Search Results for: "sas institute"

Challenging the PTO’s NonAppealable Decisions to Grant or Deny Petitions for Inter Partes Review

Patent, , , ,

By Dennis Crouch

In re MCM Portfolios LLC (Fed. Cir. 2013) (pending on petition for writ of mandamus)

In a recent post, I wrote briefly about statutory bar against appealing PTO decisions to grant or deny a request for inter partes review. In particular, 35 U.S.C. § 314(d) reads as follows: No Appeal.— The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable. MCM has now filed a somewhat direct challenge to the substance of that provision with a writ of mandamus to the Federal Circuit. Of course, a petition for writ of mandamus is not an appeal but instead a request for a particular order. By filing a writ (rather than an "appeal"), MCM avoids the statutory bar against appeals and also avoids the parallel problem arising from the lack of statutory support for a direct appeal. As I explain below, MCM would also argue that the statutory bar on appeals would not apply in its context because its petition challenges a PTO decision under § 315(b), not § 314.

MCM's Patent No. 7,162,549 covers a mechanism for controlling Flash storage devices that uses firmware error correction. According to the patentee, many Digital Picture Frames make use of the invention in their mode-of-operation. On September 21, 2011, MCM served PanDigital with a complaint for infringing the patent. Later, on March 28, 2012, MCM also sued HP for infringement. Now, the two lawsuits are largely the same because HP picture frames are actually made by PanDigital. MCM has provided expert testimony that HP DPFs are actually the PanDigital frames that have simply been re-branded with HPs name (with PanDigital's permission). Furthering the connection, HP publicly identifies PanDigital as its supplier; directs its customers to PanDigital for customer support; and sells its HP products on Amazon with an indication that they are also PanDigital products. Later, on March 28, 2013 HP filed its request for inter partes review. The date is important because it is just shy of one year after the March 28, 2012 date when HP was sued for infringement. It is, however, well over a year after PanDigital was sued.

35 U.S.C. § 315(b) creates a one-year statute of limitations for filing a request for inter partes review. The deadline is triggered when "the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." Here, HP is the petitioners and filed within one-year of being served a complaint. However, as foreshadowed above, MCM argues that, for this action, PanDigital should also be considered a "privy of the petitioner."

In its decision, the PTAB sided with HP – writing that "[MCM] provides no persuasive evidence that HP could have exercised control over Pandigital's participation in the Texas Action. Thus, § 315(b) does not bar institution of inter partes review based on HP's Petition."

In the mandamus action, MCM argues that statute-of-limitations here is essentially a time-delayed res judicata action and, as such, it makes sense to interpret "privy" in the same manner as is done by the Supreme Court in those preclusion cases. In particular, MCM relies heavily on Taylor v. Sturgell, 553 U.S. 890 (2008) to argue that the grounds for binding related parties is much broader than the "control" grounds suggested by the USPTO. The PTO's approach consequently "systematically misconstrue[es] Taylor to allow late IPRs." Of note here, the PTO seemingly agrees that Taylor controls, but reads Taylor differently than MCM.

Because Mandamus is an extraordinary writ, the petitioner must do more than simply indicate that the Board was wrong in its decision. Rather, the petitioner must also convince that this is a case that needs to be heard immediately. MCM offers three key reasons:

  • The Board's interpretation of §315(b) privity is incorrect as a matter of law.
  • The systematic denial of Taylor's second ground for establishing privity justifies this Court's exercising its supervisory role to resolve important issues of first impression that involve alleged usurpation of power. Schlagenhauf v. Holder, 379 U.S. 104 (1964).
  • The order of institution of an IPR cannot be remedied by a reversal on appeal.

Edward P. Heller is representing MCM in this appeal.

Download InreMCMPortfolioLLCWrit

Federal Circuit Rejects Supreme Court Original and Exclusive Jurisdiction over State-vs-State Inventorship Disputes

Patent, , , , , , ,

By Dennis Crouch

A highlight of this opinion is Footnote 1 of Judge Moore’s dissenting opinion that states “The majority baldly asserts that issues of patent ownership and inventorship are not sufficiently grand for the Supreme Court to resolve in the first instance. That is not our decision to make. It is for the Supreme Court to itself decide.”

= = = = =

University of Utah v. Max-Planck-Gesellschaft (Fed. Cir. 2013)

In 2011, University of Utah (UUtah) filed a federal lawsuit under 35 U.S.C. § 256 to correct the inventorship of U.S. Patent No 7,078,196. That patent is directed to Small Interfering RNAs (siRNAs) and methods of creating those molecules that are the current study of intensive genetic therapy research.

According to USPTO records, the patent is owned collectively by the Max-Planck Institute as well as MIT, the Whitehead Institute and the University of Massachusetts. Dr. Brenda Bass – a UUtah professor – alleges that Dr. Thomas Tuschl – a UMass Professor – incorporated her ideas into his patent but then did not name her as an inventor. All of these assignees were named as defendants in the complaint filed in Federal District Court.

The appeal raises interesting issues of civil procedure, federalism, and sovereign immunity. The 11th Amendment to the U.S. Constitution generally provides sovereign immunity to state governments from any cause of action in Federal Court brought by citizens of another state or country. However, the 11th Amendment does not provide for immunity in state-vs-state actions. Rather, the U.S. Constitution provides that “In all [Federal] Cases . . . in which a State shall be Party, the supreme Court shall have original Jurisdiction.” Art III, §2, cl. 2. Following the constitutional guidance, the jurisdictional statutory code provides that the “Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.”

Rather than fighting the battle in District Court, UMass (a state institution) argued that the case brought by UUtah (another state institution) should be seen as a state-vs-state conflict that should go directly to the Supreme Court in the matter of first instance.

In order to avoid that result (but still reach the same result), UUtah dropped UMass as a defendant and instead list the leaders of UMass (including its president Robert Caret) as the defendants. Based upon that change, District Court Judge Saris held that the case should no longer be seen as a state-vs-state case and that, as a consequence, the Supreme Court did not have exclusive original jurisdiction. Judge Saris also found that correction of inventorship was not a “core sovereign interest sufficient to make this a dispute between States,” but that the case could proceed against the named officials under the Ex parte Young doctrine. Particular to this case is that the remedy demanded was an order directing the USPTO to correct inventorship rather than calling for any monetary or injunctive relief against the state.

Although the district court case is not final, the Federal Circuit took an immediate appeal under the Collateral Order Doctrine.

On appeal, the Federal Circuit has affirmed – finding that “UMass is not a real party in interest under the Supreme Court’s caselaw.” Although both the Constitution and Statute appear clear, the US Supreme Court has been reluctant to take cases such as this and has thus added requirements that the case be “serious,” “dignified,” and raising “important” federalism concerns. In addition, the Supreme Court has considered whether there are other avenues for relief. And, both of the competing states must be indispensable parties to the lawsuit.

On this notion, UMass argues that UUtah is seeking the property of UMass (i.e., its patent) and that is sufficient to make UMass a real party that cannot be “plead around.”

Agreeing with UMass, the Federal Circuit instead held that the case is about “inventorship” and the identity of the individual inventor of a patent is not a “core sovereign interest” that need be raised directly to the Supreme Court. In addition, the Federal Circuit agreed that the formal shift from suing the University to suing the University President in his Official Capacity was sufficient to evade the state-vs-state setup. Finally, the appellate panel found that UMass (a patent owner) is not an indispensable party to the case since its interests are being adequately protected by the other co-owners and its named officials.

In reality, UUtah UMass [Updated] likely does not want the Supreme Court to directly hear the case. Rather, the strategy here is that the University is largely betting on the likelihood that the Supreme Court would decline to exercise jurisdiction – effectively ending the case.

= = = = =

Writing in Dissent, Judge Moore vigorously disagreed with the majority’s holding.

The majority erroneously holds that a patent-ownership dispute between two state universities is not a “controversy between two or more States.” It then compounds this error and holds that a patent owner is not an indispensable party to an action that seeks to reassign title to the patents-in-suit. I respectfully dissent.

I. Subject Matter Jurisdiction

The district court lacks jurisdiction over UUtah’s claims against the UMass Officials because those claims raise a dispute between two States, Utah and Massachusetts. Article III of the U.S. Constitution vests the Supreme Court with original jurisdiction over cases in which a State is a party. As § 1251(a) expressly states: “The Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.” There is no dispute that UUtah and UMass are instruments of Utah and Massachusetts, respectively, and that a suit between those institutions could only be brought in the Supreme Court. The majority, however, concludes that § 1251(a) does not apply here because UUtah elected to sue the UMass Officials rather than UMass. That conclusion is incorrect.

To determine if a suit implicates the Supreme Court’s exclusive original jurisdiction, we look “behind and beyond the legal form” of the claim and determine “whether the State is indeed the real party in interest.” Arkansas v. Texas, 346 U.S. at 371. The majority agrees with this general proposition but holds that the UMass Officials, not UMass, are the real parties in interest. I disagree.

This case involves a dispute between UMass and UUtah over who owns the rights to the Tuschl II patents. UMass is the assignee of the Tuschl II patents and UUtah “wants to own the patents.” UUtah is pursuing that interest through a correction of inventorship claim under 35 U.S.C. § 256 and a corresponding request for an order that UUtah owns the patents. … UUtah also alleges in its complaint that it “should be the sole owner or an owner” of the Tuschl II patents. It specifically requests that the court “order assignment of all right title and interest” in the patents to UUtah. Indeed, the majority recognizes (1) that UUtah specifically requested that the court assign it all rights to the Tuschl II patents and (2) that UUtah will obtain the rights to the patents if it prevails on its correction of inventorship claims. This is a dispute about ownership, plain and simple.

UUtah cannot recast the nature of this dispute by suing the UMass Officials as stand-ins for UMass. Indeed, the majority never holds that the UMass Officials have any interest in this proceeding. Nowhere does the majority suggest that the UMass Officials are “parties concerned” that may be subject to a correction of inventorship action under § 256(b). . . .

Section 1251(a) contains “uncompromising language”: the Supreme Court has original and exclusive jurisdiction over “all controversies between two or more States.” Mississippi v. Louisiana, 506 U.S. 73, 77, 113 S.Ct. 549, 121 L.Ed.2d 466 (1992). The majority errs when it concludes that § 1251(a) does not apply to this dispute because the “State has no core sovereign interest” in inventorship or patent ownership. Maj. Op. at 13–15. The majority’s “core sovereign interests” test is at odds with the plain language of the statute, which contemplates “all controversies” between states fall within 1251, not just those involving core sovereign interests. There is simply no basis to limit the statute in such a way.

Moreover, requiring a core sovereign interest to implicate the Supreme Court’s exclusive jurisdiction erodes the Court’s discretion to decide which controversies it will hear. The existence of the Supreme Court’s exclusive jurisdiction and its discretion to exercise that jurisdiction are separate concepts. The Court’s exclusive original jurisdiction extends to “all controversies between two or more States.” 28 U.S.C. § 1251(a). The Court, however, is not required to exercise its jurisdiction over every controversy. The Court tends to exercise its jurisdiction sparingly, depending upon the nature of the interest of the complaining State, the seriousness and dignity of the claim, and the availability of another original forum to resolve the dispute. Mississippi v. Louisiana, 506 U.S. at 76–77. The concept of a “core sovereign interest” has roots in opinions that address whether the Supreme Court will decide to exercise its jurisdiction over a dispute, not whether the Court’s exclusive original jurisdiction over the controversy exists. See id. at 77; Texas v. New Mexico, 462 U.S. 554, 570, 571 n. 18, 103 S.Ct. 2558, 77 L.Ed.2d 1 (1983); Connecticut ex rel. Blumenthal v. Cahill, 217 F.3d 93, 109 (2d Cir.2000) (collecting cases). The majority’s conflation of those two concepts strips the Supreme Court of its discretion to decide if a case is sufficiently serious to exercise jurisdiction over it. It reallocates that power to the lower courts—who will decide which subset of cases—those implicating core sovereign interest—will be presented to the Supreme Court. FN1

The majority finds support for its decision in the Second Circuit’s split decision in Cahill. With all due respect, even if we adopt the flawed logic of the majority in Cahill, this case would still fall within the Supreme Court’s exclusive jurisdiction in § 1251. The majority correctly recognizes that, generally, a State is the real party in interest if ” the effect of the judgment would be to restrain the Government from acting, or compel it to act.” Maj. Op. at 14 (quoting Cahill, 217 F.3d at 106). But the majority nevertheless concludes that UMass is not the real party in interest because a judgment to correct inventorship “will not require or restrain UMass from acting.” Id. at 13. This is not correct.

A judgment in UUtah’s favor will restrain UMass’s ability to act. If successful, UUtah will be declared sole owner of the Tuschl II patents and UMass will have no interest in them. UMass will not be able to license or assign the patents. And UUtah will be able to exclude UMass from practicing the inventions claimed in the patents. Patent rights are the quintessential right to restrain. The effect of this judgment will be to prevent UMass from exploiting the Tuschl II patents or the technologies they cover. This certainly “restrain[s] the Government from acting.”

UUtah alternatively requests that Dr. Bass be found to be a co-inventor. A finding that Dr. Bass is a co-inventor of the Tuschl II patents will result in UUtah co-owning those patents. The effect of the judgment would be that UUtah could practice or license the patents without UMass’s consent and without having to account to UMass. See 35 U.S.C. § 262. The judgment would thus restrain UMass from asserting its rights in the Tuschl II patents against UUtah or any of UUtah’s licensees. Again, this restrains UMass from acting.

The majority ignores these effects on UMass. Without explanation, the majority asserts that UMass will only be “more or less affected by the decision” and that transfer of the Tuschl II patents to UUtah will “not deplete the state treasury.” Maj. Op. at 15. This is incorrect. A correction of inventorship by the PTO will give UUtah an ownership interest in the Tuschl II patents by operation of law and dilute or revoke UMass’s property interest. Indeed, as the majority also recognizes, UUtah expressly asks the court to order the reassignment of the patents to UUtah. The central effect of a judgment in UUtah’s favor will be to deplete the assets of the current owners of the Tuschl II patents, one of whom is UMass. UMass is thus the real party in interest in this case.

This is a dispute between two state universities over who owns a valuable patent portfolio—a dispute over property ownership. As undesirable as it may be, we are bound to follow the plain language of § 1251(a): “The Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.” It is up to the Supreme Court to decide if it wants to exercise its exclusive jurisdiction over this controversy. We should not contort the statute to avoid a perceived injustice FN2 that would result if the Court declined to exercise jurisdiction over UUtah’s claims.

UUtah initiated an action that seeks to obtain UMass’s interest in the Tuschl II patents. That is a controversy between two States and can only be brought in the Supreme Court. Accordingly, we should reverse the district court’s decision that it had jurisdiction over UUtah’s claims against the UMass Officials.

II. Indispensable Party

The majority’s holding that UMass is not an indispensable party to this action is incorrect. We have held that when a plaintiff brings a declaratory judgment action seeking to invalidate a patent or hold it not infringed, the patentee is both a necessary and indispensable defendant in that action. A123 Sys., Inc. v. Hydro–Quebec, 626 F.3d 1213, 1217–19, 1220–22 (Fed.Cir.2010); Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1094 (Fed.Cir.1998). It would be nonsensical to suggest that all patent owners must be joined in a suit seeking to invalidate the patent, but they need not be joined in a suit over patent ownership. Indeed, § 256(b) requires a court, before it orders a correction of inventorship, to provide “notice and hearing of all parties concerned,” i.e., those with an “economic stake” in the patent. Chou, 254 F.3d at 1359–60. We should apply our general rule that all co-owners must be joined in an action that affects their patent. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467 (Fed.Cir.1998).

The majority instead holds that UMass is not an indispensable party because UUtah joined “all of the Tuschl Patent owners except UMass,” each of whom are “jointly represented by legal counsel.” Maj. Op. at 21. It is not enough that UMass and the named defendants “share the same overarching goal” of defeating UUtah’s inventorship and ownership claims. A123 Sys., 626 F.3d at 1221 (holding that absent patentee was an indispensable party when the named party had “overlapping” but not “identical” interests).

The majority deviates from our longstanding requirement that all patent owners be joined, citing an exception created in Dainippon Screen Manufacturing Co. v. CFMT, Inc., 142 F.3d 1266 (Fed.Cir.1998). It is true that, like Dainippon Screen, the named defendants here are represented by common counsel. But the majority omits the “highly relevant” facts from Dainippon Screen—the absent party was a wholly-owned subsidiary of the named party and was created by the named party to enforce the patents-in-suit. 142 F.3d at 1267–68, 1272–73. We allowed the suit to go forward because “the parties’ interests in the asserted patents were not just common, but identical.” A123 Sys., 626 F.3d at 1221 (discussing Dainippoin Screen ).

There is no party in this suit which represents UMass’s interest in the Tuschl II patents. Other defendants also have an interest in the patents, but they do not represent UMass’s interest. Indeed, their interests may well diverge. For example, the non-UMass defendants may choose to settle with UUtah in a way that diminishes UMass’s rights, such as stipulating that Dr. Bass is the sole inventor of the Tuschl II patents in exchange for ownership interests in the patents. That risks extinguishing UMass’s rights to the patents without UMass participating in the lawsuit.

The majority further claims that defendant Alnylam can represent UMass’s interest because UMass “handed sole and exclusive control of this suit over to Alnylam.” Maj. Op. at 21. That right, however, is conditional. If there is a conflict of interest, Alnylam loses its right to control UMass’s defense. Id. The agreement thus contemplates that Alnylam and UMass may not have identical interests. Because UMass does not have identical interests with any of the named defendants, it is an indispensable party in this case. I dissent from the majority’s contrary holding.

Welcome Back Fee Diversion: USPTO Likely to Begin Sending Collected Fees back to Treasury

Patent,

By Dennis Crouch

Many agencies within the Federal Government are suffering under sequestration that effectively cuts budgets by about 5% for the rest of the fiscal year. In March, I reported that the USPTO would not be forced to cut its spending because the collected fee revenues were already under budget. It seems that result is not sitting well with other federal agencies who would prefer to see more equal suffering. Under orders from the White House, it appears that the USPTO will now be forced to reduce its spending – essentially using fee revenues as the base from which to cut.

Robert Budens sent around an email raising some alarm regarding USPTO funding. Budens heads the USPTO employee union POPA. Budens writes:

About a week or so ago POPA started hearing rumors that the White House Office of Management and Budget (OMB) was attempting to mess with USPTO funding by requiring that our sequestration hit be taken off of our fee income rather than our appropriated budget level. I also heard that USPTO management had been put under a “gag order” not to discuss these changes until approved by OMB and Commerce. The rumors also suggested that the sequestered fees would not go into our AIA reserve fund for later availability, but would in fact, not be available for USPTO use, i.e., our fees are going to be diverted once again, barely a month after full implementation of the AIA that was supposed to prevent fee diversion!

In discussions with AIPLA, IPO and others, I learned that they had also heard such rumors and that none of us were getting any information out of USPTO management. To date and despite numerous inquiries from POPA, USPTO management has still not discussed this issue, all but confirming the gag order.

I believe other recent developments have all but confirmed those rumors and I wanted to update you because OMB’s interpretation of the impact of sequestration on the USPTO will have significant impacts.

Today, the OCIO notified its staff of an $80M cut to the OCIO budget. [DDC Note: Office of the Chief Information Officer] This will result in layoffs of a number of USPTO contractors and significant delays in the development of the Patents-End-To-End project (PE2E) and upgrades to PALM — both critical IT projects. Obviously this is not good news, but I suspect it is evidence that OMB’s sequestration decision is being implemented. And yesterday, you all should have seen the Memorandum from the ADCs regarding changes to overtime in the Examining Corps. Again, more evidence that the rumors are true.

The USPTO’s fee income is currently below projected levels. In other words, we are already operating in a sequester environment by virtue of our reduced fee income. It is incomprehensible to me why the White House would then pile on us by taking such a negative interpretation of sequester on the USPTO. This is about as short sighted as anything I can think of. Our fee income represents filed patent applications that will need to be examined. To now take away those fees while leaving the USPTO with the work to do is counterproductive.

In his letter, Budens mentions the AIA reserve fund that is now codified in 35 U.S.C. § 42. The law establishes a “Patent and Trademark Fee Reserve Fund” within the US Treasury.

If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. To the extent and in the amounts provided in appropriations Acts, amounts in the Fund shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph.

As Budens suggests, it does not appear that this provision would be effective against the budget cuts outlined above because they are coming from either executive fiat or the cap set in the Budget Resolution – neither of which changes the amount appropriated.

Depending upon how it is calculated, the USPTO may be facing about $140 million in cuts for the remaining 5½ months of FY2013.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

Is There a Trend Towards IP Litigation Boutiques?

  • On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP (www.eriseip.com) about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.

Copyright Infringement

  • Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
  • It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.

Patent Searching Tool

  • ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]

Patent Jobs:

  • Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
  • Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
  • Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
  • Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
  • Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
  • Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
  • Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]

Upcoming Events:

  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
  • The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link] [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

Is There a Trend Towards IP Litigation Boutiques?

  • On February 29th of this year Renee Quinn of IPWatchdog wrote a post titled, Boutique Rising: A Conversation with Winthrop & Weinstine, in which she discusses the increase in IP litigation boutiques. [Link] I recently spoke with attorney Jason Mudd of the newly formed IP law firm Erise IP (www.eriseip.com) about the trend towards IP litigation boutiques. Jason recently left a large Kansas City law firm, along with partners Eric Buresh and Adam Seitz, to start Erise IP with a team of attorneys from their prior firm. Erise IP brought along several large clients, including Garmin, Sony, Ubisoft, Ford, and Mazda, to name a few. Jason believes their new firm is consistent with a trend of IP litigation groups departing large law firms to form boutique firms that are able to provide clients with greater flexibility demanded by the rapidly changing IP litigation landscape. While the numbers are not out yet, there could possibly be a recent trend towards IP litigation boutiques.

Copyright Infringement

  • Last week while I was in copyright class, Professor Crouch brought up the Lexis-Nexis and Westlaw class action copyright infringement case. The plaintiffs in the case claim that the defendants (Lexis and Westlaw) copied thousands of copyright-protected works created by, and owned by, the attorneys and law firms who authored them. So, this case got me thinking, do companies like Google Patents infringe patent lawyers and patent firms copyrights? Similar to Westlaw and Lexis, Google downloads thousands of patent applications to store in their database. While there is not a clear answer on whether patent applications are copyrightable or not, it seems that patent applications can have parts covered by copyright –drawings for example, even if the entire patent application is not copyrightable. In Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003), the 7th Circuit recognized the copyrightability of an inventor's patent drawings. Does, this case alone indicate that Google and others may be guilty of copyright infringement for downloading patent applications? [Link]
  • It should be noted that Google is distinguishable from Lexis and Westlaw because Google does not charge users directly, and this fact adds weight to their fair use argument.

Patent Searching Tool

  • ArchPatent, a free-to-use patent search resource which provides novel ways to search, sort, and view patent information, has launched a revamped website this week. The revamp drew its inspiration from beta feedback over the last five months from individuals within the IP industry. ArchPatent Founder Brad Chassee indicates that the objective with the revamp is to focus the site on providing the simplest, most intuitive USPTO search tool – one which experts enjoy using and one which those new to patent searching would actually be able to navigate. ArchPatent wants everyone to be able to "slice and dice" patent search results quickly and efficiently, which should drastically reduce search times and simplify complex search tasks. The site is now ad free with some additional functionality being developed as part of a soon-to-be-released premium offering. The site has a useful filtering tool and filter types include: classification, assignee, examiner, agent, applicant and most referenced. The site now provides access to searchable USPTO data back to 1920 and pdfs back to 1790. [Link]

Patent Jobs:

  • Buchanan Ingersoll & Rooney is seeking an Electrical patent agent with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • Stoel Rives is searching for a patent attorney with 3-5 years of experience drafting electrical-related patent applications to work in their Portland or Seattle office. [Link]
  • Buchanan Ingersoll & Rooney is seeking an Electrical patent associate with a minimum of 3 years of experience and a degree in EE, CS or Computer engineering to work in their Alexandria, VA office. [Link]
  • SAS is looking for a patent counsel with 3 years of patent prep and prosecution experience in the software field and a degree in EE or CS to work at their Cary, NC location. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking chemist patent attorneys with at least a master's degree in organic or medicinal chemistry to work in their DC office. [Link]
  • Sterne, Kessler, Goldstein & Fox is searching for a chemical or biochemical IP attorney with a degree in CE, BM, or ME and 1-3 years of experience to work in their DC office. [Link]
  • Millennium Inorganic Chemicals is looking for corporate counsel with a degree in chemistry or chemical engineering and 7+ years of experience to work at their Glen Burnie, MD location. [Link]
  • Rutan & Tucker is seeking a trademark clerk with a minimum of 1 year of IP docket & filing experience to work at their Costa Mesa, CA office. [Link]
  • Westerman, Hattori, Daniels & Adrian is searching for a chemical IP attorney/agent with a 3 years or less of experience to work at their DC office. [Link]
  • Cantor Colburn is looking for an associate patent attorney with a chemical engineering degree and 2-5 years of experience to work in one of their offices. [Link]
  • Roberts Mlotkowski Safran & Cole is seeking a patent attorney with 2-4 years of experience and a degree in EE to work in their McLean, VA office. [Link]

Upcoming Events:

  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • The 14th Annual Richard C. Sughrue Symposium on IP Law and Policy will be held March 19th at The University of Akron Law School. The program will include a review of recent developments in patent, trademark, and copyright law, as well as a panel discussion on international IP. David Kappos will be the featured speaker and he will discuss the USPTO's implementation of the American Invents Act. Other guest speakers include: Timothy Holbrook, Mark Janis, former chief judge Paul Michel, Samuel Oddi, Ryan Vacca, Susan Pan, Harold Wegner, and many others.
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Provisional Patent Applications: Making Substance in a Land Without Form," on March 21, 2012 at 12 noon EST. The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Stephen G. Parmelee will address approaches to leveraging the provisional patent application opportunity by encouraging the inclusion of substantive content while taking economic advantage of the stylistic freedom that provisional filings permit. [Link]
  • The University of Pittsburgh School of Law will have their annual Innovation Law Lecture on March 22, 2012, 4-5PM. This year's guest speaker will be Professor Rochelle Dreyfuss from NYU School of Law and her talk is entitled "Are Patents Good for Science?" The event is open to the general public and one (1) CLE credit has been requested for the lecture. [Link] [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • Managing Intellectual Property is holdings its US Patent Reform Forum conference March 27, 2012 in Washington D.C. The forum will bring together top officials, leading counsel at US corporations and their private practice advisers for a number of lively and informative sessions looking at the strategic implications of US Patent Reform. Speakers include: David Kappos, Judge Paul Michel, Gene Quinn, Robert Armitage, Phil Johnson, and many others. (Patently-O readers will receive a discount and in-house IP counsel from large corporations and research institutes attend free of charge.) [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • AIPLA and The University of San Diego School of Law will host the 2012 Electronic & Computer Patent Law Summit on April 2nd. The summit will include in-house counsel from Qualcomm, Apple, SAP, Covidien, ViaSat, Google, and Cisco, among others, as well as a distinguished panel of US District Court judges. Topics will include the new First to File system, an update on divided infringement, how the patent portfolio use and acquisition landscape is changing, and a discussion of the patent pilot program. [Link]
  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]

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

Guest Post: The February of FRAND

Patent, ,

Guest Post by Professor Jorge L. Contreras. 

For those of us who have been following the telecom patent battles, something remarkable happened a couple of weeks ago.  On February 7, the Wall St. Journal reported that, back in November, Apple sent a letter[1] to the European Telecommunications Standards Institute (ETSI) setting forth Apple’s position regarding its commitment to license patents essential to ETSI standards.  In particular, Apple’s letter clarified its interpretation of the so-called “FRAND” (fair, reasonable and non-discriminatory) licensing terms that ETSI participants are required to use when licensing standards-essential patents.  As one might imagine, the actual scope and contours of FRAND licenses have puzzled lawyers, regulators and courts for years, and past efforts at clarification have never been very successful.  The next day, on February 8, Google released a letter[2] that it sent to the Institute for Electrical and Electronics Engineers (IEEE), ETSI and several other standards organizations.  Like Apple, Google sought to clarify its position on FRAND licensing.  And just hours after Google’s announcement, Microsoft posted a statement of “Support for Industry Standards”[3] on its web site, laying out its own gloss on FRAND licensing.  For those who were left wondering what instigated this flurry of corporate “clarification”, the answer arrived a few days later when, on February 13, the Antitrust Division of the U.S. Department of Justice (DOJ) released its decision[4] to close the investigation of three significant patent-based transactions:  the acquisition of Motorola Mobility by Google, the acquisition of a large patent portfolio formerly held by Nortel Networks by “Rockstar Bidco” (a group including Microsoft, Apple, RIM and others), and the acquisition by Apple of certain Linux-related patents formerly held by Novell.  In its decision, the DOJ noted with approval the public statements by Apple and Microsoft, while expressing some concern with Google’s FRAND approach.  The European Commission approved Google’s acquisition of Motorola Mobility on the same day.

To understand the significance of the Apple, Microsoft and Google FRAND statements, some background is in order.  The technical standards that enable our computers, mobile phones and home entertainment gear to communicate and interoperate are developed by corps of “volunteers” who get together in person and virtually under the auspices of standards-development organizations (SDOs).  These SDOs include large, international bodies such as ETSI and IEEE, as well as smaller consortia and interest groups.  The engineers who do the bulk of the work, however, are not employees of the SDOs (which are usually thinly-staffed non-profits), but of the companies who plan to sell products that implement the standards: the Apples, Googles, Motorolas and Microsofts of the world.  Should such a company obtain a patent covering the implementation of a standard, it would be able to exert significant leverage over the market for products that implemented the standard.  In particular, if a patent holder were to obtain, or even threaten to obtain, an injunction against manufacturers of competing standards-compliant products, either the standard would become far less useful, or the market would experience significant unanticipated costs.  This phenomenon is what commentators have come to call “patent hold-up”.  Due to the possibility of hold-up, most SDOs today require that participants in the standards-development process disclose their patents that are necessary to implement the standard and/or commit to license those patents on FRAND terms. 

On its face, it is easy to see why a FRAND commitment might reassure implementers of a standard.  If a patent is essential to the standard, the patent holder must license the patent on terms that are fair, reasonable and non-discriminatory.  Unfortunately, the devil has proven to be in the details of FRAND, and no two companies seem to have the same view of what constitutes fair, reasonable or non-discriminatory licensing terms.  This lack of agreement has troubled regulators for some time and has led to an increasing number of litigation claims alleging that one party or another to a standards effort has failed to comply with its FRAND obligations. 

The February FRAND statements by Apple, Microsoft and Google are thus informative and potentially of great importance.  To understand the statements, and why the DOJ viewed them differently, it is helpful to compare them side-by-side.  The following table summarizes what Apple, Microsoft and Google said FRAND means to them.

 

Apple (relating to cellular telephony standards)

Microsoft

Google (limited to Motorola Mobility patents)

1. Prior Commitments.

Will the patent holder honor FRAND obligations of prior patent owners?

A party acquiring patents from someone who made FRAND commitments must abide by those commitments

n/a

G will honor Motorola’s existing FRAND commitments

2.  Onward Transfer.

Will the patent holder require future owners of the patent to comply with its FRAND obligations?

n/a

M will require transferees to abide by its FRAND commitments

G will use “best efforts” to ensure that transferees abide by its FRAND commitments

3. Reciprocity.

Will the patent holder require that the licensee grant a license back to the licensor?

n/a

M will only require a grant-back of the licensee’s patents that are essential to the same standard

G will only require a grant-back of the licensee’s patents that are essential to the same standard

4.  Royalty Rate.

Will the patent holder commit to a maximum royalty rate?

Standards-essential patents should be licensed at an “appropriate” royalty rate reflective of the licensor’s share of the overall number of patents essential to the standard

n/a

Maximum per-unit royalty of 2.25% of product net selling price

5. Injunctive Relief.

Will the patent holder seek injunctive relief against unlicensed implementers of the standard?

A party making a FRAND commitment must not seek injunctive relief on patents subject to the commitment

M will not seek an injunction … on the basis of [standards-] essential patents

G will not seek an injunction on the basis of standards-essential patents, during a reasonable negotiation period and if the other party makes a similar commitment

 

Despite their differences, the three FRAND statements exhibit some important similarities.  All three, for example, support the notion that FRAND commitments should “travel with the patent”.  This is an important acknowledgement, as such commitments typically lack the necessary elements of a bilateral contractual arrangement, and have been questioned in both corporate acquisitions and bankruptcy proceedings (see In re Nortel Networks Inc., Order – Case No. 09-10138(KG) (Bankruptcy Ct. D.Del., Jul. 11, 2011)).

The three statements also address the question of injunctive relief.  Numerous commentators have questioned whether injunctive relief is an appropriate remedy for holders of standards-essential patents, particularly in view of the Supreme Court’s four-part analysis under eBay v. MercExchange LLC, 547 U.S. 388 (2006). In 2011, the Federal Trade Commission suggested that injunctive relief might not be justified in the standards context, writing that “[a] prior [F]RAND commitment can provide strong evidence that denial of the injunction and ongoing royalties will not irreparably harm the patentee.”  Federal Trade Comm’n, The Evolving IP Marketplace – Aligning Patent Notice and Remedies with Competition 235 (2011).  In their February FRAND statements, Apple and Microsoft each commit not to seek injunctions on the basis of their standards-essential patents.  Google makes a similar commitment, but qualifies it in typically lawyerly fashion (Google’s letter is more than 3 single-spaced pages in length, while Microsoft’s simple statement occupies about a quarter of a page).  In this case, Google’s careful qualifications (injunctive relief might be possible if the potential licensee does not itself agree to refrain from seeking an injunction, if licensing negotiations extended beyond a reasonable period, and the like) worked against it.  While the DOJ applauds Apple’s and Microsoft’s statements “that they will not seek to prevent or exclude rivals’ products form the market”, it views Google’s commitments as “less clear”.  The DOJ thus “continues to have concerns about the potential inappropriate use of [standards-essential patents] to disrupt competition”. 

It is not clear whether the DOJ’s criticism of Google’s stance on injunctive relief, or its endorsement of Apple’s and Microsoft’s positions, is warranted.  After all, none of the February FRAND statements was made directly to the DOJ, formed part of a consent order, or even rose to the level of a contractual commitment.  But whatever their actual legal effect, it is certainly preferable to have such statements than not, and perhaps this recent wave of “clarifications” will help courts to interpret the array of FRAND-based claims that will inevitably be brought over the next several years.

Mr. Contreras is a Visiting Associate Professor at American University – Washington College of Law and will join the faculty as an Associate Professor this summer.  His research focuses on the impact of intellectual property rules on scientific and technological development, including in the area of technical standard-setting.  He is the editor of the ABA's Standards Development Patent Policy Manual and has written numerous articles and book chapters relating to intellectual property and standards.

 

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Conference on Industry/Academic Collaborations: Lessons from the Trenches

  • Innovation remains a major driver of economic growth in this country, and research universities provide a key reservoir of innovation. Increasingly, universities and industry have joined forces to translate that potential into jobs and commercial industries. Designing the complex legal and business frameworks for these collaborations is an evolving art, which will be discussed by those at the forefront of these transactions. On February 29, at UC Hastings College of Law, individuals from some of the biggest companies in the world will discuss their relationships with Universities. Google, Hoffman-LaRoche, Intel, Pfizer and BP will speak about their collaborations. The Keynote Speaker will be Chris Vein, The White House Office of Science and Technology Policy. Guest speakers include: Robin Feldman, Susan Capello, Paul Willems, Louisa Daniels, Jeff Walz, Laura Berner, and many others. This event will also be streamed online for individuals who are unable to attend. [Link]

Federal Court Dismisses OSGATA Lawsuit

  • The OSGATA suit against Monsanto has been dismissed by the US District Court for the Southern District of NY. OSGATA claimed that they did not want or intend to grow crops containing Monsanto patented gene traits and they feared being sued by Monsanto. Judge Naomi Buchwald noted that, Monsanto averages about 13 patent infringement lawsuits targeted towards farmers per year, which is considered insignificant compared to the number of farms in the US. The court held that there was no case or controversy because Monsanto has yet to take action against any of the plaintiffs. [Link]

USPTO Detroit Office Update

  • The Elijah J. McCoy United States Patent and Trademark Office (USPTO) will open in Detroit, Michigan in July 2012. The USPTO plans to hire for more than 100 positions, including patent examiners and Board of Patent Appeals and Interferences judges. The USPTO hopes to fill more than 50 percent of the positions by the end of the summer. Vacancy announcements for patent examiner positions and judges have been posted on the USA Jobs website.

Student Writing Contest

  • The Pennsylvania Bar Association IP Law Section is accepting papers for its annual IP writing contest. The competition is open to all students enrolled in one of the Pennsylvania law schools and Pennsylvania residents enrolled at other law schools within the US. The first place winner will receive $2500 and the paper will be published. [Link]

Patent Jobs:

  • Banner & Witcoff is seeking an International IP Manager with a minimum of 10 years of experience in management to work in their DC or Chicago office. [Link]
  • Axiom is looking to hire patent attorneys with 7+ years of experience to work remotely. [Link]
  • Sterne, Kessler, Goldstein & Fox is looking for electrical IP attorneys with 1-4 years of experience to work in their DC office. [Link]
  • Hiscock & Barclay is seeking patent attorneys/agents with a minimum of 3-5 years of experience to work at their Syracuse & Rochester offices. [Link]
  • The Coca-Cola Company is searching for a patent agent with 2-4 years of experience to work at their Atlanta location. [Link]
  • The USPTO is looking for patent examiners with a BS degree in engineering to work at their Alexandra location. [Link]
  • Steptoe & Johnson is seeking IP associates with a minimum of 4 years of experience in IP litigation to work in their DC office. [Link]
  • Fish & Richardson is looking for technical advisors with a background in EE, physics, or CS to work at one of their several offices. [Link]
  • Klemchuk Kubasta is searching for a patent associate with at least 4 years of experience to work in their Dallas office. [Link]
  • Guntin Meles & Gust is seeking patent attorneys with 3+ years of experience and a degree in EE or Computer Engineering to work in their Chicago office. [Link]
  • Levine Bagade Han is looking for a patent associate with 2-6 years of experience to work in their Palo Alto office. [Link]
  • Myers Wolin is searching for a patent attorney with 3-5 years of experience and a degree in EE to work at their Morristown, NJ office. [Link]
  • Young Basile is seeking a patent attorney with 2+ years of experience and a degree in ME, EE, or CS to work in their Ann Arbor office. [Link]

Upcoming Events:

  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Conference on Industry/Academic Collaborations: Lessons from the Trenches

  • Innovation remains a major driver of economic growth in this country, and research universities provide a key reservoir of innovation. Increasingly, universities and industry have joined forces to translate that potential into jobs and commercial industries. Designing the complex legal and business frameworks for these collaborations is an evolving art, which will be discussed by those at the forefront of these transactions. On February 29, at UC Hastings College of Law, individuals from some of the biggest companies in the world will discuss their relationships with Universities. Google, Hoffman-LaRoche, Intel, Pfizer and BP will speak about their collaborations. The Keynote Speaker will be Chris Vein, The White House Office of Science and Technology Policy. Guest speakers include: Robin Feldman, Susan Capello, Paul Willems, Louisa Daniels, Jeff Walz, Laura Berner, and many others. This event will also be streamed online for individuals who are unable to attend. [Link]

Federal Court Dismisses OSGATA Lawsuit

  • The OSGATA suit against Monsanto has been dismissed by the US District Court for the Southern District of NY. OSGATA claimed that they did not want or intend to grow crops containing Monsanto patented gene traits and they feared being sued by Monsanto. Judge Naomi Buchwald noted that, Monsanto averages about 13 patent infringement lawsuits targeted towards farmers per year, which is considered insignificant compared to the number of farms in the US. The court held that there was no case or controversy because Monsanto has yet to take action against any of the plaintiffs. [Link]

USPTO Detroit Office Update

  • The Elijah J. McCoy United States Patent and Trademark Office (USPTO) will open in Detroit, Michigan in July 2012. The USPTO plans to hire for more than 100 positions, including patent examiners and Board of Patent Appeals and Interferences judges. The USPTO hopes to fill more than 50 percent of the positions by the end of the summer. Vacancy announcements for patent examiner positions and judges have been posted on the USA Jobs website.

Student Writing Contest

  • The Pennsylvania Bar Association IP Law Section is accepting papers for its annual IP writing contest. The competition is open to all students enrolled in one of the Pennsylvania law schools and Pennsylvania residents enrolled at other law schools within the US. The first place winner will receive $2500 and the paper will be published. [Link]

Patent Jobs:

  • Banner & Witcoff is seeking an International IP Manager with a minimum of 10 years of experience in management to work in their DC or Chicago office. [Link]
  • Axiom is looking to hire patent attorneys with 7+ years of experience to work remotely. [Link]
  • Sterne, Kessler, Goldstein & Fox is looking for electrical IP attorneys with 1-4 years of experience to work in their DC office. [Link]
  • Hiscock & Barclay is seeking patent attorneys/agents with a minimum of 3-5 years of experience to work at their Syracuse & Rochester offices. [Link]
  • The Coca-Cola Company is searching for a patent agent with 2-4 years of experience to work at their Atlanta location. [Link]
  • The USPTO is looking for patent examiners with a BS degree in engineering to work at their Alexandra location. [Link]
  • Steptoe & Johnson is seeking IP associates with a minimum of 4 years of experience in IP litigation to work in their DC office. [Link]
  • Fish & Richardson is looking for technical advisors with a background in EE, physics, or CS to work at one of their several offices. [Link]
  • Klemchuk Kubasta is searching for a patent associate with at least 4 years of experience to work in their Dallas office. [Link]
  • Guntin Meles & Gust is seeking patent attorneys with 3+ years of experience and a degree in EE or Computer Engineering to work in their Chicago office. [Link]
  • Levine Bagade Han is looking for a patent associate with 2-6 years of experience to work in their Palo Alto office. [Link]
  • Myers Wolin is searching for a patent attorney with 3-5 years of experience and a degree in EE to work at their Morristown, NJ office. [Link]
  • Young Basile is seeking a patent attorney with 2+ years of experience and a degree in ME, EE, or CS to work in their Ann Arbor office. [Link]

Upcoming Events:

  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • The New Jersey Intellectual Property Law Association will hold a half-day Patent Litigation Seminar on Wednesday, March 14, 2012 11:45 am to 5:45 pm. Guest speakers include: Paul Berghoff, Kara Stoll, William McElwain, Richard Bress, Barbara Fiacco, and Lewis Ho. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • The ABA Section of IP Law will hold its 27th Annual IP Law Conference March 28-30 in Arlington, VA. The conference is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world. Speakers and moderators include: Sharon Marsh, Keisha Hylton-Rodic, Alexander Wilson, Steven Emmert, Teresa Rea, James Bikoff, David Kappos, and many others. The discounted early registration deadline is March 14. [Link] [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , , , ,

USPTO Patent Externship

  • The USPTO will be accepting application for their patent externship until February 29. Last year there were about 200 students who participated in the program. The program will last anywhere from 8-10 weeks and is at the USPTO headquarters in Alexandria, Virginia. This is a great opportunity for anyone who wants to work in the patent field. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can’t: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Patent Jobs:

  • Stoel Rives is searching for an associate attorney with 3-5 years of experience in patent prosecution and an EE background to work at their Salt Lake City office. [Link]
  • Weaver Austin Villeneuve & Sampson is seeking a patent attorney with 3-5 years of experience and a background in EE to work at their Oakland office. [Link]
  • Schwegman, Lundberg & Woessner is looking for patent attorneys with 2+ years of experience or 5+ years of experience if telecommuting. [Link]
  • Holland & Knight is searching for 2 IP litigation associates with 4-6 years of experience to work at their Boston or Chicago offices. [Link]
  • Howard & Howard is seeking IP associates with 4-8 years of experience of patent prep experience to work at their Royal Oak, Michigan office. [Link]
  • Armstrong Teasdale is looking for patent attorneys with 2-6 years of experience to work in one of their offices. [Link]
  • Pramudji Law Group is searching for a patent agent/attorney/engineer with at least 2 years of patent experience to work at their Houston office. [Link]
  • Shook, Hardy & Bacon is seeking a litigation associate with 3-4 years of litigation experience work in their Kansas City office. [Link]
  • Paul Hastings is searching for a patent litigation associate with a computer science degree and experience with patent litigation to work in their Atlanta office. [Link]
  • Krieg DeVault is looking for an IP associate with 3-7 years of experience to work in their Indianapolis office. [Link]
  • UTC Power is searching for an IP paralegal with 2-4 years of IP experience to work at their South Windsor, Connecticut location. [Link]
  • Fennemore Craig is seeking an experienced patent attorney to work in their Phoenix or Denver office. [Link]
  • Gore Medical Products is searching for an IP technical specialist to work at their Flagstaff location. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP practice to work at their Spokane office. [Link]
  • Sutherland is seeking a patent associate/agent with 2-5 years of experience and a degree in chemical engineering to work at their Atlanta office. [Link]

Upcoming Events:

  • IBC Legal’s 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, “Patent Reexaminations in Parallel with Litigation,” on February 22, 2012 at 12 noon EST. Joseph E. Shipley will discuss the factors that should be considered in deciding whether to seek reexamination as an alternative or adjunct to litigating patent validity in the federal courts. Topics will include what can and cannot be achieved in reexamination, current statistics on outcome, associated risks and costs, time frames, and reexamination options and alternatives. The upcoming new USPTO procedures–Post-Grant Review and Inter Partes Review–will also be covered. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world’s largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • C5’s 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute’s FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute’s PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant’s strategy for entering the market. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , , , ,

USPTO Patent Externship

  • The USPTO will be accepting application for their patent externship until February 29. Last year there were about 200 students who participated in the program. The program will last anywhere from 8-10 weeks and is at the USPTO headquarters in Alexandria, Virginia. This is a great opportunity for anyone who wants to work in the patent field. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can’t: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Patent Jobs:

  • Stoel Rives is searching for an associate attorney with 3-5 years of experience in patent prosecution and an EE background to work at their Salt Lake City office. [Link]
  • Weaver Austin Villeneuve & Sampson is seeking a patent attorney with 3-5 years of experience and a background in EE to work at their Oakland office. [Link]
  • Schwegman, Lundberg & Woessner is looking for patent attorneys with 2+ years of experience or 5+ years of experience if telecommuting. [Link]
  • Holland & Knight is searching for 2 IP litigation associates with 4-6 years of experience to work at their Boston or Chicago offices. [Link]
  • Howard & Howard is seeking IP associates with 4-8 years of experience of patent prep experience to work at their Royal Oak, Michigan office. [Link]
  • Armstrong Teasdale is looking for patent attorneys with 2-6 years of experience to work in one of their offices. [Link]
  • Pramudji Law Group is searching for a patent agent/attorney/engineer with at least 2 years of patent experience to work at their Houston office. [Link]
  • Shook, Hardy & Bacon is seeking a litigation associate with 3-4 years of litigation experience work in their Kansas City office. [Link]
  • Paul Hastings is searching for a patent litigation associate with a computer science degree and experience with patent litigation to work in their Atlanta office. [Link]
  • Krieg DeVault is looking for an IP associate with 3-7 years of experience to work in their Indianapolis office. [Link]
  • UTC Power is searching for an IP paralegal with 2-4 years of IP experience to work at their South Windsor, Connecticut location. [Link]
  • Fennemore Craig is seeking an experienced patent attorney to work in their Phoenix or Denver office. [Link]
  • Gore Medical Products is searching for an IP technical specialist to work at their Flagstaff location. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP practice to work at their Spokane office. [Link]
  • Sutherland is seeking a patent associate/agent with 2-5 years of experience and a degree in chemical engineering to work at their Atlanta office. [Link]

Upcoming Events:

  • IBC Legal’s 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, “Patent Reexaminations in Parallel with Litigation,” on February 22, 2012 at 12 noon EST. Joseph E. Shipley will discuss the factors that should be considered in deciding whether to seek reexamination as an alternative or adjunct to litigating patent validity in the federal courts. Topics will include what can and cannot be achieved in reexamination, current statistics on outcome, associated risks and costs, time frames, and reexamination options and alternatives. The upcoming new USPTO procedures–Post-Grant Review and Inter Partes Review–will also be covered. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world’s largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • C5’s 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute’s FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute’s PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant’s strategy for entering the market. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

USPTO Hoteling Report

  • The US Department of Commerce recently performed an audit and evaluation of the USPTO's Hoteling program. The report shows that the average Patent Hoteling Program (PHP) examiner spends 66.3 more hours a year examining patents than does the average in-house examiner (which translates to reviewing about 3.5 more patent applications a year. However, the report shows that PHP participants are no more efficient at reviewing patent applications than individuals at the USPTO headquarters. At the end of the fiscal year 2011 over 2,600 patent examiners were Hoteling. To be able to participate in the PHP an examiner must be GS-12 or above, worked at least 2 years at the USPTO, passed the certification exam (essentially the Patent Bar), & currently not under any warnings. [Link]

U.S. House introduces bill to amend design patent law

  • The proposed House bill, known as the Promoting Automotive Repair, Trade, and Sales (PARTS) Act, would reduce the time period when auto manufacturers are able to enforce design patents on collision repair parts against alternative suppliers from 14 years to 30 months. The bill claims that it would save Americans money on car parts, by removing auto manufacturer monopolies from the equation. [Link]

Can University Tech Transfer save the Pharma Industry?

  • The pharmaceutical industry has been hit hard by the fall in revenue because of expiring patents. Pfizer's profit declined 50% because of Lipitor going into the public domain. Eli Lilly's profit dropped 27% because of Zyprexa going generic. AstraZeneca revenue declined and they plan to lay off 7,350 people, because Nexium fell out of patent protection in Europe. Also, later this year Plavix and Singulair will face competition, which will probably cause those companies' profits to drop. With all of these multi- billion dollar patents expiring, it seems that pharma companies need new compounds and drugs to increase profit. I think that Universities will be the key to the pharma industry. Universities have many patents waiting to be licensed by big companies that could be very profitable for both the University and the company. The problem that I see is that there is a lack of communication between companies and Universities. Most University Tech Transfer offices are limited in what they can do, and if they do not have an inside connection at a company, it is difficult to market an invention to a big company. This problem can be overcome in many ways; however it would seem that an intermediary may be needed. An intermediary would be of great value if they can connect pharma companies (or companies in general) with University Tech Transfer offices to help broker a deal. While this is not a new idea in the patent world, I do not think that many universities currently use individuals from the outside to help get technology licensed. [Link]

Patent Jobs:

  • Apple seeks to hire a Sr. IP Counsel with 6+ years of experience in patent disputes to work at their Cupertino location. [Link]
  • Sughrue Mion is searching for candidates for an associate or technical specialist positions with a BS in chemical fields and candidates with Ph.D. level education in Molecular/Cell biology to work in their D.C. office. [Link]
  • Brookstone is looking for IP Counsel with a minimum of 5 years of experience to work at their Merrimack, New Hampshire location. [Link]
  • Christopher & Weisberg is seeking a patent attorney with 1-5 years of experience and degree in EE to work in their Fort Lauderdale office. [Link]
  • Harness, Dickey & Pierce is searching for a patent prosecution associate with 3-4 years of experience and Bachelor's degree in Biotech or a Biotech-related degree to work in their Saint Louis office. [Link]
  • Faegre Baker Daniels is looking for an IP associate with degree in EE, ME, CE, physics, or chemistry and up to 5 years of patent prosecution experience to work in their Fort Wayne, Indiana office. [Link]
  • Bluestone Innovations is seeking to hire in house counsel with 5 years of patent litigation experience to work at their Reston, Virginia location. [Link]

Upcoming Events:

  • The New Jersey IP Association is sponsoring, The Inside Track to the Proposed Rules for Implementation of the America Invents Act on February 7 in Trenton, NJ. Featured speakers include: David Kappos, Philip Johnson, and Kenneth Nigon. [Link]
  • The Emory Law Journal will hold The 2012 Randolph W. Thrower Symposium, Innovation For the Modern Era: Law, Policy, and Legal Practice in a Changing World on February 9. The symposium is free and open to the public. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
  • IBC Legal's 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

USPTO Hoteling Report

  • The US Department of Commerce recently performed an audit and evaluation of the USPTO's Hoteling program. The report shows that the average Patent Hoteling Program (PHP) examiner spends 66.3 more hours a year examining patents than does the average in-house examiner (which translates to reviewing about 3.5 more patent applications a year. However, the report shows that PHP participants are no more efficient at reviewing patent applications than individuals at the USPTO headquarters. At the end of the fiscal year 2011 over 2,600 patent examiners were Hoteling. To be able to participate in the PHP an examiner must be GS-12 or above, worked at least 2 years at the USPTO, passed the certification exam (essentially the Patent Bar), & currently not under any warnings. [Link]

U.S. House introduces bill to amend design patent law

  • The proposed House bill, known as the Promoting Automotive Repair, Trade, and Sales (PARTS) Act, would reduce the time period when auto manufacturers are able to enforce design patents on collision repair parts against alternative suppliers from 14 years to 30 months. The bill claims that it would save Americans money on car parts, by removing auto manufacturer monopolies from the equation. [Link]

Can University Tech Transfer save the Pharma Industry?

  • The pharmaceutical industry has been hit hard by the fall in revenue because of expiring patents. Pfizer's profit declined 50% because of Lipitor going into the public domain. Eli Lilly's profit dropped 27% because of Zyprexa going generic. AstraZeneca revenue declined and they plan to lay off 7,350 people, because Nexium fell out of patent protection in Europe. Also, later this year Plavix and Singulair will face competition, which will probably cause those companies' profits to drop. With all of these multi- billion dollar patents expiring, it seems that pharma companies need new compounds and drugs to increase profit. I think that Universities will be the key to the pharma industry. Universities have many patents waiting to be licensed by big companies that could be very profitable for both the University and the company. The problem that I see is that there is a lack of communication between companies and Universities. Most University Tech Transfer offices are limited in what they can do, and if they do not have an inside connection at a company, it is difficult to market an invention to a big company. This problem can be overcome in many ways; however it would seem that an intermediary may be needed. An intermediary would be of great value if they can connect pharma companies (or companies in general) with University Tech Transfer offices to help broker a deal. While this is not a new idea in the patent world, I do not think that many universities currently use individuals from the outside to help get technology licensed. [Link]

Patent Jobs:

  • Apple seeks to hire a Sr. IP Counsel with 6+ years of experience in patent disputes to work at their Cupertino location. [Link]
  • Sughrue Mion is searching for candidates for an associate or technical specialist positions with a BS in chemical fields and candidates with Ph.D. level education in Molecular/Cell biology to work in their D.C. office. [Link]
  • Brookstone is looking for IP Counsel with a minimum of 5 years of experience to work at their Merrimack, New Hampshire location. [Link]
  • Christopher & Weisberg is seeking a patent attorney with 1-5 years of experience and degree in EE to work in their Fort Lauderdale office. [Link]
  • Harness, Dickey & Pierce is searching for a patent prosecution associate with 3-4 years of experience and Bachelor's degree in Biotech or a Biotech-related degree to work in their Saint Louis office. [Link]
  • Faegre Baker Daniels is looking for an IP associate with degree in EE, ME, CE, physics, or chemistry and up to 5 years of patent prosecution experience to work in their Fort Wayne, Indiana office. [Link]
  • Bluestone Innovations is seeking to hire in house counsel with 5 years of patent litigation experience to work at their Reston, Virginia location. [Link]

Upcoming Events:

  • The New Jersey IP Association is sponsoring, The Inside Track to the Proposed Rules for Implementation of the America Invents Act on February 7 in Trenton, NJ. Featured speakers include: David Kappos, Philip Johnson, and Kenneth Nigon. [Link]
  • The Emory Law Journal will hold The 2012 Randolph W. Thrower Symposium, Innovation For the Modern Era: Law, Policy, and Legal Practice in a Changing World on February 9. The symposium is free and open to the public. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
  • IBC Legal's 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted 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 video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted 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 video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted 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 video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent
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

Patent
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

Patent
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

Patent

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.