Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

Is it really a First-to-File Patent System?

  • With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.

    102(b) (1) reads:

    • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
  1. The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.

Judge T. John Ward, Sr. Steps Down

  • Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]

WIPO's Statistical Country Profiles Tool

  • Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" – domestic filings; "non-resident" – filings coming in from other countries; "abroad" – filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings – defined as the sum of resident and abroad filings – with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]

Upcoming Events:

  • 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]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [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. [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]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes

Patent Jobs

  • Kessler Topaz Meltzer & Check is seeking an IP litigation associate with 4-6 years of experience. [Link]
  • Amin Talati is searching for a patent attorney with 10+ years of experience to work at their Chicago office. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a background in electrical engineering. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a chemical background. [Link]
  • Hope Baldauff Hartman is searching for patent agents and patent attorneys with a minimum 4 years of experience to work in their Atlanta office. [Link]
  • Howard & Howard Attorneys is looking for an IP associates with 4-8 years of experience and a EE or chemical background. [Link]
  • Axiom is seeking patent agents and patent attorneys to work remotely. [Link]
  • Fairchild Semiconductor is searching an IP attorney with at least 3 years of experience and an EE background. [Link]
  • Abel Law Group is seeking a patent attorney with 4+ years of experience and a chemical and/or ceramic background. [Link]
  • Choate, Hall & Stewart is looking for biologists, chemists and materials scientists to join their IP practice. [Link]
  • Holland & Hart is searching for an administrative IP specialist/Secretary. [Link]
  • Maginot, Moore & Beck is seeking patent attorneys with 1-5 years of experience and an EE background. [Link]
  • Akerman Senterfitt is searching for a Chemical IP associate with 1-3 years of experience. [Link]
  • Rutan & Tucker is looking for an experienced patent prosecution paralegal. [Link]
  • The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their D.C. office. [Link]
  • The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their Silicon Valley office. [Link]
  • The Ware Firm is searching for recent Federal Circuit Clerk with a technical background. [Link]
  • The Ware Firm is seeking a patent agent/technologist with a technical background. [Link]
  • DTS is looking for a patent searcher with 3+ years of searching and/or patent experience. [Link]

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent

Patent Jobs

  • Kessler Topaz Meltzer & Check is seeking an IP litigation associate with 4-6 years of experience. [Link]
  • Amin Talati is searching for a patent attorney with 10+ years of experience to work at their Chicago office. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a background in electrical engineering. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a chemical background. [Link]
  • Hope Baldauff Hartman is searching for patent agents and patent attorneys with a minimum 4 years of experience to work in their Atlanta office. [Link]
  • Howard & Howard Attorneys is looking for an IP associates with 4-8 years of experience and a EE or chemical background. [Link]
  • Axiom is seeking patent agents and patent attorneys to work remotely. [Link]
  • Fairchild Semiconductor is searching an IP attorney with at least 3 years of experience and an EE background. [Link]
  • Abel Law Group is seeking a patent attorney with 4+ years of experience and a chemical and/or ceramic background. [Link]
  • Choate, Hall & Stewart is looking for biologists, chemists and materials scientists to join their IP practice. [Link]
  • Holland & Hart is searching for an administrative IP specialist/Secretary. [Link]
  • Maginot, Moore & Beck is seeking patent attorneys with 1-5 years of experience and an EE background. [Link]
  • Akerman Senterfitt is searching for a Chemical IP associate with 1-3 years of experience. [Link]
  • Rutan & Tucker is looking for an experienced patent prosecution paralegal. [Link]
  • The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their D.C. office. [Link]
  • The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their Silicon Valley office. [Link]
  • The Ware Firm is searching for recent Federal Circuit Clerk with a technical background. [Link]
  • The Ware Firm is seeking a patent agent/technologist with a technical background. [Link]
  • DTS is looking for a patent searcher with 3+ years of searching and/or patent experience. [Link]

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent

Patent Jobs

  • Kessler Topaz Meltzer & Check is seeking an IP litigation associate with 4-6 years of experience. [Link]
  • Amin Talati is searching for a patent attorney with 10+ years of experience to work at their Chicago office. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a background in electrical engineering. [Link]
  • Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a chemical background. [Link]
  • Hope Baldauff Hartman is searching for patent agents and patent attorneys with a minimum 4 years of experience to work in their Atlanta office. [Link]
  • Howard & Howard Attorneys is looking for an IP associates with 4-8 years of experience and a EE or chemical background. [Link]
  • Axiom is seeking patent agents and patent attorneys to work remotely. [Link]
  • Fairchild Semiconductor is searching an IP attorney with at least 3 years of experience and an EE background. [Link]
  • Abel Law Group is seeking a patent attorney with 4+ years of experience and a chemical and/or ceramic background. [Link]
  • Choate, Hall & Stewart is looking for biologists, chemists and materials scientists to join their IP practice. [Link]
  • Holland & Hart is searching for an administrative IP specialist/Secretary. [Link]
  • Maginot, Moore & Beck is seeking patent attorneys with 1-5 years of experience and an EE background. [Link]
  • Akerman Senterfitt is searching for a Chemical IP associate with 1-3 years of experience. [Link]
  • Rutan & Tucker is looking for an experienced patent prosecution paralegal. [Link]
  • The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their D.C. office. [Link]
  • The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their Silicon Valley office. [Link]
  • The Ware Firm is searching for recent Federal Circuit Clerk with a technical background. [Link]
  • The Ware Firm is seeking a patent agent/technologist with a technical background. [Link]
  • DTS is looking for a patent searcher with 3+ years of searching and/or patent experience. [Link]

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

Opening of Franklin Pierce Center for IP

  • UNH Law is proud to announce the official opening on September 30 & October 1 of the Franklin Pierce Center for Intellectual Property with an intellectual property works-in-progress conference featuring presentations by scholars from law schools in the Northeast and alumni of UNH Law. Chief Judge Randall Rader will serve as special guest speaker. Other guest include: Jonathan Dudas, Judge Newman, and Judge Gajarsa. [Link]

Biotech in Ottawa is Booming?

  • Ottawa Life Science Cluster currently home to over 90 companies focused on life science and biotechnology research and innovation. Also, there are over 50 other companies that have a secondary focus in life sciences and biotechnology. Leading the charge for commercialization is the Ottawa Centre for Research and Innovation (OCRI). With the increased commercialization in Ottawa, comes an increase in patent applications in Canada, the US, and beyond. [Link] [Link]

Great Patents!

  • Great Patents: Advanced Strategies For Innovative Growth Companies, is a book that aims to inform executives on how best to use patents to improve their competitiveness. The book has a total of 12 chapters and each chapter is written by an individual in the patent world. The chapters in the book are broken into two categories: Strategies and Valuation. Companies pursue patents to make money, and this book is very useful to help companies discover what they can do with their patents that they may not have previously considered. While the book is aimed at executives and the like, it is also a useful tool for law students and others. Most law students are not familiar with the business world of patents and this book gives a perspective different than what is taught in law schools.
    • About the Author: David Orange is a patent attorney in Washington, DC. He is active in the start-up space as an investor and advisor.

Patent Jobs

  • Goldberg Cohen is seeking an IP associate with 2-5 years of experience. [Link]
  • Womble Carlyle Sandridge & Rice is looking for mechanical patent attorneys with at least 3 years of experience. [Link]
  • Verenium is searching for a patent agent with a minimum of 5 years of experience. [Link]
  • Cleveland Golf/ Srixon is seeking a Sr. patent engineer with a BSME and at least 4 years of experience. [Link]
  • The Michaud-Kinney Group is looking for a legal assistant to work at their Middletown, Connecticut location. [Link]
  • Qualcomm is searching for a US patent attorney or a registered India Patent Attorney/Agent with at least 5 years of experience. [Link]
  • Qualcomm is looking for a patent counsel with 3+ years of patent prosecution experience. [Link]
  • Steptoe & Johnson is seeking associates with a minimum of 4 years of experience in patent litigation and with a technical background. [Link]
  • The Office of the Solicitor at the USPTO is searching for an experienced Patent Attorney. [Link]
  • Dynamics Inc. is seeking a patent attorney with an EE degree, to work at their Pittsburgh location. [Link]

Upcoming Events:

  • 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]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [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. [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

Bits and Bytes,

Opening of Franklin Pierce Center for IP

  • UNH Law is proud to announce the official opening on September 30 & October 1 of the Franklin Pierce Center for Intellectual Property with an intellectual property works-in-progress conference featuring presentations by scholars from law schools in the Northeast and alumni of UNH Law. Chief Judge Randall Rader will serve as special guest speaker. Other guest include: Jonathan Dudas, Judge Newman, and Judge Gajarsa. [Link]

Biotech in Ottawa is Booming?

  • Ottawa Life Science Cluster currently home to over 90 companies focused on life science and biotechnology research and innovation. Also, there are over 50 other companies that have a secondary focus in life sciences and biotechnology. Leading the charge for commercialization is the Ottawa Centre for Research and Innovation (OCRI). With the increased commercialization in Ottawa, comes an increase in patent applications in Canada, the US, and beyond. [Link] [Link]

Great Patents!

  • Great Patents: Advanced Strategies For Innovative Growth Companies, is a book that aims to inform executives on how best to use patents to improve their competitiveness. The book has a total of 12 chapters and each chapter is written by an individual in the patent world. The chapters in the book are broken into two categories: Strategies and Valuation. Companies pursue patents to make money, and this book is very useful to help companies discover what they can do with their patents that they may not have previously considered. While the book is aimed at executives and the like, it is also a useful tool for law students and others. Most law students are not familiar with the business world of patents and this book gives a perspective different than what is taught in law schools.
    • About the Author: David Orange is a patent attorney in Washington, DC. He is active in the start-up space as an investor and advisor.

Patent Jobs

  • Goldberg Cohen is seeking an IP associate with 2-5 years of experience. [Link]
  • Womble Carlyle Sandridge & Rice is looking for mechanical patent attorneys with at least 3 years of experience. [Link]
  • Verenium is searching for a patent agent with a minimum of 5 years of experience. [Link]
  • Cleveland Golf/ Srixon is seeking a Sr. patent engineer with a BSME and at least 4 years of experience. [Link]
  • The Michaud-Kinney Group is looking for a legal assistant to work at their Middletown, Connecticut location. [Link]
  • Qualcomm is searching for a US patent attorney or a registered India Patent Attorney/Agent with at least 5 years of experience. [Link]
  • Qualcomm is looking for a patent counsel with 3+ years of patent prosecution experience. [Link]
  • Steptoe & Johnson is seeking associates with a minimum of 4 years of experience in patent litigation and with a technical background. [Link]
  • The Office of the Solicitor at the USPTO is searching for an experienced Patent Attorney. [Link]
  • Dynamics Inc. is seeking a patent attorney with an EE degree, to work at their Pittsburgh location. [Link]

Upcoming Events:

  • 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]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [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. [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

Bits and Bytes, Patent,

Opening of Franklin Pierce Center for IP

  • UNH Law is proud to announce the official opening on September 30 & October 1 of the Franklin Pierce Center for Intellectual Property with an intellectual property works-in-progress conference featuring presentations by scholars from law schools in the Northeast and alumni of UNH Law. Chief Judge Randall Rader will serve as special guest speaker. Other guest include: Jonathan Dudas, Judge Newman, and Judge Gajarsa. [Link]

Biotech in Ottawa is Booming?

  • Ottawa Life Science Cluster currently home to over 90 companies focused on life science and biotechnology research and innovation. Also, there are over 50 other companies that have a secondary focus in life sciences and biotechnology. Leading the charge for commercialization is the Ottawa Centre for Research and Innovation (OCRI). With the increased commercialization in Ottawa, comes an increase in patent applications in Canada, the US, and beyond. [Link] [Link]

Great Patents!

  • Great Patents: Advanced Strategies For Innovative Growth Companies, is a book that aims to inform executives on how best to use patents to improve their competitiveness. The book has a total of 12 chapters and each chapter is written by an individual in the patent world. The chapters in the book are broken into two categories: Strategies and Valuation. Companies pursue patents to make money, and this book is very useful to help companies discover what they can do with their patents that they may not have previously considered. While the book is aimed at executives and the like, it is also a useful tool for law students and others. Most law students are not familiar with the business world of patents and this book gives a perspective different than what is taught in law schools.
    • About the Author: David Orange is a patent attorney in Washington, DC. He is active in the start-up space as an investor and advisor.

Patent Jobs

  • Goldberg Cohen is seeking an IP associate with 2-5 years of experience. [Link]
  • Womble Carlyle Sandridge & Rice is looking for mechanical patent attorneys with at least 3 years of experience. [Link]
  • Verenium is searching for a patent agent with a minimum of 5 years of experience. [Link]
  • Cleveland Golf/ Srixon is seeking a Sr. patent engineer with a BSME and at least 4 years of experience. [Link]
  • The Michaud-Kinney Group is looking for a legal assistant to work at their Middletown, Connecticut location. [Link]
  • Qualcomm is searching for a US patent attorney or a registered India Patent Attorney/Agent with at least 5 years of experience. [Link]
  • Qualcomm is looking for a patent counsel with 3+ years of patent prosecution experience. [Link]
  • Steptoe & Johnson is seeking associates with a minimum of 4 years of experience in patent litigation and with a technical background. [Link]
  • The Office of the Solicitor at the USPTO is searching for an experienced Patent Attorney. [Link]
  • Dynamics Inc. is seeking a patent attorney with an EE degree, to work at their Pittsburgh location. [Link]

Upcoming Events:

  • 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]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [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. [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

Bits and Bytes, Patent

Constitutional Challenge to False Marking Statute

  •  Oral arguments in the case of United States, ex rel. FLFMC, LLC v. Wham-O, Inc., will take place on July 7th. The Federal Circuit will be resolving the constitutional challenge to the false marking statute (35 U.S.C. § 292(b)). The merits panel agreed to allow the government and the U.S. Chamber of Commerce to participate in oral arguments. The court expanded the oral argument time to 20 minutes per side. This case could set the precedent to eliminate false marking lawsuits. Regardless of how the Federal Circuit rules in this case, it is likely to be appealed to the Supreme Court. [FMLC-Reply-Brief] [Order-Re-Wham-O-Oral-Arg] [Cato-Brief] [Brief-of-Amicus-Curiae-Chamber-of-Commerce] [USA-Brief-in-Wham-O] [Wham-O-Brief]

Article One launches 3 Patent Studies Focused on 4 Patents on by Lodsys

  •  In response to the lawsuit Lodsys filed against several Apple iPhone developers, [Link] Article One is offering a $5,000 reward per study for the best prior art reference that provides a path to invalidity. The patents at issue are 7,133,834, 5,999,908, [Link] 7,222,078, [Link] and 7,620,565. [Link]To date Lodsys has sued 27 companies for patent infringement, so there is no way of knowing exactly who is funding the study that Article One is overseeing. [Link]

Google Granted Patent for “Detecting and Rejecting Annoying Documents”

  •  On June 28th Google was granted patent # 7,971,137, for a system and method for evaluating documents for approval or rejection and/or rating. The method comprises comparing the document to one or more criteria determining whether the document contains an element that is substantially identical to one or more of a visual element, an audio element or a textual element that is determined to be displeasing.  

What Impact Will Patent Reform Have on the Patent Office?

  •  The Patent Reform legislation will allow the PTO to keep fees they receive from applicants in an account that Congress can’t touch. The PTO will likely start hiring more patent examiners in order to try to decrease the backlog of patent applications, which currently stands at around 685,000. The satellite office in Detroit more likely than not will open sometime in the near future, possibly followed by more satellite offices. Track one of the Three-Track program, which allows applicants to pay extra money to receive a first office action within a certain amount of time will go into effect. Patent Examiners will likely receive more training and be able to resume working overtime.

Patent Jobs:

  • Salix Pharmaceuticals is searching for an IP and Licensing Attorney with at least 3 years of experience in pharmaceutical patent prosecution. [Link]
  • BASF is seeking a Patent Counsel with 8 or more years of experience in IP transaction work and at least 5 years of experience in patent prosecution. [Link]
  • Sutherland LLP is looking for an Associate of Patent Agent with 1-4 years of experience in patent prosecution and a background in Electrical Engineering. [Link]

  • Baker Botts is searching for a Patent Agent with 1-3 years of experience. [Link]

Upcoming Events:

  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28thin New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [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]

 

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

 

 

 

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes

Constitutional Challenge to False Marking Statute

  •  Oral arguments in the case of United States, ex rel. FLFMC, LLC v. Wham-O, Inc., will take place on July 7th. The Federal Circuit will be resolving the constitutional challenge to the false marking statute (35 U.S.C. § 292(b)). The merits panel agreed to allow the government and the U.S. Chamber of Commerce to participate in oral arguments. The court expanded the oral argument time to 20 minutes per side. This case could set the precedent to eliminate false marking lawsuits. Regardless of how the Federal Circuit rules in this case, it is likely to be appealed to the Supreme Court. [FMLC-Reply-Brief] [Order-Re-Wham-O-Oral-Arg] [Cato-Brief] [Brief-of-Amicus-Curiae-Chamber-of-Commerce] [USA-Brief-in-Wham-O] [Wham-O-Brief]

Article One launches 3 Patent Studies Focused on 4 Patents on by Lodsys

  •  In response to the lawsuit Lodsys filed against several Apple iPhone developers, [Link] Article One is offering a $5,000 reward per study for the best prior art reference that provides a path to invalidity. The patents at issue are 7,133,834, 5,999,908, [Link] 7,222,078, [Link] and 7,620,565. [Link]To date Lodsys has sued 27 companies for patent infringement, so there is no way of knowing exactly who is funding the study that Article One is overseeing. [Link]

Google Granted Patent for “Detecting and Rejecting Annoying Documents”

  •  On June 28th Google was granted patent # 7,971,137, for a system and method for evaluating documents for approval or rejection and/or rating. The method comprises comparing the document to one or more criteria determining whether the document contains an element that is substantially identical to one or more of a visual element, an audio element or a textual element that is determined to be displeasing.  

What Impact Will Patent Reform Have on the Patent Office?

  •  The Patent Reform legislation will allow the PTO to keep fees they receive from applicants in an account that Congress can’t touch. The PTO will likely start hiring more patent examiners in order to try to decrease the backlog of patent applications, which currently stands at around 685,000. The satellite office in Detroit more likely than not will open sometime in the near future, possibly followed by more satellite offices. Track one of the Three-Track program, which allows applicants to pay extra money to receive a first office action within a certain amount of time will go into effect. Patent Examiners will likely receive more training and be able to resume working overtime.

Patent Jobs:

  • Salix Pharmaceuticals is searching for an IP and Licensing Attorney with at least 3 years of experience in pharmaceutical patent prosecution. [Link]
  • BASF is seeking a Patent Counsel with 8 or more years of experience in IP transaction work and at least 5 years of experience in patent prosecution. [Link]
  • Sutherland LLP is looking for an Associate of Patent Agent with 1-4 years of experience in patent prosecution and a background in Electrical Engineering. [Link]

  • Baker Botts is searching for a Patent Agent with 1-3 years of experience. [Link]

Upcoming Events:

  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28thin New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [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]

 

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

 

 

 

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent

Constitutional Challenge to False Marking Statute

  •  Oral arguments in the case of United States, ex rel. FLFMC, LLC v. Wham-O, Inc., will take place on July 7th. The Federal Circuit will be resolving the constitutional challenge to the false marking statute (35 U.S.C. § 292(b)). The merits panel agreed to allow the government and the U.S. Chamber of Commerce to participate in oral arguments. The court expanded the oral argument time to 20 minutes per side. This case could set the precedent to eliminate false marking lawsuits. Regardless of how the Federal Circuit rules in this case, it is likely to be appealed to the Supreme Court. [FMLC-Reply-Brief] [Order-Re-Wham-O-Oral-Arg] [Cato-Brief] [Brief-of-Amicus-Curiae-Chamber-of-Commerce] [USA-Brief-in-Wham-O] [Wham-O-Brief]

Article One launches 3 Patent Studies Focused on 4 Patents on by Lodsys

  •  In response to the lawsuit Lodsys filed against several Apple iPhone developers, [Link] Article One is offering a $5,000 reward per study for the best prior art reference that provides a path to invalidity. The patents at issue are 7,133,834, 5,999,908, [Link] 7,222,078, [Link] and 7,620,565. [Link]To date Lodsys has sued 27 companies for patent infringement, so there is no way of knowing exactly who is funding the study that Article One is overseeing. [Link]

Google Granted Patent for “Detecting and Rejecting Annoying Documents”

  •  On June 28th Google was granted patent # 7,971,137, for a system and method for evaluating documents for approval or rejection and/or rating. The method comprises comparing the document to one or more criteria determining whether the document contains an element that is substantially identical to one or more of a visual element, an audio element or a textual element that is determined to be displeasing.  

What Impact Will Patent Reform Have on the Patent Office?

  •  The Patent Reform legislation will allow the PTO to keep fees they receive from applicants in an account that Congress can’t touch. The PTO will likely start hiring more patent examiners in order to try to decrease the backlog of patent applications, which currently stands at around 685,000. The satellite office in Detroit more likely than not will open sometime in the near future, possibly followed by more satellite offices. Track one of the Three-Track program, which allows applicants to pay extra money to receive a first office action within a certain amount of time will go into effect. Patent Examiners will likely receive more training and be able to resume working overtime.

Patent Jobs:

  • Salix Pharmaceuticals is searching for an IP and Licensing Attorney with at least 3 years of experience in pharmaceutical patent prosecution. [Link]
  • BASF is seeking a Patent Counsel with 8 or more years of experience in IP transaction work and at least 5 years of experience in patent prosecution. [Link]
  • Sutherland LLP is looking for an Associate of Patent Agent with 1-4 years of experience in patent prosecution and a background in Electrical Engineering. [Link]

  • Baker Botts is searching for a Patent Agent with 1-3 years of experience. [Link]

Upcoming Events:

  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28thin New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [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]

 

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

 

 

 

Patently-O Bits and Bytes: Getting Personal

Bits and Bytes, Patent
  • Injured Reserve: I've been on injured reserve for the past few weeks with both arms substantially immobilized, but I am now back (at least until my shoulder surgery next week). I am now going through a load of unread e-mails. If you sent me an e-mail or left a phone message during this time, I will respond as soon as possible. – Dennis Crouch
  • Popularity Challenged: It seems that my friends Gene & Renee Quinn have even more friends: Patently-O needs your vote in the ABA popularity contest.
  • A bite out of Apple: At least one analyst is suggesting that the Motorola v. Apple patent litigation could "knock 15% off" of Apple's stock price. Florian Mueller has a nice diagram of the Apple lawsuits with Motorola and HTC that are ongoing in the International Trade Commission (ITC), District of Delaware, Southern District of Florida, and the Western District of Wisconsin. Mueller writes about patent challenges to Free & Open Source Software at his FOSS Patent Blog.
  • Pioneering Patents: There has been a long debate in the patent world on whether patents should focus more on pioneering patents rather than on smaller "tweaks." Professors Raustiala and Sprigman discuss the issues on the Freakonomics blog.
  • Peer-to-Patent on Chemistry and Biotechnology: The Peer-to-Patent system has expanded to include the review of patent applications in areas of chemistry and biotechnology. A recent application up for review was filed by Bayer and claims a Pyrrolotriazine derivative that is apparently useful in treating cancer by inhibiting aurora kinase.  [Try your hand at evaluating patentability of the claimed invention].

ABA Journal Includes Patently-O in its Blawg 100

Bits and Bytes, Patent, Weblogs

For the fourth year in a row, the ABA Journal has selected Patently-O as one of the top 100 legal blogs (Blawgs). The list offers a nice way to find out about other high quality blogs you may have missed. For the first time, the list includes a sub-category of IP-focused legal blogs. Others in the category include the TTABlog (John Welch), TechDirt (Mike Masnick), IPWatchdog (Gene Quinn), IPKat (Jeremy Phillips and team), and Copyrights & Campaigns (Ben Sheffner). Of course, there is a quite long list of very good IP-focused legal blogs that should have made the list.

The annual listing includes a popularity contest and I would appreciate your vote. (A quick registration is required to vote.)

Notes:

 

Patently-O Bits and Bytes

Bits and Bytes, Patent

Patently-O Bits and Bytes

Bits and Bytes, Patent

IP Hall of Fame 2011

Bits and Bytes, Patent

The IP Hall of Fame was the brainchild of the publisher Intellectual Asset Management (IAM). Over the past five years, forty-two individuals have been inducted into the hall of fame. [Link]  

Inductees are first nominated by the public at large.  A maximum of five inductees for 2011 will then be selected by the IP Hall of Fame Academy.  The Academy itself is made-up of all living inductees as well as a handful of others, including myself, Todd Dickinson (AIPLA), and Ciarán McGinley (EPO).

Nominations can be submitted online. [Link]. New inductees will be announced in February 2011.

Patently-O Bits and Bytes

Bits and Bytes, Patent
  • Professor Lichtman has introduced a new IPColloquium podcast: A chat between the UCLA law professor and Chief Judge Rader. The podcast is setup to provide free CLE for many states. [Link]
  • 10% discount for Patently-O readers at the IBC Legal Conference in London on “Standards & Patents.”  Nov. 16–17, 2010. Discount Code: KW8099PTBG. [Link]
  • Upcoming Hearings:
    • Nov 8: Supreme Court will hear oral arguments in Costco v. Omega. The case involves the concept of copyright exhaustion in the international context.  The decision will likely directly impact the parallel patent law doctrine.
    • Nov 9: The Federal Circuit will hear en banc oral arguments on two cases: (1) Therasense v. BD (rethinking the law of inequitale conduct); and (2) TiVo v. EchoStar (post-judgment treatment of modified product-lines).
  • Satellite Offices are currently under consideration at the USPTO.  In some recent statements, Commerce Secretary Locke suggested that Detroit may a chosen spot. [Link] I contacted PTO officials who indicated that no final decisions had been made, but that some announcement may be forthcoming this calendar year.  I expect that some cities are seriously lobbying at this point.

Patently-O Bits and Bytes

Bits and Bytes, Patent

Patently-O Bits and Bytes

Bits and Bytes, Patent

Patently-O Bits and Bytes

Bits and Bytes, Patent
  • USPTO Technical Training for Examiners: The USPTO is looking for folks to provide free scientific & technical training to examiners. The program does not allow guest lecturers to discuss their own pending applications or provide advice on the patentability of any particular claims. [Participate Here]
  • Top-25: IP Reporter Joe Mullin and his crew have created a list of "The 25 Most Influential People in IP." The list includes Professors Lemley & Duffy; PTO Director Kappos; Judges Rader, Michel, & Ward; Justice Kennedy, Senator Leahy; Bob Armitage (Lilly); John Amster (RPX, son of Mort Amster); and Chip Lutton (Apple).
  • London Conference: International Patent Litigation 2010 — IBC Legal is holding a conference on International Patent Litigation 2010 in London on December 6th-7th. Use code KW8093PO to get a 10% discount. http://www.informaglobalevents.com/patlitpo.
  • Reexaminations: In 1998, an anonymous requester filed a request for ex parte reexamination of U.S. Patent No. 5,583,216 owned by Takeda Pharmaceuticals. Earlier this week (and after 12-years in-process) the USPTO issued a reexamination certificate confirming that the original claims are patentable. Hal Wegner handled the reexamination for Takeda, including multiple appeals to Federal Court. The average reexamination certificate in FY10 was issued about 2.5 years after the reexamination request was filed.

Patently-O Bits and Bytes

Bits and Bytes, Patent
  • USPTO Technical Training for Examiners: The USPTO is looking for folks to provide free scientific & technical training to examiners. The program does not allow guest lecturers to discuss their own pending applications or provide advice on the patentability of any particular claims. [Participate Here]
  • Top-25: IP Reporter Joe Mullin and his crew have created a list of "The 25 Most Influential People in IP." The list includes Professors Lemley & Duffy; PTO Director Kappos; Judges Rader, Michel, & Ward; Justice Kennedy, Senator Leahy; Bob Armitage (Lilly); John Amster (RPX, son of Mort Amster); and Chip Lutton (Apple).
  • London Conference: International Patent Litigation 2010 — IBC Legal is holding a conference on International Patent Litigation 2010 in London on December 6th-7th. Use code KW8093PO to get a 10% discount. http://www.informaglobalevents.com/patlitpo.
  • Reexaminations: In 1998, an anonymous requester filed a request for ex parte reexamination of U.S. Patent No. 5,583,216 owned by Takeda Pharmaceuticals. Earlier this week (and after 12-years in-process) the USPTO issued a reexamination certificate confirming that the original claims are patentable. Hal Wegner handled the reexamination for Takeda, including multiple appeals to Federal Court. The average reexamination certificate in FY10 was issued about 2.5 years after the reexamination request was filed.