A few years ago, the the Federal Judicial Center (FJC) created a video providing an introduction to patent law for judges and juries. The video is available here (Windows Media, Quick Time), and provides a very good (although general) introduction to patents and the patent office. I would recommend that anyone coming to work in a patent firm should watch this video as part of new employee orientation.
A sample patent used in the video is available here.
The video is used by some judges as a replacement for the testimony of a “patent law expert.”
The U.S., Costa Rica, El Salvador, Guatemala, Honduras and Nicaragua signed the U.S.-Central American Free Trade Agreement (“CAFTA”) last week. The agreement would extend patent rights for pharmaceuticals in the Central American countries.
Jacobs owns a patent on a tilt sensitive controller. (U.S. Patent No. 5,059,958). In a prior suit over the same technology, Jacobs settled with Analog. Under the terms of the settlement agreement, Analog was given a full license to practice the patented technology.
In the present case, Jacobs sued Nintendo, asserting that Nintendo’s “Kirby Tilt ‘n Tumble” for Game Boy. Nintendo responded, and the lower court agreed, that Nintendo’s actions fell under the settlement agreement, since the accelerometers for the game were purchased from Analog.
On appeal, the Federal Circuit (J. Bryson) affirmed the lower court’s dismissal on summary judgment.
We agree with the district court that the clause granting Analog the right to sell its accelerometers for use in tilt-sensitive control boxes barred Jacobs from interfering with that right by prohibiting Analog’s customers from using the accelerometers for that authorized purpose by making, using, and selling control boxes incorporating Analog’s devices. That interpretation is in accordance with the basic contract law principle that a party may not assign a right, receive consideration for it, and then take steps that would render the right commercially worthless.
Additionally, the Appellate Panel held that the “noninfringing use” doctrine did not apply.
The “noninfringing use” doctrine applies when a patentee or its licensee sells an article and the question is whether the sale carries with it a license to engage in conduct that would infringe the patent owner’s rights. In that setting, absent an express agreement between the parties, determining whether the sale conveys with it the implied right to use the article in an infringing manner may depend on whether there is any noninfringing use for the article. If there is no noninfringing use, it may be reasonable to infer that there has been “a relinquishment of the patent monopoly with respect to the article sold.” United States v. Univis Lens Co., 316 U.S. 241, 249 (1942) … This case is quite different … because the [settlement] agreement must be understood to authorize Analog to sell its accelerometers for [otherwise infringing] uses.
What’s love but a coupling satisfaction predictor? Eharmony recently received a patent on its matchmaking methodology. (U.S. Patent No. 6,735,568).
Claim 1 of the patent deacribes a method with four steps:
(i) generating, from empirical data, a number of factors … relevant to relationship satisfaction; (ii) approximating the satisfaction that a user … has in the relationships that the user forms with others; (iii) identifying … candidates for a relationship with the user by [using] the approximated satisfaction and one or more of the factors; and (iv) approximating the satisfaction that the user will have in a relationship with a particular candidate.
I think that everyone in the field is or will soon be feeling the pain of malpractice insurance rate hikes. Diedre Greg in Seattle has the story: Patent lawyers are slammed by insurance rates
Amity Insurance has developed their list of the top ten most common causes of attorney malpractice. Although the order may be somewhat different for patent attorneys, all of these are real issues.
1. Missing Deadlines 2. Lawyer Stress and Substance Abuse 3. Conflicts of Interest 4. Ineffective Client Screening 5. Inadequate Research and Investigation 6. Poor Client Relations 7. Overzealous Efforts to Collect a Fee 8. Poor or Inadequate Documentation 9. Inappropriate Involvement in Client’s Business 10. Unwillingness to Believe You Might Be Sued
Samuel Oddi (UAkron), has a working paper discussing the recent increase in malpractice claims and provides an analysis of the exposure of patent attorneys to malpractice claims.
In other insurance news, Universal Security has sued its insurer (the Hartford) for failing to cover patent litigation costs. (Article).
Professor Jessica Lichtman’s working paper and music sharing proposal is titled “Sharing and Stealing.”
My specific proposal is inspired by an impulse to see whether an architecture like the one that has permitted the Internet to flourish as an information space can define a thriving music space. The U.S. recording industry’s recent enforcement campaign seems to seek to move us in a very different direction.
At the very least, Lemley misses the necessary ex-post first-publication incentives. Any coherent IP system gives an incentive to both create (ex-ante) and show your creation to the public (ex-post).
The AIPLA is reporting that confirmation of Jon Dudas as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office is expected soon after Congress returns from its Memorial Day recess.
June 1 is the deadline for entries to the Collegiate Inventors Competition sponsored by the National Inventors Hall of Fame. The top prize for 2004 is $50,000 plus $5,000 for an advisor.
Don’t worry if you are just hearing about the compitition now. Every year, some winners only hear of the competition the week before the deadline. Details, including a downloadable entry form, may be accessed here.
The patent system is often juxtaposed with a system of trade secrets. A major difference between the two systems is that patented technology is disclosed to the public while trade secrets may remain hidden forever.
It turns out that in many cases, the patent system also promotes secrecy and witholding of information. This is especially true in scientific fields where the publication of research is postponed to await patent filing dates.
In his most recent paper, Dr. Jeremy Grushcow uses statistical analysis of data retrieved from online abstract databases and from the USPTO to demonstrate that secrecy in academic institutions is on the rise.
This paper confirms that granting patent rights to scientists and their institutions succeeds in generating increased industry participation in publicly funded research and increased patenting and commercialization activity. However, the paper also shows that scientists who seek patents are more secretive, withholding publication or presentation of their data so as not to jeopardize patentability. Notably, this paper also observes that even those university scientists not seeking patents became more secretive in response to the 1980 changes. This unanticipated increase in secrecy increases the risk of wasteful duplication caused by the patent system.
Grushcow offers several potential solutions to restore a “norm of data sharing.”
[I]ncreasing the rewards for early data sharing while providing an experimental disclosure exception to reduce the risk that early data sharing will jeopardize patentability.
Another aspect of secrecy that Grushkow did not explore is the period between filing and publication. Shortening the 18-month publication delay would allow for public knowledge at an earlier time in many cases.
The United States Patent and Trademark Office (USPTO) and the National Inventors Hall of Fame will hold the annual Independent Inventors Conference at the Franklin Pierce Law Center in Concord, New Hampshire August 20-21.
According to news reports, Glaxo (GlaxoSmithKline) has agreed to pay a $75 million settlement in the Relafen Antitrust Lawsuit. The settlement has apparently been approved by a the District Court Judge.
Read my prior post discussing the holding that may have prompted the settlement.
In a patent infringement suit over a seed planter, the Iowa District Court refused to disqualify Plaintiff Kinze’s attorneys, Perkins Coie, even though Perkins also represented Defendant Case in other matters. Perkins’ work for Case had not involved patent matters.
Kinze’s original attorneys had been disqualified after working on patent matters for both Kinze and Case.
Patent royalties are posing threats to a new digital mobile broadcasting service in Korea before it is even launched. Digital mobile broadcasting, or DMB, is a service that enables users to view television through cellular phones by means of satellite transmission.
TU Media Corp. announced yesterday that Toshiba Corp., the Japanese company that holds the core technology for satellite mobile broadcasting, is demanding royalties for terminals sold in Korea. TU said Toshiba requested royalties of 2 percent per terminal for all gadgets that will use the satellite broadcasting service, reports JoonGang Daily.Commentary: The facts here don’t appear to show a great “threat” or that the patent owner plans to block all use of DMB — Toshiba just wants a piece of the action.
Federico Etro (Harvard): Etro proposes a new rationale for the persistence of monopolies based on a precommitment of the incumbent monopolist to invest in R&D. In other words, the monopolist stays on top, not by unlawfully exercising market power, but rather by continually investing in new technology.
Economic Journal, Vol. 114, pp. 281-303, April 2004
It looks like the job market for patent attorneys is still good. Need a job offer?
Update: A friend of mine has been a patent agent for several years in Chicago and also has a MolBio PhD. For family reasons, he is moving back to Northern California (Tiburon). He would like to continue doing patent work but does not want to commute to silicon valley. Please e-mail me patent@gmail.com with any leads or to request his info.
Currently, the Federal Circuit requires a “piercing of the corporate veil” for individual liability of corporate officers in a patent infringement suit. In a new manuscript, Lynda Oswald (Michigan) argues that the current standard is wrong and overly broad.
In adopting this piercing standard, the Federal Circuit has inadvertently and radically expanded the scope of individual officer liability and has exposed corporate officers to a form of strict liability for their corporation’s infringing activities. I propose instead a standard that parallels the “personal participation” standard of traditional corporate doctrine, which would ensure that culpable corporate actors are held liable in appropriate circumstances, but would avoid wholesale imposition of personal liability upon officers for the patent infringement of their corporations.
Supreme Court of Canada Friday upheld a claim by the Monsanto agricultural biotech company that a farmer had committed a gene patent violation by growing Monsanto-developed Ready Roundup canola seeds on his land without permission.
Patent law is traditionally justified as an innovation incentive. In a new working paper, Jochen Bigus (Hamburg University) argues that patent law also serves a second goal:
Namely, mitigating conflicts of interest in the venture financing process, thereby making innovations more likely.
Essentially Professor Bigus argues that the clear milestones provided by patent law allow for a better relationship between investor and innovator.
Yesterday, the Senate overwhelmingly passed S.1637 that limits tax deductions for charitable contributions of patent, copyright, trademark, trade name, trade secret, know-how, or software. The limit is the lesser of 5% of the market value (at the time of contribution) or $1,000,000. The House bill is in the Ways and Means committee.