USPTO Director Jon Dudas has Joined Foley’s DC Office

February 2, 2009USPTO News

Jon Dudas served as USPTO director for almost five years. He was appointed by President George W. Bush and left office as President Obama entered. The Foley firm today announced that Mr. Dudas has joined the firm as a partner in their DC office. He will work in their international enforcement practice. Anyone who has met Mr. Dudas knows that he will be very successful in his move to private practice. Best of luck!

Aventis Files for Certiorari: Challenging Federal Circuit’s Low Standard for Intent to Deceive in Inequitable Conduct Proceedings

January 28, 2009Supreme Court

Aventis Pharma v. Amphastar Pharmaceuticals and Teva (on petition for a writ of certiorari)

In a split 2008 decision, the Federal Circuit affirmed a lower court decision holding two Aventis patents unenforceable due to inequitable conduct. The patents cover a low molecular weight form of the blood thinner heparin and is marketed under the Lovenox brand. The alleged offense involved an Aventis failure to report that its tests showing improved drug half-life used a different dosage than the tests on prior-art compound. Inequitable conduct requires proof of both materiality and intent to deceive. Here, the intent was shown only through circumstantial evidence.

In a strongly worded dissent, Judge Rader argued that inequitable conduct law should be restricted to "only the most extreme cases of fraud and deception." Rader also discusses how past inequitable conduct should be correctable.

Now, Aventis has hired Supreme Court powerhouse (and champion of the Federalist Society) Ted Olson and has asked the Supreme Court for its view. Aventis posits as an extension of Judge Rader's dissent - arguing that inequitable conduct should not be a viable cause of action when the mens rea evidence only rises to gross negligence. The question presented:

Under the judge-made doctrine of “inequitable conduct,” a federal court may decline to enforce an otherwise valid patent that was procured through fraud or deceit. Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945). As befits the punitive nature of the doctrine, this Court has invoked it only in extreme circumstances involving “deliberate,” “corrupt,” “sordid” and “highly reprehensible” misconduct. Some panels of the Federal Circuit have similarly limited the inequitable conduct doctrine to deliberately planned and carefully executed schemes to defraud, but other Federal Circuit panels—including the majority in this case— have adopted a “sliding scale” under which “less intent” is required as the materiality of an omission or misrepresentation increases. The question presented is:

Whether a court may refuse to enforce an otherwise valid patent on the basis of an inequitable conduct determination premised on a sliding scale between intent and materiality, effectively permitting a finding of fraudulent intent to be predicated on gross negligence.

Aventis has written a strong petition, amici briefs in support of the Aventis position would be due by February 25.

Notes:

Deferred Examination: PTO to Hold Roundtable Discussion

January 28, 2009USPTO News

It is clear that acting USPTO director John Doll has ideas for improving the patent system and that he is prepared to move the ball forward while he has the floor. Next on the order of business -- deferred examination. On February 12, 2009, the USPTO will hold a preliminary discussion on the potential for expanding the deferred examination system. Requests to participate should be sent to Robert Bahr (robert.bahr@uspto.gov). You may send comments to AC6comments@uspto.gov. Although attendance is open to the public, you must be pre-approved to 'participate.'

The PTO currently has an "optional deferred examination procedure" that allows deferral of examination for up to three years from the priority date after a petition and payment of a fee. According to the PTO, this procedure has been used "fewer than two hundred" times since it was created in 2000. 37 C.F.R. 1.103(d). In other countries, deferred examination is much more popular. In those countries, the applicant can delay payment of some examination fees during the deferral period. However, seems unlikely that the delay in paying fees (saving a couple hundred dollars) would explain the difference in popularity of the systems. An alternative explanation may be inertia. In Japan, for instance, the applicant must take some action to end the deferral period; while in the US, the applicant must take some action to start the deferral period. These different energy barriers might explain some of the difference in the use of deferral. The best explanation might stem from the backlog of US patent applications which prevents most cases from being examined in the first three years. Under the current system, a deferral in the US does nothing to slow the examination process if the examination backlog is already more than three years.

Deferred prosecution does have some possible negative issues. These negatives include the potential for submarining and shifting claim scope to encompass market changes. These problems could largely be limited through early publication of deferred applications as well as continued enforcement of the written description and enablement requirements. In addition, the patent term should continue to run during the deferral period.

There are two main benefits of deferred examination: (1) delaying spending fees could have a great cost savings if the delay allows companies to figure out that a significant number of applications are no longer worth pursuing; (2) non-deferred cases should move more quickly through the system.

In a 2008 letter to Congress, then PTO director Jon Dudas suggested three possible additions to the US system: (1) a 14-month extendible period for responding to a notice of missing parts; (2) a tiered payment structure that allows the "examination fee" to be paid later; and (3) allow applicants to claim priority to a provisional application for up to five years.

Notes:

Deferred Examination Announcement

Bilski Petitions the Supreme Court to Decide Issues of Patentable Subject Matter

January 28, 2009Supreme Court

Bilski v. Doll (on petition for certiorari)

In Bilski, the Court of Appeals for the Federal Circuit applied the “machine-or-transformation test” as the only test to be used in determining whether a claimed process is eligible for patenting under § 101. The decision holds that a claimed process either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing.

Bilski’s claimed method of hedging the risk of bad weather through commodities trading had been rejected by the USPTO as lacking patentable subject matter. On appeal, the Federal Circuit affirmed – finding that the method failed the machine-or-transformation test.

Now, Bilski has petitioned the Supreme Court for a writ of certiorari — asking the high court to determine whether the new test of patentable subject matter is the correct test.

The petition asks two questions:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Under Supreme Court rules, any amici brief in support of the petitioner (Bilski) would be due within thirty days (Feb 27). Those in support of the respondent (PTO) would be due the dame day, but the PTO will likely seek an extension.

Notes

Patent Development Manager – Small Corporation – Bangalore, India

January 25, 2009- Asia, Emp - Corporate (in-house), Tech - Any / Other, Work - Licensing / Other Corporate, Work - Patent Agent, Work - Patent Prosecution

Manager, Intellectual Property – Small Corporation – Cranbury, N.J.

January 24, 2009

Amicus Therapeutics, a biopharmaceutical company developing novel, oral therapeutics known as pharmacological chaperones for the treatment of a range of human genetic diseases, is seeking a Manager, Intellectual Property. Pharmacological chaperone technology involves the use of small molecules to restore or improve biological activity in cells by selectively binding to misfolded, unstable proteins caused by genetic mutations. This technology represents a novel, next-generation approach to the management of human genetic diseases and offers the potential to improve treatment options for many patients.

Amicus is initially targeting lysosomal storage disorders, which are severe, chronic genetic diseases with unmet medical needs. The company believes pharmacological chaperone technology has broad applicability and expects to expand the portfolio to include other diseases of neurodegeneration, metabolic diseases, and oncology.

Founded in 2002, Amicus has assembled an outstanding leadership team that includes scientific, medical, regulatory, and business professionals with successful track records of developing and bringing to market drugs for genetic diseases. Amicus continues to develop its pharmacological chaperone technology and has built a significant intellectual property portfolio along with its robust clinical and preclinical pipeline.

The company is headquartered in Cranbury, NJ and trades on the Nasdaq under the ticker symbol FOLD. Amicus has a fast-paced, high-energy, entrepreneurial team environment where employees are encouraged to be innovative and resourceful. Amicus seeks high-caliber, talented individuals with a passion to succeed. Additional information on the company, product pipeline, and technology is available at our website.

Responsibilities:
• Become knowledgeable in all aspects of company technology
• Work directly with scientists to prepare and prosecute patent applications
• Work with the Senior Director of IP on legal opinions and due diligence
• Draft and negotiate agreements, including Material Transfer Agreements, Research/Collaboration Agreements and Confidentiality Agreements
• Assist the Senior Director of IP and IP Paralegal in implementing a patent docketing/IP management system
• Assist in managing the trademark portfolio
• Work with external IP counsel on a variety of IP related matters
• Work with Senior Director of IP in assisting the business development team with partnerships and/or collaborations

Requirements & Qualifications:
• Degree in a biology or chemistry required, some professional experience preferred
• J.D. admitted to (and in good standing in) at least one state Bar
• Admission to Practice Before the US Patent and Trademark Office
• Up to 7 years of previous intellectual property experience in a law firm and/or pharmaceutical or biotechnology company.
• Must have prior experience drafting patent applications from start to finish
• Must have prior experience prosecuting patent applications with USPTO
• Experience with patent docketing systems desired but not necessary
• Experience with trademark filing and prosecution desired but not necessary
• Proficient verbal and written communication skills
• Comfortable interacting directly with management
• Demonstrated ability to work well with people
• A proven desire to work as a team member

Amicus Therapeutics is an equal opportunity employer. No phone calls please.

Additional Info:
Employer Type: Small Corporation
Job Location: Cranbury, New Jersey

Six Easy Suggestions for Improving Patent Office Transparency

January 22, 2009Revival

For a government agency, the USPTO (PTO) is fairly transparent to non-parties hoping to learn about the patent system and about specific patent cases. The PTO website receives millions of visits to access patents, published patent applications documents, and prosecution history files. In promoting the new rule changes, the PTO also offered up a number of metrics to prove its case. While that information was useful, its reliability was generally impossible to independently verify because the underlying data was not publicly available. The truth is that the PTO still has a long way to go before we can consider it a transparent operation.

Why this is important: Part of the need for more information involves public accountability so that we can ensure that the PTO is efficiently and accurately carrying out its role in the patent system. Independent verification is especially important now when various factions (including the PTO's own lobbying arms) are calling for various reforms of patent laws and the rules of patent procedure. However, the call for transparency at the PTO is at least equally focused on the business need of understanding how the patent system works and how competitors are using the patent system.

I have created a short list of "easy" suggestions for improving transparency at the Patent Office. I call it an easy list, because these steps really just involve taking information that is already at the fingertips of PTO insiders and making the information accessible to those on the outside. Following these steps may be a quick and easy way for career office officials to quickly win favor with the new Obama administration.

Make petitions decisions available. Challenges to certain decisions by patent examiners and PTO officers go through a petition process to the Commissioner of Patents rather than through the Board of Patent Appeals and Interferences (BPAI). These cases include disputes involving revival, patent term extension, patent term adjustment, patent term restoration, reexamination petitions, petitions involving filing dates, petitions involving disclaimer of scope, refund petitions. Since January 1, 2005, the PTO has not posted any petitions decisions to its website. Thus - unless a party knows the specific case number and obtains it through the Image File Wrapper in the Patent Application Information Retrieval (PAIR) system - the petitions are inaccessible. Conventional wisdom is that petitions practice can be something of a black hole -- unless the PTO decides to act quickly. This is only conventional wisdom, because the actual practice of the office is hidden. It would be an easy change to start publishing all petitions decisions as they are released in once convenient location on the PTO website.
Make public PAIR information available for automated download -- either through the PTO website or through a third party willing to make the information publicly available. The PAIR system is amazing in the information that it provides. However, it is clunky and wastes a tremendous amount of time to access each individual case. File history information is important because claim construction decisions now rely on that information in interpreting the claims. In addition, file histories are an important source of prior art - especially in the way that the documents can provide contextual information on how different elements may fit together. Yet, PAIR is not generally searchable and data cannot be obtained in any bulk way. This must change. I will be more than willing to work with PTO to and others to create a system that works. Although I am not wedded to this approach, I would favor a system that embraces the possibility that individuals and companies will take-hold of the data stream and use it in creative ways.
Publish the standard metrics used by PTO executives to measure the process flow and quality. Of course, this should be done in a way that maintains some semblance of privacy for PTO employees, but I doubt that the executive-level charts include specific names of the 6,000 examiners. Of course, I don't know because these items are not publicly available.
Allow search engines to crawl through the PTO web-servers. Matt Buchanan wrote an interesting post on President Obama's new ROBOT.TXT file for the whitehouse.gov website. [LINK] Obama has apparently opened the site to allow it to be crawled by any search engine. The PTO should follow suit so that documents posted to the website can be found through Google, Yahoo, CURL, Alexa, etc. Remember, the touchstone of publication is whether it is accessible to the public. Many documents on the USPTO.gov website are worthless because they are too difficult to find through the locked-down search procedures available on the current website. This is an extremely easy change. It took the White House a few minutes to make the change, the PTO could be done in the same way. Kudos to the PTO -- After I wrote a first post on this issue, two PTO officials contacted me to indicate that they were working on resolving the issue.
Use PDF format to allow download of patents and patent applications in their "Standard" form. This would be a bonus, but it is not required since there are low coast ways to obtain this result through an outside vendor. One problem with using an outside source, however, is the possibility that search information may be stored and used against the searcher at some point.
Openly respond and post all responses to freedom of information act (FOIA) requests on the PTO website. The PTO has created a FOIA website that is hardly searchable. And, most FOIA documents are not placed on the FOIA website. Any response to a FOIA request should be automatically and immediately uploaded to the FOIA website so that it is accessible to the public at large rather than to only the one person who requested the information. As a teacher, I have learned that if one person asks a question, it is likely that other folks had the same question. In most cases, the PTO could upload the documents and save mailing costs by simply providing a link. President Obama has ordered all executive agencies to "adopt a presumption in favor" of FOIA requests, and this change would fall in line with the spirit of that request.

I have eliminated other potential projects and changes that might be considered "hard" for the PTO to complete. These are easy and should be done. This is a draft of ideas -- add yours below. Also, please let me know if there is already a good way to access the information that I discussed above.

Bits and Bytes NO. 88

January 16, 2009USPTO News

New PTO Director: The USPTO will be closed on Monday and Tuesday (Jan. 19-20). When it reopens, John Doll will be the Acting Director of the USPTO. Doll is a career PTO official and already fully understands the system and the role of the PTO director. Because Doll has had considerable influence while working under Jon Dudas, we can expect that there will be few immediate or dramatic changes. In part because of the absence of a Commerce Secretary, I expect that Doll's tenure will likely last for several months.
Secretary of Commerce: While on the topic, I heard this morning that John Thompson, CEO of Symantec may be named appointed as the next Secretary of Commerce. If appointed, Thompson may play an important role in some patentability disputes. Symantec has been directly involved in a number of patent litigation disputes – both as a plaintiff and as a defendant. Symantec is the assignee of hundreds of patents. I cannot say, however, whether Thompson feels scorned or empowered by the current patent system.
Chief Judge Michel & Professor Lichtman: Professor Doug Lichtman has introduced his most recent guest on the "IP Colloquium" – Chief Judge Paul Michel of the Court of Appeals for the Federal Circuit. In an hour-long discussion, the pair discuss common deficiencies in appellate advocacy; the important value of amicus briefs at the rehearing stage; Section 101 post-Bilski; and the lost doctrine of equivalents. Professor Lichtman has configured the system so that you can also easily claim free CLE credit in California, Illinois, NY, Texas, or Washington State. Excellent work!
ABA Top Legal Blogs: For two years in a row, the ABA Journal has chosen Patently-O as one of the top 100 legal blogs. (Only 50 blogs made the cut both years). In addition, Patently-O has been honored in 2008 as the top legal blog focusing on a niche area of law. Thank you to everyone who voted during this process! In time for Patently-O's fifth anniversary in April, I expect that the website will record its ten-millionth visit in addition to the 16,000+ readers who receive their updates via the daily e-mail feed.
Patent agent Brian Galvin has started a new blog, in a recent post, he discusses the BPAI's Cornea-Hasegan Opinion. His analogy is interesting: "[The current state] of statutory eligibility … reminds me of … Ptolemaic astronomy just before Galileo, Kepler and Copernicus. The more wheels we add, the more untenable the whole structure." [LINK]

IP Generalist – Law Firm – Milwaukee, Wisc.

January 13, 2009- US - Midwest, Emp - Law Firm, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation, Work - Patent Prosecution

U.S. Patent Attorney – Law Firm – Japan

January 9, 2009- Asia, Emp - Law Firm, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

IP Litigation Counsel – Large Corporation – Mountain View, Calif.

December 18, 2008- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

Google is seeking an IP Litigation Counsel. Google Legal a close-knit team of lawyers and legal professionals who operate on a truly global stage. We take pride in working for a company with a clear mission ("to organize the world's information and make it universally accessible and useful") and a real soul ("don't be evil"). Google's innovative services raise challenging legal questions that demand creative and practical answers. We work at the crossroads of new technologies and existing laws to provide those answers, helping Google build innovative and important products for our users around the world.

As an IP Litigation Counsel, you will assist with general litigation matters, specifically the area of third party disputes and lawsuits involving intellectual property issues such as patent, trademark and copyright litigation. You are an experienced attorney with a technical background such as a computer or electrical engineering or computer science degree (USPTO admission is a plus).

In this role you will have significant interaction with almost all business areas of Google, such as Product Management, Engineering, Corporate Communications, Human Resources and Sales. As a prominent and dynamic global company, Google faces many novel legal issues. You should enjoy navigating uncharted waters in a role that will provide opportunities to help establish the precedents that will govern this space.

Responsibilities:
• The Litigation Counsel will work closely with our litigation team, as well as various Legal group members having substantive knowledge relevant to particular disputes.
• The Litigation Counsel will be responsible for determining dispute resolution strategies, as well as developing the infrastructure required to prevent disputes from arising.
• The Litigation Counsel will work with outside counsel to manage lawsuits that may evolve from these third party disputes.

Requirements:
• JD degree with excellent academic credentials or equivalent experience.
• 3-8 years litigation experience.
• Broad based litigation experience, including intellectual property and technology matters.
• Significant experience with strategically addressing legal complaints.
• Extensive experience with (and understanding of) the online industry.
• Strong interpersonal and team skills and sense of humor required.
• Ability to respond to questions/issues spontaneously.

Contact:
For immediate consideration, please apply at this URL.

About Google:
Google's innovative search technologies connect millions of people around the world with information every day. Founded in 1998 by Stanford Ph.D. students Larry Page and Sergey Brin, Google today is a top web property in all major global markets. Google's targeted advertising program, which is the largest and fastest growing in the industry, provides businesses of all sizes with measurable results, while enhancing the overall web experience for users. Google is headquartered in Silicon Valley with offices throughout North America, Europe, and Asia. For more information, visit http://www.google.com/about.html

Google is an Equal Employment Opportunity/Affirmative Action Employer

To all recruitment agencies: Google does not accept agency resumes. Please do not forward resumes to our jobs alias, Google employees or any other company location. Google is not responsible for any fees related to unsolicited resumes.

Additional Information:
Employer Type: Large Corporation
Job Location: Mountain View, California

Patent Portfolio Manager – Large Corporation – Cupertino, Calif.

November 24, 2008- US - Silicon Valley & SF, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

Patent Attorney – Small Corporation – Salt Lake City, Utah

November 21, 2008- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Chemical / Pharma, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution

Patent Attorney – Law Firm – S.F. Bay Area, Calif.

November 21, 2008- US - Silicon Valley & SF, - US - West, Emp - Law Firm, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution

Patent Attorney/Associate – Large Corporation – Tucson, Ariz.

November 18, 2008- US - Southwest, - US - West, Emp - Corporate (in-house), Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution

Roche, one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, is seeking a patent attorney. The attorney will coordinate the IP activities for Ventana Medical Systems, Inc. within one or more business areas. Secure protection for the company's intellectual property and minimize the risk associated with bringing new discoveries and innovation to the marketplace by ensuring respect for the valid intellectual property rights of third parties.

Responsibilities:
• Responsible for developing and implementing an IP strategy within one or more business areas.
• Act as the primary contact for Ventana IP issues within one or more business areas.
• Prepare, file and prosecute patent applications in the U.S. Patent Office in order to protect the company's investment in research and development.
• Prepare written opinions on issues of patentability, patent infringement, patent validity and freedom-to-operate in order to minimize the business risk associated with bringing new discoveries and innovation to the marketplace.
• Assist product development teams in designing products to avoid the valid patent claims of third parties in order to minimize the business risk associated with bringing new discoveries and innovation to the marketplace.
• Provide general counseling on IP issues to the relevant business area(s) including functional groups such as business management, marketing, research and development and manufacturing.
• Conduct trademark searching and opinions.

Requirements:
• Undergraduate degree in one of the following: Lifesciences/chemistry/chemical engineering/biotechnology.
• Advanced degree in the LifeSciences is preferred. Doctor of Jurisprudence, licensed to practice law in one or more of the 50 states. Licensed to practice law before the US Patent and Trademark Office (USPTO).

Experience:
At least three years experience in IP practice, including patent preparation and prosecution, licensing, trademark practice and client counseling. Experience in the patenting of in vitro diagnostic devices or pharmaceuticals. At least some experience within IP litigation matters.

Contact:
Interested applicants should contact Yvonne Schuelke at Yvonne.Schuelke@contractors.roche.com or 520 / 229-4060.

Additional Info:
Employer Type: Large Corporation
Job Location: Tucson, Arizona

IP Litigation Partner – Law Firm – Los Angeles, Calif. / Washington D.C.

November 14, 2008- US - MidAtlantic and South, - US - Southwest, - US - West, Emp - Law Firm, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Tech - Electrical, Tech - Mechanical, Work - Patent Litigation

IP Fellowship – The George Washington University – Washington D.C.

November 10, 2008- US - MidAtlantic and South, Emp - Educational, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Tech - Electrical, Tech - Mechanical, Work - Licensing / Other Corporate, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution

Various – Law Firm – Chicago

November 7, 2008- US - Midwest, Emp - Law Firm, Work - Paralegal / Legal Secretary, Work - Patent Agent, Work - Patent Litigation, Work - Patent Prosecution