September 2011

Guest Post: Mark Twain’s Patent Interference

Patent

Guest Post by Ed Ergenzinger, JD, PhD, Director of Intellectual Property & Legal Affairs, Duke Human Vaccine Institute

With the conversion of the U.S. patent system from a first-to-invent regime to a first-to-file regime, interference proceedings are set to be replaced by derivation proceedings. As patent practitioners contemplate the implications of this and other changes to the law with respect to their practices, I offer the following light diversion describing an interference that involved a certain well-known author/inventor.

Many people don't know that Samuel L. Clemens, better known as Mark Twain, was also an inventor who was granted three patents during his lifetime. He was a strong believer in the value of the patent system, as evidenced by his book A Connecticut Yankee in King Arthur's Court in which the main character states, "…the very first official thing I did in my administration – and it was on the very first day of it too – was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab and couldn't travel anyway but sideways or backways."

One of Twain's inventions involved an adjustable strap for tightening clothes in order to avoid having to use uncomfortable suspenders. It was this invention that became the subject of an interference proceeding in 1871 between Twain and Henry C. Lockwood of Baltimore. As part of the proceeding, the parties had to file preliminary statements detailing the essential dates and facts relating to their respective cases.

But we're talking about Mark Twain. He couldn't just submit a dry legal document with numbered paragraphs. That wasn't his style.

No – instead he wrote a short story. It was sent from Hartford, CT to "Hon. M. D. Leggett, Com'r of Patents, Washington" and was dated Oct. 6, 1871:

Concerning Mark Twain's Elastic Strap.

The idea of contriving an improved vest strap is old with me; but the actual accomplishment of the idea is no older than the 13th of August last (to the best of my memory). This remark is added after comparing notes with my brother.

For four or five years I turned the idea of such a contrivance over in my mind at times, without a successful conclusion; but on the 13th of August last, as I lay in bed, I thought of it again, & then I said I would ease my mind and invent that strap before I got up – probably the only prophecy I ever made that was worth its face.

An elastic strap suggested itself & I got up satisfied. While I dressed, it occurred to me that in order to be efficient, the strap must be adjustable & detachable, when the wearer did not wish it to be permanent. So I devised the plan of having two or three buttonholes in each end of the strap, & buttoning it to the garment – whereby it could be shortened or removed at pleasure. So I sat down & drew the first of the accompanying diagrams (they are the original ones).

While washing (these details seem a little trivial, I grant, but they are history & therefore in some degree respect-worthy), it occurred to me that the strap would do for pantaloons also, & I drew diagram No. 2.

After breakfast I called on my brother, Orion Clemens, the editor of the 'American Publisher,' showed him my diagrams & explained them, & asked him to note the date & the circumstances in his note-book for future reference. (I shall get that note of his & enclose it, so that it may make a part of this sworn evidence.) While talking with him it occurred to me that this invention would apply to ladies' stays, & I then sketched diagram No. 3.

In succeeding days I devised the applying of the strap to shirts, drawers, &c., & when about to repair to Washington to apply for a patent, was peremptorily called home by sickness in my family. The moment I could be spared, however, I went to Washington & made application – about the 10th or 12th of September, ult., I think. I believe these comprise all the facts in the case.

Respectfully,
Saml L. Clemens

Twain won. His preliminary statement is believed to be the only one of his stories for which there is an affidavit supporting its truthfulness.

In addition to the patent he received for the elastic strap, Mark Twain was granted two other patents during his lifetime. One was for a historical trivia game, and the other was for a self-pasting scrapbook with a dried adhesive on the pages that only needed to be moistened before use (Twain was an avid scrapbooker). The scrapbook was hugely popular and sold over 25,000 copies, with one account indicating that it was his single most profitable book. And it didn't contain a single word.

Further reading:

New Patent Regime Signed into Law

Patent,

Patent2011021This morning, President Obama signed the Leahy-Smith Patent Reform Act — enacting it into law. The provisions of the new law have a variety of effective dates.  Some changes to the law happen immediately and the increased patent office fees will be instituted on September 26, 2011.  Other changes will not be implemented until 2012 and 2013. These include the revised post-grant opposition procedures and the rewriting of the rules of novelty and nonobviousness.

Of Immediate Concern: Best Mode and Joinder

Patent

In all likelihood, President Obama will sign the Leahy-Smith America Invents Act into law on Friday, September 16, 2011. There are a few issues that folks may want to consider before-hand.

Best Mode: On the date of enactment, failure of best mode will no longer be a basis for adjudging a patent invalid or unenforceable. However, the new provision only applies to lawsuits filed on or after the enactment date. Thus, a declaratory judgment action filed today could still rely on best mode as the basis for invalidity.

Dis-Joinder: A second litigation-focused issue that goes into force on the date of enactment is the new dis-joinder provision. Section 19 of the Leahy-Smith AIA bars a plaintiff from suing multiple defendants in a single lawsuit if the only justification for the joinder is that all defendants are alleged to have infringed the same patent. The law would also bar a court from consolidating cases for the same purpose absent waiver from the multiple defendants. The idea behind the provision is simply to raise the litigation costs of non-practicing entities who allege that their patents are being infringed by a broad spectrum of corporate defendants. The law applies to all lawsuits filed on or after the bill’s enactment date. Thus, if President Obama signs the bill into law on Friday, a plaintiff may still file a multi-defendant lawsuit today or tomorrow.

The Court’s Future Role in the International Harmonization of Patent Laws

Patent

by Dennis Crouch

International harmonization has always been seen as a major purpose of the Leahy-Smith America Invents Act.  Every country has its own patent structure as does the European Patent Office.  Ongoing differences between the various countries add substantial transaction costs to the process of obtaining and enforcing patents.  Many US companies would like European patents, but the prospect is often cost prohibitive. 

Although disputed, most would agree that the Leahy-Smith's new filing-date focus moves the US closer an international patentability norm.   Still, a number of important differences remain between US law and the laws in other major patent centers.  As a result, the US law has not been internationally harmonized, but it has been shifted in that direction.

The Leahy-Smith AIA refers directly to harmonization only once and only in an aspirational “sense of Congress” provision that reads as follows:

Sense of Congress – It is the sense of the Congress that converting the United States patent system from ‘first to invent’ to a system of ‘first inventor to file’ will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.

This Congressional statement regarding promotion of international harmonization does not include any binding requirements, but will still clearly be considered "law" — having been approved by both houses of Congress and (will be) signed into law by President Obama. See Mississippi Poultry Ass'n, Inc. v. Madigan, 31 F.3d 293 (5th Cir. 1994).

Comparative Analysis of World Patent Laws: Rather than any binding rules, the "sense of Congress" provision provides an indication of congressional intent that may be relevant to statutory construction.  Since the provision is passed by both houses and will be enacted into law, it should be much more influential that other statutory construction canons used to understand congressional intent.  This may be important as the court's struggle with the meaning of new statutory language and structures of Sections 102 and 103 of the Patent Act.  In making its determinations, must the court consider how its decision will impact the relative international harmonization of the laws? The process would seemingly involve a comparative analysis of the various patent laws to see whether the particular rule in question is governed by an international norm and, if so, the court should tend to choose an interpretation of the law that better harmonizes the US law with the international norm.

USA as World Patent Court: In Voda v. Cordis, Judge Gajarsa discussed the court's “lack of institutional competence in [various] foreign patent regimes” including “British, Canadian, European, French, and German patent claims.”  In that case, the court denied Dr. Voda's plea for supplemental jurisdiction so that a U.S. court could adjudge all of his infringement claims against Cordis in a single instance.  The sort of worldwide patent court that Voda wanted is an end goal for many involved in substantive patent harmonization.  When this case arises again, the court will need to reconsider its institutional competence in light of the newly harmonized laws and the Congressional directive in favor of harmonization?

Guest Post — Defining Prior Art under the Leahy-Smith AIA

Patent,

by Howard Skaist and Ted Karr

35 USC 102 is the statutory section that, in effect, legally defines 'prior art.' 'Prior art' is, of course, a key consideration affecting whether to file for a patent, whether a patent will ultimately be secured, and whether, if issued, the patent will be legally enforceable. Furthermore, if patent protection is ultimately sought, 'prior art' will affect how best to draft the patent claims so that all of these are more likely to be accomplished successfully.

Understanding the ins and outs of what constitutes 'prior art 'is largely the domain of the patent attorney. One might expect this term to have a common sense understanding; the reality is that it is far from common sense.

Changes that the Leahy Smith Act makes to what is considered 'prior art' will have far reaching implications. With this in mind, the following is intended as a short list of changes so that the patent practitioner is alerted to potential impact(s) on his or her practice.

Rather than totally rewrite section 102, Congress has retained some features that are well-understood under current law.

  • "Invention" has been changed to "claimed invention," now defined in section 100. The new statute also refers to "the effective filing date" of the claimed invention, now defined in section 100. Also, "inventor" and "joint inventor" are now defined terms in section 100.
  • The "claimed invention" is not novel if "patented," "described in a printed publication," "in public use," or "on sale." Therefore, for these events there is no grace period under the new statute – current law has a one year grace period.
  • "On sale" and "in public use" activities are no longer limited to the United States – current law requires these events to be "in this country."
  • If the claimed invention was "otherwise available to the public" before its effective filing date, it is not novel. However, "disclosures made one year or less before the effective filing date" appear to be intended as an exception. In summary, if one of these disclosures is made by an inventor or joint inventor or "another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"(called "another" below), the disclosure will not be considered 'prior art.' Also, the disclosure will not be considered 'prior art,' if before it, the subject matter was publicly disclosed by an inventor, joint inventor, or "another."
  • Section 102(e) type prior art is now codified as section 102(a)(2), but with different language – for example, "by another" has been changed to "names another inventor." A new subsection (d) defines the date at which "subject matter described" becomes 'prior art.' An exception, however, is referred to as "disclosures appearing in applications and patents." In summary, if the subject matter of one of these disclosures was obtained directly or indirectly from an inventor or joint inventor, then it will not be considered to be 'prior art.' Also, the disclosure will not be considered 'prior art,' if before the effective filing date of the patent or application, the subject matter was publicly disclosed by an inventor, joint inventor, or "another." Finally, if the subject matter disclosed and the claimed invention are owned by the same person (or subject to an obligation to assign to the same person), then the disclosure will not be considered 'prior art.'
  • Current subsections (c), (d), and (g) no longer exist. Subsection (g) is what, in effect, made the United States a first to invent system. Therefore, removing it makes the United States, in effect, a first to file system.
  • The bill is yet to be signed. However, the changes to section 102 (and section 100) go into effect 18 months after enactment, which would be the date the President signs the bill.

Howard Skaist is the founder of Berkeley Law & Technology Group, LLP (BLTG), an intellectual property law firm based in Oregon and, before that, he was the Director of Patents for Intel Corp. Ted Karr P.C. is a BLTG partner and Ted was responsible for patent licensing at Intel Corp. before joining BLTG.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Guest Post – To Promote Progress in Science and Job Creation

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By Shubha Ghosh, Vilas Research Fellow and Professor of Law at the University of Wisconsin Law School

Whether the "Leahy-Smith America Invents Act' will help to create jobs is a complicated empirical question. The logic supporting those who think it will goes something like this. The recently enacted patent reforms streamlines the prosecution process resulting in better quality patents that will allow patent owners to commercialize them more effectively to create companies that will employ people. There are several leaps in this logic. But whether the argument is true or not, the underlying emphasis on improving patent quality is the right one, whether or not another recession is avoided.

But will patent quality improve? There are some features which support that improvement. The creation of post-grant review proceedings has the potential of providing a more effective mechanism for the introduction and review of prior art to invalidate a poor quality patent than the process of litigation. Such administrative review might limit the ability of non-practicing entities to use patents of dubious value to hinder effective use of technology and innovations. Over all the new process might provide better assurance about issued patents and confidence in their durability. The expansion of the prior user right defense might also soften the effects litigation, threatened or actual, on business development. Although there is some empirical evidence from the Canadian experience that the shift to a first to file system may reduce the volume of patenting, there is some possibility that the quality of patents will improve.

The Act however could have gone further. The limitation on tax avoidance patents, implemented through a broader definition of the prior art, is a good move in reducing the number of applications for inventions that arguably provide little boon to the type of manufacturing and service industries that produce jobs. But Congress could have gone further in clarifying the Bilski v Kappos decision, which seemed to place some limits on the types of processes that could be patented. Congress could have gone one of two ways in helping to clarify Bilski. One is by clarifying the meaning of process so as to avoid the amorphous standard the Court created. The 2010 opinion speaks to "machine or transformation" as one test to determine when a process is patentable and as an important clue to what the right approach might be. Congress could have added more certainty by removing abstract processes (e.g., a method of arbitration, hedging strategies) from patentable subject matter. The goal would be to reduce the number of applications a patent examiner has to shift through and provide tools for per se rejections that do not require extensive examinations of the prior art.

Congress also missed the opportunity to clarify the standard of review for decisions of the US Patent and Trademark Office. The big question is how the Federal Circuit (and eventually the Supreme Court) will interpret the Act. Arguably, the United States Patent Office has been given new tasks and, even with the open questions about fee diversion, greater authority. But as long as decisions from the Office are subject to a de novo review by the courts, it is not clear that this greater power of the agency will actually streamline the process. Congress could have made clear some of the issues raised explicitly and implicitly in the 2011 Microsoft v i4i decision, upholding the clear and convincing evidence standard for claims of patent invalidity. The controversy at the heart of that case has to do with the deference owed to agency decisions. When patent prosecution is ex parte and the main challenge to patent validity is through the courts, the presumption of validity is troubling for the goal of assuring patent quality. Now that we have a process for post grant opposition, some of the concerns with ex parte proceedings are alleviated. But I would make the case that greater deference to decisions of the agency may be a way to lessen the impact of the courts and to assure even more certainty in the process. One possible response is to change the standard of review for claim construction by the Federal Circuit from the current de novo standard. Another would be to set a high bar for challenging agency decisions, thereby limiting the power of the judiciary to overturn agency decisions. Thirty years ago Congress established the Federal Circuit. The passage of the America Invents Act could have been a vehicle to place some limits on its power and shift authority regarding patents to the USPTO, where it belongs.

The goal of promoting progress should not be taken lightly and should not be reduced to the mantra of "jobs, jobs, jobs." Using the patent system to create jobs is in some ways a misguided one. Improving patent quality can strengthen the process of innovation which can aid the economy at a fairly high level. But a better patent system is no substitute for jobs training and an industry targeted jobs bill that creates incentives for hiring and for investment. The America Invents Act brings in many changes, but it is no giant leap for improving confidence that the patent system helps to generate quality inventions.

Law Professors and their Initial Remarks on the Leahy-Smith Patent Reforms

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Certainty + More Prior Art: While I'm concerned about the effect of first-to-file on small inventors, I am pleased that the rule will expand the universe of art that might invalidate obvious patents. Too often, art found within a year of filing is rendered uncertain because the defendant does not know the date of invention. By fixing the cutoff date at filing, the universe of prior art not only grows, but the administrative cost of asserting that art is also decreased. To be sure, some of the obviousness art may come after the invention date, but I'm not so worried about that; after all, simultaneous invention is a consideration for obviousness, so close in time inventions, even if after the patentee's, do not present a great harm to a system that is supposed to reward nonobvious advances. – Professor Michael Risch, Villanova University School of Law

Impact on NPEs: Early reports say that the new law will "do nothing" to impact NPEs. They are wrong. The law will forbid the NPE tactic of naming unrelated companies in a single lawsuit, and the economies of scale it produces. Innocent early infringement done in private, under certain circumstances, won't be penalized anymore. A follow-up study on prior user rights and the impact of NPE litigation are called for. The PTO has expanded fee-setting authority, and the public, a greater right to chime in on questionable patents. As the economics of litigation change, so, necessarily, will the business models based on them. – Professor Colleen Chien, Santa Clara University School of Law

Deceptive Intent: There has been little commentary on the new law's rather quiet removal of all seven occurrences of "without deceptive intention" from the statute. These are for: Inventorship changes (Secs. 116 and 256); reissue (Sec. 251); filing a disclaimer (Sec. 253); suing on a patent containing an invalid claim (Sec. 288); and foreign filing without a license (Secs. 184, 185). It was probably not done to encourage deceptive conduct, but to limit fights over mental state in these areas. – Professor Paul M. Janicke, University of Houston Law Center

Natural Experiment: As someone who practiced patent law for over 10 years before entering academics, I am ambivalent at best about the passage of the America Invents Act.  Unfortunately, we missed an opportunity to meaningfully address fee diversion from the Patent Office, one of the most important issues facing the patent system.  With a backlog of over 700,000 applications, the Patent Office needs to retain all the fees it collects.  As an outside academic observer of the patent system, however, there is a benefit to the America Invents Act.  Changing the patent laws provides me and others the chance to empirically evaluate the effects, if any, of legal changes on the patent system. – Professor David L. Schwartz, IIT Chicago-Kent College of Law

Date of Public Disclosure: The Congressional language about "first-to-file system" is somewhat misleading. The text of the bill, and floor remarks of Sen. Kyl, make clear that the key date is either an inventor's filing date or an inventor's earlier public disclosure date, provided the disclosing inventor follows up by filing within a year of the disclosure. In the latter event, the patent would not go to the first to file, but to the first to publicly disclose. – Professor Paul M. Janicke, University of Houston Law Center

Value of Secrecy: Information about new inventions is critical to technological progress.  By increasing the value of secrecy as an option for monetizing inventions, the Leahy-Smith America Invents Act represents a step backwards in terms of information dissemination.  The prior user defense created by the Act recalibrates inventors' decision between secrecy and patenting so as to favor the choice of secrecy.  This shift has the potential to reduce the number of patents that are filed on secret inventions (and the mandatory disclosures that accompany those patents), as well to encourage inventors to direct their investments in research towards secret inventions as opposed to those that require patents to monetize. – Professor Jason Rantanen, University of Iowa College of Law

Inequitable Conduct: The doctrine of inequitable conduct exists in part to encourage patent applicants to internalize some of the costs of the patent system and ensure applicant candor.  The Federal Circuit in Therasense recently took aggressive steps to relieve patent applicants of some of these obligations.  The Leahy-Smith America Invents Act pushes in the same direction.  With two limited exceptions, it provides that "A patent shall not be held unenforceable on the basis of conduct relating to information that has not been considered, was inadequately considered, or was incorrect in a prior examination of a patent if the information was considered…during a supplemental examination of a patent."  New 35 U.S.C. § 257(c)(1).   This provision appears to effectively empower patent owners with the ability to strategically manipulate disclosures to the PTO.  – Professors Lee Petherbridge, Loyola Law School Los Angeles and Jason Rantanen, University of Iowa College of Law

Whipped Cream: There is no mistake so bad that you cannot cover it up with parsley or whipped cream. – Julia Child via Professor Yvette Liebsman, St. Louis University School of Law

 

Patents Directed to Human Organisms

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A major problem with the soon-to-be-enacted patent reform act (H.R. 1249) is that its poor wording inevitably leads to uncertainty about how the law will be interpreted by the courts and by the patent office (USPTO). And, that uncertainty potentially stifles the innovation process. There are a number of examples. One examples involves Section 33 of the Bill titled "Limitation on Issuance of Patents." The amendment adds a limitation that blocks the patenting of human organisms and reads as follows:

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

The provision was originally proposed by Rep. Dave Weldon (R-FL) who was apparently motivated by his anti-abortion policy position. The apparent argument is that the statute helps preserve the sanctity of life by not allowing humans to be considered (intellectual) property.

Clearly, the statute would block the patenting that claims "a human organism" per se – and that is likely the primary intent of the provision. However, the proposal is poorly drafted because the language does not have clear limits or well defined terms. When is a patent claim "directed to . . . a human organism?"

Patently-O readers have already debated this provision in sua sponte comments.

The phrase "directed to" is not defined by the Patent Act or the USPTO Implementation Rules found at 37 C.F.R. § 1, et seq. However, the phrase often used by patent attorneys to describe the coverage of a particular claim and the statutory category. Even amongst patent attorneys, the usage is not uniform.

In my patent law course yesterday we discussed a common hypothetical claim of a method of treating a human disease. A major focus of the claim is certainly directed toward a human organism. The question for the courts and the USPTO will be whether new law the claim itself directed to a human organism? In all likelihood, the USPTO will not take an aggressive stance at implementing this particular rule – that means that any legal changes will not seen until years from now.

This general issue raises two important points that have also been discussed in the Patently-O comment section. First, although the Senate passage of H.R. 1249 likely signals the end of major congressional patent reform action for the next several years, it is likely that congress will implement a number of "technical amendments" that fix problematic language in the bill. As you may expect, the technical amendments often have major substantive impact. Second, this bill provides additional rulemaking and fee setting authority to the USPTO (and in-fact requires that the USPTO use its newfound power). These sources of future changes to the patent practice continue to require input from the practicing bar.

[Addendum – Sept 10, 2011] A few years ago, I likely would have not seen the same problematic ambiguity with the provision. As long as the claim was not formally claiming a "human organism" then the Federal Circuit would have no problem.   A handful of cases – with Myriad at the center – have begun to shift the legal view of the patenting of inventions that are directly tied to human activity. An important element of Myriad is the Obama Administration's support for the public interest plaintiffs through the Department of Justice. In addition, a growing line of cases have begun to disregard claim formalism as a distinguishing factor.   

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Senator Maria Cantwell: “This is not a patent reform bill. This is a big corporation patent give away that tramples on the rights of small inventors.”

Patent Reform –Amendments Fail

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Senator Sessions’ amendment has failed. 47-51. The Sen. Session’s amendment had proposed an amendment stripping a provision from the Bill that would retroactively lengthen the deadline for applying for a patent term extension. This particular provision of the reform has no other real purpose other than to reinstate The Medicine Company’s (MDCO’s) patent covering its Angiomax drug. The law firm WilmerHale is on the hook for substantial malpractice damages due to the filing debacle. These two firms have spent around $20 million lobbying Congress on this issue.

Sen. Cantwell’s proposed amendments have failed. The amendments would have eliminated the business method patent ‘transitional program.’ Failing that, a separate amendment would have limited the scope of the program only to “patents claiming abstract business methods” and not to patents covering “technological” or “nonfinancial” inventions.

Sen. Colburn’s proposed an amendment has failed. 48-50. The amendment would have ensured that the USPTO will be able to spend the fees it collects and end “fee diversion.”

The Senate will likely complete its vote on the entire reform measure by 5:45 pm ET today.     

The Effects of the America Invents Act on Technological Disclosure

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By Jason Rantanen

(Note: Given the almost certain passage of H.R. 1249 by the Senate, this analysis refers to that version of the pending patent legislation.  It is available here.).

The principal justification for the impending changes to patent law is that they will promote technological progress in the United States (and thus create jobs).  The questions relating to whether this intended result will be realized are numerous, and in this analysis I focus on just one important issue: the effects the America Invents Act may have on the disclosure of technological information.  I conclude that while the new patent laws have the potential to encourage at least one category of disclosures, they may also negatively impact other types of information disclosures.

At least three aspects of the Act are likely to impact the quantity and quality of disclosures: the changes to the novelty rules of 35. U.S.C. § 102, the creation of a prior user defense, and the effective elimination of the best mode requirement.  Changes to the effectiveness of the inequitable conduct doctrine are also likely to have an impact, perhaps good, perhaps bad, an issue I will discuss at a later time.  Below, I offer a preliminary analysis of the effects of these changes with respect to two categories of disclosures: (1) the mandatory disclosures in the patent document itself, and (2) peripheral disclosures, which I define as the dissemination of information that would not occur but for the existence of a patent system.

Changes to Novelty Rules: The shift to a first to file system is central to the America Invents Act.  Along with that change comes a revamped set of novelty rules – a complete rewrite of Section 102.  Gone is 102(a), and the concept that prior art must precede the date of invention.  Gone too is 102(b) and the one-year statutory bar.  Instead, we will soon (i.e.: in eighteen months) have a new 102(a) under which a variety of things (i.e.: patents, printed publications, public uses, invention being on sale, etc.) that predate the patent's effective filing date constitute prior art, a much more potent statutory bar than presently exists.

This new rule comes with a major exception, however: prior art does not include disclosures (which I interpret as referring to any of the categories of prior art discussed in the new 102(a)) made within one year of filing if "the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor." (proposed language of 102(b)(1)(B))  (The section also contains an exception for disclosures by the inventor or another who obtained the subject matter from the inventor). In other words, inventors will have the ability to negate any prior art from the one-year period prior to filing by engaging in public disclosure. 

This provision has the potential to encourage early disclosures of information by the inventor.  Although on the surface it seems to provide no more ability for inventors to engage in disclosures than the existing one-year statutory bar, under which an inventor was free to disclose whatever it wanted for the one-year period prior to filing, it perhaps may result in more disclosures than under the present structure.  A disclosure race may be encouraged.  If, as Gideon Parchomovsky has suggested, inventors involved in a patent race sometimes engage in strategic disclosures to stymie their competitors, the new 102(b)(1)(B) has the potential to fuel this behavior.  Through early disclosure, inventors who are racing to develop a new technology can not only block their rivals from obtaining a patent—because the disclosure would operate as prior art against the rival's patenting attempts—but can also negate any subsequent attempt by the rival to disclose patent-blocking information of equivalent content.  Rather than a race to invent, perhaps this will produce a race to engage in early public disclosures.  Unfortunately, any such effects are likely to be largely limited to inventors who desire to only file in the United States due to the lack of a self-disclosure exception in many countries. 

Creation of a Prior User Defense: Even as the changes to the novelty rules seem to encourage early peripheral disclosures of technological information, at least for US-only inventors, the creation of a prior user defense pushes towards less disclosure, albeit through different mechanisms.  I see the creation of a prior user defense in Section 5 of H.R. 1249 as impacting the disclosure of technological information in two ways: it may reduce the quantity of patent applications filed, and thus the number of mandatory disclosures that accompany those applications, and it has the potential to shift investment in invention away from self-disclosing inventions to those that can be protected through secrecy mechanisms.

The types of inventions that the prior user defense most applies to are those with the capability of being protected through secrecy.  A prior user defense is less important for inventions whose workings are readily understandable once they are placed on the market because these products already represent potentially invalidating prior art; thus, this type of defense has most relevance for non-self disclosing inventions, a category that includes many processes.  Under the current law, inventors who develop non-self disclosing inventions are faced with a difficult choice: maintain the process as a trade secret, and run the risk of being blocked later by an inventor who obtains a patent, or file for a patent and disclose the process to the public.  Both options have significant costs associated with their selection but the patent and disclose option is hardly foreclosed.

A prior user defense reweights this decision in favor of maintaining secrecy because it reduces the risk of being blocked by a later inventor.  The directional effect of this change is to reduce the number of patents that are filed on secret inventions, and thus reduce the number of mandatory disclosures that accompany those patents.

Of course, not everyone accepts that these mandatory disclosures provide useful technological information.  Consider, however, the effects on peripheral disclosures – specifically, the impact on investment in self-disclosing inventions.  The creation of a prior user defense re-calibrates the scale as between secret inventions and self-disclosing inventions.  By making secrecy a more valuable protection strategy for inventors to pursue, inventors are likely to focus their efforts towards the creation of such inventions as opposed to self-disclosing inventions, at least when the social utility that the inventor can monetize is otherwise equal.  But self-disclosing inventions are inherently valuable for the information that they provide to the public and future inventors – a spillover that inventors cannot fully capture.  The directional result may be the creation of fewer of these valuable inventions.

Elimination of Best Most Requirement: Section 15 of H.R. 1249 effectively eliminates the best mode requirement by amending the list of invalidity defense to exclude best mode  While the best mode requirement remains in 35. U.S.C. 112, and thus theoretically could be used by a patent examiner to reject an application, failure to disclose best mode may also not be a basis for holding a patent unenforceable – i.e.: no inequitable conduct on this ground. 

Although the best mode requirement has been subjected to substantial criticism on the grounds that it represents a trap for the unwary independent inventor while being wholly ineffective for disclosure purposes, the actual impact of the abolition of this requirement may be far broader than expected.  From a directional standpoint, the only effect of this change is to weaken the mandatory disclosure obligations imposed on the applicant, and thus a decrease in the quality of individual disclosures should be predicted.  How great a decrease, and whether the elimination of this requirement will result in more disclosure-providing applications being filed, will be an area to monitor.

 

First Change: 15% Fee Increase

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Most of the provisions of the Leahy-Smith Act will take some time to be effective. Thus, for instance, the first-to-file regime will only apply to patent applications with an “effective filing date” that is 18-months from enactment.

One provision that will have an almost immediate effect is the 15% surcharge on USPTO fees as does the new $4,800 option for prioritized examination. Those provisions state that they “shall take effect on the date that is 10 days after the date of the enactment of this Act.” The new micro entity status (75% reduction in fees) appears to be poised to begin upon enactment.

Patent Reform Passage Likely Today

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The Senate has scheduled to vote on final passage of H.R. 1249 for 4 p.m. (ET) today.

A handful of amendments to the bill have been proposed. However, none of them are likely to be approved. President Obama will be speaking to a joint session of Congress later this evening.

Sen. Coburn has proposed an amendment to absolutely prohibit fee diversion — allowing the USPTO to spend the fees it collects.

H.R. 1249 includes a provision that would retroactively lengthen the deadline for applying for a patent term extension.  Sen. Sessions has proposed an amendment stripping that provision from the bill. This particular provision of the reform has no other purpose than to reinstate the The Medicine Company’s (MDCO’s) patent covering its Angiomax drug.  The law firm WilmerHale is on the hook for substantial malpractice damages due to the filing debacle. These two firms have spent around $20 million lobbying Congress on this issue.

Sen. Cantwell has proposed separate amendments — The first would eliminate the the business method patent ‘transitional program.’  Failing that, a separate amendment would limit the scope of the program only to “patents claiming abstract business methods” and not to patents covering “technological” or “nonfinancial” inventions.

Sen. Paul has proposed an amendment to include the statement that “It is the sense of Congress that Secretary of the Treasury Timothy Geithner no longer holds the confidence of Congress or of the people of the United States.”

Sen. Johnson proposed an amendment to limit all regulatory action by any federal agency until the US unemployment rate drops to 7.7%.  

Patently-O Bits & Bytes by Lawrence Higgins

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U.S. IP Brokers: No Ethical Regulations and No Standards

  • In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

  • Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

  • Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

    No first use of software patents against companies with less than 25 people.

    Is this a good idea and could it possibly work? [Link]

Patent Jobs:

  • Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
  • The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
  • The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
  • Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

U.S. IP Brokers: No Ethical Regulations and No Standards

  • In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

  • Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

  • Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

    No first use of software patents against companies with less than 25 people.

    Is this a good idea and could it possibly work? [Link]

Patent Jobs:

  • Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
  • The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
  • The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
  • Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]

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