When filing a terminal disclaimer to overcome a double-patenting rejection, federal rules require a statement of common ownership of the two patents.  In the recent case of Bellehumeur v. Bonnet (Fed. Cir. March 8, 2005, NONPRECEDENTIAL), the patentee had filed such a statement for two patents relating to a puck for use on a non-ice surface.  (U.S. Patent No. 5,275,410).  However, during litigation, Bellehumeur could not produce any evidence that he was the exclusive owner of both patents.  As a result, the CAFC vacated the infringement judgment and remanded for a determination of ownership and enforceability.

I am planning to be at the town meeting, but as luck would have it, I forgot to pre-register.  Hopefully I can simply flash my Patently-O badge and get free entry.  If you are attending, come say hello. (Here is my picture, but I won't be wearing a suit.).

Info:

• Friday March 4, 2005 (All Day)
• Hyatt Regency Hotel at McCormick Place
• Brochure

• Carl Gulbradsen, Managing director of WARF in Madison, Wisconsin;
• Andrea Ryan, VP and assistant general counsel at Wyeth; and
• Dean Kamen, inventor and chairman of Segway LLC.

The nine-member PPAC is on a three-year rotating schedule.  Each year three new members are appointed.  Traditionally, each Fall, the PTO Director requests nominations for the position.  Congratulations to the new members of the committee.

Claim 1. A chimeric embryo comprising cells from a first and a second animal species, wherein said first animal species is human, wherein said second animal species is non-human, and wherein said second animal species is non-primate.

It turns out that Newman & his partner Jeremy Rifkin had no intention of actually comercializing the human-animal chimera.  Rather, they hope to highlight the issue in the public eye and to set a legal precedent.

In the most recent office action [pdf], they received (among others) a rejection under 35 U.S.C. Section 101 as non-statutory subject matter, and claimed victory.  The OA points out that, although 101 does not explicitly restrict the patentability of humans, the PTO believes that its policy of denying such patents is supported by the statute.

Applicant argues that the statute does not restrict patentability based on whether the claims cover a human being, and that the Director lacks authority to impose a limitation on patenting a human. . . . the Office does not agree that humans are patentable subject matter. (See the earlier office action [pdf] for a more detailed analysis of the statutory authority.)

In its analysis, the Patent Office tries to distinguish Diamond v. Chakrobarty (1980) by differentiating between 'man' and 'those inventions and discoveries that could be made by man.'  It appears that they argue man cannot make man. 

Newman & Rifkin have decided not to appeal.  And thus, it appears that Russ Krajec's blog title 'anything under the sun made by man' is safe for now. 

Of course, these guys have not created any legal precedent with this case.  As noted by Examiner D. Crouch (No relation to me), "patentability is determined on the totality of the record on a case-by-case basis.  Whether similar claims in other applications may have been treated differently is neither controlling nor dispositive on how they are to be treated in any other application."

The Patent Office will only reexamine a patent if there is a "substantial new question of patentability" that warrants a second look.  Now, the PTO has released new rules for the case where a second or subsequent request for reexamination is filed while the earlier filed reexamination is still pending.  According to the new rules, the substantial new question (SNQ) for a second or subsequent request for reexamination must be new and different than any SNQ that was raised, or existed, during any prior pending or concluded reexamination proceeding for the patent.

According to the Office, the rule change is needed to eliminate the practice of filing additional reexamination requests simply for the purpose of prolonging the examination proceedings.  In addition, multiple filings of reexamination requests for the same SNQ can turn into a de facto inter partes proceeding.

These actions by patent owners and third party requesters have resulted in multiple reexaminations taking years to conclude, thus making it extremely difficult for the Office to conclude reexamination proceedings with "special dispatch" as required by statute (35 U.S.C. 305 for ex parte reexamination, 35 U.S.C. 314 inter partes reexamination).

RCR: PTO governance is always a give and take process.  So, rather than file a second reexamination request based on the same SNQ, the Office is planning to allow the patent owner to file a "request for continued reexamination" or RCR.

 “[T]he patent owner, by filing an RCR, could obtain continued prosecution on the merits in the reexamination proceeding, including entry of an amendment and/or evidence that was denied entry after a final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding.”

Because the rules have not yet been implemented, “patent owners are advised to use either: (1) the petition procedure under 37 CFR § 1.181 to seek review of a denial of entry of an amendment . . . ; or (2) the petition procedure under 37 CFR § 1.182 to seek relief that is not currently provided by an existing rule, but that would be provided when a new request for continued reexamination (RCR) practice is in effect.

Links:

• Notice of Change

For the past year, the Department has been developing the Strategy Targeting Organized Piracy (STOP!) that is intended to "smash the criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders, block bogus goods around the world, and help small businesses secure and enforce their rights in overseas markets."  The STOP! program also provides a telephone hotline information resource.

Links:

• Hotline Telephone Number: 1-800-999-4258
• STOP! Homepage
• STOP! Fact Sheet

According to the new rules, to overcome a 103(a) rejection by invoking the CREATE Act, an applicant must:

• Provide a statement that a joint research agreement was in place and that the claimed invention was made as a result of that agreement.
• Amend the specification to disclose the names of parties to the agreement.
• Amend the specification to specify the dates of the research agreement (or point to an assignment recorded in the patent office that describes the agreement)

The new rules cannot be used to overcome rejections based on anticipation.  Likewise, the PTO indicated that the new rules will likely not apply to reissue applications that were initially granted prior to December 10, 2004.

The PTO asks for your comments on the design of the final rule.  Please contact ab76comments@uspto.gov by February 10, 2005 with you comments.

Joseph Rolla will be the new Deputy Commissioner for Patent Examination Policy.  Mr. Rolla has been director of TC 2600 (Communications).

Peggy Focarino will be the new Deputy Commissioner for Patent Operations. She has most recently been a director in Technology Center 2100 (computer architecture and software).

Jon Doll will be the new Deputy Commissioner for Patent Resources and Planning. In his new position, he will oversee patent information-technology and processing operations.

“I am confident that the experience, vision, and abilities of this new team will ensure that the USPTO continues to show the way for the patent world,” noted Under Secretary Dudas. “Joe Rolla, Peggy Focarino, and John Doll combine almost a century of patent experience with energy and vision.”

All three of the new Deputy Commissioners have dedicated their careers to service at the USPTO.  There is an optimistic air surrounding their appointments, both inside and outside the Patent Office.

Initial Applications:

(1) Electronic Filing: $325 per international class
(2) Paper Filing: $375 per international class

Amendments or Responses to Office Actions:

(1) Electronic: $325 per additional international class 
(2) Paper: $375 per additional international class

NOTES:

• The fee chart is a little confusing. For a new utility application pay this: filing fee ($300) + search fee ($500) + examination fee ($200).
• The AIPLA has a nice chart of most fees.
• Download the new Fee Transmittal.

If a patent owner pays the current maintenance fee at 1:00 p.m. on the last day of the grace period, and the bill is signed at 4:00 p.m. on that same day, the patentee will have to make up the difference on that day to save the patent. 

For additional information, please contact the USPTO Contact Center at (703) 308-4357 or (800) 786-9199.

Link: Power of Attorney Form 

The PTO has announced that electronic trademark forms are now available for Madrid Protocol filings. Forms for submitting Madrid Protocol related documents are available at TEASi. Madrid paper forms are still acceptable. More Information: http://www.uspto.gov/web/trademarks/madrid/electronicforms.htm

Because of the availability of the provisional applications, the PTO has ended the practice of supplying the applications with Office Actions.

Ghaly v. Hasbro (Fed. Cir. 2004) (04-1124) (unpublished opinion).

Ghaly, a pro se plaintiff, sued Hasbro for infringement of his patent on a hand-held electronic game that operates something like a "hand-held electronic version of a Rubik's cube."  (U.S. Patent No. 5,286,037).  After construing the terms in the patent, the district court (E.D.N.Y.) granted summary judgment of noninfringement (both literal and DOE) to Hasbro. 

On appeal, the Federal Circuit agreed with the lower court's claim construction -- finding that the means-plus-function language of the switch means limited Ghaly's claims to the bi-stable switches disclosed in the specification.  Because Hasbro's devices were momentary switches, they could not literally infringe.

Further, the Court disregarded Ghaly's allegations under the doctrine of equivalents because Hasbro's momentary switches were not "after invented technology."

With regards to the "entry control means" limitation . . . there is no after-invented technology in the accused Hasbro device that would render the accused Hasbro devices infringing under our precedents regarding the doctrine of equivalents for means-plus-function limitations.  Momentary switches existed at the time of the '037 patent's filing in 1991.

Summary judgment affirmed.

Of course, the "after-invented technology" limitation is based on the holding of Chiuminatta Concrete v. Cardinal Indus. (Fed. Cir. 1998).

A CD-ROM version of the manual is expected in mid-October. You can contact the Office of Electronic Information Products at (703) 306-2600 for more information.

When citing to a published application, the PTO prefers that the citation be to the patent application publication (by publication number) rather than to the application itself (by application number).

This waiver is effective immediately

Note: For those of you following PTO rule changes closely, Deputy Commissioner Stephen Kunin signed the waiver using the newly approved /s/ signature procedure.