The typical office action rejection comes with a three month timeline, extendible for another three months with payment of a fee. The fee escalates for each month of delay.
- $220 – One Month Delay
- $640 – Two Months Delay
- $1,480 – Three Months Delay
After three months, the case is deemed abandoned and can only be revived based upon exceptional circumstances.
Here is my question: How do you decide who pays the fees?
Big news today. The WTO has finally reached an agreement on vaccine waivers. I would say that the most important new development is that the agreement waives the “predominantly for the supply of the domestic market” provision in TRIPS Art. 31(f), so that nations that take advantage of this new WTO waiver may export their vaccines.
One could imagine this agreement setting up an interesting question for the U.S. courts down the line. Under Impression Prods. v. Lexmark Int’l., 137 S. Ct. 1523, 1535 (2017) we now have international exhaustion. That is to say, a lawful sale by the patentee anywhere in the world exhausts the U.S. patent rights.
If India manufactures vaccine in contravention of Biontech’s patent rights—even under the new WTO agreement—it still must pay Biontech “adequate remuneration” (Art. 31(h)), although the agreement (3(d)) allows that “[d]etermination of adequate remuneration under Article 31(h) may take account of the humanitarian and not-for-profit purpose of specific vaccine distribution programs.”
So, can Pfizer still use the U.S. patents to exclude those doses from the U.S. market? Or does the “adequate remuneration” that India has paid to Biontech for every unit of vaccine manufactured for export mean that Biontech’s U.S. patent rights are exhausted?
Any payment exhausts an item.
I think though, that your angle is slightly different in that the item sold was not the patent holder’s.
In this sense, the patent holder did not place the item in the stream of commerce.
The payment then is not a purchase, but rather, it would be more helpful to consider it a penalty.
Importation into a patent-protected sovereign may thus still need be addressed (note: this may be addressed in your link, but I have not ventured there yet).
“The payment then is not a purchase, but rather, it would be more helpful to consider it a penalty.” Bingo, key statement. Deception is a legitimate practice in nature, much evidence of it. Statistically, there are always a fraction who won’t see it, until the character of the payment is considered. WTO basically imposes itself on two parties, with unsolicited counteroffers to offers which havn’t yet been made, in a sense. Its an offer to an otherwise-would-be Plaintiff, to handle things differently than had they selected the other conventional choice. Sometimes the parties might find it beneficial to heed the suggestions of the third party. Personally I don’t care for the notion of anyone meddling in my affairs. What are the choices for throwing off an unwanted transgressor ? Standing mute won’t work.
I would not characterize “deception” as a fair business practice.
Maybe you were going for “emulation”…?
Fair is equity, and equity is fair. Wake up McFly…. deception in business practices is as ancient as the foundations of ancient Babylon ! The art of trickery ! Inventions, on the other hand, are concrete, relatively. So, much of the show’s theatrics have been boringly focused on how to apply trickery to private propertly law, IP being a mere subfraction of the bundle. easy stuff. Attacking venue choice and all the other bullcrap, just veiled attacks on personal property. When the good lawyers defend patent property rights, they are also defending their own and posterities rights ! Lets write arguments that make Elon and Bill create a side-show….. I’d prefer a slide show, but….
Lol / you telling me to wake up as you doze through one of the main portions of Trademark Law — granted, as an agent, you may well simply lack the larger exposure.
:) What used to irk me a little, was all the trademark slander out there, so ubiquitous ! I got over it, figuring some entities are more serious about jealously guarding their IP jewels than others. Sometimes its fun to go back and look at the Hanseatic union, from which our modern conceptions of equity derive, then understand, how the Admiral used deception to bring his law ashore ! Summary judgements on writs of assistance, star chambers…. History repeats, just like what is going on now with the concept of “Danzig Corridor”, except, only the names have changed. Same pieces of land, same principles, different actors. yawn.
Thank you for the historical references – reading up on those was enjoyable.
Yer a little weeeenie
I would beg to differ in regards to size there…
WTO basically imposes itself on two parties, with unsolicited counteroffers to offers which havn’t yet been made, in a sense.
Just to be clear, the WTO does not impose compulsory licenses. Various WTO member states can impose compulsory licenses, but the WTO is not part of that transaction.
Thanks 12’s. I was looking at the current proposed “vaccine waivers”, which apparently nobody finds attractive other than the propositionists. I see it in the context of a camel nose under a tent wall, inasmuch as “covid vaccines” are admittedly not vaccines, so expanding the concept of interjecting a 3rd parties propositions, beyond “vaccines” is already in the works. “Where does it go? The good Lord only knows” – Billy Joe Shaver
Chrissy,
“12” is Greg DeLassus’s nom de plume. A bit of a word of warning on COVID related items: you will not get a straight (or complete) answer from Greg. He has a bit of cognitive dissonance as his professional nature (related to a Big Pharma world view) clashes with his political views (full blown Liberal Left).
It is ok that you call me “chrissy” or whatever you choose. If your mind is ever around long enough to mature, it could be possible that you might at some point begin to understand that name-calling reflects more about the caller, than the callee.
I don’t care if “dozens” is Greg, or Linda, or Charlie since the messenger is not as important as the message. I’ve seen highly credentialed people “fired” a few times, and have known more than “dozens” of ppl with no credentials, commanding teams of engineers and lawyers, & cet. I’d bet a couple PhD engineers even signed off on the Tacoma Narrow’s bridge.
Its about Love my friend, and if dozens writes something, I appreciate it, even if I choose to ignore it maybe.
La la la, keep on having your fun, it can be therapeutic I suppose, and if you calling me names helps you somehow to “feel better” , then I’m glad for the opportunity to have helped you. :)
Just hope Stalin doesn’t come back, because if he does, I have a feeling that “no more Mr. Nice guy” might become a temporary zeitgeist. We’re due for a good purge anyway.
Be nice…
“It is ok that you call me “chrissy” or whatever you choose. If your mind is ever around long enough to mature, it could be possible that you might at some point begin to understand that name-calling reflects more about the caller, than the callee.”
LOL – I have already explained that growing up, “Chrissy” is what we called my brother Christopher.
Lighten up Francis – you are seeing “1nsult” where none exists. Take it as the playful manner in which it is delivered.
“I don’t care if “dozens” is Greg, or Linda, or Charlie since the messenger is not as important as the message”
Meh – only sometimes. It does help though if you are going to make a habit of posting (especially in interacting with others), to note predilections and such.
For example, “Greg” is an arse, who likes to pretend that he knows far more than he does, but also demands civility – even when it is undeserved, and worse, he sees INcivility when he is being merely corrected. His “umbrage” has resulted in his claiming that he uses an add-in app that blocks posts from the likes of yours truly and Malcolm (The Prophet to you), and yet, Greg — as Dozens — posted a hard hyperlink to a comment that supposedly he cannot see.
Also, it is worthwhile to note that Greg has a Big Pharma bias. Being observant on such (as opposed to only paying attention to the words of a post is indeed helpful.
Knowing when someone is full of B$ really does help – again – if you are going to be a repeat poster.
By the by, I DO hope that you will be a repeat poster. I most often enjoy your word play.
As for “Be nice…”
Meh – that’s over-rated. I much prefer “Be direct.”
Also, I do very much believe in an John Maynard Keynes “Words ought to be a little wild, as they are an as sault on the unthinking.”
Why in the world would I give up an advantage to task the unthinking? Just to be “nice?” Sorry, but if you think that, then you are just in the wrong profession.
Lexmark dealt with re-use of toner cartridges containing patented elements and methods. The problem stemmed from Lexmark attempting (via contract) to control a patented product’s use, subsequent to its having been rendered spent. The case tells me that any such contract purporting to control the use of a product once its been spent, is either an invalid or unenforceable.
It seems to me that if company X in India, buys 1mm doses from Pfizer and they are delivered to India, then company X in India is free to import them into the US for sale.
From Pfizer…
This is not about buying from and redistributing.
Another important moving part of the prior WTO drafts that had been released to the public was relaxation of the trade secret laws. Those relaxations are considerably narrowed in this final draft. Paragraph 4 of the latest draft now provides that
In other words, one may not disclose trade secrets to accelerate development of manufacturing capacity, but only to accelerate regulatory approval once a manufacturer is already up and running. Of course, any sovereign has always already had the right to relax trade secret protection data submitted to regulatory authorities under Art. 39(3)’s provisions that “Members shall protect such data against disclosure, except where necessary to protect the public…” (emphasis added).
I have no idea, in practice, how much trade secret data has actually been submitted to the IN, ZA, etc. regulatory authorities by this point. I would suspect that no such data have actually been submitted to any other authorities than EP & US, but I could be wrong about that.
Here are details not behind a pay-wall:
link to ipwatchdog.com
OT, but I am kind of surprised that there has been no post yet around these parts about the recent call from Sen Leahy & al. to do away with terminal disclaimers as a means of resolving ODP issues.
Does anyone know if there have been studies showing how often infringement is established against a CON (with a TD) but not against the parent? In other words, would market outcomes likely be affected by ending TD practice?
What’s the proposed alternative to the use of a terminal disclaimer to “save” a patent with an ODP problem? Nothing?
That is correct. The idea is to make U.S. ODP law more like Canadian ODP law, where you need to get all the claims that you might ever want into the first patent, because there is no second chance.
Is there an expected benefit from such a change besides aligning with Canada?
Sounds needlessly restrictive.
I very much doubt that Sen. Leahy even knows that this would align us with Canada. His goal is simply to make the rules more restrictive. Whether this rule is “needlessly” restrictive is a matter of opinion.
As it happens, I do not favor this rule change. For those who do favor it, however, the idea is to reduce the total number of patents that protect any given pharmaceutical franchise. Those who (mistakenly) believe that U.S. patents are a major driver of U.S. drug prices also believe that such a change in U.S. patent practice will squeeze drug prices down.
lol – shockers that Big Pharma profits do not align with a general Sprint-Left view.
Who would have guessed?
oops – almost forgot: /S
If the idea is to thin out thickets of patents, then excising from the patent statute the category CON would be effective, one might suppose. But given that no other jurisdiction has a CON provision in its statute, and yet every other jurisdiction has thickets, will eliminating the CON be effective, I wonder.
Alternatives? How about the UK solution (4.5 year “acceptance term” capping the chance to file any and all divisionals? Or at the EPO, where there is unlimited opportunity to file divisionals throughout the patent term, but ultra-strict WD and “added matter” examination prevents Applicant from recovering from fundamentally incompetent original drafting.
[N]o other jurisdiction has a CON provision in its statute…
If you mean that no other jurisdiction calls them “continuations,” fair enough. However, the “divisionals” that one files in AU, EP, KR, etc are in no wise meaningfully different than the “continuations” that one files in US. The only major jurisdictions that I know that really have no CON practice are AR & CA.
Alternatives? How about the… EPO, where there is unlimited opportunity to file divisionals throughout the patent term, but ultra-strict WD and “added matter” examination…
Actually, the incredibly lax EP approach regarding double-patenting rather mutes the force of the strict WD standard as a counterincentive against CONs. The fees are the real consideration that usually stops me from filing as many EP DIVs as I file US CONs. Specifically, the fact that one needs to pay maintenance annuities for the DIV as if the DIV had been filed at the same time as the parent makes me think much longer and harder about what value we expect from the DIV.
Absolutely, Greg, but how much does it matter, that the EPO on double patenting is “incredibly lax”? I mean, all those divs, by definition, expire on the same day as the parent.
The point about the strict approach the EPO adopts to WD and added matter is that an FTO opinion written on the basis of the WO-A publication is just as sound for all those divs that the Applicant files throughout the 20 years from the PCT filing date as it is for the original national phase PCT application.
While the fees for an EPO div are indeed punishing, another reason for the relative paucity of their filings is that there is no point in spending all that money.
I definitely agree with your suspicion that the proposed rule change would not likely achieve much by way of affecting pharma prices. The EP has far fewer DIVs than the US, but for all that, drug franchises whose patents are successfully asserted in the U.S. tend also to be successfully asserted in the E.U. & U.K., while patents that fail in Europe tend also to fail here. There just is not much of a reason to believe that limiting CON practice will do much to lower U.S. drug prices.
Leahy being anti-patent (Con’s be the B A D).
Accusations from him with zero proof.
Does anyone know if there have been studies showing how often infringement is established against a CON (with a TD) but not against the parent?
I suppose that a better way to ask this question is how often is a CON with a TD found valid & infringed, but the parent is not? I suspect that the answer is “not very often,” in which case the rule change will have very little practical effect on market outcomes. It would be interesting to know whether anyone has ever actually studied that question—as an empirical matter—however.
“in which case the rule change will have very little practical effect on market outcomes”
Bzzzzzt – wr0ng answer.
eliminating the ability to have Continuations would drastically affect (and very negatively impact) innovation protection.
Were you practicing (at all) during the Tafas case? the attempted power grab by the Office and its Continuations Rules change?
Re several of the above comments, and any realistic legislation, what seems to bother more Congresspersons is not that much about U.S. continuation or divisional practice, since neither normally extends patent terms. Rather, it is about extending drug patent terms with what is called “patent evergreening. ” That is, later-filed applications, with later patent expiration dates, on different formulations, dosages or delivery systems for the same pharmaceuticals, allegedly not applying proper 103 rejections or obviousness-type double patenting rejections in the PTO.
[W]hat seems to bother more Congresspersons is not that much about U.S. continuation or divisional practice…
And yet Sen. Leahy & al. specifically asked about CON practice. Strange thing to do if that is not bothering them all that much.
Greg, good point, and I do wonder if they all really understand that under current patent law continuations normally do not extend patent terms. As for“patent evergreening” that came up several times in C-span Committee hearings I was watching on drug costs and patents.
Yup – as I have already pointed out (funny how Greg does not ‘see’ that, but does see the comment on virtue signaling on the gender thread.
(funny in a sad and pa the t1c manner)
Of what you say were true, then why we do have this and not what you say?
Serious question.
I have seen exactly ZERO Congressmen express your viewpoint.
OT, but I am kind of surprised that there has been no post yet around these parts about the recent call from Sen Leahy & al. to do away with terminal disclaimers as a means of resolving ODP issues.
Does anyone know if there have been studies showing how often infringement is established against a CON (with a TD) but not against the parent? In other words, would market outcomes likely be affected by ending TD practice?
George Carlin filter…
… awaiting moderation.
June 16, 2022 at 8:56 am
OT – but 6, are you buying massively “in the low,” or are you still waiting for a b0tt0m.
Wish I had more cash to drop but yeah I’ll be dropping a good bit here shortly. If we see another massive drop time to put some small low interest leverage on it imo (one firm has 1% interest, easy for any examiner or attorney not lifestyle expensed up to make payments on 10-20k or so).
Did you escape from the Bitcoin pyramid implosion?
To me when comments are turned off on a post, it means that the contents of the post are usually indefensible. The writers cannot defend their positions or their circumstances and their only defense is to claim that their critics are extremists or uncivilized.
I tend to agree with you. As the writer(s), if you are going to post an article in a blog, then anticipate comments. As the writer(s), you don’t have to respond to any of them, but turning off the comments shows you to be incredibly overly-sensitive to criticism.
Personally, I was looking forward to commenting on the article as it was an interesting piece of research. As I have commented many times before, it is the Federal Circuit that is the outlier — not the EDTex or WDTex. This is quote from the Department of Justice’s website (link omitted to avoid comment purgatory):
Mandamus is an extraordinary remedy, which should only be used in exceptional circumstances of peculiar emergency or public importance. LaBuy v. Howes Leather Co., 352 U.S. 249 (1957); United States v. McGarr, 461 F.2d 1 (7th Cir. 1972).
As described in a Patently-O article from November 10, 2020:
Writ of mandamus is “an extraordinary remedy available [only] to correct a clear abuse of discretion or usurpation of judicial power.” Slip. Op. Note here that the standard of “clear abuse of discretion” goes beyond ordinary “abuse of discretion.” As Judge Moore wrote in dissent: “there is no more deferential standard of review than clear abuse of discretion.”
The Federal Circuit is not giving deference to the judge’s findings in these cases. Rather, they are re-interpreting the facts to their own liking, which quite frequently leads to mandamus being granted. The article notes that “In the regional circuits, mandamus decisions on transfer of venue are almost nonexistent. (From 2019 through 2021, there was only one, total.)” This is a direct result of the proper standard being applied. A very highly-deferential standard is intended to discourage these types of petitions. Otherwise, appellate courts would be hearing these petitions all the time. However, the Federal Circuit has a clear pro-Big Tech (which is pro-infringer) agenda, which leads to many of these cases being transferred to places like NDCal, which is also very pro-Big Tech (and pro-infringer as a result).
However, I have a problem with this part of the article:
What should be done to alleviate these concerns? For starters, the Federal Circuit should reconsider its needlessly complex, unpredictable—and arguably meaningless—choice of law regime. (We tend to think that most lawyers and judges treat the Federal Circuit’s § 1404(a) mandamus decisions as binding, even if they are not as a matter of formal doctrine.) Instead, the Federal Circuit should simply apply its own precedent to all federal issues that arise in patent cases.
In matters not dealing specifically with patent law (i.e., procedural matters), the Federal Circuit must apply the law of the Circuit Court. This is very basic stuff. The Federal Circuit is a patent court and they defer to the Circuit Courts on non-patent matters.
I have a problem with this part of the article:… the Federal Circuit should simply apply its own precedent to all federal issues that arise in patent cases.
Agreed. The existing rule—that matters not particular to patent law are governed by regional circuit law—is a good one. There is no reason why a district judge should have to keep two separate standards in mind—one for patent cases and one for everything else—when deciding (e.g.) when witness may be treated as hostile, or when Rule 11 should be invoked (etc).
The thread in question makes much ado about nothing. As they note, the mandamuses in question are actually being decided according to CA5 law anyway, so the fact that few of the CAFC orders are precedential scarcely matters. Even the “precedential” CAFC opinions would be swept away in an instant if the CA5 were to reconsider its standards en banc.
Meanwhile, if the complaint is that there is a shortage of precedential opinions, I can cheerfully agree, but there the problem is scarcely unique to mandamus questions. I think that the default rule should be that an opinion be precedential. It should require affirmative steps to make it non-precedential. The CAFC’s current rules make most opinions—nit just mandamus orders—non-precedential, and this is no way to run a common-law justice system. If the rule you are imposing is good enough for party A, it should be good enough for parties B, C, D, etc. There can be a value in making some cases non-precedential, but those should be the exception, not (please pardon the pun) the rule.
“As they note, the mandamuses in question are actually being decided according to CA5 law anyway”
Huh?
I thought that this very much was an opinion issue.
oops on that auto-correct:
opinion ==> open
[W]hen comments are turned off on a post, it means that the contents of the post are usually indefensible.
Why are you complaining? Are you not one of those who favor the downfall of 47 U.S.C. §230? This is the future that you want, no?
If §230 goes, then the logical result is that comments sections will be shut down. If you do not like that outcome, why are you advocating for a change in law that will make such inevitable?
“Why are you complaining? Are you not one of those who favor the downfall of 47 U.S.C. §230? This is the future that you want, no?”
LOL – NO Greg, that is not the “future,” and it certainly does not reflect the underlying issue.
You seem to have a very heavy bias clouding your ability to even appreciate why Section 230 would be AT issue.
The only reason for shutting down comments in view of what “Section 230 may portend” is IF – in fact – the application of editing controls is done to promote a certain narrative.
Actually, cutting out comments would give a VERY different message than the one that has been routinely ascribed to here (that a pre-ordained narrative is NOT being pursued).
If one is “reduced to cutting out comments,” then this is an admission against interests. This would impugn the integrity of the blog as (let me check – yup, still there):
“America’s leading patent law source”
Why would any attorney look to a source known (or admitted) not to be objective?
The answer to speech one does not like is NOT less speech – or more control of what speech is permitted.
Greg, §230 is being abused to defame people. A neutral curation policy with 230 is fine. A biased curation policy with 230 is not.
As an example, 230 with Musk’s public algorithm is fine.
A neutral curation policy with 230 is fine. A biased curation policy with 230 is not.
This is a dodge, not a response. At the end of the day, you either want to keep the liability shield of §230 in place, or you do not.
Current market forces result in the outcome that you consider “biased.” Market forces can change, of course, but the baseline presumption has to be that the “biased” outcomes will continue indefinitely.
So, with that in mind, should §230 remain in place or not? I say yes, but I gather that you disagree.
If one removes the liability shield of §230, however, then you make a blog host potentially legally liable for the conduct of people who comment on that blog. The logical response to that new liability structure is to disable comments on your blog (why risk the liability exposure?).
Count filtered already…. or maybe a George Carlin filter…
Your comment is awaiting moderation.
June 15, 2022 at 3:26 pm
“This is a dodge, not a response”
Well that is utter b0ll 0cks, Greg.
“Current market forces result in the outcome that you consider “biased.””
No.
Not even close.
This has nothing to do with current market forces.
Please open your eyes (yeah, I “get” that this may mean that you will have to recognize the level of your Liberal Left bias).
I haven’t checked nor seen anything on it, but have you heard what’s the status of any class-actions which may have been filed around 230 and social media ? I’d reckon many dismissed for lack of standing, no show of damages or just failing to state the claim “correctly”. But I don’t know. It seems by now there should be some class, who feels aggrieved by restrictive censorcerors. H___, everybody seems to be “feeling” so much these days, why not.
I bet if a group grasped control over enough material which shapes the biases of future generations, they could make the masses like or hate anyone they choose. Its too much power, and there is no other end path except extreme mischief unless its checked.
Propaganda is – and always will be – the tool of the powerful and would-be powerful.
This is so because propaganda works.
It works because there are Sheeple out there.
The Liberal Left depend on Sheeple – as real critical thinking rips the philosophy of the Liberal Left into pieces.
Words are more powerful than any other weapon. And versatile as well, since their proper wielding can result in anything within the broad spectrum from love to death ! Its a higher-level course ! “Words as Weapons 688” !! Words can do magic ! I always enjoy your writings, and others of course too.
Why leave it to “proper” wielding?
(no snark — given the level of 1984’ing in current society)
Comments like “The Liberal Left depend on Sheeple” illustrate why this blog is better off with no comments.
“It works because there are Sheeple out there.”
You’re at a beginner’s level of understanding of propaganda. But, better than nothing. Spoiler, it works because humans are humans with human psychology, even on top of some people being basically sheeple. This was discovered/confirmed around Freud’s time with the birth of the public relations industry and mainstream advertising (a huge amount of progress in growing those industries happened based on the same principles and discoveries about how humans work). Although it had been in use as long as writing and rhetoric etc. It isn’t only sheeple that are influenced by propaganda. And further, even if it was, the knock on effects of the sheeple being under propaganda has huge effects on the people “thinking rationally/critically” or whatever it is that you think is saving the other people.
[T]his blog is better off with no comments.
Good news. You never need to read them. If you think that the experience is better without the comments, then you can simply refrain from clicking the “show comments” button, and they will remain invisible to you.
First,
BobM – as you no doubt could already figure out how to read the blog without comments, a la Greg’s reminder, your post equates to you not wanting to read particular comments.
In that vein, and with all due respect, F off. Feel free to take your politically blindered (and blinkered) self elsewhere.
Second,
6, ah my friend, it is you that is the novice in regards to propaganda, as the “more advanced” view that you would share is the simpleton’s basic view — the degree of effectiveness is itself NOT universal, nor are the desired effects and thus – the dependency on a LACK of critical minds.
As I have already pointed out, this is covered in well-documented detail in the many hours of the Dr. James Lindsay podcasts. Clearly, you still have much to learn.
Greg, it was not a dodge.
A blog can curative without bias by implementing objective standards for content on the blog. I really don’t get why you don’t understand my position.
I am against §230 remaining in its current form. I think it needs to be amended to protect only from defamation lawsuits when the content curation is unbiased. I think I gave you a concrete example in the other post, which did reference Fox News. But it illustrated how biased curation coupled with §230 is enabling the social media sites to defame people.
Greg continues to gaslight (for him, there is NO presence of politics).
§230… needs to be amended to protect only from defamation lawsuits when the content curation is unbiased.
Uh huh, sure, “unbiased“…
Uh huh, sure, Greg “I Use My Real Name” DeLassus (aka Dozens) does not read anything written by Malcolm or anon (not sure how then he know how to hyperlink to it)….
Musk’s public algorithm is fine.
I am doubtful that Musk’s ideas about curation will long endure even on Twitter. It is preposterous to imagine that Musk’s algorithms will extend a centimeter beyond fora that Musk directly controls. If Musk’s algorithms could achieve a more profitable operation, they would already be operational across the internet.
We haven’t seen Musk’s idea implemented yet.
In fact, what we have seen is power hungry CEOs with political bias delight in biased curation.
My prediction: if Musk buys Twitter, Twitter will zoom in popularity and FB and Google will be in danger of losing their market share.
Both FB and Google are at risk of losing their companies because of biased curation.