When an issued utility patent claims priority to a provisional patent application, is there a presumption that the claimed invention is supported by the provisional?
What is wrong with filing claims in a provisional application?
Sitting by Designation: The CAFC has continued to offer district court judges from across the country the opportunity to sit on the appellate bench for a day. On June 3, 2008, Judge Ward from the Eastern District of Texas filled out a panel with Judges Newman and Gajarsa. They will be deciding three patent cases: Hyatt v. Dudas (waiver of arguments before the BPAI); Atlanta Pharma v. Teva (appeal from denial of preliminary injunction to stop teva from selling a generic version of the ulcer med Protonix); and D Beam v. Roller Derby.
New USPTO Fees: They are going up, but you can put in your two cents by July 3. [New Fees][Contact Walter.Schlueter@uspto.gov. Include RIN number RIN 0651–AC21 in the subject line.]
FTC Commissioner Rosch recently spoke about patents and antitrust. He believes that the FTC Act, the Clayton Act and the Sherman Act all create “viable enforcement tools” against companies that create “patent walls” — especially when they acquire those patents from third parties. The FTC is currently going after N-Data in a case where the patent covers an ethernet standard. [N-Data][Zura’s Comments] Three important cases on this issue:
US v. Singer Mfg (Antitrust violation to charge competitors with patent infringement after U.S. company obtained patent from Swiss company)
Kobe v. Dempsey Pump (obtaining and using “every important patent” in the field in order to exclude competition, together with other anticompetitive activity, constitutes an antitrust violation)
Case of Xerox Corp (settlement consent decree where FTC challenged Xerox’s purchase of additional plain paper copier patents).
Pre-Purchase Review: There is some room to debate here on the question of organic-patenting (patents on inventions via the company’s own R&D) versus acquisitional-patenting (buying up patents invented by others). At the firm level, acquisitional growth is typically reviewed much more harshly for potential antitrust violations than is organic growth. Is the FTC/DOJ headed toward a system of pre-purchase review of major patent acquisitions in the same way that the agencies conduct pre-merger reviews?
Congratulations to Ryan Swarts! Mr. Swarts was my student in eCommerce Law and has been in charge of the successful Patently-O Job board for the past year … all while running his own company. Ryan recently graduated from MU Law and is now looking to specialize in trademark and copyright law, especially relating to the Internet. Now that he’s a free agent — feel free to contact him directly. [Ryan’s Resume][Contact Ryan].
June 25–29: The FCBA’s Bench & Bar Conference will be in Silicon Valley area (Monterey) for the first time. Speakers are primarily judges and in-house counsel. [LINK].
Such As: Contract Specialist Kenneth Adams discusses the recent decision in Lawler Mfg. v. Bradley Corp. and the use of “such as” in contract formation. [LINK][Patently-O discussion of Lawler].
Design Patent “Town Hall Meeting” at the Patent Office June 16, 2008. The current debate is primarily over whether auto parts should be protectable under design patent law. Insurance companies and others argue that design patents unduly raise the cost of repair. File Attachment: design_town_hall.pdf (116 KB).
Design Patent Top Ten: Top Ten Receipients of US Design Patents in 2007.
Design Patents En Banc: On June 2, the CAFC is hearing the en banc Egyptian Goddesscase to consider the proper method for determining infringement of a design patent. That afternoon, the FCBA is hosting a post-argument discussion with a panel including attorneys for the parties as well as as several amicus. Participate either live or via Webex.
[Not a] Patent Race: IPO released its annualy survey of top utility patent assignees. IBM again leads the way with over 3,000 utility patents issued in 2007. The organization leads the report with the interesting statement: “IPO DOES NOT INTEND TO ENCOURAGE MORE PATENTING IN U.S.”. [LINK]
Tafas v. Dudas: On May 19, the CAFC released its notice of docketing in the case — starting a 60 day clock for the PTO to submit its opening brief. I expect that they will take the entire time.
Inter Partes Reexaminations: Joff Wild highlights a new report on PTO Inter Partes Reexaminations: “Without appeal, the average pendency period for inter partes re-exam is 43.5 months, much longer than the 28.5 months reported by the USPTO – a 95% confidence interval would put the pendency between 34 and 53 months….To date, there has never been a single inter partes re-examination that has gone through the entire re-examination process (including appeal) and made it to completion. Only three have ever received a decision by the Board of Patent Appeals and Interferences.” [LINK][Report][Zura comments]
MBHB Snippets: In the past, I have published several practice focused articles in MBHB’s Snippets publication. The newest edition is now online. Articles include:
Aaron Barkoff, Patent Litigation Under a Future Biosimilars Act
Kevin Noonan, Follow-on Biologic Drugs and Patent Law: A Potential Disconnect?
Jim McCarthy & Marcia Ireland Rosenfeld, It’s Not Easy Selling Green
Benjamin Huber, Seagate: Reports of the Death of Opinions of Counsel Have Been Greatly Exaggerated
Chinese Patents: More than 700,000 patent applications last year. Peter Zura says “Protection of design patents continues to be an untapped resource for foreign filers – the U.S. and other foreign entities make up about 5% of the 270,000 Chinese design patent applications.” (NOTE: The 700,000 includes 270,000 design patent applications and 180,000 utility model applications). Read the SIPO (State IP Office of PRC) Stats. (Thanks to Hal Wegner for the tip).
PPAC Nominees: Due by May 30. Three new PPAC members will be appointed by the Secretary of Commerce for a three year term. [LINK]
Design Patents on Automotive Parts: Perhaps the most controversial subject matter for design patents involve automotive parts. Many of the car companies are using design patents to help ensure that body shops use “authorized” parts when repairing a crash-damaged vehicle. Deputy Director Peterlin is looking for input from folks on the issue. [LINK]
PTO web-site may be down until sometime May 15. www.uspto.gov. (UPDATE: Partially working again)
Patentable Signals at the Supreme Court: In Nuijten, the CAFC held that transitory propagating signals are not patentable subject matter because they do not fit within any of the four statutory invention categories of “process, machine, manufacture, or composition of matter.” Now, Nuijten has petitioned the Supreme Court for certiorari in a case captioned Nuijten v. Dudas. The petition focuses on the CAFC’s decision that arguably requires patentable inventions be (1) tangible; (2) non-transitory; and (3) measurable without “special equipment.” [Petition][About Nuijten]
Design Patents at the Supreme Court: In Calmar v. Arminak, the design patent holder is asking the Supreme Court to reverse the Federal Circuit’s narrow infringement analysis. ISDAhas filed an amicus brief arguing that the CAFC’s application of the “ordinary observer” test improperly excludes the most natural ordinary observer – a retail customer. [Brief][About Calmer]
These two pending Supreme Court petitions are both important and well argued. The fact that they are well presented also makes it more likely that the follow–on cases of Bilski and Egyptian Goddess will receive attention from the Supreme Court.
IP for Wireless & New Media: The World Research Group (WRG) is hosting its The 2nd Annual Summit on Intellectual Property for Wireless Tech & New Media — June 17–18 in San Francisco. It appears to be a great conference both for networking and for learning about IP strategy & IP practice. The conference is expensive, but we have a $300 discount for Patently-O readers (Code: SMS775). www.worldrg.com/ip. WRG has become a “Media Partner” with Patently-O Jobs.
In re Volkswagen(5th Cir. en banc). A self-titled “ad hoc committee of intellectual property trial lawyers in the Eastern District of Texas” have filed a brief in the pending VW case arguing on the substance that the E.D.Tex. courts do not excessively retain cases in a way that is any different from other jurisdictions. The AIPLA amicus brief in the same case argues that too many cases are being heard in Texas. [Trial Lawyer Brief] [More Info].
The non-profit IP Hall of Fame is asking for nominations for inductees in the 2008 IP Hall of Fame. The award is designed to honor individuals who have made significant contributions to today’s Intellectual Property System. www.iphalloffame.com. The award will be limited to five inductees this year. A couple of notes: (1) The Hall of Fame is non-profit, but sponsored by the for-profit IAM-Magazine. (2) I am a member of the Hall of Fame Academy and will vote on the inductees. (Being on the academy is different from being an inductee).
John Doll (Commissioner for Patents) will be taking questions on May 13 (11:00 am CST) as part of a webinar sponsored by Kirkpatrick & Lockhart. It appears that you must pre-register for this FREE event. LINK.
While much of the proposed patent reform legislation has been directed toward easing pain felt by major corporations being sued for patent infringement, one proposed measure would move inequitable conduct issues to the PTO for a decision. NY Times discussed this last week as a battle between Innovator and Generic Pharma – with the lobbyists winning. [LINK]
A new Intellectual Property Symposium is coming up in April 15–16 in San Jose with EETimes as the main sponsor. Speakers include Jon Dudas, Peter Detkin, Michael Meurer, David Pressman, Jim Malankowski, Steve Baik, and others. The price is a steep $1,795. Patently-O readers receive a $100 discount by following this link: https://www.cmpevents.com/ESCip08/a.asp?option=B&SC=BPO1?cid=patentlyo. (Note: Conference organizers get top billing by offering a discount to Patently-O readers.).
Jay Wahlquist at Fogg & Powers has created a new free toolbar termed “The Patent Pal.”
[Not a] Patent Race: IPO released its annualy survey of top utility patent assignees. IBM again leads the way with over 3,000 utility patents issued in 2007. The organization leads the report with the interesting statement: “IPO DOES NOT INTEND TO ENCOURAGE MORE PATENTING IN U.S.”. [LINK]
[Not a] Patent Race: IPO released its annualy survey of top utility patent assignees. IBM again leads the way with over 3,000 utility patents issued in 2007. The organization leads the report with the interesting statement: “IPO DOES NOT INTEND TO ENCOURAGE MORE PATENTING IN U.S.”. [
IP for Wireless & New Media: The World Research Group (WRG) is hosting its The 2nd Annual Summit on Intellectual Property for Wireless Tech & New Media — June 17–18 in San Francisco. It appears to be a great conference both for networking and for learning about IP strategy & IP practice. The conference is expensive, but we have a $300 discount for Patently-O readers (Code: SMS775). 
In re Volkswagen(5th Cir. en banc). A self-titled “ad hoc committee of intellectual property trial lawyers in the Eastern District of Texas” have filed a brief in the pending VW case arguing on the substance that the E.D.Tex. courts do not excessively retain cases in a way that is any different from other jurisdictions. The AIPLA amicus brief in the same case argues that too many cases are being heard in Texas. [