Invention Submission Corporation v. Gene Quinn & IP Watchdog (N.D.N.Y.)
Plaintiff, “InventHelp” is the most recent DBA name of the Invention Submission Corporation. Defendant, Gene Quinn runs the IPWatchdog.com website and works with the same type of individual-inventor clients as InventHelp. The following two statements are taken directly from the InventHelp website:
From 2003 to 2005, we signed submission agreements with 6,592 clients. As a result of our services, 119 clients have received license agreements for their products, and 15 clients have received more money than they paid us for these services.
From 2006-2008, we signed Submission Agreements with 5,692 clients. As a result of our services, 94 clients have received license agreements for their products, and 21 clients have received more money than they paid us for these services.
During the 2003–2008 time period, fewer than 1 out of 300 InventHelp clients “received more money than they paid [to InventHelp] for these [invention promotion] services.”
For years, Gene Quinn has been writing about InventHelp and arguing that the company is “one of the most notorious of all invention scams.” Now, the company has sued Quinn (and his wife) under the Lanham Act for providing a “misleading representation of fact … in commercial advertising or promotion…”; for defamation (apparently under NY Law?); for trade libel; and for interference with prospective clients.
In an earlier post, I indicated that 40% of appeal briefs are initially rejected as “defective” for failing to comply with the rules of BPAI brief-drafting practice. I pulled-up the file histories for eleven applications whose appeal briefs were rejected in the calendar year 2009. [Table Below] The most common cause for defect in this group occurred when the applicant fails to list previously cancelled claims in the brief. Although that information is included in the appendix of claims, the briefing rules as interpreted by the appeal specialists require that withdrawn/cancelled claims also be identified in the proper section of the body of the brief.
Application Serial Number
Explanation of Defect
9/967,742
Brief did not contain a statement of the status of all claims (e.g., rejected allowed, withdrawn, objected to, cancelled) or does not identify the appealed claims. (The brief did state that “all of the claims have been finally rejected, and the rejections of claims 1-18 and 23-25 is appealed herein.” However, the brief did not state that claims 18-22 were cancelled. Of course, that information was in the appendix of claims.)
10/159,079
Figures of prior art that were pasted into the brief were “unreadable.” (The figures were identified and the prior art was already in the file).
9/983,493
The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (It appears that the problem here is that the applicant underlined the heading for each argument, but did not put the argument in bold.)
10/223,904
The Brief did not contain a reference to a co-pending application also on appeal.
8/873,974
The Brief did not list the cancelled claims. (Of course, that information was in the appendix of claims.)
10/711,517
The Brief did not present an argument under a separate heading for each ground of rejection on appeal. (The argument section did not exactly parallel the grounds-for-rejection section.)
11/484,214
The Brief did not contain a concise statement of each ground of rejection presented for review. (The applicant was appealing one rejection and stated the ground of rejection being reviewed was “Whether the claims fail to comply with the written description requirement under U.S.C. § 112, first paragraph.” The revised and accepted brief instead asked “Whether claims 1-13 fail to comply with the written description requirement under U.S.C. § 112, first paragraph.” Of course, the original brief also stated that “Claims 1-13 are pending. Thus, claims 1-13 are being appealed.”)
10/660,659
The Brief mis-cited the prior art at one point using the wrong patent number.
10/277,646
The Brief indicated that claim 23 was “cancelled,” but the applicant had not actually filed an amendment to cancel the claim.
10/914,894
The Brief did not list all claims and their status, including those withdrawn. (The amended brief added the information that claims 24-42 had been previously cancelled. Of course, that information was also available in the claim appendix.)
10/804,237
The Brief did not list the cancelled claims although that information was available in the claim appendix.
Two recent expanded-panel BPAI decisions both consider the situation where a patent applicant presents arguments in a reply brief even though the arguments could have been raised by in the principal brief. Interpreting the regulations of 37 CFR 41, both decisions hold that the Board is not required “to consider such belated arguments” unless the applicant presents “good cause” for the delay in presentation.
“[W]e take this opportunity to explain that the regulations governing Appeals to the Board require that any argument not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief.” Nakashima.
Rule 41 does not discuss the potential content of a reply brief other than to note that the reply brief “shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. 37 C.F.R. § 41.41(a)(2) (2007). Prior to 1998, Rule 41 required that reply brief content focus only on points newly raised in an examiner’s answer. That limitation, however was eliminated in the 1998 rule modifications. Despite this change, the BPAI panels both held that the “scope of the reply brief was never expanded to include belated arguments or new arguments unaccompanied by a showing of good cause.”
No New Nuances: A no-new-arguments rule is a common rule in all types of court systems. However, the rule as implemented in Nakashima appears that it could be better stated as no-new-nuances. Nakashima argued in its principal brief that the examiner’s obviousness rejection was incorrect. The “new” argument presented in the reply brief still focused on obviousness and the same two references, but provided a new justification for a non-obviousness conclusion. In particular, Nakashima’s opening brief argued (1) that the examiner’s suggested combination of prior art teachings would “destroy” the functionality of the claimed vacuum apparatus and (2) that the examiner was incorrect in his assertion that one of the references taught a “inner belt.” The reply brief added the nuance that there is “no reason to combine” the two prior art references because the result would not have been desirable. According to the Board, the “no reason to combine” argument was new and therefore, the Board refused to address that issue.
Writing in dissent in Nakashima, Administrative Patent Judge Terry Owens argued that the patent applicant had a right to include new arguments in its reply brief. Owens quotes the PTO’s comments associated with the 1998 rule change found in 62 Fed. Reg. 53168: “The former practice of permitting reply briefs based solely on a finding of a new point of argument [in the examiner answer] is eliminated thereby preventing present controversies as to whether a new point of argument has been made by the primary examiner.”
Notes:
On remand and after filing an RCE, Nakashima should be able to argue its new points to the examiner and perhaps reach the Board again in three-years.
The Nakashima application is owned by Brother (Japan) and is being prosecuted by the Oliff & Berridge firm (DC).
The Borden application is owned by Sharp (US) and is being prosecuted by the Chernoff firm (Oregon).
In the newest Patently-O Patent Law Journal article published today, Gregory Landis and Loria Yeadon discuss the role of ethnic diversity in the process of choosing upcoming nominees for the Court of Appeals for the Federal Circuit. The authors suggest that diversity should play a role in the judicial selection and that diversity likely will play such a role.
Read Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) here: [Nominee Diversity]
The Patently-O Patent Law Journal publishes short, timely essays on patent law focused topics. The published essays are typically fewer than 2000 words. Feel free to submit essays to me: dcrouch@patentlyo.com.
In a recent e-mail to PTO employees, Director Kappos explained a real problem associated with PTO funding for the next year — that 1.9 billion dollars will not be enough for FY2010. Although that seems like a lot of money, the PTO’s technology infrastructure is in dire need of an overhaul and the agency needs to hire additional examiners to reduce the current backlog of over one million pending applications. It appears likely that the PTO will collect over two billion dollars in user fees for FY2010, but the current funding rules would force the agency remit any amount over $1.887 billion to the US Treasury.
To recap, the PTO is (1) entirely funded by by user fees and (2) has significant financial needs to address shortfalls in serving its users. In this situation, the agency should at least be authorized to spend the fees that it collects.
== Kappos Letter ==
Dear Team:
I wanted to share my thoughts with you about a topic of great import to the USPTO and its mission. As you’ve read in the press, we have been engaged in ongoing discussions with members of Congress and their staff regarding our budget for the current fiscal year, which began on October 1, 2009. In addition, we have been providing technical assistance to Congress in connection with patent reform legislation, which is geared toward placing the USPTO on a sustainable funding model.
Innovation is the engine of our economy, and an efficient USPTO facilitates the timely delivery of innovative goods and services to market. What we do here at the USPTO is therefore of paramount importance to economic recovery and job creation.
As you know, the USPTO has been struggling in the last year to put itself on solid financial footing. Declines in fee revenue during the recession have adversely impacted our budget – and as a consequence forced us to make hard choices – including halting virtually all hiring, limiting overtime, and postponing critical repairs to our information technology infrastructure.
As part of the annual appropriations process, our financial team was asked to provide Congress with projected fee income for the 2010 fiscal year. This information was provided in September based on the data available at that time, when agency collections were at their low point. Congress used that projection of $1.887 billion in setting our budget for the 2010 fiscal year. That budget forces us to maintain operations on a bare-bones basis, but provides insufficient resources for us to replace employees who leave the agency, improve infrastructure or continue some of the improvements we have started to implement.
In addition, in the last two years, Congress had provided the USPTO a buffer of $100 million above our appropriation, which we were authorized to retain and spend to the extent fee income exceeded our appropriation (up to the $100 million buffer amount). That provision was removed from our fiscal year 2010 appropriation, due (we have been advised) to changes in Congressional Budget Office accounting which made it more difficult for our appropriators to provide the $100 million buffer this year.
The good news is that fee collections have begun to increase, and our current FY10 projections are more than $100 million above the $1.887 billion appropriations amount. We are actively working with Congress and the Administration to find ways to retain funds in excess of the $1.887 billion spending cap so that we can begin to backfill departing employees, improve our infrastructure, and continue to implement reforms.
But let me be clear about this: Hiring large numbers of people is not the silver-bullet solution to our problems, and we intend to hire conservatively and smartly. Most of you are aware that we have launched many reforms since I came on board last August, and we are now aggressively implementing them and looking for new ways to be more efficient on a constant basis. However, there is simply no way to get the backlog under control in a reasonable period of time without significant hiring given current attrition rates. You can run the numbers yourselves using the Patent Pendency Model and I would encourage you to do that.
Our infrastructure needs are also dire – so dire that President Obama referenced the USPTO’s antiquated IT systems in his remarks last week on modernizing government. We must improve those systems to become an efficient 21st century agency – and to be able to effectively serve the innovation community and the American economy.
It is therefore imperative that we work with Congress to develop long-term financial solutions that will establish a sustainable budget for USPTO over multiple years. Providing the USPTO with fee-setting authority as included in the pending patent reform legislation would be part of that plan. But, for the current year, we have immediate and urgent funding needs that require short-term assistance.
For your reference, I’ve attached a copy of the letter I sent to the relevant Congressional committee members on January 4, 2010.
Addressing our financial challenges so that the Agency can function effectively is my highest priority. I remain dedicated to working with our stakeholders, the Department of Commerce and members of Congress to ensure that we are able to perform our mission properly in the short-term – and to develop and adopt a sustainable funding model that will allow us to serve this country’s innovators in the future.
I want to thank you for your hard work and dedication during this challenging period for the agency. I very much look forward to hearing any thoughts you might have on this matter. Please share any comments via the Director’s Blog. I will be sure to keep you posted on any significant new developments with respect to our budget.
The BPAI reports that their average pendency of ex parte appeals decided in the 1st Quarter of FY2010 (Oct-Dec 2009) jumped to 9.9 months from 7.7 months for the prior three month period. [Link] BPAI Chief Judge Michael Fleming recently reported that the average pendency is likely to rise significantly in the coming year because of the large and growing backlog of cases on appeal.
The BPAI has done an increasingly good job of providing information directly to the public. However, this pendency data is highly misleading for a patent applicant considering the question of whether to appeal. In particular, the BPAI figures are measured from the “appeal number assignment dates” which occur at some point after briefing is complete and therefore do not include time associated with briefing.
To provide a bit more details regarding pendency, I created a dataset of 2770 ex parte BPAI decisions decided in the past two-years (2008–2009) and their assocated file wrappers. Using this dataset, I looked at appeal pendency as calculated from the filing of a notice appeal to the BPAI decision date. A summary of the results follow.
Results:
Median appeal pendency: 23.9 months (Notice of Appeal to BPAI Decision Date).
Median pendency of application at time of BPAI decision: 67 months (Application Filing Date to BPAI Decision Date). I.e., the median case where an appeal has been decided had been pending for 5 1/2 years before the
Median pendency of application family at time of BPAI decision: 79 months (Earliest Priority Date to BPAI Decision Date).
Defective Briefs: 40% of the decided cases included at least one applicant brief that was rejected as defective.
There are three charts below: The first shows the Cumulative Frequency of Ex Parte Appeal Pendency. This first chart is useful in considering the odds that a particular appeal would take fewer than X-months. The second chart shows the median pendency grouped by technology center. The third chart shows the percent of decided appeals that include at least one notice of a defective appeal brief for each technology center.
Looking Forward: As implied by the first paragraph of this report, these figures likely understate the expected pendency for any recently filed appeal.
Notes:
This report did not consider (1) remands without opinion; (2) decisions that were not published on the BPAI website; or (3) the fact that most notices of appeal filed by applicants do not actually result in a complete appeal process (because the examiner withdraws the rejection or the applicant decides to abandon the application or file an RCE).
In a prior post, I discussed the BPAI’s recent precedential decision of Ex parte Tanaka (BPAI 2009). In that case, Board held that a patentee’s failure to add an additional dependent claim (without cancelling the broader claims) was not the type of “error” that is correctable via reissue. Tanaka had wanted to add the aditional claim as a hedge against the potential that the broader claims were found invalid.
Oblon’s Chico Gholz e-mailed me with a likely caveat to this decision based on his 2008 IP Today article. In that article he suggests that is should be proper in a reissue to merely add an additional narrower claim if the purpose is to provoke an interference. [Link]
BTLJ Student Writing Competition. The Berkeley Technology Law Journal is hosting its own writing competition for law student (JD) papers focused on some topic near the intersection of law & technology. $2,000 prize and likely publication in the journal. Deadline is February 26, 2010. [Rules].
Morrison Foerster’s LA Office seeks an experienced patent litigator (3–4 years experience) with a preferred technical expertise in computer science or electrical engineering.
A Middletown Connecticut Firm is looking to hire a patent attorney with an engineering background and at least three years experience.
Ryan Swarts runs the job board. Please feel free to contact him with questions. (ryan.swarts@patentlyo.com).
Patent Damages Handbook: A committee of patent professionals and judges formed at the behest of Chief Judge Michel recently released their “Patent Damages Handbook.” The 34 page handbook is intended as a “resource for judges and lawyers” in understanding the damages phase of patent litigation “under current law.” Download it for free.
BTLJ Student Writing Competition. The Berkeley Technology Law Journal is hosting its own writing competition for law student (JD) papers focused on some topic near the intersection of law & technology. $2,000 prize and likely publication in the journal. Deadline is February 26, 2010. [Rules].
Morrison Foerster’s LA Office seeks an experienced patent litigator (3–4 years experience) with a preferred technical expertise in computer science or electrical engineering.
A Middletown Connecticut Firm is looking to hire a patent attorney with an engineering background and at least three years experience.
Ryan Swarts runs the job board. Please feel free to contact him with questions. (ryan.swarts@patentlyo.com).
Patent Damages Handbook: A committee of patent professionals and judges formed at the behest of Chief Judge Michel recently released their “Patent Damages Handbook.” The 34 page handbook is intended as a “resource for judges and lawyers” in understanding the damages phase of patent litigation “under current law.” Download it for free.
The number of patents undergoing reissue is at an all-time high. [LINK] Often, patentees prefer the reissue route over reexamination. In a reissue, for instance, an applicant may file RCEs and divisional applications. Those common elements of patent prosecution are prohibited during reexaminations. Likewise, claims can be broadened in a reissue, but not during reexamination. Finally, the time-pressure of reissue prosecution on the patentee is small comparable to that of reexamination.
Under 35 U.S.C. § 251, the reissue process is to correct an “error” in a patent that would tend to make the patent “wholly or partly inoperative or invalid.” The statute lists specific types of errors, including “a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.”
In this case, the patent applicant (Seiko) started a reissue process claiming that its mistake was in failing to include an additional narrower dependent claim to “hedge against possible invalidity of the original claims.” The patentee did not cancel the broader claims because they were still potentially valid.
Issuing a precedential decision, the BPAI has interpreted Section 251 to bar reissue in this case.
[T]he Examiner found that because the reissue application contains all of the original patent claims and adds by reissue application only a single dependent claim 16, the reissue declaration cannot satisfy the error required under 35 U.S.C. § 251 because it cannot properly allege that the patent is wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent.
We affirm.
This interpretation of Section 251 falls in-line with MPEP § 1402 and with the dicta of Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1565 (Fed. Cir. 1989).
Notes: Interestingly, Tanaka originally filed the reissue application and submitted a preliminary amendment that would broaden independent claim 1. (App No 10/201,948). After receiving a final rejection for the broadened claim, Tanaka changed its tactics; reinstated the original claim 1 and added a narrowed claim 16 that includes limitations not found in any other claim. At that time, Tanaka also submitted a substitute reissue declaration
The University of South Carolina (Carolina) was founded in 1801 and is the flagship public university of the state. The University of Southern California (Southern Cal) was founded in 1880 and is a large private university located in Los Angeles. This case involves a trademark dispute between the two universities.
The case arose when Carolina attempted to register its SC-logo and Southern Cal opposed the trademark registration based on its own interlocking SC-logo. [See hats below] Carolina retaliated by moving to cancel Southern Cal's trademark registration of the initials "SC" based on the mark's suggestion of a false association between Southern Cal and the State of South Carolina.
The Trademark Appeal Board (TTAB) sided with Southern Cal in (1) refusing to register Carolina's SC-logo because it was confusingly similar to Southern Cal's logo; (2) holding that Carolina lacked standing to bring the cancellation counterclaim; and (3) finding that the initials "SC" are not unmistakably associated with the State of South Carolina. On appeal, the Federal Circuit affirmed.
Confusingly Similar: The appellate panel first agreed that the TTAB had appropriately held that the SC-logos were confusingly similar despite the lack of any actual evidence of customer confusion. (South Carolina did not appeal the Board’s findings that the marks were legally identical.)
Regarding Southern Cal's registration of the initials "SC," the appellate panel rejected the TTAB's finding that Carolina lacked standing, but affirmed the summary judgment because Carolina had not shown a genuine issue of material fact for trial.
Standing in a Cancellation Proceeding: A party damaged by a registered mark's "suggestion of a false association" has a right to file for cancellation of that mark. To have standing, the party must also show a "real interest" in the proceeding and a "reasonable basis" for the belief that the mark has (or will) cause false-association damage. The Federal Circuit found that Carolina had met this test of standing because it sold goods bearing the same mark.
Standard for Cancellation based on False Association: "To prevail on a Section 2(a) Lanham Act claim for cancellation based on false association, a party must show that the challenged mark is 'unmistakably associated' with another person or institution." Here, Carolina provided evidence that the public does associate the initials "SC" with South Carolina. However, that evidence is insufficient for a false association claim because "SC" also refers to "many entities aside from the state."
Indeed, South Carolina, in the context of another issue, submitted evidence showing that at least sixteen other universities and colleges represent themselves as "SC." In light of this evidence, South Carolina did not satisfy its burden on summary judgment. Even drawing all reasonable inferences in favor of South Carolina, evidence showing that the initials "SC" could refer to the State of South Carolina does not create a genuine issue on whether the initials uniquely point to the State.
Affirmed.
As a native of South Carolina, I am regularly confused by uses of “SC” that refer to non-South-Carolina entities.
Bruce Pokras recently made available his "Family-izer 2.4.1" web version. The free web-based software uses the EPO's INPADOC patent family database to group a list of patents into "families." This becomes quite helpful when looking at a portfolio of patents. Although the program runs on a web-browser, you will still need to download a small program to make it work. It took me about 3 minutes to get going.
The USPTO FY2009 Annual Report provides the following numbers as of September 30, 2009:
Total Number of Pending Non-Provisional Utility Patent Applications: 1,139,344.
Percent that have Not Received a First Action from an Examiner: 53.4%
Most utility patent applications are rejected at least once on either anticipation or obviousness. Design patents are different.
As part of a larger project, I combed through 1049 file histories of design patents that issued in the past 12 months. Of those, 5 were rejected on novelty grounds and 8 on obviousness. This leads to a prior-art-based rejection rate of 1.2% (95% CI range of 0.7% – 2.1%). The vast majority of the patents (81.6%) were never rejected during prosecution. The most common rejections are under 35 USC 112 paragraphs 1 and 2. Typically both paragraphs are asserted simultaneously.
According to the most recent USPTO annual report, design patents had an allowance rate of about 90% during the period FY2005–FY2009 as measured by the percentage of disposals that were allowances. About half of design patents issued in 2009 were pending for less than one year.
These numbers suggest that the US design patent system is operating as a registration system rather than as one based on a true examination. Along this vein, it is typically easier and cheaper to prosecute a design patent to issuance than to register a product design as trade dress. To be clear, I support the idea of a design patent registration system. More on that in another post.
Quoted:President Obama to the Forum on Moderninzing Government:
“Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years.”
The Milwaukee Journal Sentinal asks “is it time to privatize the Patent Office?” If not the whole PTO, the editorial asks why not “privatize most of the Patent Office functions?”
GWU’s IP Speaker Series Continues at 12:00 Noon this Spring:
January 20, Laura Heymann of William & Mary (Naming, Identity, and Trademark Law)
February 3, Michael Ryan of GWU, (Patent Incentives in Brazil)
February 10, Abraham Drassinower of Toronto Law (What’s Wrong with Copying)
February 24, Jonathan Zittrain of Harvard Law (Minds for Sale)
March 24, Mark Janis of Indiana Law (Daniel Webster’s Patent Cases)
Writing Competition: Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition. $4,000 cash will be given to a current US Law Student (including December 2009 graduates) who either attends school in Virginia or is a resident of Virginia. The prize will be awarded to author of the best IP focused law-review-style article. [Link]
Quoted:President Obama to the Forum on Moderninzing Government:
“Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years.”
The Milwaukee Journal Sentinal asks “is it time to privatize the Patent Office?” If not the whole PTO, the editorial asks why not “privatize most of the Patent Office functions?”
GWU’s IP Speaker Series Continues at 12:00 Noon this Spring:
January 20, Laura Heymann of William & Mary (Naming, Identity, and Trademark Law)
February 3, Michael Ryan of GWU, (Patent Incentives in Brazil)
February 10, Abraham Drassinower of Toronto Law (What’s Wrong with Copying)
February 24, Jonathan Zittrain of Harvard Law (Minds for Sale)
March 24, Mark Janis of Indiana Law (Daniel Webster’s Patent Cases)
Writing Competition: Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition. $4,000 cash will be given to a current US Law Student (including December 2009 graduates) who either attends school in Virginia or is a resident of Virginia. The prize will be awarded to author of the best IP focused law-review-style article. [Link]
When law students ask, I generally recommend pursuing practical experience rather than summer school. This year, however, summer jobs for law students are scarce — making school a more likely alternative. Summer programs that focus on intellectual property (IP) law are especially interesting because they draw-together a critical mass of students and professors who are interested in patent and copyright issues. In those settings, the intellectual property law discussions tend to spill-out from the class into lunch, dinner, and late-night pub conversations or debates. In my experience, summer classes are often less rigorous than the ordinary law school classes. For that reason, I might avoid taking core-classes such as US Patent Law.
I created a simple spreadsheet guide [Download IPSummer2010] to help students locate intellectual property focused summer programs. To create the guide, I contacted all of the US patent law professors that I know and also sent an e-mail to the Deans of Academic Affairs of US Law School. There may be other programs out there — notably, many law schools offer summer classes in IP law (although I wouldn't call those IP Programs).
In the US, Franklin Pierce's Intellectual Property Summer Institute (IPSI) has been a mainstay in Concord, NH. This year, they expect to offer 15 different courses focused on intellectual property (students are only allowed to earn up to 6 credits). I taught in Concord in the summer of '07 and had a fabulous time. Although the information is not yet fully available, American University is also planning a summer program in Washington DC as part of its Program on Information Justice and Intellectual Property (PIJIP). On the west coast, Santa Clara is again offering several IP classes through its Hi-Tech Summer School in Santa Clara (Silicon Valley). Folks at SUNY Buffalo (Buffalo, NY) and TM Cooley (Auburn Hills, MI) also wrote in to note that they will be offering IP classes within their summer offerings. I suspect that other schools will do the same.
All of the IP summer programs have limited enrollment.
Professor David Hricik is the country’s leading expert on patent law ethics. Oxford University Press recently published his (and co-author Mercedes Meyer’s) volume on patent prosecution ethics. This is a book that includes specific guidance for both patent attorneys and patent agents. It should be within the reach of every patent prosecutor. Topics include: guidance on client engagement and dis-engagement; the duty of loyalty to the client (perhaps as opposed to the inventor); avoiding conflicts of interest; specific areas of competency in patent prosecution; avoiding pitfalls created by the duty of candor; and issues arising from attorneys who practice both prosecution with litigation. The book also includes two very helpful appendices. The first appendix is an annotated version of the PTO ethics rules where the authors discuss nuances of each rule. The second is a set of sample forms; checklists; and client-memos — a version of which should be used by every patent practitioner in handling client relations.
I suspect that this book will quickly become the leading authority on patent prosecution ethics. Although not at all foolproof, attorneys and agents who rely on the book for guidance will have some cover from charges of malpractice or inequitable conduct.
My only problem with the book is its price: $255! Once you add tax and shipping, the cost approaches $1 per page. Of course, that price would get you only about a 1/2 hour of Professor Hricik’s time. This book is the first volume in a two-part series. The second volume will be published in 2010 and will focus on patent litigation ethics.
New on NBC: “Kindreds,” created by Emmy Award winner David E. Kelley (“Boston Legal,” “The Practice,” “L.A. Law”), follows a curmudgeonly ex-patent lawyer and his group of misfit associates as their lives come together to form an unconventional kind of law practice. The series is from Warner Bros. Television and David E. Kelley Productions. Kelley is the writer and executive producer.
New on Fox: Although it has nothing to do with patent law, Sons of Tucson was written by my college roommate.
Last night on PBS: Copyright Criminals. I have the DVD version and will write a review once I watch it. [LINK]
The Shark Tank: For those who have not seen it, the Shark Tank is pretty funny. The investors clearly see the importance of intellectually property rights but the nuances are almost always lost (perhaps in the editing process). [Link]
Patent Juries: Joe Mullin has a great article at IPL&B on the jury verdict in the i4i v. Microsoft case. [Link]
Dr. Noonan on Gene Patents and the L.A.Times: [I]n an editorial entitled “Genes and patents,” the L.A. Times joined its East Coast cousin in taking an inaccurate and irrational position on an important question: patents on diagnostic methods involving genetic information. [Link]
Many recently issued patents should receive a further extension of their patent terms based on the USPTO’s miscalculations of PTA and the Federal Circuit’s decision in Wyeth v. Kappos. To receive that those additional months of protection, however, the patent holder may have to file a civil action against the PTO. The question for patentees will be whether the expected value of those additional months at the end of the patent term (years from now) are worth the up-front expense of filing suit.
I am confident that most applicants will find it not worthwhile to go about the effort of seeking the additional PTA extension. As I wrote in 2009, most patents expire before the end of their alloted patent term because applicants fail to pay the maintenance fees. [Link] That said, more than 45% of patents are maintained in-force through the patent term.
In the next few days, we may see a few firms ramping-up as PTA specialists in a way that could reduce the cost of suing.
The Patent Term Adjustment (PTA) procedure operates to lengthen the patent term of a utility patent based on delays during patent prosecution. The current backlog of applications at the PTO suggests that most newly issued patents will have some positive adjustment.
I looked at the patent term adjustment (PTA) calculations for the 3187 utility patent issued on January 12, 2010. Eighty percent (80%) of these newly issued patents included some adjustment of the patent term based on the length of prosecution. For those with some adjustment, the average PTA is 14.5 months. The longest PTA adjustment in this group was for 74.5 months (six+ years). That patent (No. 7,647,402) took almost nine-years to issue. Under the Wyeth v. Kappos decision, I calculate that the PTA for the ‘402 patent would be extended by almost two additional years to 98 months (8+ years).
The chart below shows the cumulative frequency of PTA calculations for the January 12, 2010 patents using the pre-Wyeth calculations. It will be interesting to see if the PTO recalculates the PTA for these newly issued patents based on the Wyeth decision.
Appeals versus RCEs: The Wyeth PTA boost puts an additional thumb on the scale of appealing final rejections because filing of an RCE prevents any further accumulation of Part-B PTA. 35 U.S.C. 154(b)(1)(B)(i).
Invention Submission Corporation v. Gene Quinn & IP Watchdog (N.D.N.Y.)
Quoted: President Obama to the Forum on Moderninzing Government: 
New on NBC: “Kindreds,” created by Emmy Award winner David E. Kelley (“Boston Legal,” “The Practice,” “L.A. Law”), follows a curmudgeonly ex-patent lawyer and his group of misfit associates as their lives come together to form an unconventional kind of law practice. The series is from Warner Bros. Television and David E. Kelley Productions. Kelley is the writer and executive producer.
