2004

Technology Transfer and Assignment via eBay

Articles and Publications, Patent,

Here is your chance to purchase all rights to the Pollution-Free Alternative Fuel Moter Conversion Kit invented by Ron Meritt.

Meritt has designed the conversion kit to allow motors to run on either flamable or non-flammable fuels, meaning that a properly converted motor using this technology may run on just about any gas or liquid, including water.

According to Meritt’s website an eBay auction will begin May 10 and run for 10 days with no reserve. The purchaser will receive

pending patents, trade secrets, a fully functioning prototype engine, and all documentation associated with this invention.

I did not find any patents or published patent applications for the alternative fuel technology (either invented by or assigned to Meritt). This likely means that applications were filed within the last 18 months or that the patents were not filed worldwide.

ScreenShot005
According to Jim Mateja at the Tribune, Meritt is the

same man who brought us the portable video players for cars, the one in a backpack that can be lung on the front seat so kids can watch their favorite movies.

Good luck bidding!

Update 5/10/04: Some additional information has been provided at the Meritt website noting that “documents” have been submitted to the USPTO.

It should be noted that the minimum legal documents were submitted to protect the secrecy of this design. The buyer is strongly advised to retain a licensed patent attorney to submit additional legal documents to insure maximum protection for this technology. The buyer understands that from the date of purchase, all future funding for engineering, technology development, legal protection or representation, and any other resource supporting this technology, prototype motor, and/or project is the responsibility of the buyer.

Here is a bio of Ron Meritt.

If you are interested in more environmental law news, Stephen Filler has a nice environmental blog known as Green Counsel.

Reach Through Claims

Articles and Publications, Patent

Basic scientific researchers often file patents with “reach through” claims that attempt to cover treatment of a patent using a drug developed from the researcher’s assay. The University of Rochester’s patent covering Celebrex(r) was found invalid in 2003 after the Federal Circuit held that the written description did not adequately cover the reach through claims. (Case).

In a recent article, BSK offers some advice for capturing the value of basic research. (HTML PDF). Their advice relies on resourceful patent drafting in order to ensure that the written description requirement is satisfied. Alternatively, creative licensing may allow a research institution to link royalties for their new discoveries and assays to successful product development or FDA approval by licensing pharmaceutical companies.

Merrill Goozner has a great post discussing the conflict of interests problems at basic research insitutions (like the NIH) that stem from outside consulting and patenting.

Intellectual Property Task Force

Articles and Publications, Patent

One of my old professors, Jack Goldsmith, has joined the Justice Department’s new Intellectual Property Task Force headed by David Israelite. The task force will reexamine how the DOJ handles IP issues and develop a set of recommendations.

According to Mr. Israelite,

The Attorney General is committed to vigorous enforcement of the law and the protection of intellectual property rights, and those priorities will guide the task force as it seeks to strengthen and improve the Justice Department’s efforts in the intellectual property arena.

Elan v. Andrx Pharmaceuticals (Fed. Cir. 2004)

Patent, Patent Cases 2004

Andrx

Elan Corp. v. Andrx Pharmaceuticals, Inc. (Fed. Cir. May 5, 2004)

In this case, the Federal Circuit determined that there was no on-sale-bar, thus reversing the district court’s finding of invalidity.

More than one year before filing for a patent, Elan made several offers to enter into a license under a patent for future sales of their invention “when and if it had been developed.”

The court found that this was not an offer to sell but rather a permissible offer to license because the communication was not a definite offer including material terms.

The letter . . . lacked any mention of quantities, time of delivery, place of delivery, or product specifications beyond the general statement that the potential product would be a 500 mg once-daily tablet containing naproxen. Moreover, the dollar amounts recited . . . are clearly not price terms for the sale of tablets, but rather the amount that Elan was requesting to form and continue a partnership with Lederle. Indeed, the letter explicitly refers to the total as a “licensing fee.”

Stevens v. Tamai (Fed. Cir. 2004)

Patent, Patent Cases 2004

tape
Stevens v. Tamai (May 4, 2004) (Correction Tape Dispenser)

In an interference proceeding, The Federal Circuit reversed the Patent Board’s holding.

Tamai’s application was a continuation (A3) of a continuation (A2) of an original (A1). Unfortunately (for Tamai), he failed to properly submit a translation of A2 to the Board to prove the lineage. The Court found for Stevens because Tamai’s priority claim failed. The real lesson in this case is to follow the rules of the Patent Board. A timely authenticated translation may have won the case for Tamai.

Defensive Patenting

Patent

Chris Pratley gives a glimpse into Microsoft’s patenting story:

At Microsoft, we used to pay little attention to patents – we would just make new things, and that would be it. Then we started getting worried – other big competitors (much bigger than we were at the time) had been patenting their inventions for some years, and it made us vulnerable. One of these big companies could dig through their patent portfolio, find something close to what we had done, then sue us, and we would have to go through an elaborate defense and possibly lose. So Microsoft did what most big companies do, which is start to build what is called a “defensive” patent portfolio. So if a big company tried to sue us, we could find something in our portfolio they were afoul of, and counter-sue. In the cold war days, this strategy was called “mutual assured destruction”, and since it was intolerable for all parties to engage, it resulted in a state called “détente”, or “standoff”. This is what you see today for the most part in lots of industries.

Vanderlande Industries v. ITC (Fed. Cir. 2004)

Patent, Patent Cases 2004

shoepatent
Vanderlande Industries v. International Trade Commission

The Appellate Court affirmed the ITC’s holding that Vanderlande unlawfully imported a sorting system. (U.S. Patent No. 5,127,510). Vanderlande was unable to show that the patent owners (Siemens/Rapistan) committed the first element of equitable estoppel:

(1) The patentee, who usually must have knowledge of the true facts, communicates something in a misleading way, wither by words, conduct or silance.

Thus, the court found no estoppel. Additionally, the ITC’s claim construction was affirmed.

Patent Pooling

Articles and Publications, Patent

Richard Gilbert has a new article in the Stanford Tech Law Review discussing patent pooling and antitrust.

There is no simple prescription to determine when a patent pooling arrangement is anticompetitive. . . . Antitrust evaluations should begin with a study of the competitive relationships of the patents involved in the pool. Unfortunately, this is not a simple task. . . . If the pool combines many patents, each of which can block the use of a technology, a challenge to the pool is not likely to affect prices unless all of the blocking patents are shown to be invalid or not infringed.

JuNelle Harris Co-EIC of STLR emailed that they are seeking contributions for their “Perspectives” section:

STLR Perspectives features concise, readable analyses of cutting-edge technology law and policy issues. High quality, law-focused work by scholars, students, practitioners, and advocates is welcomed. Submissions should be no more than 15 pages in length, double-spaced and including footnotes, and will be considered on a rolling basis.

Playwright Licensing and Antitrust

Patent, Patent Legislation

Senator Hatch recently inroduced the Playwrights Licensing Antitrust Initiative Act of 2004 in the Senate. (S. 2349). According to the Bill,

the antitrust laws shall not apply to any joint discussion, . . . or agreement for the express purpose of, and limited to the development of a standard form contracting minum terms of artistic production and levels of compensation for playwrights.

The Bill appears to essentially allow playwrights to collectively bargain against producers. Arthur Miller testified in favor of the legislation.

His testimony came 48 years after he was cited for contempt for not cooperating with the House Un-American Activities Committee. He was also blacklisted by Hollywood for refusing to identify fellow artists with possible links to the Communist Party.

(Article)

Patent Office Funding III: Filing Fees

Patent, Patent Legislation

The patent office funding bill (H.R. 1561) seems to become law. Here are some of the proposed changes:

 

Current Fees    

Fees in Bill

Filing Fee

$770

Filing: $300
Search: $500
Examination: $200
Total: $1000

Extra independent claims >3

$86

$100

Claims >20

$18

$50

 

 

 

Long disclosure

$0

$250 for ea. 50 sheets over 100

Electronic Filing

$0

$225 discount

 

 

 

Issue Fee

$1330

$1400

Small entities retain 50% cut.

More patent related legislation commentary is available here.

Patent Infringement Jury

Articles and Publications, Patent

Jennifer Miller has published an iBrief in the Duke Law & Technology Review discussing whether litigants have a right to a jury trial in patent infringement cases. (Article)(PDF) Ms. Miller presents an argument that the seventh amendment does not guarantee a jury trial in complex cases. In addition, she notes that the fifth amendment right to due process may bar a jury “trial where a jury would be unable to perform its job because of a failure to grasp the legal issues or the underlying facts of a case.”

Patent Office Funding II

Patent, Patent Legislation

Matthew Buchanan recently reported on the widespread support for the United States Patent and Trademark Fee Modernization Act of 2004.

It’s very interesting that this bill is enjoying such broad support, considering that it represents a large increase in patent fees. Apparently, the anti-fee diversion provisions and the promises that USPTO will initiate further reforms once diversion ends are so attractive that a significant fee increase has become secondary. (Commenting on the IP Coalition letter (PDF)).

Most patentees spend several thousand dollars on attorney fees but much less on patent office fees. If a modest increase in fees can either 1) increase patent office efficiency or 2) increase patent quality, then most of us will be happy. The patent office has been getting a bad rap lately, perhaps this funding will help turn the tide.

See Part I.