversity. Depending on the success of the Detroit office, the PTO will consider opening additional satellite offices.
Patent Pilot Program for U.S. District Courts: On December 17, Congress gave its final stamp of approval to H.R. 628, which establishes a pilot program to encourage the enhancement of patent case expertise among district court judges. Under the Act, at least six district courts will be designated for the program. Judges in these districts will be able to request to hear cases involving patent issues, although patent cases will still be randomly assigned regardless of whether a judge is so designated. However, non-designated judges may decline to accept a patent case if it is assigned to them, and should this occur the case will be re-assigned to a designated judge. In effect, this program will hopefully provide a slight push towards some judges hearing more patent cases than others (and thus developing more expertise in that area), but stops well short of creating a specialized court of trial judges who hear only patent cases (and, unlike the original bill, in the final version there is no money appropriated for specialized training or clerks for designated judges). The Act also requires periodic reporting of comparison data between designated judges and non-designated judges on issues such as their respective reversal rates by the CAFC.
Holland & Hart is seeking a senior licensing and technology transactional attorney with 10+ years of relevant experience to join our telecommunications, licensing and technology group in our Denver or Boulder, CO office, or, depending on various other factors and if preferred by a qualified candidate, our Salt Lake City, UT or Boise, ID office.
Candidates must have been engaged in a partner-level practice, preferably with large firm/client experience. Book of business not required, but may help provide flexibility as to office location.
Contact: Please send resume, cover letter and law school transcript to:
Dan Wille Holland & Hart LLP P.O. Box 8749 Denver, CO 80201-8479
Also, please include job reference #71910. Holland & Hart LLP is an equal opportunity employer. No unsolicited resumes from search firms, please.
Additional Info: Employer Type: Law Firm Job Location: Denver or Boulder, CO office, or, depending on various other factors and if preferred by a qualified candidate, our Salt Lake City, UT or Boise, ID office.
Holland & Hart is seeking a senior licensing and technology transactional attorney with 5+ years of experience to join our telecommunications, licensing and technology group in Boulder, CO, Denver, CO, Salt Lake City, UT, or Boise, ID (candidate's choice).
Candidates must have an outstanding academic record, demonstrate superior drafting and communication skills, and have experience with large firm/client practice and expectations. Demonstrable business development success a bonus. References will be required.
Contact: Please send resume, cover letter and law school transcript to:
Dan Wille Holland & Hart LLP P.O. Box 8749 Denver, CO 80201-8479
Holland & Hart LLP is an equal opportunity employer. No unsolicited resumes from search firms, please.
Additional Info: Employer Type: Law Firm Job Location: Denver or Boulder, CO office, or, depending on various other factors and if preferred by a qualified candidate, our Salt Lake City, UT or Boise, ID office.
The USPTOis seeking experienced intellectual property (IP) professionals to fill positions as Patent Examiners. ARE YOU AN IP PROFESSIONAL who can scrutinize patent applications, determine the scope of protection claimed by inventors, research relevant technologies, and communicate findings and decisions to patent practitioners and/or inventors?The USPTO wants you!
The USPTO is hiring experienced IP professionals for Patent Examiner positions. MULTIPLE VACANCIES are available!
We Are Seeking: • experienced IP professionals for all patent technology centers; • knowledgeable IP professionals in administrative and legal matters associated with the patents process; • IP professionals with the ability to communicate effectively orally and in writing.
What’s In It for You? • receive a four (4) week period of formal training in the Patent Training Academy; • opportunities to use the sum of your valuable IP experience and knowledge to contribute to a strong global economy; • an attractive and competitive compensation/benefits package.
Key Requirements: • US Citizenship. • Transcripts are required.
Required Qualifications: Successful completion of a full 4-year course of study in an accredited college or university leading to a bachelor’s or higher degree that included a major field of study or specific course requirements in one of the following disciplines: Computer Science, Computer Engineering, Electrical Engineering, Pharmacology, Petroleum Engineering, Nuclear Engineering, Materials Engineering, Mechanical Engineering, Biomedical Engineering, Chemical Engineering, Physics, Food Technology and Chemistry.
In addition of the Basic Qualification Requirements, you must have had one year of specialized experience in Patent Prosecution.
Contact: This position is being advertised at the General Schedule (GS) 11 grade level ($69,899.00 – $90,866.00 USD/year) with promotion potential to the GS 13 grade levels ($95,326.00 – 123,923.00 USD/year). To find out more about this exciting opportunity and the qualifications requirements (specialized experience); please visit our vacancy announcements at: www.USPTOcareers.gov.
Complete details and specific job application requirements are included in the job posting on www.USPTOcareers.gov. To be considered for this position, you must apply online.
Additional Info: Employer Type: Government Job Location: Alexandria, Virginia
Work in a place where your intellectual property patent skills and your engineering or scientific degree can help keep American ingenuity on the cutting edge. Every day at the United States Patent and Trademark Office (USPTO), our Patent Examiners witness groundbreaking scientific and technological progress, while playing a major role in granting exclusive rights to inventors.
The USPTO, headquartered in Alexandria, Virginia, provides an enticing work environment supported by flexible work schedules, a casual dress policy, and payment of a transit subsidy. There is a substantial benefits package including enhanced federal government salary rates, vacation and sick leave, performance bonuses, health benefits, and a comprehensive retirement package, not to mention job security.
USPTO's Deputy Director Sharon Barner has announced her resignation. Deputy Director Barner has been Director Kappos's second-in-command since October of 2009. Prior to joining the USPTO, Barner was a senior partner at the Foley law firm in Chicago. She has not announced publicly whether she will return to private practice. Barner is leaving government service with a number of important accomplishments in-hand and without any major scandal on her tail. She remains a likely candidate for a potential nomination to the Court of Appeals for the Federal Circuit if another opening arises during President Obama's time in office. Congratulations Deputy Director Barner!
Under the law, the USPTO Director David Kappos has the power to nominate a new Deputy, but the actual appointment is done by the Secretary of Commerce (Locke). 35 U.S.C. 3 requires that "The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law." Within current PTO inner circle, Chief Communication Officer Peter Pappas has been suggested for the position as has Patent Commissioner Bob Stoll. Traditionally, the Patent Commissioner serves as interim deputy director until the office is filled. However, Director Kappos has full control over the interim organization. Peggy Focarino is currently the Deputy Commissioner of Patents.
Patenting Methods of Treatment. After deciding Bilski, the Supreme Court asked Fed. Cir. to take a fresh look at the case of Prometheus v. Mayo. In Prometheus, the patent in question is directed toward an iterative method of determining the correct dosing of a drug by injecting a quantity of the drug and then measuring the level of the drug found in the body. The Mayo Clinic and its supporters argue that the patent should be held invalid under 35 U.S.C. 101 as lacking patentable subject matter. The Federal Circuit has now released its new opinion on the case, holding once again that the claims are patentable. More to come.
Silence Implies Consent. A reader sent me a copy of the recent BPAI rehearing decision ex parteNjo involving a Pitney Bowes patent application. In the original appeal, the patent applicant had not filed a reply brief to directly contest the examiners arguments. The BPAI made clear that failure to respond should be seen as acquiescence. "This absence does, in our view, also suggest that such inaction may constitute acquiescence in the Examiner's arguments. "Silence implies assent." Harper and Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)." Consequently, the Board refused to allow the applicant to present new counter arguments that could have been raised in the reply brief.
Hands free typing. This week I had a successful shoulder surgery. The folks at Nuance were nice enough to give me a free copy of their voice transcription software known as Dragon NaturallySpeaking 11 (legal). I am now writing the blog hands free!
USPTO's Deputy Director Sharon Barner has announced her resignation. Deputy Director Barner has been Director Kappos's second-in-command since October of 2009. Prior to joining the USPTO, Barner was a senior partner at the Foley law firm in Chicago. She has not announced publicly whether she will return to private practice. Barner is leaving government service with a number of important accomplishments in-hand and without any major scandal on her tail. She remains a likely candidate for a potential nomination to the Court of Appeals for the Federal Circuit if another opening arises during President Obama's time in office. Congratulations Deputy Director Barner!
Under the law, the USPTO Director David Kappos has the power to nominate a new Deputy, but the actual appointment is done by the Secretary of Commerce (Locke). 35 U.S.C. 3 requires that "The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law." Within current PTO inner circle, Chief Communication Officer Peter Pappas has been suggested for the position as has Patent Commissioner Bob Stoll. Traditionally, the Patent Commissioner serves as interim deputy director until the office is filled. However, Director Kappos has full control over the interim organization. Peggy Focarino is currently the Deputy Commissioner of Patents.
Patenting Methods of Treatment. After deciding Bilski, the Supreme Court asked Fed. Cir. to take a fresh look at the case of Prometheus v. Mayo. In Prometheus, the patent in question is directed toward an iterative method of determining the correct dosing of a drug by injecting a quantity of the drug and then measuring the level of the drug found in the body. The Mayo Clinic and its supporters argue that the patent should be held invalid under 35 U.S.C. 101 as lacking patentable subject matter. The Federal Circuit has now released its new opinion on the case, holding once again that the claims are patentable. More to come.
Silence Implies Consent. A reader sent me a copy of the recent BPAI rehearing decision ex parteNjo involving a Pitney Bowes patent application. In the original appeal, the patent applicant had not filed a reply brief to directly contest the examiners arguments. The BPAI made clear that failure to respond should be seen as acquiescence. "This absence does, in our view, also suggest that such inaction may constitute acquiescence in the Examiner's arguments. "Silence implies assent." Harper and Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)." Consequently, the Board refused to allow the applicant to present new counter arguments that could have been raised in the reply brief.
Hands free typing. This week I had a successful shoulder surgery. The folks at Nuance were nice enough to give me a free copy of their voice transcription software known as Dragon NaturallySpeaking 11 (legal). I am now writing the blog hands free!
Commerce Secretary Gary Locke and PTO Director David Kappos will be holding a press conference later today. I expect that they will announce plans to open the first USPTO satellite office in Detroit, Michigan.
MedImmune is seeking Corporate Counsel/Senior Corporate Counsel, Intellectual Property to work in its Gaithersburg, Md., headquarters.
Major Duties and Responsibilities: • Manage all aspects of large intellectual property estates in several therapeutic areas including oncology, inflammatory and infectious disease; antibody and other polypeptide-based technologies • Closely interact with Research & Development organizations, including senior management, to identify new inventions and devise strategies for patent protection, risk mitigation • Work with in-house attorneys, patent agents, and with outside counsel in preparation and prosecution of patent applications • Evaluate and monitor patent portfolios of third parties • Manage small team of attorneys and/or patent agents • Provide IP and technical analysis in support of patent litigations • Review and analyze license agreements and other contracts
Other Skills/Abilities: • High level of professionalism and motivation, ability to work independently • Ability to manage multiple tasks and projects with rapidly changing priorities • Outstanding legal skills, excellent attention to detail • Effective oral and written communication skills • Excellent interpersonal skills • Computer skills (especially experience with databases) • Effective management and leadership skill
Job Complexity: Detailed and complex legan and technical analysis.
Supervision: Some supervision, but much independence
Education: • Attorney with a USPTO Reg. No. • Ph.D. or M.S. with several years of laboratory experience
Experience: • At least 5 years patent prosecution experience in the area of therapeutic biologics • At least 2 years of management experience • In-house corporate biotech experience preferred
Contact: If you are interested in this position, please apply online at www.medimmune.com/careers and search for Req #02910.
MedImmune is an Equal Opportunity/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, gender, age, national origin, disability, veteran status, or any other characteristic protected by federal, state or local law.
MedImmune does not accept non-solicited resumes or candidate submittals from search/recruiting agencies not already on MedImmune’s approved agency list. Unsolicited resumes or candidate information submitted to MedImmune by search/recruiting agencies not already on MedImmune’s approved agency list shall become the property of MedImmune and if the candidate is subsequently hired by MedImmune, MedImmune shall not owe any fee to the submitting agency.
Additional Info: Employer Type: Large Corporation Job Location: Gaithersburg, Maryland
My company shares my passion for helping to improve human health around the world.”
“This is My MedImmune.”
Those who join MedImmune feel a sense of ownership about their future. They thrive with a recognized leader in the biotechnology industry and the wholly-owned subsidiary of AstraZeneca plc.
Here, you will join passionate professionals who advance science, technology and medicine to develop products designed to help people live better lives. You will excel in an environment characterized by respect, integrity and growth opportunities…that encourages both individual contribution and collaborative entrepreneurial thinking. Our products and/or product candidates are designed to address areas of need in infection, oncology, respiratory disease and inflammation, cardiovascular/gastrointestinal disease and neuroscience. Explore a MedImmune career as we strive to better more lives, more often, around the world.
Gracenote, Inc. is seeking a Patent Specialist to work in the San Francisco Bay Area. The Patent and Information Specialist will interface with the technical, business and legal groups of the Company and external service providers to facilitate the day-to-day activities involved in patent prosecution, be responsible for organization of technical documents and publications, and be a gatekeeper for document exchange in certain third party relationships.
This position will play a key role in developing, organizing, obtaining and maintaining the intellectual property portfolio of the Company.Gracenote is looking for an enthusiastic team player that works well in a team environment. Candidate must demonstrate excellent writing, analytical and communication skills. The successful candidate will have an educational background in electrical engineering or computer science, in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the multimedia technology field. The successful candidate will also have the requisite technical qualifications to assist in the drafting of applications and responses to office actions. The position will involve working closely with scientists and management as well as with an external IP firm and consultants to secure intellectual property for inventions worldwide. The position requires drafting and helping prosecuting patent applications worldwide; patent and literature database searching; reviewing and evaluating new invention disclosures; coo! rdinating with outside counsel and communicating with inventors in preparation and prosecution of patent applications; conducting patentability assessments; and supporting intellectual property opinion work and landscaping efforts. Other key responsibilities include participating in due diligence with in-house and outside counsel to evaluate IP portfolios and technologies.
Responsibilities: • Prepare, file and prosecute patent applications worldwide. • Coordinate with and oversee outside counsel in the preparation and prosecution of patent applications. • Interface with scientists/engineers to collect and organize invention disclosures, details and data for patent applications. • Assist in the development of patent filing, claim construction, and prosecution process. • Conduct patentability assessments. • Search patent and open literature in complex areas of science, and provide reports on prior art, patent references, monitoring of competition, due diligence and freedom to operate. • Interface with IP counsel (internal and external) and provide information for the preparation, filing and prosecution of patent applications, freedom-to-operate analyses, and guidance on technical matters • Support intellectual property opinion work and landscaping efforts. • Oversight and regulation of patent portfolio data management and status
Qualifications: • 2-5 years of in-house or law firm experience in the preparation and prosecution of patent applications, freedom-to-operate, and validity and infringement analysis in the multimedia technology field. • Undergraduate degree in electrical engineering or computer science • Excellent writing, analytical and communication skills. • Familiarity with scientific and intellectual property databases and use of the same. • Ability to organize patent and technical literature data in the context of an internal electronic database, and maintain such a database. • Working knowledge of the patent laws, regulations and patent practice in general. • Organized, independent, detailed oriented, capable of working on multiple tasks. • Enthusiastic and works well in a team environment. Proficient with Microsoft Office components (Word, Excel, PowerPoint, etc.).
Desirable: • Graduate degree in electrical engineering or computer science Licensed to practice before the U.S. Patent and Trademark Office
In Costco, the Supreme Court was asked to apply the first sale doctrine of copyright law in the context of international sales. Costco had purchased legitimate Omega watches abroad and then imported them into the US. The watches included a small copyrighted design on the back surface and Omega argued that the importation and further distribution of the watches constituted copyright infringement. Ordinarily, the purchaser of a legitimate copy of a work can lawfully resell the copy based on the first sale doctrine (also known as copyright exhaustion). The trick, however, is that copyright is territorial in nature and the first sale abroad arguably did not “exhaust” the US copyright. The 9th Circuit had sided with Omega — holding that the first sale doctrine did not apply to foreign manufactured copies that were purchased abroad.
Without opinion, and in a 4–4 split, the Supreme Court has affirmed the 9th Circuit decision. However, because of the 4–4 split, the case will not be seen as precedent-setting. Thus, as Ryan Vacca wrote in an e-mail this morning: “Our unanswered questions . . . remain unanswered.”
The Los Angeles office of Ladas & Parry, LLP, an international intellectual property law firm, is seeking an experienced patent prosecutor with a bachelor's degree in chemistry and preferably some book of business.
Contact: If you are interested in applying for this position, please submit your resume and cover letter to atresume@ladas.com.
Additional Info: Employer Type: Law Firm Job Location: Los Angeles, California
Robert Bosch LLC is seeking to fill the position of Patent Agent. Based in Broadview, IL. the Senior Patent Manager will primarily be responsible for managing the patent portfolio for multiple Bosch divisions in North America. Responsibilities will include working with engineering and marketing departments to elicit and prioritize innovations for patenting, drafting patent applications, managing work of outside counsel, assisting with patentability and infringement studies, and working with divisions on strategic patent portfolio management. Focus will include electrical and mechanical arts, as well as software methods and modern technologies.
Requirements: • Bachelor’s of Science • Registered to practice before the U.S. Patent & Trademark Office (Patent Agent) • 3 years of experience drafting patent applications or 5 years experience in comparable in-house position • Excellent communication skills • Excellent analytical and organizational skills • Proficient in MS Word, MS Excel, and comfortable working in database programs.
Bosch offers a tremendous benefits package which includes a paid pension, an aggressive 401K plan, tuition reimbursement, and excellent career opportunities.
Contact: Qualified candidates can send their resumes and salary history to Mike Borgen at mike.borgen@us.bosch.com.
Additional Info: Employer Type: Large Corporation Job Location: Broadview, Illinois
Rabin & Berdo, PC, a boutique IP law firm in downtown Washington, D.C., is seeking a bi-lingual IP attorney/agent with an undergraduate and/or graduate degree(s) preferably in electrical engineering or physics, to work in a friendly, casual, and cooperative environment with opportunities for professional advancement.
Requirements: The ideal candidate must be proficient in reading and writing in both the English and Japanese languages, have excellent analytical & writing skills, and preferably have prosecution expertise in electrical engineering, software, optics, semiconductors, physics, telecommunications, and/or digital signal processing. An otherwise qualified candidate with experience in other engineering disciplines will also be considered.
Responsibilities: Will primarily include patent preparation and prosecution in diverse fields of technology with emphasis on electrical engineering, semiconductors and computer hardware and software. The candidate will have opportunities for involvement in other intellectual property areas including preparation of patentability, and validity opinions, and trademark prosecution. The candidate will be required to communicate with various Japanese clients, prepare translations as needed, and periodically travel to Japan. Representative clients include national and multinational corporations. Flexible work hours available.
Contact: Interested candidates please send resume and cover letter to firm@rabinberdo.com.
Additional Info: Employer Type: Law Firm Job Location: Washington, D.C.
Nagoya International Patent Firm is a leading Japanese intellectual property firm located in Nagoya, Japan. We are seeking a US attorney having a Juris Doctor (J.D.) with admission to a state bar and registration to practice before the U.S. Patent and Trademark Office. In general, the job will entail overseeing foreign prosecution, providing opinions concerning US patents, provided advice/support on litigation and transactional matters, updating our firms attorneys on current U.S. practice and legal decisions, general advice concerning copyright/trademark matters, and other legal advice. Preferred candidates will have at least 2-5 years of experience working in a law firm or in-house with significant prosecution experience. A degree in mechanical or electrical engineering is preferred, although other disciplines will be considered. The candidate is not required to speak Japanese. A minimum 2-year contract is required. Salary will be negotiated based upon work experience.
Nagoya is the 4th largest city in Japan, located between Tokyo and Osaka on the bullet train, and is home to Toyota Motor Company, among many other multinational companies. We have employed US patent attorneys at our office, and have a demonstrated ability to make that transition work for both parties involved. You can find more information at: http://www.patent.gr.jp/english/index.html.
On Monday, Petitioner Global-Tech filed its brief in the inducement of infringement case pending before the Supreme Court. The complete brief can be downloaded from the American Bar Association's website. The arguments are summarized below:
35 U.S.C. 271(b) Requires the State of Mind of "Purposeful, Culpable Expression and Conduct" to Encourage an Infringement.
Global-Tech takes the position that inducement of patent infringement under 271(b) requires "'purposeful, culpable expression and conduct' to encourage an infringement." In other words, the accused party must possess the "purpose" of causing the infringement of a patent - even knowledge of infringement is insufficient. In support of this position, Global-Tech relies heavily on MGM Studies, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), a copyright inducement case in which the Court discussed 271(b) and described the inducement rule as premising liability on "purposeful, culpable expression and conduct." Global-Tech buttresses its argument by asserting that a lower standard would make 271(b) so broad as to render 271(c) (contributory infringement) insignificant and, furthermore, is supported by the legislative history.
Global-Tech also raises two policy considerations. First, it delves into the issue of causation, suggesting that because 271(b) does not contain a causation requirement, Congress must have intended to for it to apply only to "morally culpable conduct" - which Global-Tech equates with purpose. Second, it argues that (absent clear Congressional intent) there is a presumption that statutes are meant to only regulate conduct outside the United States to the extent necessary to further important U.S. interests, and that anything less than a "purposeful, culpable expression and conduct" standard is unnecessary to further U.S. interests.
The "Deliberate Indifference" Standard is Wrong
In addition to advancing its "purposeful, culpable expression and conduct" approach to inducement, Global-Tech also argues that the Federal Circuit's "deliberate indifference to a known risk" standard is lower than knowledge, recklessness, and even negligence. Global-Tech rests this assertion on the proposition that because the Federal Circuit's articulation of the "deliberate indifference" standard did not specify the degree of risk, it thus encompasses even minimal risks of infringement. Global-Tech further argues that the risk in this case was of the minimal variety because it did not know about the patent and because of the uncertainties of both claim construction and infringement proceedings.
Global-Tech raises two additional arguments. After asserting that aiding and abetting, a related tort doctrine, requires knowledge of the actor's participation in an underlying crime or tort, it then contends that the use of "actively," "induces," and "infringement" in 271(b) signals that the standard must be higher than that of aiding and abetting (i.e.: purpose). From a policy standpoint, Global-Tech criticizes the "deliberate indifference" standard as being quite unclear - and thus placing a burden on competition and innovation.
Global-Tech concludes by asserting that if the Court holds that 271(b) requires not just purposeful, culpable conduct or knowledge, but also recklessness, it should reverse and remand.
In GlobalTech v. SEB, the Supreme Court is addressing the question "[w]hether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is "deliberate indifference of a known risk" that an infringement may occur...or instead "purposeful, culpable expression and conduct" to encourage an infringement.” Yet, as I suggested last month, perhaps framing the issue as an involving an inquiry into the subjective state of mind of an accused inducer isn't the best approach. Instead, I propose that an analysis akin to civil recklessness - asking whether a high risk of infringement of a valid patent would have been obvious to a reasonable person in the accused party's position - is the better way to view the fault component of indirect infringement.
That's the central argument of a draft article that I've prepared, and I'm interested in any feedback readers might have. The abstract is provided below; the complete paper is available here.
Unlike direct patent infringement (a strict liability claim), indirect and willful infringement require the patent holder to demonstrate fault on the part of the accused infringer. The conventional approach to the fault elements of these doctrines views them as involving a subjective inquiry into the accused party’s state of mind. Inducement of infringement, for example, requires that the alleged infringer possess mental culpability for it to be found liable. The question presented by the Supreme Court’s recent grant of certiorari in Global-Tech v. SEB is the quintessential illustration of this conventional view, asking whether the “state of mind” of the accused party is one of “deliberate indifference” or “purpose.” This mens rea-based approach to fault is likely the product of indirect infringement’s origins as an adaptation of the tort theory of aiding and abetting, an intentional tort.
This paper asserts that this conventional view of fault for indirect infringement is inherently flawed, and is largely nonsensical in the modern context in which indirect infringement is assessed. In large part this is because fault in patent infringement, unlike the tort tradition in which it was developed, involves assessment of particular legal – as opposed to factual – consequences, consequences that are both rarely certain and unlikely to ever be desired.
Rather than continuing to view the fault elements of these doctrines as if they were traditional intentional torts, this paper proposes that the law should instead apply an objective test more closely tailored to the specific context in which patent infringement arises. Specifically, it suggests that a better approach is to conceive of the fault element as requiring an objective inquiry into whether a high risk of patent infringement would have been obvious to another in the accused party’s position. In addition to providing a more accurate and usable articulation of the fault element, viewing the question in terms of risk enables finer tuning of the doctrine when seeking optimal deterrence effects. Furthermore, this change would parallel recent shifts in the approach to fault in the context of willful infringement, and would be consistent with the actual normative standard being applied by courts.
one of the 150 largest law firms in the United States with a top rated Midwest intellectual property practice, seeks a Patent Prosecution Associate with at least 3 years of experience. Applicants should have a degree in Mechanical Engineering, excellent academic credentials, writing and communication skills and be capable of independent and creative work. Initially the candidate will be located in our Cincinnati office with the possibility to relocate to one of our other offices after meeting training requirements.
Commerce Secretary Gary Locke and PTO Director David Kappos will be holding a press conference later today. I expect that they will announce plans to open the first USPTO satellite office in Detroit, Michigan.
