Stephen Nipper’s excellent intellectual property blog is getting a makover and a new name. Its new home is www.inventblog.com. Nice work Stephen!
Snippets
SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (July 2004):
1. Brian Harris, Caveat Sender: Unintentional Disclosure in Electronic Documents.
2. Thomas Fairhall and Paul Churilla, The Intersection of Trade Secrets and Patent Law: The Prior User Rights Statute, 35 U.S.C. 273.
3. Andrew Williams, Electronic Laboratory Notebooks: Improved Data Storage or Increased Burden.
4. Eric Moran, Festo Extended: Honeywell v. Hamilton Sundstrand.
Those interested can request a pdf version of the publication by emailing the editor.
Finding a Patent Attorney
The US Patent Office keeps track of all registered patent attorneys. (Patent Attorney Listing). Using this data, we compiled a rank based on the number of patent attorneys in various cities. Washington DC remains the patent attorney stronghold, although its number one rank may be fading as proximity to the PTO becomes less and less useful. New York and Chicago have their fair share of patent attorneys. LA, on the other hand, is at number nine in terms of the number of patent attorneys even though it has the second largest population of any city in the U.S.
Rank/City
1. Washington DC
2. New York NY
3. Chicago IL
4. Houston TX
5. Boston MA
6. Minneapolis MN
7. Palo Alto CA
8. San Diego CA
9. Los Angeles CA
10. Dallas TX
11. Philadelphia PA
12. San Francisco CA
13. Austin TX
14. Atlanta GA
15. Alexandria VA
Tim Uy of oncloud8 has developed a simple tool for finding a patent attorney in your area. (Patent Attorney Locator). Tim’s tool probably works best for those who want to hire a patent attorney that works right next to where you live.
Comments on hiring a patent attorney: Although there are some times when proximity is helpful, it may not be in your best interest to hire a patent attorney just because he or she is located in your zipcode. Modern technology (telephone, fax, e-mail, internet) allows for easy communication and transfer of documents. Just this past week, for example, I worked with inventors or companies located in India, California, Florida, Connecticut, Indiana, and Illinois!
Assignment Recordation Delay
A recent article in IP Today highlights the fact that recordation of assignments can take around six months at the patent office. Some patentees enjoy the delay because it allows them to “hide the ball” from competitors for a few extra months. Both Faxed and Electronically Submitted assignments are reportedly recorded much more quickly.
Link: Instructions for submitting assignments by fax.
Toothbrush Wars
Philips, maker of Sonicare electric toothbrush has reportedly sued Gillette, maker of the Oral-B electric toothbrush.
Gillette, which plans to launch its Oral-B Sonic Complete toothbrush in August — with a price of $99.99 to $119.99 — denied the patent infringement charge. Reuters.
Landes and Posner’s Newest Law & Economics Book
Two of the great University of Chicago professors have teamed up again. Professor Bill Landes and 7th Circuit Judge Richard Posner’s newest work is titled The Political Economy of Intellectual Property Law.
This monograph seeks to explain the expansion of intellectual property law over the last half century, focusing in particular on the rapid growth that began with the 1976 Copyright Act. In so doing, it explores a fundamental, unresolved issue in the theory of regulation: why some kinds of regulation have increased dramatically over this period while others have virtually disappeared.
Read about Posner’s recent stint as a patent law judge here.
Willful Patent Infringement: en banc appeal
UPDATE: On September 13, the Federal Circuit issued its opinion, read the full case review here: Knorr-Bremse v. Dana .
Original: The Federal Circuit recently heard en banc oral arguments in the willful patent infringement appeal Knorr-Bremse v. Dana Corporation. John Marshall Professor Janice Mueller’s new article discusses this case and the dilemmas faced by litigants hoping to defend against willfulness charges by disclosing privileged advice of counsel.
Subject to virtually unanimous condemnation is the Federal Circuit’s “adverse inference” rule, which forces a party accused of willful infringement to choose between two unpalatable options: (i) disclosing privileged advice of counsel to mount a willfulness defense, or (ii) not disclosing such information and being subjected to an adverse inference that an exculpatory opinion was not or could not be obtained.
The appellate decision is expected this quarter.
“Willful Infringement and the Federal Circuit’s Pending En Banc Decision in Knorr-Bremse v. Dana Corp.,” 3 J. Marshall Rev. Intellectual Prop. L. 218 (Spring 2004), available at http://www.jmls.edu/ripl/vol3/issue2/mueller.pdf.
Evans and Dudas Discuss Patent Protection with Chinese Officials
Jon Dudas, Acting Director of the USPTO, recently returned from a trip to China with Commerce Secretary Don Evans. Their mission was to “urge China to ratify and implement the World Intellectual Property Organization (WIPO) treaties in the near terms, provide draft criminal judicial interpretations to the United States for review and facilitate enforcement against end user software piracy by declaring that it harms the public interest.”
Dudas commented:
[The] message to the Chinese about the importance of IP protection provided a strong impetus for the productive discussions we had. Thanks to the leadership of Secretary Evans, I believe we made solid progress and have forged new cooperatives ties with China in the area of intellectual property protection and enforcement.
Later this year, former Patent Office Director Q. Todd Dickinson will lead a delegation of professionals specializing in intellectual property law and public policy to china to participate in bilateral exchanges with their professional counterparts in China, under the auspices of People to People Ambassador Programs. I was honored to be nominated for the delegation; unfortunately I have a previously scheduled commitment.
IPO responds to the FTC Patent Law Report
In October 2003, the FTC released a patent law report that continues to generate activity. Most recently, the Intellectual Property Owners Association (IPO) released its response.
IPO agrees with many of the FTC recommendations directed to improving the quality of patents. IPO strongly believes that improving the quality and timeliness of patents is critical to achieving the proper balance of rights between patent owners and the public.… IPO does not, however believe that the courts or USPTO should actively attempt to balance patent law with economic policy through strategies such as limiting the scope of patentable subject matter or denying the grant or limiting enforcement of a patent. [S]uch an attempt would profoundly undercut the foundation of the patent system. Further, efforts to balance patent and antitrust policy based on today’s technologies will likely cause unintended and adverse economic consequences today and in the future.
Specifically, the IPO takes the following positions:
1. IPO supports enacting legislation to create a new administrative procedure to allow post-grant review, and opposition to, patents.
2. IPO does not support lowering the evidentiary standards for evaluating the validity of patents.
3. IPO does not support changing the statutory standard of non-obviousness.
4. IPO agrees with FTC that we must improve the quality of patents by providing USPTO with adequate funding and no fee diversion.
5. IPO agrees with FTC that Congress should adopt USPTO’s 21st Century Strategic Plan, including expanding the “second pair of eyes” review, but does not support the proposed change to Rule 105.
6. IPO does not support the FTC recommendation concerning considering potential harm to competition in deciding upon the scope of patentable subject matter.
7. IPO endorses the 18 month publication of all patent applications recommendation.
8. IPO supports expansion of prior user rights.
9. IPO supports changes to the notice requirement as a predicate for willfulness determinations.
10. IPO does not support expanding economic considerations in patent law decision making.
Earlier this year, the AIPLA gave its corresponding response (link).
Nipper had the scoop.
EFF hopes to “bust” these 10 patents
The EFF has released the list of patents that they plan to challenge as part of their “patent busting project.” According to Wired,
As part of its Patent Busting Project, the EFF in mid-June began soliciting the public for submissions of patents that were both potentially invalid and used to stifle online innovation. The organization received nearly 200 suggestions, 10 of which it will now formally ask the U.S. Patent and Trademark Office to re-examine.
Acacia Technologies tops the list of offenders. Recently, Acacia sued a number of media technology companies for infringement of its patents that allegedly cover digital streaming technology. (Read more about Acacia here).
Patent Lawyer
The Association of Patent Law Firms (APLF) recently published the inaugural edition of The Patent Lawyer. The magazine is available online (PDF) and has the rare combination of interesting topics and excellent writing.
This edition includes articles on patenting issues related to nanotechnology inventions; reexamination strategies; as well as EU piracy issues. There is also a profile article on the firm, McDonnell Boehnen Hulbert & Berghoff LLP (MBHB). The four page article, entitled “A Path of Its Own: Chicago’s McDonnell Boehnen Rewrote the Management Rules,” chronicles MBHB’s eight year rise from a small start-up firm to a major player in intellectual property legal services. (pp. 10-13).
Does your company have intellectual property issues and need the advice of a patent attorney?
How pharmaceutical patent rights affect access to medicine in poor nations
A new article published in Health Affairs studies the “relationship between patents and access to essential medicines.” Cambridge researcher Amir Attaran found that patenting is rare for the vast majority of products on the World Health Organization’s (WHO) list of essential medicines.
Only seventeen essential medicines are patentable, although usually not actually patented, so that overall patent incidence is low (1.4 percent) and concentrated in larger markets.
Attaran argues that his results show that the policy dialogue relating to patent protection in developing countries is often based on mistaken premises.
[P]atents very infrequently block access to generic versions of essential medicines. For the sixty-five countries we studied, where the majority of people in the developing world live, patents and patent applications exist for essential medicines 1.4 percent of the time (300 instances out of 20,735 combinations of essential medicines and countries). However, this overstates the frequency with which patents totally block access to generics, because it is only a subset of patents that are absolutely fundamental and that generic manufacturers can never circumvent (normally, a patent on the active pharmaceutical ingredient, and for medicines containing two such ingredients, a patent on their co-formulation). By this standard, there are 186 fundamental patents or applications, or 0.9 percent of the total. Thus, there are no patent barriers to accessing generic essential medicines in 98.6 percent of the cases we studied, which we stress is an overall probability and not prognostic in any specific case.
Update from Amir Attaran: I think you must also mention that with only 17 patents at issue, the pharma industry lacks vision on how to remove the apprehension that patents have negatively affected and are negatively affecting patients’ ability to access medicines in these few cases. Most of the patented meds are for AIDS, and so they attract disproportionate attention.
Microsoft patents human circuit
Microsoft has patented a network that uses the “body of a living creature” as a data bus and power supply for communication between two electronic devices. (U.S. Patent 6,754,472).
According to the abstract,
Methods and apparatus for distributing power and data to devices coupled to the human body are described. The human body is used as a conductive medium, e.g., a bus, over which power and/or data is distributed.
The patent includes the use of pulsed AC or DC to power miniature wearable devices.
100 Hz signal may be used to power a first device while a 150 Hz signal may be used to power a second device. Digital data and/or other information signals, e.g., audio signals, can be modulated on the power signal using frequency and/or amplitude modulation techniques.
For instance, a miniature speaker may be located within an earring while an audio input microphone may be attached to a bracelet.
(The drawing is from the face of the patent).
ProstaScint (R) Patent Noninfringement Holding Reversed
Goldenberg and Immunomedics, Inc v. Cytogen, Inc. and C.R. Bard, Inc. (Fed. Cir. June 23, 2004)
(GAJARSA) In an appeal of a summary judgment of noninfringement, the Federal Circuit upheld the district court’s claim construction and summary judgment of no literal infringement. However, the appellate panel reversed the lower court’s summary judgment of noninfringement based on the doctrine of equivalents (DOE).
The patent at suit issued in 1984 and involved tumor localization and antigen therapy. (U.S. Patent 4,460,559). Cytogen and Bard’s ProstaScint (R) products (used to image the extent and location of prostate cancer) allegedly infringe this and other patents held by the plaintiffs.
Holding:
Summary judgment of noninfringement under the doctrine of equivalents is appropriate if “no reasonable jury could determine two elements to be equivalent.”
The district court explained that, under Dey, statements from the ’744 patent could not create prosecution history estoppel for the ’559 patent. For the same reasons stated above, we agree with the district court’s conclusion on this point. Despite the lack of estoppel, however, the district court still found that Immunomedics “had not met the requirements of the ‘function-way-result’ test.”
The district court appears to have viewed the world of antigens as consisting of two distinct categories—those that are intracellular and those that are on the cell surface—and concluded that antigens falling in different halves could not be equivalents as a matter of law. Transmembrane antigens, however, appear to be a category of their own, and are not susceptible to the black and white categorization made by the district court. As a “grey” category, transmembrane antigens are not addressed by the ’559 patent or its prosecution history and might be equivalents to either of the categories identified by the district court if such a finding was made. See generally Warner-Jenkinson, 520 U.S. at 40.Thus, the court remanded for further proceedings.
In dissent, J PROST would have allowed the claim term “intracellular marker substance” to encompass portions of an antigen located inside a cell.
Introduction to Nanotechnology
Attorneys Dennis Kennedy and Kevin Buckley have written an introduction to nanotechnology. (PDF). Although their paper is specifically directed at Missourians, it is a short, easy read that would be useful for anyone wanting a brief introduction to the technology.
Google’s Amended SEC Filing Discusses Overture Lawsuit
Google has amended its SEC filings and has commented on Yahoo’s Overture patent infringement suit. (U.S. Patent 6,269,361).
Overture Services (now owned by Yahoo) has sued the [Google], claiming that the Google AdWords program infringes certain claims of an Overture Services patent. It also claims that the patent relates to an Overture Services own bid-for-ad placement business model and its pay-for-performance technologies. The Company is currently litigating this case. If Overture Services wins, it may significantly limit the Company’s ability to use the AdWords program, and the Company also may be required to pay damages.
Google plans to continue to “rigorously defend this lawsuit.”
Overture’s patent, filed in 1999, covers a “system and method for influencing a position on a search result list generated by a computer network search engine.”
Martin Schwimmer discusses Google’s potential trademark problems here. If “googling” becomes a generic term, then it would lose its power as a trademark.
Lerner Jaffe Book
Professors Lerner and Jaffe’s new book How our Broken Patent System is Endangering Innovation and Progress and What to do about It is due out this Fall.
In the book, Lerner and Jaffe will make the case that the approval rate for patent applications is absolutely too high. “In many cases it appears that a determined patentee can get almost any award he seeks,” the authors say.
(Synopsis)
Heat Tolerant Broccoli Patent
Robert Barham and David Joynt are making good on their patented heat tolerant broccoli. Their innovation may revolutionize the broccoli business. (U.S. Patent 6,294,715).
Broccoli grows best in temperatures between 40 degrees and 70 degrees. Joynt and Barham said their variety holds up into the high 90s, tolerating heat spikes of up to 112 degrees. AP.
The patentees have apparently made available to the public without restriction a deposit of at least 2500 seeds of the patented broccoli 393-2-19 with the American Type Culture Collection (ATCC), Rockville, Md. 20852 which has been assigned ATCC number 203533.
Acacia Streaming Video Lawsuit
According to reports, Acacia has sued several cable and satellite providers for infringing its patents relating to streaming video with compression. (E.g., U.S. Patent 5,132,992).
Acacia is seeking licensing fees of $1.25 per home per year for cable subscribers to video-on-demand services; $1 per home per year for digital cable subscribers and 50 cents per home per year for analog cable subscribers.
Link. Acacia already has ongoing suits with dozens of porn website providers alleging infringement of the same patents. More recently, EFF has identified Acacia’s patents in its list of “problem” patents.
Nokia – NTP settle over BlackBerry Patent Infringement
ZD Net is reporting that Nokia has obtained a licensing agreement from NTP for use of patents that allegedly cover RIM’s BlackBerry device. BlackBerry enabled Nokia devices should be available in the U.S. “in two to three months.”
The patent infringement case between RIM and NTP is ongoing. The Federal Circuit recently heard oral arguments in an appeal of the district court’s patent infringement finding. A ruling is expected within the next several weeks. Read more about the lawsuit here.
Although the terms of the agreement have not been made public, the license gives Nokia two big advantages. First, it allows Nokia to hedge its bets against the outcome of the RIM lawsuit. Second, and perhaps more important, Nokia is setting itself up to get a “first-mover” advantage over other carriers.
“There is a reasonable likelihood that they might not get all the patents thrown out,” said patent lawyer Brad Hulbert of McDonnell, Boehnen, Hulbert & Berghoff LLP in Chicago. “It’s better to pay now than pay more later.” (Bloomberg)
(Drawing is from RIM’s U.S. Design Patent D479,233).