One role of the patent attorney is to help the inventor think more broadly. One way to accomplish this is by thinking about an “objective” of the invention — what problem is being solved by the invention?
These days, many practitioners believe that explicitly stating the objectives of the invention is taboo. However, even if you do not write about the objectives, they should be at the heart of your thinking during the patent drafting process. Russ Krajec, a Colorado based patent agent has written about his methodology:
I try to focus on the problem being solved by the invention and to include every possible embodiment that could be used to solve the problems of the brand new field. . . . In a crowded field, the problem may be pretty narrow. For example, if the invention was a lower cost version of a common item, the problem solved is cost reduction. By looking at the invention from a ‘problem solved’ standpoint, I can more easily identify other solutions to the lower cost solution. These other solutions give the patent much more commercial value, since it cuts a much wider swatch to protect the basic concept, which is cost reduction.
Krajec notes that his problem-centric approach also helps overcome the potential for easy work-arounds and results in a stronger, more valuable patent.
The newsletter discusses the PTO’s Image File Wrapper (IFW) system and outlines many problems and proposes solutions. For example:
Problem: Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more.
POPA Solution: Better training for scanning contractors; immediate e-mail forwarding of scanned documents to the appropriate examiner; scan-on-demand service centers in each technology center.
Other proposed solutions include better indexing of non-patent literature (NPL) and caching of IFW files so that the examiners can work with a file when the PTO’s system is down. As Greg Aharonian has repeatedly stated, improving the ability of examiners to search prior art will result in a better system for everyone involved.
Interestingly, the POPA Newsletter also discussed upcoming Phillips v. AWHen-banc hearing from the point-of-view of patent examiners.
Examiners are trained to interpret the claims as broadly as possible unless the applicant has explicitly provided a definition to the contrary in the specification or if the specification provides an explicit disclaimer. Examiners are permitted to use dictionaries and other extrinsic evidence to determine the broadest reasonable interpretation.
My review of the briefs filed Phillips will be published in next Month’s issue of Patent World.
Update: A regular reader of the Patently-O Blog wrote in on the subject of scanning errors. In his well reasoned view, the PTO should simply have patent attorneys electronically submit PDF documents to the Office. Then, there would be no scanning errors.
—–Original Message—– From: XXXX Sent: Wednesday, November 10, 2004 10:33 PM To: Crouch, Dennis Subject: Patent Office Professional Association (POPA) Proposes Solutions to Examination Problems
Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more
Scanning errors? I think they are missing the big picture. When I file anything at the Trademark Trial and Appeal Board, I simply upload a pdf (rendering scanning errors impossible-but I guess there are still some font issues). Regardless, uploading pdf documents is so fast, so checkable (did that just work?), so simple, soooo why doesn’t the patent office get it?
As I sit here and wait for my USPTO fax back at 10:31 PM.
In 1992, Campbell Plastics (as it is now known) entered into a cost-plus-fixed-fee contract with the Army to develop components of an aircrew protective mask. Section I of the contract required Campbell to disclose any invention developed pursuant to the government contract and further provided that the government could obtain title if Campbell failed to disclose the invention within two months.
Campbell invented a new type of gas mask, but the company did not disclose the invention to the Government. Campbell then obtained a patent on the invention, noting that the Government has a "paid-up license in this invention."
The government, however, wanted more than just a license. In a decision by the Armed Services Board of Contract Appeals, ruled that Campbell had forfeited title to the patent by failing to comply with disclosure requirements of the contract.
The Appeal:
The Federal Circuit Court of Appeals, interpreting both the Bayh-Dole Act and the contract, sided with the Army.
Campbell Plastics failed to comply with the disclosure provisions of the parties’ contract. The contract unambiguously provides that in such a case, the government may obtain title to the subject invention. The decision of the Board to deny Campbell Plastic’ appeal is affirmed.
The Result:
Campbell failed comply with its contract to disclose inventions to the Army. As a result, the Army may obtain title to the related patents.
Comment: This case should serve as a warning to government contractors. You cannot rely on the friendly face of the Technology Tranfer Office always being there. Contractors should implement a regular practice of documenting engineering work associated with government contracts to ensure that inventions are accurately reported in a timely manner.
In 1899, then Patent Commissioner, Charles H. Duell reportedly announced that "everything that can be invented has been invented." Obviously, he is wrong. Case in point – I just got a call from an inventor at a major corporation who wants to patent his invention:
Disclosure: A ladder with Teflon rungs — so that you don’t stick on your way up & down.
(Its a joke). Patent law humor is very funny to a select group of people. For those of you who are members of that unlucky group, follow these links:
Update I: The Petit Musee de Marques is, as its name implies, a little museum of trademarks. Frédéric Glaize writes this blog in french, but it can be translated using the Google translator. (Thanks to Cece Gassner for the tranlation link).
A patent generally covers a single invention. Often, however, a patent application will be filed that arguably covers multiple inventions. The Patent Office uses Restriction Requirements as discretionary tools to limit the examination of a patent to only one invention. In order to issue a restriction requirement, the Patent Examiner must find that two independent or distinct inventions have been claimed and that there would be a serious burden on the Examiner to examine the application as filed.
In the chemical practice (TC1600), the patent office has recently taken the initiative to to improve the quality and consistency of restriction practices. The PTO’s 5-step action plan is available online. Recently, the PTO made the Examiner training materials available on the Web in PDF format. (Thanks to Steve Hird for the links).
The training materials note that the strongest reasons for restriction involve either (i) separate technology classification; (ii) separate status in the art; or (iii) divergent field of search.
Tip: Reviewing the training materials may be a useful way to avoid or overcome restrictions. For example, by arguing that claims are "linked," an applicant may be able to persuade the Examiner to remove a Restriction requirement.
Attorney General John Ashcroft and Commerce Secretary Don Evans have resigned from their respective posts. They are the first members of President Bush’s Cabinet to leave as the President heads into his second term.
As Secretary of Commerce, Evans over-saw the United States Patent & Trademark Office. This spring he led a special envoy to China to discuss intellectual property and piracy with Chinese officials and practitioners. Mercer Reynolds has been mentioned as a possible replacement.
Ashcroft was a constant figure on national television in the days following 9/11. More recently, his administration has supported a strong policy against IP piracy.
After an earlier remand from the Federal Circuit, defendants Knight and Scallen attempted to amend their counterclaims to indicate precisely how they were damaged by actions arising from the University’s actions. However, the district court denied their motions to amend and dismissed all but one counterclaim as barred by the statute of limitations and the New Mexico Tort Claims Act.
On appeal, the appellate panel again sided with the University, finding that Scallen and Knight’s arguments to be “without merit.” Barring a rehearing or appeal to the Supreme Court, this case is closed.
Link: Senior U.S. District Judge John Conway said it was unfortunate the university’s lawsuit against two former UNM researchers was not resolved by cooperation and “searching for the greater good” outside the courts to benefit cancer patients.
GlaxoSmithKline recently filed several dedications on its patents relating to treatment of migraine headaches. The patents cover Imitrex, generically known as Sumatriptan Succinate. A dedication is a document signed by a patent owner filed in the U.S. Patent and Trademark Office giving up all patent rights. Usually, the patent owner will only file a dedication for patents that are believed to be invalid. Months ago, Glaxo filed suit against Dr. Reddy Labs to prevent generic production of Imitrex.
Re-Examination:
Alpha and Omega Semiconductor has requested that the Patent Office conduct an ex parte reexamination of Siliconix Inc.’s patent on a method for making planar vertical channel DMOS structures. (U.S. Patent 4,767,724). This move is simply the next step in the ongoing patent litigation between the two semiconductor manufacturers. A settlement conference is scheduled for November 17th, 2004.
Theis Research v. Brown & Bain (Now Perkins Coie) (9th Cir. 2004).
B&B was Theis’s attorney in patent litigation that turned out badly. Theis demanded arbitration of claims against B&B for legal malpractice, breach of fiduciary duty, fraud and breach of contract. In commenting on the litigation that spawned the arbitration, the arbitrator stated:
Viewed as a whole, the litigation that is the subject of this arbitration was an almost unmitigated disaster both for [Theis] and for B&B. The hopes of [Theis] and its investors were dashed; years of work by Mr. Theis and others went unrequited; B&B got no return on millions of dollars of invested time, and had to chalk up a major loss on its results chart.
The arbitrator awarded no compensation for Theis. Theis then filed a lawsuit for damages and to vacate the arbitration award.
On appeal, the Ninth Circuit first determined that the amount in controversy was sufficient for federal jurisdiction even though the arbitration award had been zero. The Appellate Panel then Affirmed, finding that Theis could not re-open arbitration as he had not shown that the “arbitral result … was a manifest disregard of the law, an implausible interpretation of the contract, the award was procured by corruption, fraud, or undue means, or the arbitrator exceeded his powers.”
GTA and Exro pursued a joint business venture to produce and market a drag reduction additive (DRA) for petrolium products. The startup company, EXG, never successfully produced or marketed any DRA. However, GTA successfully sued Conoco for infringement of its DRA patents — $60 million. Neither EXG or Exro were parties to that litigation.
Once Exro learned of the award, it demanded its share. According to Exro, EXG held an exclusive license to the GTA patents, thus making the infringement award property of EXG. However, the district court dismissed Exro’s claims on summary judgment.
On appeal, the 4th Circuit Court of Appeals reversed — finding that the district court lacked diversity jurisdiction over the claims. The case remanded to Virginia state court.
In Re Violation of Rule 28(c) (Fed. Cir. 2004) (Unpublished Order)
At the district court, Esab Group won a multi-million dollar judgment against Centricut for infringement of Esab’s patent relating to plasma welding products. Centricut appealed the judgment and the measurement of damages. Esab cross-appealed, asking for a modification of the judgment on damages.
While not yet deciding on the merits of the case, the Federal Circuit gave Esab’s attorney a written reprimand for filing a reply brief in violation of Rule 28(c) of the Federal Rules of Appellate Procedure.
Rule 28(c) limits the content of a cross-appeal reply brief to issues presented by the cross appeal. Further, the Practice Notes accompanying Rule 28 specifically caution counsel to limit the reply brief “to the issues presented by the cross-appeal.” However, Esab’s reply brief consisted of 23 pages, about 20 of which related only to the main appeal and not the cross appeal.
The appellate panel declined to impose sanctions against the offending attorney, but noted that “we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not ‘inadvertent,’ will potentially subject counsel to sanctions.”
A decision on the merits of Centricut v. Esab Group is expected later this year.
Notes:
Fed. R. App. P. 28(c) Reply Brief. The appellant may file a brief in reply to the appellee’s brief. An appellee who has cross-appealed may file a brief in reply to the appellant’s response to the issues presented by the cross-appeal. Unless the court permits, no further briefs may be filed. A reply brief must contain a table of contents, with page references, and a table of authorities-cases (alphabetically arranged), statutes, and other authorities with references to the pages of the reply brief where they are cited.
Bob Shaver‘s blog, Patent Pending is a breath of fresh air. Rather than rushing to opine on the newest developments, Shaver takes a deep breath and writes about history. In each post he weaves a story, building upon his years of experience as a patent attorney and technologist.
For instance, in a recent articles Shaver told the tale of the original Suez Canal — 600 BC to 800 AD, and the first Steam Engine. Articles like these help give me an appreciation for the history of ideas and innovation.
In the words of Shaver’s partner Stephen Nipper, “If you are interested in technology as it developed over the ages…check out his blog.”
DE Technologies owns the patent on multi-lingual e-commerce. (U.S. Patent No. 6,460,020). The patent, originally filed in 1997, covers a method carried out on a computer that allows international commercial transactions. Claim 1 of the patent includes the following steps:
(a) selecting a language from a menu; (b) selecting a currency from a menu; (c) selecting a product to be purchased and a destination for shipping; (d) obtaining from a database i) price information; ii) an international goods classification of the product; and iii) international shipping information; (e) calculating shipping costs; (f) determining a total cost; (g) confirming existence of available funds; and (h) accepting the order and generating a shipping invoice
Yesterday, BusinessWeek reported that DE has sued Dell for infringement of this patent. According to the article, If litigation goes forward, it will focus on whether, as DE contends, it really was the first company to demonstrate a system for processing international sales online when it filed for patent protection in 1997.
After waiting one day for the election to conclude, the Motion Picture Association of America (MPAA) reportedly plans to announce its new campaign against “movie piracy.” Following the lead of the major recording industry association, RIAA, the MPAA plans to take the law to the people. Specifically, the MPAA is planning to file copyright infringement lawsuits against individual downloaders.
Although the former MPAA chief Jack Valenti received some criticism during his tenure for promoting Copyright Extension Legislation and the DMCA, Valenti reportedly resisted the idea of individual lawsuits. The MPAA’s new president Dan Glickman is expected to announce the campaign in Los Angeles today. Glickman spent nearly 20 years in Congress representing the 4th District of Kansas.
Colida v. Matsushita (Fed. Cir. 2004) (unpublished opinion).
Facts: Tony Colida owns design patents covering the design of mobile phones designated A. Matsushita owns a patent on the design for mobile phone B. In addition Matsushita makes a GU87 phone that matches up with its patented design. After comparing the phone with the figures from Colida’s patents, the district court dismissed Colida’s infringement suit – finding that there was no infringement as a matter of law.
Appeal: Reviewing the summary judgment de novo, the appellate panel affirmed, finding no error in the district court’s conclusion that “no reasonable trier of fact could find infringement of the [patents] by the GU87 phone in this case.”
The [Non]Billable Hour, includes a regular feature known as Five-by-Five. Each month or so, author/lawyer Matt Homann gets five experts in an area of law to give five responses to a question about the law.
The most recent episode is the IP Edition. Matt was able to bring five IP attorneys together to answer the question: What five things would you change about IP law and/or practice? I was lucky enough to be included in the panel. Here are some snippets:
Stephen Nipper: Embrace the future. Lets face it, the Internet is changing the practice of intellectual property law. Many of the businesses we used to rely on for patent copies, copies of file wrappers, etc., have had to evolve or die as more and more of the USPTO’s data and knowledge is made available on the Internet for free. Do you really think that is the end of it? Do you think that it is not going to affect IP attorneys too? I’m afraid that you’ve got a big surprise coming. It is time to start thinking outside the box about how we provide our services, how we bill for them and how clients find us.
Douglas Sorocco: Everyone needs to take a deep breath regarding software patents. The end of the world is not near, the seas are not going to be flooding our coastal cities and software patents are not stifling development of new and useful tools and processes. Software developers are simply going to have to become better business people and accept that nothing is free and patent clearance searches must be made an integral part of the development process.
Martin Schwimmer: [A] tremendous amount of what trademark owners hate about Internet activity consists of third parties using their marks to divert traffic to unauthorized sites. We saw this concept in cyber squatting litigation, and now see it in the use of keywords. Related to this is the development of the concepts of contributory and vicarious infringement. It’s hard to get one’s hands around fly-by-night operators, so trademark owners go after the Internet service provider or registry or search engine. I think these are the key areas in which we are going to see development in U.S. jurisprudence.
Dennis Crouch: Law School: Becoming An Attorney: If you are a scientist or engineer who is thinking of becoming a patent attorney, my advice to you is to broaden your outlook. When you go to law school, don’t just worry about becoming a patent jockey – rather you are becoming a lawyer. Learn to think like a lawyer and talk like a lawyer. Take classes that have nothing to do with patents and make as many friends as you can. (Your classmates will likely refer some of your first clients). Law school provides a great transition point in life, and there is no requirement that pushes an attorney with an engineering degree into patent law. Take time to enjoy the freedom.
Mark Partridge: Require ADR before litigation: Litigation is extremely expensive, almost shockingly so to most clients, and prohibitively so to many. . . . My change would be to require all trademark litigants to try forms of alternative dispute resolution before proceeding with the expense of discovery and trial. As both a mediator and as an advocate in mediations, I know that facilitated negotiations can lead to resolutions at substantially reduced cost. Unfortunately, ADR is underused for many reasons. Clients don’t want to be the first to blink. Litigators don’t want to appear weak, loss control, or disclose information. Whatever the reason, the hesitancy to use ADR (either mediation or early arbitration) could be overcome by making it mandatory. Some jurisdictions already do. More should. An early effort to settle, facilitated by a competent neutral could, I believe, save the courts and clients a great deal of money.
Under New Jersey law, any voting machine must be examined by the Secretary of State before approving it for use at elections. In addition, the voting machine must be inspected by three examiners, “one of whom shall be an expert in patent law.” New Jersey Statutes § 19:48-2. The statute, passed in 1953, also requires “two mechanical experts.” The experts are appointed by the Secretary of State.
According to reports, New Jersey citizens are voting via electronic touch-screen voting in 15 of 21 counties throughout the state. Last month, a New Jersey Judge denied a last minute effort to block the use of e-voting machines. No word on the identity of the NJ patent law expert or whether the new voting booths were examined.
New Jersey Statutes § 19:48-2. Examination of voting machines by secretary of state
Any person or corporation owning or being interested in any voting machine may apply to the Secretary of State to examine such machine. Before the examination the applicant shall pay to the Secretary of State an examination fee of four hundred fifty dollars ($450.00). The Secretary of State within a period of thirty days shall examine the machine and shall make and file in the office of the Secretary of State his report of the examination, which report shall state whether in his opinion the kind of machine so examined can be safely used by the voters at elections under the conditions prescribed in this subtitle. If the report states the machine can be so used, it shall be deemed approved, and machines of its kind may be adopted for use at elections as herein provided.
Before making such report the Secretary of State shall require the voting machine to be examined by three examiners to be appointed for such purpose by him, one of whom shall be an expert in patent law and the other two mechanical experts, and shall require of them a written report on such machine, which the Secretary of State shall attach to his own report on the machine. Each examiner shall receive one hundred fifty dollars ($150.00) for his compensation and expenses in making an examination and report as to each voting machine examined by him from and out of the examination fee of four hundred fifty dollars ($450.00). Neither the Secretary of State nor any examiner shall have any pecuniary interest in any voting machine. When the machine has been so approved, any improvement or change that does not impair its accuracy, efficiency, or capacity, shall not render necessary a re-examination or reapproval thereof. Any form of voting machine not so approved cannot be used at any election.
The certificate of approval, or a certified copy thereof, shall be conclusive evidence that the kind of machine so examined complies with the provisions of this subtitle, except that the action of the Secretary of State in approving such machine may be reviewed by the Superior Court in a proceeding in lieu of prerogative writ.
Does anyone know if this law is still being followed?
The Patent Lawyer is published by the APLF and has released Issue 2. In an article on patent amendment practice, Stephen Favakeh provides some simple advice for overcoming novelty rejections. Generally, a novelty rejection is easier to overcome than an obviousness rejection because novelty is determined by more objective standards. However, when responding to an Office Action, you should not set your client up for an obviousness rejection.
It is usually not enough simply to list the limitations in the claim that are missing from the prior art reference, particularly when the differences are subtle. Doing so may lead to a dismissal of the Section 102 rejection, but only at the cost of substituting a section 103 [obviousness] rejection. “Sure,” the examiner may say, “the prior art doesn’t exactly disclose the claimed invention, but it is obvious to fill in the gaps.” To avoid this, explain why the missing limitations are significant.
Chicago still uses punch-cards for voting. Despite the risk of hanging chads or dimpled marks, the benefit of this system is the paper trail. Many voters, including myself, are reassured by the paper trail. Patent No. 4,445,731 (shown above) was invented by John Ahmann in the early 1980’s. The patent covers the type of portable voting booths used in my precinct. Ahmann is still recognized as an expert in voting technology and testified in the Bush v. Gore controversy of 2000. According to the BBC, about 30% of U.S. voters will use electronic voting (e-voting) machines in today’s election.
Problems and praise Opponents highlight the problems that have already occurred with the machines – pointing for instance to a congressional race in Ohio in which votes were incorrectly registered due to a problem with the memory cartridges.
At the same time however, Georgia’s entirely electronic system appears to have few naysayers after two years in operation – although it is widely accepted that the presidential election will prove the greatest test.
The principal criticism remains the lack of paper audit trails. Nevada is the only state using machines which will provide voters with the kind of receipt which would, if necessary, allow for a manual recount.
But in order to accommodate some of the concerns, a number of states – including California – will give voters the opportunity to vote using electronic machines or a paper ballot form.
Here is a picture of my neighbor and senate hopeful Barack Obama and his daughter casting his vote.
Rubik’s Cube (r) has been in the news and on the blogs lately. Once the patent on the cube expired, several companies began to copy and sell cubes having the same design.
According to the news reports that Greg Aharonian e-mailed, officers from the Department of Homeland Security recently asked a toy store owner to remove “Magic Cube” (r) toys that have the same look and feel of the original Rubik’s cube. Speculation has been flying around the net as to the source of the officer’s authority.
It turns out that the company that sells the original cube, Seven Towns Limited, holds a registered trademark on the design of the cube. According to the trademark description:
The mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same and consisting of the colors red, white, blue, green, yellow and orange. The drawing is lined for the colors red and green. The remaining colors — white, blue, yellow, and orange — do not appear in the drawing, but are claimed as a feature of the mark. (U.S. Trademark Registration No. 75,105,330).
From an initial glance, I would not think that this trademark description would cover the Magic Cube (r) because of the clear difference in stated colors. However, that would be for a jury to decide.
A trademark on the design of an object is known as “trade dress.” Generally, trade dress is thought of as a distinctive, nonfunctional feature of an object that allows a customer to readily identify the manufacturer of the object.
In a recent case (TrafFix), the Supreme Court ruled that items that were previously patented are generally considered functional. Because tradedress is only on nonfunctional features of an object, there can be no protection of previously patented elements.
The owner of Pufferbelly Toys in St. Helens worries when Homeland Security agents show up on official business
Thursday, October 28, 2004
ASHBEL S. GREEN
Nothing about running a small store called Pufferbelly Toys prepared Stephanie Cox for a cryptic phone call from the U.S. Department of Homeland Security.
“It’s all very surreal, quite honestly,” Cox said Wednesday. “I thought it was a prank when I first heard. I couldn’t understand why Homeland Security would be investigating a tiny toy store in St. Helens.”
The call came in late July or early August. A man identifying himself as a federal Homeland Security agent said he needed to talk to Cox at her store.
Cox asked what it was all about.
“He said he was not at liberty to discuss that,” she said.
They agreed to meet in early August, but the agent later canceled. Cox thought the matter had blown over when the agent called back Sept. 9 to say he was coming out there.
“I was shaking in my shoes,” said Cox, who has owned Pufferbelly Toys for more than four years. “My first thought was the government can shut your business down on a whim, in my opinion. If I’m closed even for a day that would cause undue stress.”
The next day, two men arrived at the store and showed Cox their badges. The lead agent asked Cox whether she carried a toy called the Magic Cube. She said yes. The Magic Cube, he said, was an illegal copy of the Rubik’s Cube, one of the most popular toys of all time. He told her to remove the Magic Cube from her shelves, and he watched to make sure she complied.
The whole thing took about 10 minutes.
After the agents left, Cox called the manufacturer of the Magic Cube, the Toysmith Group, which is based in Auburn, Wash. A representative told her that the Homeland Security agents had it wrong. The Rubik’s Cube patent had expired, and the Magic Cube did not infringe on rival toy’s trademark.
John Ryan, corporate counsel for the Toysmith Group, said Homeland Security, which includes Customs, routinely blocks shipments of products from overseas that violate intellectual property rights, such as patents, copyrights and trademarks.
“That’s fine. That’s not an outrageous federal act by any means,” Ryan said. “But we certainly were surprised that a federal agent approached a toy store owner and frightened them.”
Virginia Kice, a spokeswoman for Immigration and Customs Enforcement, said agents went to Pufferbelly based on a trademark infringement complaint filed in the agency’s intellectual property rights center in Washington, D.C.
Kice also said Homeland Security officials routinely investigate such complaints and follow up if they determine they are valid.
“One of the things that our agency’s responsible for doing is protecting the integrity of the economy and our nation’s financial systems and obviously trademark infringement does have significant economic implications,” she said.
After gaining assurances from Toysmith officials, Cox put the Magic Cube back on the shelf soon after the agents left.
Six weeks after her brush with Homeland Security, Cox is still scratching her head.
“Aren’t there any terrorists out there?” she said.
