Search Results for: "sas institute"

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.

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.

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [Link]
  • On Friday, November 18, the Intellectual Property Institute at the University of Richmond School of Law will host the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The Evil Twin Debate series is founded on the notion that experts are often at loggerheads on important issues of IP policy, yet remain friendly on a personal level. The series therefore brings together pairs of scholars who disagree on an important IP topic, but who can air their disagreements in a friendly exchange — serious in substance but lighthearted in tone. [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • Indiana University School of Law's Center for IP Law and Innovation will hold "The America Invents Act: Patent Law's New Lease on Life" symposium on December 2nd. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO's Patent Reform Coordinator. [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
  • IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7th-8th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
  • The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

New Patent Search Tool

  • ArchPatent is a brand new, free-to-use patent search resource that went live to the public on October 11th with US patents extending back to 1920. ArchPatent will be supported mainly by ad revenue. It was developed with the help of many PatenlyO readers, by aerospace engineers, and managers who specialize in data analysis and management. One of Arch PatentFounders, Brad Chassee indicated, "This tool was developed for those frustrated with the difficulty of using existing patent search tools. By providing simple yet powerful filtering tools, ArchPatent can drastically reduce search times, and our intuitive workspace functionality can greatly simplify larger, more complex search tasks." Many new features suggested by users are in the works for integration in future releases include: collaborative workspaces, matching of search terms within a single claim, filtering and advanced processing based on patents referenced and in-page PDF display. [Link]

Barnes & Noble Complains about Microsoft

  • Barnes & Noble wants the DOJ to go after Microsoft because of their licensing tactics. Barnes & Noble asked the DOJ to investigate Microsoft for using patents to keep new players out of the market. It seems that Microsoft may have asked Barnes & Noble, maker of the Android powered Nook, to enter into license agreement. Barnes & Noble said in a letter to the DOJ that "Microsoft is attempting to raise its rivals' costs in order to drive out competition and to deter innovation in mobile devices." Microsoft is accusing Barnes & Noble of infringing 5 patents and Microsoft has filed a complaint with the ITC. Barnes & Noble claims that when they asked Microsoft for more detailed information related to these patents, Microsoft refused, claiming that the information was confidential and could not be shared, unless Barnes & Noble first executed a nondisclosure agreement. [Link] [Link]

Book Review

  • I recently received a free copy of "Patent Professional's Handbook: A Training Tool for Administrative Staff," it is a book geared toward administrative staff/non-attorneys to give them an overview of what steps are involved in patent prosecution. The book starts with an explanation of patent basics and moves on to explain how to do business electronically with the USPTO. There are sections on establishing user accounts and accessing the USPTO's patent information website. The book includes numerous screen images to help the reader understand how to navigate the PTO website. The book is very easily understandable and gives step-by-step instructions on what needs to be done when communicating with the USPTO. This is the first book on the market addressed directly to non-attorneys and does not give any legal advice. This would be a great beginner book for individuals that want to be involved in the patent world in an administrative role or individuals that are currently in an administrative role as a go to guide. The author of the book is Susan Stiles; she has been a Legal Assistant for more than 25 years, with 19 years experience in IP. [Link]

Patent Jobs:

  • Shuffle Master Inc. is looking for IP counsel with a minimum of 5 years of experience and an engineering background. [Link]
  • Myers Wolin is seeking a patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Cantor Colburn is seeking an associate patent attorney with 3-5 years of experience and a degree in electrical engineering. [Link]
  • Toler Law Group is searching for patent attorneys with a degree in EE, CE, or CS. [Link]
  • Cesari and McKenna is looking for patent attorney with 2-4 years of experience and a degree in EE, CS, or related area of technology. [Link]
  • Sandia National Laboratories is searching for patent assistants with experience working with USPTO rules. [Link]
  • Baker & Daniels is seeking a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • The Storella Law Group is searching for a contract patent attorney or agent with a background in biotechnology. [Link]
  • DIRECTV is seeking a senior patent analysis counsel with 6 or more years of experience in patent law. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP. [Link]
  • Harrity & Harrity is seeking a patent attorney with 2+ years of experience as a patent associate, agent, or examiner. [Link]
  • Baker & Daniels is searching for an IP associate with 2-4 years of experience and a degree in EE or CS to work in their Indianapolis office. [Link]
  • Skiermont Puckett is seeking 1 or more attorneys with 3 or more years of experience in a technical degree. [Link]
  • Guntin Meles & Gust is searching for patent attorneys with 2+ years of experience and a degree in EE or CE. [Link]

Upcoming Events:

  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • Fitch, Even, Tabin & Flannery will hold a free webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey Chelstrom on November 17th at 12:00 noon EST. The webinar will review and discuss many topics such as: the "effective filing date" of a patent application, changes to Section 102 and Section 103. New definitions to prior art, and many more topics. [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.

Notes from DC

Patent
  • Read the new Patently-O Patent Law Journal Essay by Prof. Sarnoff. He explains some of the problems arising from the elimination of section 102(f) in the new Patent Act.
  • I’ll be at the Houston’s 27th Annual Institute on Intellectual Property (in Galveston) this evening and tomorrow. I look forward to seeing you there. – Dennis
  • Intellectual Ventures has filed its first patent infringement lawsuit using its own name. Intellectual Ventures I & II v. Motorola Mobility, Inc.  The case was filed in Delaware using the new Feinberg Day firm and former Judge Joseph Farnon’s boutique firm as local counsel. The case asserts six patents: 6,412,953,  6,557,054,  6,658,464,  7,120,462,  7,409,450, and 7,810,144. IV obtained the patents from various sources, including Hyperspace Communications, Malibu Networks, Khyber Technologies, TeleShuttle, and the Taiwan-based company Industrial Technology Research Institute. The case is also interesting in that Google is a major investment in the Intellectual Venture funds and is also in the process of merging with Motorola.

Patently-O Bits and Bytes by Dennis Crouch

Patent

My Upcoming Events: I am not travelling much this fall, but I will be speaking at two upcoming events:

  • September 15-17, 2011: MarcusEvans IP Law Summit in Las Vegas, Nevada (Red Rock Casino). Speakers include Robert Bahr (USPTO Commissioner); Ankur D. Shah (AGC for Freddie Mac); Mallory Levitt (AGC for CBS); etc.
  • October 6-8, 2011: 27th Annual Institute on Intellectual Property hosted by Houston Intellectual Property Law Association and the University of Houston Law Center. The Institute has an excellent lineup of speakers, including Russ Levine (my former boss at Kirkland & Ellis); David Healey (PatentMath); Hal Wegner; Professor Nancy Rappaport (Las Vegas); Lord Justice Robin Jacob (Court of Appeal of England and Wales); Professor Paul Janicke (Houston Law Center); Michael Smith (E.D.Tex. Blog); Professor Phillip Page (South Texas); etc. Registration is around $600.

FUNDRAISER: My son started preschool today at the Waldorf-inspired Garden Gate school. We’re helping with the school fundraiser – a national flower bulb sale. Plant the bulbs this fall – when they come up in the spring you will hopefully pause to realize that the Leahy-Smith Act was just a bad dream. (Mail delivery; the school keeps 50% of revenue). Thank you – Dennis.

Patently-O Bits and Bytes by Dennis Crouch

Patent

My Upcoming Events: I am not travelling much this fall, but I will be speaking at two upcoming events:

  • September 15-17, 2011: MarcusEvans IP Law Summit in Las Vegas, Nevada (Red Rock Casino). Speakers include Robert Bahr (USPTO Commissioner); Ankur D. Shah (AGC for Freddie Mac); Mallory Levitt (AGC for CBS); etc.
  • October 6-8, 2011: 27th Annual Institute on Intellectual Property hosted by Houston Intellectual Property Law Association and the University of Houston Law Center. The Institute has an excellent lineup of speakers, including Russ Levine (my former boss at Kirkland & Ellis); David Healey (PatentMath); Hal Wegner; Professor Nancy Rappaport (Las Vegas); Lord Justice Robin Jacob (Court of Appeal of England and Wales); Professor Paul Janicke (Houston Law Center); Michael Smith (E.D.Tex. Blog); Professor Phillip Page (South Texas); etc. Registration is around $600.

FUNDRAISER: My son started preschool today at the Waldorf-inspired Garden Gate school. We’re helping with the school fundraiser – a national flower bulb sale. Plant the bulbs this fall – when they come up in the spring you will hopefully pause to realize that the Leahy-Smith Act was just a bad dream. (Mail delivery; the school keeps 50% of revenue). Thank you – Dennis.

Patently-O Bits and Bytes by Dennis Crouch

Patent

My Upcoming Events: I am not travelling much this fall, but I will be speaking at two upcoming events:

  • September 15-17, 2011: MarcusEvans IP Law Summit in Las Vegas, Nevada (Red Rock Casino). Speakers include Robert Bahr (USPTO Commissioner); Ankur D. Shah (AGC for Freddie Mac); Mallory Levitt (AGC for CBS); etc.
  • October 6-8, 2011: 27th Annual Institute on Intellectual Property hosted by Houston Intellectual Property Law Association and the University of Houston Law Center. The Institute has an excellent lineup of speakers, including Russ Levine (my former boss at Kirkland & Ellis); David Healey (PatentMath); Hal Wegner; Professor Nancy Rappaport (Las Vegas); Lord Justice Robin Jacob (Court of Appeal of England and Wales); Professor Paul Janicke (Houston Law Center); Michael Smith (E.D.Tex. Blog); Professor Phillip Page (South Texas); etc. Registration is around $600.

FUNDRAISER: My son started preschool today at the Waldorf-inspired Garden Gate school. We’re helping with the school fundraiser – a national flower bulb sale. Plant the bulbs this fall – when they come up in the spring you will hopefully pause to realize that the Leahy-Smith Act was just a bad dream. (Mail delivery; the school keeps 50% of revenue). Thank you – Dennis.

Patent Damages and the Need for Reform

Patent

This is a guest Post by Michael J. Mazzeo, Jonathan Hillel and Samantha Zyontz[1]

Our analysis of a new dataset challenges the assumptions on which the Patent Reform Act is based and questions the need for damages law reform. Damages provisions of the Patent Reform Act, the latest version of which was recently introduced for vote in the Senate, are premised on concerns that awards are “too often excessive”[2] and those large verdicts featured in media headlines “represent the tip of the iceberg” of excessive awards.[3] Last week at the inaugural Samsung-Stanford Patent Remedies Conference, we presented a very different picture of patent infringement damages.

In our prize-winning study, “Are Patent Infringement Awards Excessive?: The Data Behind The Patent Reform Debate”, we compile a dataset comprising infringement awards from over 300 cases decided in US federal courts between 1995 and 2008. We build on a proprietary dataset from PricewaterhouseCoopers, supplementing it with information about the litigants, lawsuits and economic value of the patents-at-issue. Using standard statistical techniques and regression analysis, we search for evidence of “excessive” awards. Certain of our key findings are summarized below:

1. The eight largest awards represent nearly half of the total amount of damages in our dataset. As shown below, the distribution of damages is highly skewed, and awards in the largest eight cases represent over 47% of cumulative damages.

Mazzeo1

2. Patent infringement damages are highly predictable. We perform an 80-variable log-linear regression analysis that explains nearly 75% of the variation in the observed awards. As shown below, the first-order results of our regression indicate that juries and large defendants are correlated with higher awards.

(more…)

Patently-O Bits & Bytes

Patent,

 

By Lawrence Higgins

Upcoming Events:

  • Licensing Executives Society will hold its winter meeting in San Jose from February 10-11. Speakers include Damon Matteo, Nola Masterson, and Bruce Lehman. Patently-O readers get $200 of the registration rate by using code PO11. [Link]
  • Practising Law Institute (PLI) will hold its 5th annual Patent Law Institute in New York from February 17-18. Deputy Director Sharon R. Barner will deliver the USPTO keynote address. [Link]
  • The Texas Intellectual Property Law Journal will host its 12th annual Intellectual Property Symposium on February 18th in Austin. [Link]
  • The Missouri Law Review is hosting a Symposium on February 25th in Columbia Missouri about the patent jurisprudence of the Court of Appeals for the Federal Circuit. We’ll have a number of great speakers, including USPTO Director David Kappos. [Link] (Free event and free CLE).
  • 13th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy will be held in Akron on March 21. Guest Speakers include Donald Chisum, Judge Paul Michel, and Marybeth Peters. [Link]

Johnson & Johnson loses patent infringement suit

  • A jury in Texas has ordered J&J to pay $482 million to inventor Bruce Saffran for infringing his patent. Saffran’s patent # 5,653,760 [Link]was for a cardiac stent, which is used after heart surgery. Saffran previously won a $50 million settlement from Boston Scientific for infringing the same patent. [Link]

Virginia State Bar IP Section Law Student Writing Competition

  • The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia relating to an intellectual property law issue or the practice of intellectual property law.  The winner receives a cash prize of $4,000. [Link]

Apple Patents Glove for Use with Electronic Devices

  • Apple has been issued a patent for what they call a “High tactility glove system”. Patent # 7,874,021 states that this glove may be used with an electronic device in cold weather, since regular gloves do work well when using devices like the iPod. [Link]

Sharp files patent infringement suit

  • Sharp filed a patent infringement suit against Au Optronics, in regards to crystal display (LCD) technology. The companies had a license agreement which expired on December 31st; Sharp wishes to block sales and imports of products that infringe the patent. [Link]

Patent Jobs:

  • Euro-Pro is seeking a patent agent with an engineering background and 3-5 years experience. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an experienced patent attorney with a chemical/chemical engineering degree to work for its Virginia office. [Link]
  • Ice Miller is seeking a patent attorney with an engineering background and 2-4 years of experience. [Link]

Patenting by Small-Entities

Patent

The number of small-shop innovators continues to dwindle. In a sample of recently issued patents,* only 20% claim “small entity” status. Of those, 30% (6% of the total) are held by the original inventors.** According to the PTO Rules, large universities and non-profits still qualify as for the small entity price-break so long as the patents-in-question have not be assigned or licensed to a non-qualifying entity. At least 12% of the small entity patents are assigned to universities or non-profits. These small entities include multi-billion-dollar operations including Battelle Energy Alliance, California Institute of Technology, Princeton University, and the Korean government funded ETRI. The remaining small entity patents are largely held by companies and partnerships such as Audible Magic, PixArt Imaging, and Alverix.

PatentlyO045US versus Foreign: Only 45% of the large-entity assignees are US based while 69% of the small-entity assignees are US based and 77% of the un-assigned patents include at least one US based inventor. (See Graph at Right).

  • * This data comes from a set of 1700 utility patents issued on April 27, 2010.
  • ** I.e., the USPTO has no assignment on record associated with the patent.

Bilski Briefs: Supporting the Government (In Name)

Patent, Patentable Subject Matter, , , ,

UPDATE: More briefs added Oct 5, 2009, 11:30 am

The final round of amicus briefs have been filed in the pending Supreme Court case of Bilski v. Kappos. Mr. Bilski is appealing the Federal Circuit's en banc rejection of his patent application. In that decision, the court held that Bilski's claimed method of hedging risk did not qualify as patentable subject matter under 35 U.S.C. 101 because the method was neither tied to a particular machine nor transformative of any physical article. Bilski challenges this "machine-or-transformation" test as unduly narrow. Bilski's legal position was supported in a large set of amicus briefs including a strong textualist argument made by Professor John Duffy.

Briefs supporting the government position have been filed. As summarized below, the vast majority of briefs also reject the Federal Circuit's machine-or-transformation test as the sole test of patentable subject matter for a claimed process. In my summaries, I have attempted to capture what I learned from each brief, of course the briefs and arguments are much more extensive and nuanced than my squibs suggest.

Electronic Frontier Foundation (EFF) and the Kauffman Foundation: Business method patents are harmful and should not be allowed. The long history of US patentable subject matter indicate that a patentable process must provide a technological advance. Likewise the mere fact that a process uses a machine or computer does not immediately render the process patentable subject matter. Rather to be patentable, the advance must be a technological advance. EFF etc amicus brief.pdf.

Red Hat: Software methods do not become patentable simply because they are tied to a computer. Benson. Download 08-964bsacRedHatInc.

William Mitchell College of Law IP Institute: This case does not properly present the issue of patentability of claims that include a mix of statutory and non-statutory subject matter. The court should wait for an appropriate case to decide that issue. Parsing Section 101 provides few real answers as to patentable subject matter. Download 08-964 William Mitchell College of Law Intellectual Property Institute.

SFLC (Moglen and Ravicher): Standing alone, software is not patentable. This result is derived from the Supreme Court's decision in Microsoft v. AT&T that “[a]bstract software code [uninstalled in a machine] is an idea without physical embodiment.” 550 U.S. 437, 449 (2007). Download 08-964 Software Freedom Law Center.

SIIA: The patent eligibility of software is well established and should not be disturbed. Download 08-964 Software & Information Industry Association.

Knowledge Ecology Int'l: The goal of the system is to encourage progress, not to reward inventors. Further, patent protection is not a "necessary policy intervention to reward successful investment in new medical technologies. . . . [M]any of the greatest medical advances have benefited significantly, and in some cases exclusively, from mechanisms that exist completely outside of the patent system." Download 08-964 Knowledge Ecology International.

Mark Landesmann: The evidence of the negative social impact of business method and software patenting is properly directed at the PTO's allowance of patents that were not substantially novel and that were not properly disclosed or claimed. There is no evidence that patents on novel, non-obvious and properly disclosed business-method process inventions create any harm. Download 08-964 Mark Landesmann.

Nevada State Bar Ass'n: The machine-or-transformation test harms emerging Nevada businesses – especially in the growing areas of solar energy, gaming, and digital communications. Download 08-964bsacintellectualpropertysectionnevadastatebar.

American Bar Ass'n: The court should use an incremental approach to excluding claims to subject matter where patenting does not make sense and creates a problem. Categorical limits such as the machine-or-transformation test may limit innovation. That said, the "[p]atent law should not interfere with the exercise of human intellect by granting a monopoly on processes in which thinking is central." A specific target of the ABA is to eliminate patents covering tax planning methods. Download 08-964 American Bar Association.

American Insurance Ass'n: Regardless of their novelty, insurance policies should not be the subject of patent protection – even when combined with a computer. Download 08-964 American Insurance Association.

Bank of America, Google, et al.: The patent laws should bar patentability of "accounting methods, tax mitigation techniques, financial instruments, and other means of organizing human behavior—or software used to implement those methods." Download 08-964 Bank of America et al..

Bloomberg: Limiting a method to use on a general purpose computer should not render the method patentable. Download 08-964 Bloomberg.

CCIA: It is important that the Federal Circuit eliminated the overbroad State Street test. The current tension in the patent system can largely be traced to that unprecedented over-expansion of the system. Tight limits on patentable subject matter are important because (inter alia) of the strict liability nature of patent infringement. "Tying patentability to physical subject matter is not a perfect solution. However, it limits the reach of patents in important ways that can significantly reduce the risks of inadvertent infringement and the scope of potential liability."Download 08-964 Computer & Communications Industry Association.

FFII: Patents on business methods have been considered and were rejected by the Statute of Monopolies in 1623. Patents greatly harm the Free & Open Source Software (FOSS) movement. Download 08-964 Foundation for a Free Information Infrastructure.

Professors Menell and Meurer: The Constitution creates a real limit on patentable subject matter – i.e., the subject matter of the patent must be within the "useful Arts." Economic evidence indicates that business method patents (especially internet related business methods) are harmful. 08-964 bsac Menell.pdf.

Law Professors and the AARP (Including Josh Sarnoff): Patents should only cover "inventions in the application." Patents can not cover "non-inventive applications of public domain science, nature, and ideas." The right interpretation of the statute requires that the invention "reside in the application, rather than in a discovery preceding or employed by it. This is because the science, nature, or ideas must be treated as if they are already in the prior art, i.e., are publicly known and free for all to use. Absent invention in applying such discoveries, there is simply no invention to patent." 08-964 bsac Brief of Eleven Law Professors and AARP.pdf.

Microsoft, Philips, and Symantec: Nobody (except Bilski) believes that his claims deserve patent rights. The machine-or-transformation test should not be seen as the exclusive test of patentable subject matter of a process claim – in part because the test has already "proven overly difficult to implement in practice." Like Professor Hollaar, Microsoft would simplify the test by requiring that the invention "involve one or more disclosed physical things." Today's computers – although complex – are not fundamentally different from Babbage's 1836 mechanical computer. Process claims that use computers should be patentable. Am Brief.pdf.

Professor Hollaar and the IEEE: Just restating the general principles of patentable subject matter is unhelpful. Rather, clear rules are needed – especially because the subject matter question is most frequently addressed by patent examiners who have little legal training and little time to ponder abstractions. A clear and time-tested rule would be: A process is patentable subject matter when it involves making or using a machine, manufacture, or composition of matter. This means that software method patents that require a computer would be patentable, but Bilski's method of hedging would not be patentable. bilski-sc-amicus.pdf.

American Medical Association: The machine-or-transformation test should not supplant the requirement that a patent claim "address a technology." A patent should not be allowed to cover "every possible application of a scientific observation." Rather, claims should be limited to "a particular new and useful application or use of the observation. The Supreme Court should use this case to make a statement especially directed to "overreaching claims in the life sciences. . . . Such patents chill research, and patents such as those in Labcorp and Prometheus chill talking and thinking of ideas by making talking and thinking into a tort." 08-964 bsac The American Medical Association.pdf.

Adamas Pharma and Tethys: Section 101 should be interpreted in a way that is objective, predictable, and not duplicative of the other patentability requirements. The machine-or-transformation (MoT) test does not meet any of these requirements. The Federal Circuit test also violates US treaty obligations under TRIPS and NAFTA and potentially subject the US to trade disputes adjudicated at the World Trade Organization (WTO). Under these US-initiated treaties member countries agreed to offer patent rights "in all fields of technologies." A major purpose of the agreements was to ensure that countries offered a full scope of patent rights, and by limiting the scope of rights, the US "will no longer be able to credibly argue in Special 301 trade disputes that failure to protect healthcare inventions made by cutting-edge U.S. companies constitutes inadequate protection of intellectual property rights." Some Congressional intent can be gleaned from the legislative history of Section 287(c) of the patent act. As originally proposed, that provision would have limited the subject matter eligibility of medical and diagnostic methods. After some debate, a compromise was reached to continue to allow their patenting, but to limit the remedies available. 08-964 bsac Adamas Pharmaceuticals.pdf.

Robert Sachs and Daniel Brownstone: Software should be patentable and has been for a long time. The Federal Circuit test greatly confuses the issue. Although software is an abstraction from the physical world, it is not "abstract." SF-5270929-v1-Bilski_v_Doll_Amicus_Brief_of_R_Sachs_and_D_Brownstone_as_amici_curiae_2009-08-06.PDF.

Big Internet Retailers, including Crutchfield, Overstock, and LL Bean: Patent Trolls are hurting online retailers and one way to stop them is to eliminate business method patents (including software business method patents). In effect, business method patents amount to a tax on Internet commerce. (The companies don't mention – unlike offline retailers – internet companies are often exempt from paying sales tax…) Internet Retailer Amicus Brief.pdf.

Brief of CASRIP (U. Washington): The US Constitution sets a bound on the scope of patentable subject matter – limiting them to the Constitutionally proscribed "useful Arts" as that term was understood at ratification. For new methods, one key is to consider the purpose of the method. Methods of entertaining a cat using a laser and telling a joke into a microphone should not be patentable regardless of their tie to particular machines because neither of those functions have ever "been considered a useful Art, and surely . . . is not the kind of discovery that the Patent Clause contemplates." Some methods also exist that should be patentable even though they fail the machine-or-transformation test. Despite its problems, the machine-or-transformation test is "superior to its competitors in filtering out preemptive claims to basic principles." However, it should not be the sole test of eligibility. Bilski's claim is unpatentable because hedging against price inflation (the purpose of the method) is not within the useful Arts. CASRIP am cur brf.pdf.

Patent Demand – A Simple Path to Patent Reform

Patent

[Read Tim Wilson’s Paper] Tim Wilson (Senior IP Counsel at SAS US) has been concerned about patent quality for some time. In part, the sheer number of patent applications being filed creates a host of problems. Wilson’s solution is to raise patent fees – he says the fees should go as high as $50,000 for large corporate applicants. The result – according to natural tendencies of supply and demand – is that fewer applications will be filed and fewer patents will issue. In all likelihood, however, those that are filed will be better applications covering higher quality inventions.

Wilson did not simply pull his $50,000 figure out of his ear. Using the powerful computing resources of SAS, Wilson calculated an estimated demand curve for patent applications using both (1) historical filing reactions to increases in PTO fees and (2) an assumption that the budgets of corporate patent departments is fairly inelastic. Wilson then created his Figure 5 – showing the demand curve for patent applications drawn with respect to the patent application fees.

Wilson’s approach is admittedly only an estimate, but his intuition has to be correct that a dramatic increase in PTO fees would lead to a dramatic decrease in PTO filings.

An average high technology patent contains a minor improvement on a small portion of a product and the patent application is typically written using outside counsel working for a flat fee of a few thousand dollars. Imagine what would happen to the high technology company’s patent process if each patent application cost $50,000 just to file. The high technology company would file far fewer, but more important patent applications and they would spend more time and effort doing so. The pharmaceutical company’s process probably would not change much because a billion dollar decision depends on the outcome of the patent process.

What would happen to non-practicing entities, sometimes derisively referred to as patent trolls? I believe that these entities will change to patent market facilitators, or cease to exist. When the value of all patents is increased substantially, it is very unlikely that any patent will be available to fall to these non-practicing entities. First, each individual patent will be more valuable to the current owner of that patent, so it will be less likely that an owner would be willing to part with it to a troll. Second, if a company does fail, competitors of that company may be more willing to buy that patent rather than allow it to fall to a company that may sue the competitor. Finally, fewer issued patents mean that it will be easier for companies to monitor patents issuing in their product space and less likely that they will allow those patents to fall into the hands of a troll.

DDC Comment: Wilson’s proposal has some merit, and his work on the demand curve is especially interesting. However, the proposal suffers from three fundamental problems: First, the proposal implicitly equates economic value with technologic value – the two are related but different. Many important technical advances have only limited economic value, but still serve as building blocks for future advances. (i.e., standing on the shoulders of giants). Second, the proposal greatly favors technologies where the economic value is well known up front. Again, many important technologies are eventually found valuable – but the very high up-front price will greatly limit those applications – and consequently, the upstream incentive to innovate in that area. Third, the proposal favors firms with cash – i.e., those that have performed well in the past and have saved their money. However, many innovation experts believe that most of the breakthrough work comes from these mainstream companies. To his credit, Wilson addresses this problem by stating that the high-price only applies to large companies. However, that approach would tend to allow the “non-practicing entities” to continue to obtain patents (against one of Wilson’s primary goals). In addition, the prospect of small entities paying only $500 while large entities pay $50,000 would surely lead to other political and practical problems.

  

Patently-O Tidbits

Patent

Eye on the Web

Upcoming Events:

  • January 26, 2007 at the San Jose Museum of Art: We’ll be discussing translational scope of U.S. patent laws. $175 for practitioners; $0 for academics and government types. [LINK].
  • January 24–27 in New Orleans: AIPLA Midwinter Institute — always a great event. $795 practitioner; $70 for academics. [LINK].

Fellow / VAP – Education – Newark, N.J.

, ,

seton-hallSeton Hall University Law School is looking for a one-year Fellow / VAP to help cover IP and cyberlaw courses and to assist in the administration of our Gibbons Institute of Law, Science & Technology.  The subject matter in IP is somewhat flexible, but we will definitely need someone who can cover some Internet law courses and possibly other courses.  The work with our Gibbons Institute will involve helping plan and execute IP-related programs for academia and the bench and bar.  The Fellow / VAP will also have an opportunity to work on his or her own research and to participate in faculty colloquia and other research-related activities.  At this time the position is only for one year, although renewal for an additional year might be possible.  Seton Hall University is an Equal Opportunity/Affirmative Action employer. It honors diversity and respects the religious commitments of all employees. In turn, its employees respect Catholic beliefs and values, and they support its mission as a Catholic institution of higher education.

Contact
Interested candidates should send a c.v. and cover letter to Prof. David Opderbeck and Prof. Gaia Bernstein and at gaia.bernstein@shu.edu and david.opderbeck@shu.edu.

Additional Info
Employer Type: Education
Job Location: Newark, New Jersey

Sr. Associate Director of Intellectual Property – Harvard – Cambridge, Mass.

,

Harvard is seeking a Sr. Associate Director of Intellectual Property to work in its Office of the President and Provost.

Duties & Responsibilities:
Assess the patentability of new inventions disclosed by Wyss faculty and Wyss research staff. Develop and implement innovative, novel strategies to patent and protect Wyss technologies and inventions. Obtain and maintain intellectual property protection through external counsel, as appropriate. Work and communicate effectively with a broad range of constituents including Wyss faculty, members of the Wyss Advanced Technology Team, members of the Wyss Business development Team, Wyss administration, external patent counsel and industry patent counsel and other representatives of industry and government. Conduct due diligence on the I.P. of potential industrial partners and licensees, as appropriate. Assist in the development and implementation of effective strategies to commercialize the intellectual property assets of the Wyss Institute at Harvard University, as appropriate, to meet strategic program objectives. Prepare and deliver reports and presentations as needed.

Basic Qualifications:
The ideal candidate will have appropriate scientific and technical training and J.D., with a concentration in patent law. 8-12 years of experience in intellectual property management at a senior level, with advanced knowledge of current patent and licensing law and practices. Evidence of high creativity, energy and integrity as well as thoughtful judgment and decision-making. Accustomed to working in a complex environment with multiple constituencies and requiring team cooperation. Evidence of ability to establish credibility with inventors, with demonstrated maturity and sensitivity to the diverse needs of scientists, administrators, licensees and other stakeholders. Proven ability to meet deadlines on a consistent basis, coupled with outstanding administrative and organizational skills. Demonstrated leadership skills, executive demeanor and "presence". Outstanding oral and written communication skills.

Additional Information:
The Senior Associate Director of Intellectual Property will assist in the management of the Wyss portfolio, including inventions relating to life science, engineering, computer science and other inventions in various stages of development, disclosure and patent prosecution. In this position, the Senior Associate Director will work with the Wyss team in the development and execution of an overall strategy for coordinating, managing and overseeing the intellectual property (IP) assets of the Wyss Institute at Harvard University. The person will be responsible for assisting in the development and implementation of innovative strategies to protect the Wyss’s IP assets, and providing ongoing service and education to Wyss faculty and staff on issues relating to the protection of intellectual property.

Pre-Employment Screening:
Identity

We are an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability status, protected veteran status, gender identity, sexual orientation or any other characteristic protected by law.

Contact
For full details and to apply, visit this link: https://sjobs.brassring.com/TGWEbHost/jobdetails.aspx?partnerID=25240&siteID=5341&AReq=38316BR.

Additional Info
Employer Type: Education
Job Location: Cambridge, Massachusetts


Executive Director: Franklin Pierce Center for Intellectual Property – Education – Concord, N.H.

University of New Hampshire (UNH) School of LawThe University of New Hampshire (UNH) School of Law (formerly Franklin Pierce Law Center) seeks an accomplished intellectual property professional with administrative experience and expertise to serve as the Executive Director for the Franklin Pierce Center for Intellectual Property.

The primary mission of the Center is to promote global economic development by facilitating research and training in the protection and use of intellectual property for technological innovation. The Center has an international reputation for educating global intellectual property leaders and providing pioneering intellectual property programming.

To fulfill the Center’s mission, students, faculty, and researchers work with peers and partners from governments, industry and academia across the world on research projects, conferences, and strategic collaborations. The Center houses one of the largest intellectual property faculties in the United States as well as the only dedicated intellectual property library in the nation. Through the law school’s affiliation with UNH, the Center draws on the resources of one of the nation's premier research universities. Students enjoy ready access to successful alumni working as intellectual property professionals in over 80 countries.

In consultation and collaboration with the school’s administration and IP faculty, the Executive Director will be responsible for administering the Center’s internal and external operations, including all major programs, conferences, and events. Current major programs include the International Technology Transfer Institute, the Intellectual Property Valuation Institute, and summer law programs that address a wide variety of intellectual property issues. In collaboration with administrative leadership, IP faculty, IP alumni, and other relevant stakeholders, the Executive Director will assist with the development and execution of new strategic initiatives, including collaborative partnerships with national intellectual property offices, major educational institutions, and international organizations. In coordination with other law school departments and IP faculty, the Executive Director will also facilitate the law school’s integration with UNH through the development and administration of multi-disciplinary programs and student-centered learning opportunities.

The Executive Director position is an administrative appointment with potential for associated teaching and research activities. The incumbent will report to the Associate Dean for Academic Affairs.

Applicants must possess a Juris Doctor, Ph.D. or comparable academic credentials and must have at least five years of experience in intellectual property teaching, scholarship, leadership, policymaking, practice, or industry. Applicants also must have a proven ability to communicate effectively in writing and verbally with numerous diverse stakeholders, such as academics, government officials, practitioners, students and the public, both nationally and internationally. Applicants also should have a collaborative, efficient, and professional management style and a strong commitment to working in a diverse, multi¬cultural environment.

Contact:
Applicants should submit a cover letter and resume to humanresources@law.unh.edu no later than December 15, 2012.

Additional Info:
Employer Type: Education
Job Location: Concord, New Hampshire

Guest Posts: Preparing for Mayo v. Prometheus Labs

By Professor John Golden, Professor in Law, The University of Texas at Austin

Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150 (S. Ct.)

Scheduled for oral argument on Wednesday, December 7, 2011

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the U.S. Supreme Court looks to address questions of whether and when certain types of medical methods are patentable subject matter. Prometheus specifically involves methods for optimizing patient treatment in which the level of a drug metabolite is measured and a measured level above or below a recited amount "indicates a need" to decrease or increase dosage levels. In 2005, the Court granted certiorari on related issues in Laboratory Corp. of America v. Metabolite Laboratories, Inc., but the Court later dismissed LabCorp as improvidently granted. In 2010, the Court reaffirmed the existence of meaningful limitations on patentable subject matter in Bilski v. Kappos, but the Court but did little to clarify the scope of those limitations.

Will Prometheus bring light where Bilski failed? Arguments to the Court invite it to further clarify the status of the machine-or-transformation test for process claims. Bilski indicated that this test is relevant but not necessarily decisive, and the Federal Circuit relied heavily on the test in upholding the subject-matter eligibility of Prometheus's claims. In the circuit's view, "asserted claims are in effect claims to methods of treatment, which are always transformative when one of a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition." Likewise, a metabolite-level measurement step was found to "necessarily involv[e] a transformation." Although Prometheus's claims include "mental steps," the circuit emphasized that the inclusion of such steps "does not, by itself, negate the transformative nature of prior steps."

Prior posts provide additional background on the Prometheus case. The first wave of merits briefs have been filed. These include the opening brief for the petitioners, briefs in support of the petitioners, and briefs in support of neither party. The respondent-patentee's brief as well as supporting amicus briefs will be due in the upcoming weeks.

BRIEF FOR PETITIONERS (Stephen Shapiro, Mayer Brown): Prometheus's patent claims violate Supreme Court precedent forbidding claims that "preemp[t] all practical use of an abstract idea, natural phenomenon, or mathematical formula." Prometheus's claims "recite a natural phenomenon—the biological correlation between metabolite levels and health—without describing what is to be done with that phenomenon beyond considering whether a dosage adjustment may be necessary." The claims' drug-administration and metabolite-measurement steps are merely "'token' and 'conventional' data-gathering steps" that cannot establish subject-matter eligibility. Patent protection is unnecessary to promote the development of diagnostic methods like those claimed and will in fact interfere with both their development and actual medical practice.

AMICUS BRIEFS SUPPORTING PETITIONERS

AARP & PUBLIC PATENT FOUNDATION (Daniel Ravicher, Public Patent & Cardozo School of Law): "Allowing patents on pure medical correlations … threatens doctors with claims of patent infringement" and "burdens the public with excessive health care costs, and dulls incentives for real innovation." "The Federal Circuit has latched on to trivial steps beyond mental processes, such as the 'administering' step in this case, to uphold patents that effectively preempt all uses of laws of nature." Prometheus's recitation of an "administering" step stands "in stark contrast to most pharmaceutical patents that require a 'therapeutically effective amount' of a drug be administered."

ACLU (Sandra Park, ACLU): In assessing subject matter eligibility, the Supreme Court "has focused on the essence of the claim," using a "pragmatic approach [that] allows the Court to see through clever drafting." Prometheus's insertion of drug-administration and/or measurement steps into a claim "does not alter the fact that the essence of the claim is the correlation between thiopurine drugs and metabolite levels in the blood." Further, the First Amendment bars Prometheus's claims. "What Prometheus seeks to monopolize … is the right to think about the correlation between thiopurine drugs and metabolite levels, and the therapeutic consequences of that correlation."

AMERICAN COLLEGE OF MEDICAL GENETICS ET AL. (Katherine Strandburg, NYU School of Law): The patents at issue "grant exclusive rights over the mere observation of natural, statistical correlations." They "convert routine, sound medical practice into prohibited infringement" and generate burdens and conflicts for patient care and follow-on innovation. "The machine or transformation test is inapposite … to determining whether a claim preempts a natural phenomenon." It can be too trivially satisfied without shedding sufficient light on whether claims "reflect inventive activity" or "improperly preempt downstream uses of the phenomenon."

ARUP & LABCORP (Kathleen Sullivan, Quinn Emanuel): "The patents assert exclusive rights over the process of administering a drug and observing the results…. This not only blocks the mental work of doctors advising patients, but also impedes the progress of research by seeking to own a basic law of nature concerning the human body's reaction to drugs." "Patents on measurements of nature" raise constitutional concerns by removing factual information from the public domain, thereby conflicting with patents' constitutional purpose to "promote the Progress of Science and useful Arts" and threatening to chill "scientific and commercial publication."

CATO INSTITUTE ET AL. (Ilya Shapiro, Cato Institute): This case provides the Supreme Court with an opportunity to strike a blow against the "thousands of abstract process patents which have been improvidently granted since the 1990s" and that are already adversely affecting software and financial innovation. Historically, patentable "processes" "aimed to produce an effect on matter, and these patents do not." The "indicat[ing] a need" clauses in Prometheus's claims do not even form part of a process because they do "not describe an action." Patent claims such as these, "whose final step is mental," impermissibly tread on the public domain and "freedom of thought."

NINE LAW PROFESSORS (Joshua Sarnoff, DePaul College of Law): The Supreme Court "should expressly recognize" that the Constitution requires that "laws of nature, physical phenomena, and abstract ideas" be treated as prior art for purposes of determining patentability. "Allowing patents for uncreative applications would effectively provide exclusive rights in and impermissibly reward the ineligible discovery itself." Barring claims like Prometheus's under section 101, as opposed to relying on patentability requirements such as novelty and nonobviousness, promotes "efficient gate-keeping" and "sends important signals."

VERIZON & HP (Michael Kellogg, Kellogg Huber): "It is longstanding law that a claim is non-patentable if it recites a prior art process and adds only the mental recognition of a newly discovered property of that process." See Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242 (1945). "This principle is soundly based on Section 101's limitation to processes and products that are not only 'useful' but 'new.'" "[A]dding to the old process in Prometheus's patent claims nothing more than a mental step of recognizing the possible health (toxicity or efficacy) significance of the result of the process does not define a 'new and useful process.'"

AMICUS BRIEFS SUPPORTING NEITHER PARTY

UNITED STATES (Solicitor General Donald Verrilli, Jr.): The claimed methods recite "patent-eligible subject matter," and petitioners' objections to patentability are properly understood as challenges to the claimed methods' novelty and nonobviousness. By analogy with "patent law's 'printed matter' doctrine," the claims should ultimately be found invalid because, as construed by the district court, they "merely … appen[d] a purely mental step or inference to a process that is otherwise known in (or obvious in light of) the prior art." But the Supreme Court should affirm the Federal Circuit's holding on subject matter eligibility.

AIPPI (Peter Schechter, Edwards Wildman): AIPPI "encourages all member countries to allow medical personnel the freedom to provide medical treatment of patients without the authorization of any patentee." Unlike the U.S. and Australia, most countries "exclud[e] methods of medical treatment of patients from patent eligibility." When the medical-practitioner exemption of 35 U.S.C. § 287(c)(1) applies, "the courts lack subject matter jurisdiction." The exemption applies to the defendants, who "are plainly 'related health care entities.'" Thus, "the case should be dismissed for lack of federal subject matter jurisdiction."

MICROSOFT (Matthew McGill, Gibson Dunn): Subject-matter eligibility tests should not involve "pars[ing] the claimed invention into the 'underlying invention' and those aspects that are 'conventional' or 'obvious' or insignificant 'extra- or post-solution activity.'" Such parsing lacks any guiding principle that can make its application predictable. Petitioners seek an improperly "expansive application of the mental steps doctrine." "[I]f every step of a process claim can be performed in the human mind, that process is unpatentable." But the Federal Circuit has improperly "extended th[is] principle to apply to machines or manufactures that replicate mental steps."

NYIPLA (Ronald Daignault, Robins Kaplan): Innovation's "bewildering pace" argues against "rigid categorization of patent-eligible subject matter." "[T]here is no basis for excluding processes directed to analyzing the chemicals in a patient's body from patent eligibility." When satisfied, the machine-or-transformation test should decisively establish eligibility. But failure of the test should not necessarily establish ineligibility. Preemption analysis "must incorporate a critical assessment of whether the claim at issue actually claims a fundamental principle as a fundamental principle in contrast to an application of that principle."

ROCHE & ABBOTT (Seth Waxman, WilmerHale): Patents are crucial for innovation in personalized medicine and more particularly for the continued development diagnostic tests that can enable such medicine's practice. Arguments "that patents on diagnostic tests stifle innovation and basic scientific research" are "largely based on speculation, rather than sound evidence." Generally speaking, "market-driven business practices and self-enforcing market norms correct for any perceived limitations on the accessibility of patented diagnostic technologies." Congress should be trusted to provide appropriate patent-law exemptions for medical practice and research.

Patent Paralegal – National Institute of Standards and Technology – Gaithersburg, Md.

, , ,

National Institute of Standards and Technology (NIST) is seeking a Paralegal Specialist to support NIST intellectual property management and patent prosecution. In this position, the Paralegal Specialist will interact with world renowned scientists and engineers, legal staff, and administrators that are engaged in commercializing new technology by using the patent system. The Paralegal Specialist is expected have a strong knowledge of the U.S. patent system, policies and practices of the U.S. Patent and Trademark Office. The Paralegal Specialist must be able to show initiative, possess exceptional verbal and written communication skills, and interact professionally and collegially with internal and external parties.

Contact
This is a position with the United States Government and requires U.S. citizenship. All applicants must apply through this link: https://www.usajobs.gov/GetJob/ViewDetails/396676500. All application material must be submitted no later than Thursday March 19, 2015.

Additional Info
Employer Type: Government
Job Location: Gaithersburg, Maryland