Patently-O Bits and Bytes No. 14

  • Design Patent Law: The House Subcommittee on IP held hearings on amendments to the design patent laws. The two primary specific issues on the table are (1) whether to eliminate design patents covering replacement automobile parts and (2) whether to extend IP protection to fashion designs. [LINK].  The IP group will hold PTO oversight hearings again next week.  
  • Replacement Parts: IPO recently voted to oppose any legislative exemption for particular products or technologies from the IP laws:  “In particular, IPO opposes legislation that would exempt replacement automobile parts from infringing U.S. design patents.”
  • LexisNexis Patent Center: lexisnexis is now in the blog world with their “Patent Center.”
  • Missing Dates: The PTO revived Aristocrat’s national stage application even though filed a day late.  During litigation, however, the district court found the revival an improper extension of the law. [Link] The patentee appealed to the CAFC with the question of “Whether a patent application abandoned for failure to comply with deadlines set forth in 35 U.S.C. §§ 371(d) and 133 may be revived based on mere ‘unintentional’ delay where those provisions provide for revival only for “unavoidable” delay.” Now, IGT responds.
  • New Administrative Judge: According to Hal Wegner, the PTO has appointed Professor Lorelei Ritchie de Larena to the position of administrative judge on the TTAB BPAI. Judge Ritchie has been working in tech-transfer for several years while teaching at the same time. As the rate of appeals continues to rise, the PTO will need to continue to hire high quality judges. At the same time, these judges will begin to feel an even stronger pull to jump ship to law firms looking for inside experience and connections. [Related note: can someone send me a list of BPAI Judges?]

17 thoughts on “Patently-O Bits and Bytes No. 14

  1. 17

    The PTO routinely revives patent applications that are abandoned for failure to timely respond to an office action where the reason meets the “unintentional” standard but fails short of meeting the requirements for an unavoidable abandonment.

    At least arguably, the statutes allows the PTO to revive only unavoidably abandoned applications in such circumstances. If the CAFC agrees, then lots of revived applications and continuations from revived parents may turn out to be invalid. So far, the CAFC has only overruled the PTO in cases where the unintentional abandonment standard was not met.

    Unintentional abandonments that wouldn’t be unavoidable might involve cases where a rare failure in a usually reliable business process (such as failure to properly docket, accidental mishandling of mail, or failure to update a forwarding address) results in missing a deadline.

  2. 16

    Further, compulsory licenses and “fair use” are appropriate remedies where policing and enforcement are difficult and only usually occur after the unauthorized copying (try enjoining a band’s cover of a copyrighted song before the fact) and where costs of production of the copied work are low. Also, the copies tend to occupy a secondary market and do not act as a direct substitute for the protected res.

    Generally speaking, you can’t really say these things about copies of a patented product.

  3. 15

    “a significant number of issued patents will become invalid under the new “unavoidable” standard” ~ TJ

    Can you please explain?

  4. 14

    Here is a Travel Tip for the economy minded when visiting the PTO. Most hotels start in the $200 range but the Alexandria Travelodge, a motel with parking in front of the rooms, a couple of miles from the PTO complex, starts in the mid-$60 range for seniors/AARP. The rooms are quite large, well kept, have refrig and microwave, and here is the best part — free Krispy Kreme donuts and great coffee in the morning.

    Alexandria Travelodge
    700 North Washington St
    Washington St & Wythe St
    Alexandria, VA 22314 US
    Phone 703-836-5100

    link to!

  5. 13

    What’s with all the legislation being proposed regarding patents, both pro and con, in certain industries (banking, fashion, automotive)? Don’t the lobbyists have other things to do?

    I used to work in the automotive industry and we relied heavily on design patents to stop inferior replacement body parts.

  6. 12

    TJ wrote: “If the court rules for IGT, a significant number of issued patents will become invalid under the new “unavoidable” standard”

    This surprised me–does this situation really happen often? I don’t remember hearing of another example, but I guess people don’t advertise that they’ve missed a deadline.

  7. 11

    “If the court rules that the PTO gets Chevron deference on the standard for reviving applications, GSK/Tafas looks headed for major problems.”

    The CAFC can rule in the PTOs favor without touching the issue of deference. Instead the CAFC can simply interpret the statutes de novo and reach the same conclusion that the PTO reached.

  8. 10

    Before more of us comment on the qualifications of Lorelei Ritchie de Larena for her spot in the PTO (and which spot it is), let me say that she wrote a very good article (License to Sue) on the MedImmune case. I’m not one to give academics in the IP area slack, but what she wrote in License to Sue made sense to me and showed some pretty decent thought about where SCOTUS missed the mark (the contract law mark that is) in MedImmune that is going to plague us in the “real world” as we try to negotiate future license agreements (or uphold existing ones).

  9. 9

    Now here is an interesting question for GSK/Tafas fans. The PTO has interpreted the statute in IGT to permit revival, and argues that it is entitled to Chevron deference because the regulation is procedural. IGT argues the opposite. If the court rules for IGT, a significant number of issued patents will become invalid under the new “unavoidable” standard; but on the other hand GSK/Tafa’s case starts looking pretty good on the procedural/substantive debate. If the court rules that the PTO gets Chevron deference on the standard for reviving applications, GSK/Tafas looks headed for major problems. So which side should the patent bar support?

  10. 8

    There are probably more people who wish patent-strength protection was available for works of authorship…

  11. 7

    With all due respect, I had the inclination to try to strech the jurisprudence of Copyrights to Patents during law school. Then I woke up… Why is it that many judges seem to be simple minded.

    Notwithstanding the pithy spectrum “diagrams” in the above referenced paper (left side fair use, right side not fair use), the author fails to realize the fundamental difference in spending years and millions in fundamental R&D to come up with a revolutionary product versus punching the number 1000 into your color copy machine and letting ‘er rip with the latest bootleg work of the day.


  12. 5

    See the correction. It’s TTAB, not BPAI, that she was appointed to. Some folks may not like that either, but at least it’s better than someone with no patent background on the BPAI…

  13. 4

    Check out this paper on patent fair use by the new appointee:

    link to

    Somehow that article gives me the feeling that before this gal (or anyone male like her) gets off of the BPAI there will be people wishing I (or anyone else) was the one appointed.

    I can’t wait to see what goes down.

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