Tag Archives: Inequitable Conduct

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Jefferson Medal recipient

  • The New Jersey Intellectual Property Law Association (NJIPLA) will award the 2012 Jefferson Medal to the Honorable Garrett E. Brown, Jr. (Ret.), Chief Judge, United States District Judge for the District of New Jersey. Following a 60 year tradition, the NJIPLA presents the Jefferson Medal annually to someone who has made exceptional contributions to the field of intellectual property law. Former Medalists include judges, members of Congress, Patent and Trademark Office officials and leaders of the intellectual property bar. Chief Judge Brown will be presented with the Jefferson Medal on June 8, 2012 at the annual Jefferson Medal Dinner at The Hilton at Short Hills, Short Hills, NJ.

    Chief Judge Brown recently joined the JAMS panel after a distinguished judicial and legal career. He served twenty-six years as United States District Judge for the District of New Jersey, the last six as Chief Judge, where he led the court-wide effort to provide prompt, efficient justice to civil litigants, and to implement new local patent rules. Prior to appointment to the federal judiciary, he served two years as Chief Counsel to the U.S. Maritime Administration. While in private practice, he concentrated on federal commercial litigation, including antitrust, employment, construction, environmental, banking, intellectual property, and securities matters. [Link]

Will Singapore Become a Patent Hotspot?

  • Singapore wants foreign IP attorneys and professionals to relocate there. A Patents Bill was introduced to the parliament, which will allow foreign patent professionals to practice in Singapore without going through the long process of passing exams and doing an internship with a local law firm, which is currently required. However, foreign attorneys will only be allowed to engage in work from other countries. The intention behind the proposed changes is that highly skilled IP professionals from across Asia and beyond will relocate to Singapore, where they will be ideally located to handle patent work for the whole Asia region. [Link] Patent Act

Patent Jobs:

  • Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience and a degree in EE, ME, or ChemE to work at their Minneapolis office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Klarquist Sparkman is searching for a patent attorney with 1-4 years of experience and an EE, CS, or physics degree to work at their Portland office. [Link]
  • Bacon & Thomas is seeking a patent attorney with 1-3 years of experience and a background in ME, EE, or similar to work at their Alexandria, VA office. [Link]
  • Klein, O'Neill & Singh is looking for a patent attorney/agent with 2-5 years of experience and a degree in EE, CS, or physics to work at their Irvine, CA office. [Link]
  • Buchanan Ingersoll & Rooney is searching for a trademark associate with 2-4 years of experience to work at their Alexandria, VA office. [Link]
  • TransTech Pharma is seeking an IP Counsel with 5+ years of experience and a science degree to work at their High Point, NC location. [Link]
  • Baker & Hostetler is looking for patent attorneys with 2+ years of experience with a degree in ME, EE, or materials to work at their Cincinnati office. [Link]
  • Solazyme is searching for a patent agent with 3-5 years of experience and a degree in bio sciences to work at their San Francisco location. [Link]
  • Trop, Pruner & Hu is seeking associates with an EE or CS backgrounds and a minimum of 2 years of experience to work at their Houston or Austin office. [Link]
  • A law firm in Cupertino has multiple openings for patent attorneys/agents with an Electrical or mechanical background. [Link]
  • NSIP LAW is looking for associates with a minimum of 4 years of experience in patent prosecution and an EE, CE, or CS degree to work at their Washington, DC office. [Link]
  • Myers Wolin is seeking a partner level patent or trademark attorney or small practice group with portables to join their firm located in Morristown, NJ. [Link]
  • Kilpatrick Townsend is searching for a student associate or patent agent with a degree in EE, CS, or physics to work at their Washington, DC office. [Link]
  • Los Alamos National Lab is looking for an experienced patent attorney with 8 years of experience and a technical background to work at their Los Alamos, New Mexico location. [Link]
  • Nagoya International Patent Firm is seeking a US patent attorney with 2-5 years of experience to work in Japan. [Link]
  • Banner & Witcoff is searching for lateral associates with EE or CS backgrounds to work at either their Washington, DC or Chicago office. [Link]
  • The Webb Law Firm is looking for a senior litigation attorney with a minimum of 7 years of experience to work at their Pittsburgh location. [Link]
  • The Webb Law Firm is seeking a patent litigation associate with a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
  • The Webb Law Firm is searching for associates with a degree in CS, CE, or EE and a minimum of 3 years of experience to work at their Pittsburgh location. [Link]
  • Perkins Coie is looking for a patent associate with a minimum of 3 years of experience and a degree in EE, physics, or CS to work at their Seattle office. [Link]
  • Fiala & Weaver is seeking patent attorneys/agents with 1+ years of experience and a degree in EE, CS, or physics. [Link]
  • FLSmidth is searching for a patent attorney with at least 5 years of experience to work in Salt Lake City. [Link]
  • Hamilton, Brook, Smith & Reynolds is looking for electrical associates with 3-5 years of patent pro or IP litigation experience to work at their Concord, Massachusetts office. [Link]
  • Sandia National Labs is seeking a patent attorney with 4-8 years of experience and a degree in physics, EE, ChemE or relevant field to work at their Albuquerque location. [Link]
  • Solazyme is searching for an IP paralegal with 2-5 years of experience to work at their San Francisco location. [Link]
  • Senniger Powers is looking for an associate attorney with a minimum of 2 years of experience and a degree in EE, CE, or CS to work at their St. Louis office. [Link]
  • Harness, Dickey & Pierce is seeking an IP litigation associate with 2-4 years of experience to work at their St. Louis location. [Link]
  • Hoxie & Associates is searching for an experienced patent prosecution paralegal to work at their Millburn, NJ office. [Link]
  • Faegre Baker Daniels is looking for a Biotech/Biochem/Chemical patent agent with at least 2 years of experience and a Ph.D. to work at their Denver office. [Link]
  • Schwegman, Lundberg & Woessner is seeking attorneys with 1+ years of experience and a degree in software/Electrical engineering, organic chemistry (Ph.D.), chemical/polymer engineering, and ME. [Link]
  • Telesign is seeking an IP analyst with at least a bachelor's degree to work at their Marina Del Rey, CA location. [Link]
  • The Michaud-Kinney Group is seeking 2 IP attorneys with at least 3 years of experience: 1 with a background in chemistry or biology and the other with a background in mechanical or electrical technologies. [Link]
  • AdvantEdge Law Group is looking for patent attorneys/agents with a degree in EE, CE, or CS and 2-5 years of experience to work at their South Jordan, Utah location. [Link]
  • Schwabe, Williamson & Wyatt is searching for a patent associate with a background in CS and/ or EE and 4 years of experience to work in either their Seattle or Portland office. [Link]
  • NXP is seeking a Sr. patent attorney, IP and licensing with 10-15+ years of experience to work at their San Jose location. [Link]
  • Steptoe & Johnson is searching for IP associates with a minimum of 2 years of experience in patent litigation and a background in EE to work at in their DC office. [Link]
  • Harrity & Harrity is looking for patent attorneys/agents with a minimum of 2 years of experience and a background in EE, CS, or physics to work in their Fairfax, VA office. [Link]
  • Turner, Padget, Graham, and Laney is seeking a patent attorney 3-5 years of experience in drafting and litigating patents to work in their Greenville, SC office. [Link]
  • Weaver Austin Villeneuve & Sampson is searching for a patent attorney/agent with a EE and/or CS background and 3-5 years of experience to work in their Oakland office. [Link]

Upcoming Events:

  • The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
  • The Louisville Bar Association, IP Section, is hosting a half-day CLE program covering various topics in patent law, including patent-eligible subject matter in light of Mayo, patent claim interpretation, joint and distributed infringement, and inequitable conduct. The CLE will be held on June 12 from 9 AM until 12 PM at the LBA office in downtown Louisville, Kentucky. Speakers include Donald S. Chisum, author of Chisum on Patents, and Janice M. Mueller, author of Patent Law, Third Edition. [Link]
  • A free webinar on Improving Decision-Making with Patent Claims Analytics hosted by IPVision will take place June 12, 2012 at 1 pm EST/10 am PST. Those who attend will receive a free claims analysis. Sign up here: [Link]
  • The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
  • AIPLA's 4th Annual Trademark Bootcamp will be held in Alexandria, VA on June 22. Learn the trademark basics from top trademark practitioners. This day-long course provides a complete overview of the trademark prosecution process from start to finish, with sessions including: pre-filing considerations, the application process, the examination process, and many more. [Link]
  • The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]
  • IP Dispute Resolution 2012 will take place June 28-29 in London. Hear experiences from Kraft Foods, Nokia, Ericsson, Proctor & Gamble, RIM, Google, Unilever…Discuss current litigation issues, procedures & remedies in all relevant jurisdictions. Guest speakers include: Mialeeka Williams, Ignacio de Castro, Michael Bishop, Richard Vary, Kevin Cranman, and many others. [Link] (PatentlyO readers receive a 10% discount)
  • The AUTM annual meeting will take place July 23-25 in Oklahoma City. There will be many intriguing sessions and lectures to attend. Guest speakers include: Dennis Crouch, Kevin Noonan, Todd Sherer, and many more. [Link]
  • ACI's Freedom to Operate conference is scheduled for July 30-31, 2012 in Philadelphia, PA. Freedom to operate searching and analysis, always a critical component of any patent counsel's profession, is undergoing its biggest shake-up in a generation. Expansion of the obviousness standard, the America Invents Act provisions now requiring a truly global search, and other developments have left patent attorneys and business development professionals perplexed as they try to protect valuable IP in an increasingly competitive global environment. [Link] Register for with PO 200 for a discount.
  • Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.comor e-mail mailto:info@chisum.com
  • IP Law Summer School will be held August 13-17 in Cambridge, UK. The only residential conference for Intellectual Property lawyers who want to get ahead… an unrivalled resource for the consolidation of, or initiation into all of the central concepts in IP, presented in the context of the latest developments in the industry. [Link] (PatentlyO readers receive a 10% discount)

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Freedom of Speech and Facebook

  • Technology is forever changing, and with technological change there is also legal change. In a recent Virginia District Court case, the judge decided that liking a Facebook page is not protected speech. The judge stated that, "It is the court's conclusion that merely 'liking' a Facebook page is insufficient speech to merit constitutional protection. In cases where courts have found that constitutional speech protections extended to Facebook posts, actual statements existed in the record." I would like to think that if I like a page or a comment on Facebook or any other website with similar features that it is protected under law. Eugene Volokh of the University of California recently stated in a blog post that: A Facebook "like" is a means of conveying a message of support for the thing you're liking. That's the whole point of the "like" button; that's what people intend by clicking "like," and that's what viewers will perceive… I would treat "liking" as verbal expression — though it takes just one mouse-click, it publishes to the world text that says that you like something. But even if it's just treated as symbolic expression, it is still constitutionally protected, as cases such as Texas v. Johnson (1989) (the flag-burning case) show." [Link] Case

AOL Will "Supposedly Give Shareholders Proceeds From Patent Sale

  • Last month AOL sold an estimated 800 patents to Microsoft for around $1 billion. When making the sale, AOL stated that they would give significant amount of the sales proceeds to shareholders. Subsequently, AOL shares rose 35% in April and is currently trading around $26.50 per share. AOL's CEO recently stated that AOL will give 100% of the proceeds of the sale to shareholders, with details to be released. [Link] [Link]

Chisum Patent Academy

  • Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.com or e-mail mailto:info@chisum.com

Patent Jobs:

  • Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience to work at their Minneapolis office. [Link]
  • Luminex is searching for a patent associate with 3-6 years of experience and a graduate degree in molecular bio to work at their Austin, Texas location. [Link]
  • Faegre Baker Daniels is looking for a patent litigation associate with 1-2 years of experience to work at their Indianapolis office. [Link]
  • North Star IP is seeking patent associates with 3 to 4+ years of experience and a background in EE, CS, or CE to work at their Washington DC office. [Link]
  • Finnegan is searching for an attorney with a background in electrical technologies and 1 to 3 years of experience in patent prosecution or litigation to work at their Reston, VA office. [Link]
  • Tarolli, Sundheim, Covell & Tummino is looking for a patent attorney with at least 4 years of experience and a chemical or biochemical background to work at their Cleveland office. [Link]
  • Hickman Palermo Truong Becker Bingham Wong is seeking attorney with 2+ years of experience and a degree in CS, EE, CE, or physics to work at their San Jose office. [Link]
  • Dickstein Shapiro is searching for 2 IP associates with 2-5 years of experience in prosecution and litigation and a degree in EE to work at their DC office. [Link]
  • Tokyo Electron is looking for a patent agent/attorney with 5 years of experience and an advanced degree in EE to work at their Austin, Texas location. [Link]
  • Hiscock & Barclay is seeking patent attorneys and patent agents with 3-5 years of experience to work in their upstate NY office. [Link]
  • Hodgson Russ is searching for a patent attorney with at least 2 years of experience with a degree in EE to work at their Buffalo, NY office. [Link]
  • Myers Wolin is looking for a partner level attorney (patent or trademark) for their Morristown, NJ office. [Link]
  • Brooks Kushman is seeking a patent attorney with an EE or CS degree and 3-6 years of experience to work at their Southfield, Michigan office. [Link]
  • Michaud-Kinney Group is searching for an IP attorney with a chem or bio background and at least 3 year of experience to work at their Middletown, Connecticut office. [Link]
  • Sutherland is looking for an associate or patent agent with a degree in EE, CE, CS, or a related discipline to work at their Atlanta or Austin office. [Link]
  • Abel IP is seeking a patent associate with 4+ years of experience in the chemical and/or ceramic materials art areas to work at their Austin, Texas office. [Link]
  • Murphy, Bilak & Homiller is searching for a patent attorney or patent agent with 1-4 years of experience and a degree in EE to work at their Cary, NC office. [Link]
  • Sheppard Mullin Richter & Hampton is looking doe a mid-level associate with a CS or EE degree to work at their Palo Alto office. [Link]
  • The Ovidian Groupis is seeking Director, IP asset development, to work at their Berkeley, CA location; this person will have a JD degree and 2-5 years of patent pro experience. [Link]

Upcoming Events:

  • LES 2012 Spring Meeting – "Licensing to Solve the Innovation Gap" will be held May 15-17, Boston, MA. Speakers from GE Healthcare, Harvard, Hoffmann-LaRoche, Intel, Johnson & Johnson, Merck, MIT, Pfizer, Stanford and more will share their expertise on licensing to solve the innovation gap. (Patently-O readers save $100 by using promo code PO12 when registering) [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • Fitch, Even, Tabin & Flannery, LLP will present a free one-hour CLE webinar, "Inequitable Conduct After Therasense: Materiality and the Intent to Deceive in Aventis Pharma S.A. v. Hospira, Inc.," on May 23, 2012 at 12 noon EST. On April 9, 2012, for the first time after the Therasense decision, the Federal Circuit affirmed a finding of inequitable conduct in Aventis, signifying that inequitable conduct based on failure to cite prior art to the U.S. Patent and Trademark Office is still a viable patent infringement defense. During this webinar, Fitch Even partner Alison Aubry Richards will discuss how to defend against an inequitable conduct defense; how to maximize the chances of a successful inequitable conduct defense; and how to avoid inequitable conduct as a prosecuting attorney, before and during litigation. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randall R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
  • On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
  • ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
  • The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
  • The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
  • The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Freedom of Speech and Facebook

  • Technology is forever changing, and with technological change there is also legal change. In a recent Virginia District Court case, the judge decided that liking a Facebook page is not protected speech. The judge stated that, "It is the court's conclusion that merely 'liking' a Facebook page is insufficient speech to merit constitutional protection. In cases where courts have found that constitutional speech protections extended to Facebook posts, actual statements existed in the record." I would like to think that if I like a page or a comment on Facebook or any other website with similar features that it is protected under law. Eugene Volokh of the University of California recently stated in a blog post that: A Facebook "like" is a means of conveying a message of support for the thing you're liking. That's the whole point of the "like" button; that's what people intend by clicking "like," and that's what viewers will perceive… I would treat "liking" as verbal expression — though it takes just one mouse-click, it publishes to the world text that says that you like something. But even if it's just treated as symbolic expression, it is still constitutionally protected, as cases such as Texas v. Johnson (1989) (the flag-burning case) show." [Link] Case

AOL Will "Supposedly Give Shareholders Proceeds From Patent Sale

  • Last month AOL sold an estimated 800 patents to Microsoft for around $1 billion. When making the sale, AOL stated that they would give significant amount of the sales proceeds to shareholders. Subsequently, AOL shares rose 35% in April and is currently trading around $26.50 per share. AOL's CEO recently stated that AOL will give 100% of the proceeds of the sale to shareholders, with details to be released. [Link] [Link]

Chisum Patent Academy

  • Earn Advanced Patent Law CLE in Spectacular Seattle This Summer: The Chisum Patent Academy is now accepting registrations for its 4th annual summer seminar in Seattle, July 30 – August 1, 2012. Their uniquely insightful, interactive seminars are limited to 10 participants. All sessions are taught by Donald Chisum and Janice Mueller. For further details on seminar coverage and registration information, see http://www.chisumpatentacademy.com or e-mail mailto:info@chisum.com

Patent Jobs:

  • Faegre Baker Daniels is seeking a patent associate with 2-6 years of experience to work at their Minneapolis office. [Link]
  • Luminex is searching for a patent associate with 3-6 years of experience and a graduate degree in molecular bio to work at their Austin, Texas location. [Link]
  • Faegre Baker Daniels is looking for a patent litigation associate with 1-2 years of experience to work at their Indianapolis office. [Link]
  • North Star IP is seeking patent associates with 3 to 4+ years of experience and a background in EE, CS, or CE to work at their Washington DC office. [Link]
  • Finnegan is searching for an attorney with a background in electrical technologies and 1 to 3 years of experience in patent prosecution or litigation to work at their Reston, VA office. [Link]
  • Tarolli, Sundheim, Covell & Tummino is looking for a patent attorney with at least 4 years of experience and a chemical or biochemical background to work at their Cleveland office. [Link]
  • Hickman Palermo Truong Becker Bingham Wong is seeking attorney with 2+ years of experience and a degree in CS, EE, CE, or physics to work at their San Jose office. [Link]
  • Dickstein Shapiro is searching for 2 IP associates with 2-5 years of experience in prosecution and litigation and a degree in EE to work at their DC office. [Link]
  • Tokyo Electron is looking for a patent agent/attorney with 5 years of experience and an advanced degree in EE to work at their Austin, Texas location. [Link]
  • Hiscock & Barclay is seeking patent attorneys and patent agents with 3-5 years of experience to work in their upstate NY office. [Link]
  • Hodgson Russ is searching for a patent attorney with at least 2 years of experience with a degree in EE to work at their Buffalo, NY office. [Link]
  • Myers Wolin is looking for a partner level attorney (patent or trademark) for their Morristown, NJ office. [Link]
  • Brooks Kushman is seeking a patent attorney with an EE or CS degree and 3-6 years of experience to work at their Southfield, Michigan office. [Link]
  • Michaud-Kinney Group is searching for an IP attorney with a chem or bio background and at least 3 year of experience to work at their Middletown, Connecticut office. [Link]
  • Sutherland is looking for an associate or patent agent with a degree in EE, CE, CS, or a related discipline to work at their Atlanta or Austin office. [Link]
  • Abel IP is seeking a patent associate with 4+ years of experience in the chemical and/or ceramic materials art areas to work at their Austin, Texas office. [Link]
  • Murphy, Bilak & Homiller is searching for a patent attorney or patent agent with 1-4 years of experience and a degree in EE to work at their Cary, NC office. [Link]
  • Sheppard Mullin Richter & Hampton is looking doe a mid-level associate with a CS or EE degree to work at their Palo Alto office. [Link]
  • The Ovidian Groupis is seeking Director, IP asset development, to work at their Berkeley, CA location; this person will have a JD degree and 2-5 years of patent pro experience. [Link]

Upcoming Events:

  • LES 2012 Spring Meeting – "Licensing to Solve the Innovation Gap" will be held May 15-17, Boston, MA. Speakers from GE Healthcare, Harvard, Hoffmann-LaRoche, Intel, Johnson & Johnson, Merck, MIT, Pfizer, Stanford and more will share their expertise on licensing to solve the innovation gap. (Patently-O readers save $100 by using promo code PO12 when registering) [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • Fitch, Even, Tabin & Flannery, LLP will present a free one-hour CLE webinar, "Inequitable Conduct After Therasense: Materiality and the Intent to Deceive in Aventis Pharma S.A. v. Hospira, Inc.," on May 23, 2012 at 12 noon EST. On April 9, 2012, for the first time after the Therasense decision, the Federal Circuit affirmed a finding of inequitable conduct in Aventis, signifying that inequitable conduct based on failure to cite prior art to the U.S. Patent and Trademark Office is still a viable patent infringement defense. During this webinar, Fitch Even partner Alison Aubry Richards will discuss how to defend against an inequitable conduct defense; how to maximize the chances of a successful inequitable conduct defense; and how to avoid inequitable conduct as a prosecuting attorney, before and during litigation. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randall R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
  • On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
  • ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]
  • The Los Angeles Intellectual Property Law Association invites you to join us for the 2012 LAIPLA Spring Seminar at the beautiful Lodge at Torrey Pines in La Jolla, California, on June 8-10, 2012. The Spring Seminar features nine hours of panel discussions and presentations on the latest developments in intellectual property law, provides excellent networking opportunities at the cocktail receptions and dinners, and allows sufficient time for relaxation and enjoyable outdoor activities, including a golf tournament at the Torrey Pines Golf Course, home of the 2008 U.S. Open. Speakers and panelists include federal judges, practitioners (including in-house attorneys), and academics. [Link]
  • The C5's 11th Annual International Conference on Maximising Pharma Patent Lifecycles conference will be held June 20-21 in London. Patent lifecycle management is becoming more crucial for pharmaceutical companies with the cost of research and drugs continually rising and companies constantly trying to obtain the maximum financial benefit from existing patent terms. In addition to protecting existing IP rights and seeking methods to extend current patent lifecycles, pharmaceutical companies are faced with the challenge of inventing new drugs and diversifying portfolios to replace sales on older and generic drugs. [Link]
  • The ACI 3rd annual Hatch-Waxman Boot Camp will be held June 25-26 in San Diego. Topics to be covered include: the organization, jurisdiction of the FDA and the PTO and their interplay in the patenting of drugs and biologics, how the approval process for drugs and biologics is connected to the patenting of these products, how the Hatch-Waxman Act established the paradigm for market entry of generic small molecule drugs – and how biosimilar and many others. [Link]

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

Despite Therasense: Federal Circuit Finds Aventis Patent Unenforceable

Patent, , ,

by Dennis Crouch

This is an important case showing that inequitable conduct based upon failure to cite prior art will continue to be viable.

Aventis Pharma v. Hospira (Fed. Cir. 2012)

Aventis holds two patents that cover its branded chemotherapy drug Taxotere. According to the patent, the active drug is mixed with other ingredients to form a perfusion that can be injected intravenously without causing anaphylactic or alcohol intoxication symptoms.

In litigation to prevent Hospira from bringing a generic form to market, the district court ruled the patents unenforceable for inequitable conduct during prosecution of the patents. On appeal, the Federal Circuit has affirmed that holding. This case marks the first time that the appellate court has upheld an inequitable conduct finding since raising the standard of proof in the 2011 Therasense v. BD en banc decision.

Inequitable conduct occurs when a patent applicant intentionally and materially misleads the patent office. Both intent and materiality must be proven. In Therasense, the court additionally held that materiality is normally only satisfied if the misconduct was a “but-for” cause of the given patent being issued. (Caveat for egregious misconduct).

This case involves the most typical inequitable conduct allegation: failing to notify the USPTO of a known reference that impacts patentability.

Lets walk through the steps of materiality and intent:

Materiality: In addition to inequitable conduct, the court also held a few of the patent claims invalid as obvious – relying upon the withheld reference. According to the court, this fact alone proves materiality – since the reference rendered the claim invalid. Two procedural issues add to this conclusion: (1) Claims are (according to the law) more narrowly construed at trial than at the USPTO and therefore references that are material at trial would have definitely been material at the USPTO. (2) Invalidation requires clear and convincing evidence but proof of materiality for inequitable conduct only requires a preponderance of the evidence. As such, information that works to prove the higher standard would certainly work to prove the lower standard.

Intent: To win, the defendant must show that the defendant had specific intent deceive. This can be proven by inference, but only if that conclusion is the “single most reasonable inference able to be drawn from the evidence.” Here, the inventor testified that he saw the references as explaining failed experiments and therefore need not be disclosed to the PTO. However, the judge found that the inventor lacked credibility and that some evidence suggested the inventor had learned valuable information from the reference.

On appeal, the court confirmed that these elements were met and that the patents were therefore obtained through inequitable conduct.

Unenforceable Patents

Patent,
By Jason Rantanen
Although the en banc Federal Circuit raised the bar for establishing inequitable conduct in Therasense v. Becton Dickinson, findings of inequitable conduct are still possible as illustrated by the district court's decision on remand in that case last week.  Given that the harsh consequence of a finding of inequitable conduct remain unchanged by Therasense, it remains a very real risk for patent holders asserting their patents in litigation.  What, then, are the characteristics of patents that historically have been the subject of an inequitable conduct finding? 

In a recently released draft paper, Lee Petherbridge, Polk Wagner, and I discuss the results of a study in which we empirically examined patents that were determined to be unenforceable due to inequitable conduct and compared them to litigated patents.  We report evidence that unenforceable patents are different from litigated patents.  Unenforceable patents have significantly longer pendency, more parent applications, and contain more claims.  Unenforceable patents also cite fewer U.S. patent references.  Surprisingly, we found no evidence that patents with foreign inventors are more likely to be unenforceable and no evidence that the subject matter of a patent associates with an inequitable conduct determination.  Using these observations, we hypothesize about why inequitable conduct happens, how inequitable conduct relates to patent policy, and what – if anything – practitioners who are concerned about an inequitable conduct determination might take as potential warning signs.

We are still grappling with what our results might teach about why inequitable conduct happens. As this is a working draft, we welcome any comments about that or any other aspects of the study.  The paper can be downloaded here: http://papers.ssrn.com/abstract=2031173.

District Court Concludes Therasense Patent Unenforceable On Remand

Patent,

By Jason Rantanen

Therasense, Inc. v. Becton, Dickinson and Company (N.D. Cal. 2012) Download 2012-03-28 Therasense v Becton Dickinson

Following the Federal Circuit's remand in Therasense v. Becton Dickinson, the district court has concluded that Patent No. 5,820,551 is unenforceable due to inequitable conduct under the higher standards for intent and materiality articulated by the en banc court.  Specifically, the judge found that the withheld briefs were material under the "but for" test for materaliality, that the Abbot attorney and scientist knew of that but-for materiality, and that they possessed specific intent to deceive the patent office. 

While all of the district judge's intepretations of Therasense are worth discussing, I find the characterization of Therasense as a whole to be the most interesting:

"Under the new standard, therefore, an applicant or attorney may knowingly and deliberately withhold from the PTO any reference known to be inconsistent with a position takeny by him or her before the PTO so long as the withholder does not know that the reference itself would lead to a rejection.  It would not be enough to prove that the applicant or attorney expected that the concealment would help win an allowance or expected that, if revealed to the examiner, the reference would cause the examiner to merely question patentability.  Rather, the applicant or attorney must know – and it must be later proven that he or she knew, that the item, if revealed, would lead to a rejection."

Slip Op. at 3. 

 

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , , , ,

USPTO Patent Externship

  • The USPTO will be accepting application for their patent externship until February 29. Last year there were about 200 students who participated in the program. The program will last anywhere from 8-10 weeks and is at the USPTO headquarters in Alexandria, Virginia. This is a great opportunity for anyone who wants to work in the patent field. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can’t: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Patent Jobs:

  • Stoel Rives is searching for an associate attorney with 3-5 years of experience in patent prosecution and an EE background to work at their Salt Lake City office. [Link]
  • Weaver Austin Villeneuve & Sampson is seeking a patent attorney with 3-5 years of experience and a background in EE to work at their Oakland office. [Link]
  • Schwegman, Lundberg & Woessner is looking for patent attorneys with 2+ years of experience or 5+ years of experience if telecommuting. [Link]
  • Holland & Knight is searching for 2 IP litigation associates with 4-6 years of experience to work at their Boston or Chicago offices. [Link]
  • Howard & Howard is seeking IP associates with 4-8 years of experience of patent prep experience to work at their Royal Oak, Michigan office. [Link]
  • Armstrong Teasdale is looking for patent attorneys with 2-6 years of experience to work in one of their offices. [Link]
  • Pramudji Law Group is searching for a patent agent/attorney/engineer with at least 2 years of patent experience to work at their Houston office. [Link]
  • Shook, Hardy & Bacon is seeking a litigation associate with 3-4 years of litigation experience work in their Kansas City office. [Link]
  • Paul Hastings is searching for a patent litigation associate with a computer science degree and experience with patent litigation to work in their Atlanta office. [Link]
  • Krieg DeVault is looking for an IP associate with 3-7 years of experience to work in their Indianapolis office. [Link]
  • UTC Power is searching for an IP paralegal with 2-4 years of IP experience to work at their South Windsor, Connecticut location. [Link]
  • Fennemore Craig is seeking an experienced patent attorney to work in their Phoenix or Denver office. [Link]
  • Gore Medical Products is searching for an IP technical specialist to work at their Flagstaff location. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP practice to work at their Spokane office. [Link]
  • Sutherland is seeking a patent associate/agent with 2-5 years of experience and a degree in chemical engineering to work at their Atlanta office. [Link]

Upcoming Events:

  • IBC Legal’s 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, “Patent Reexaminations in Parallel with Litigation,” on February 22, 2012 at 12 noon EST. Joseph E. Shipley will discuss the factors that should be considered in deciding whether to seek reexamination as an alternative or adjunct to litigating patent validity in the federal courts. Topics will include what can and cannot be achieved in reexamination, current statistics on outcome, associated risks and costs, time frames, and reexamination options and alternatives. The upcoming new USPTO procedures–Post-Grant Review and Inter Partes Review–will also be covered. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world’s largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • C5’s 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute’s FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute’s PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant’s strategy for entering the market. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , , , ,

USPTO Patent Externship

  • The USPTO will be accepting application for their patent externship until February 29. Last year there were about 200 students who participated in the program. The program will last anywhere from 8-10 weeks and is at the USPTO headquarters in Alexandria, Virginia. This is a great opportunity for anyone who wants to work in the patent field. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can’t: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Patent Jobs:

  • Stoel Rives is searching for an associate attorney with 3-5 years of experience in patent prosecution and an EE background to work at their Salt Lake City office. [Link]
  • Weaver Austin Villeneuve & Sampson is seeking a patent attorney with 3-5 years of experience and a background in EE to work at their Oakland office. [Link]
  • Schwegman, Lundberg & Woessner is looking for patent attorneys with 2+ years of experience or 5+ years of experience if telecommuting. [Link]
  • Holland & Knight is searching for 2 IP litigation associates with 4-6 years of experience to work at their Boston or Chicago offices. [Link]
  • Howard & Howard is seeking IP associates with 4-8 years of experience of patent prep experience to work at their Royal Oak, Michigan office. [Link]
  • Armstrong Teasdale is looking for patent attorneys with 2-6 years of experience to work in one of their offices. [Link]
  • Pramudji Law Group is searching for a patent agent/attorney/engineer with at least 2 years of patent experience to work at their Houston office. [Link]
  • Shook, Hardy & Bacon is seeking a litigation associate with 3-4 years of litigation experience work in their Kansas City office. [Link]
  • Paul Hastings is searching for a patent litigation associate with a computer science degree and experience with patent litigation to work in their Atlanta office. [Link]
  • Krieg DeVault is looking for an IP associate with 3-7 years of experience to work in their Indianapolis office. [Link]
  • UTC Power is searching for an IP paralegal with 2-4 years of IP experience to work at their South Windsor, Connecticut location. [Link]
  • Fennemore Craig is seeking an experienced patent attorney to work in their Phoenix or Denver office. [Link]
  • Gore Medical Products is searching for an IP technical specialist to work at their Flagstaff location. [Link]
  • Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP practice to work at their Spokane office. [Link]
  • Sutherland is seeking a patent associate/agent with 2-5 years of experience and a degree in chemical engineering to work at their Atlanta office. [Link]

Upcoming Events:

  • IBC Legal’s 20th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
  • Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, “Patent Reexaminations in Parallel with Litigation,” on February 22, 2012 at 12 noon EST. Joseph E. Shipley will discuss the factors that should be considered in deciding whether to seek reexamination as an alternative or adjunct to litigating patent validity in the federal courts. Topics will include what can and cannot be achieved in reexamination, current statistics on outcome, associated risks and costs, time frames, and reexamination options and alternatives. The upcoming new USPTO procedures–Post-Grant Review and Inter Partes Review–will also be covered. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world’s largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
  • The Florida Bar 3rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
  • Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
  • C5’s 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute’s FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute’s PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant’s strategy for entering the market. [Link]

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

The New Choice: Inequitable Conduct or Copyright Infringement

Patent, ,

CopyrightSymbolMany patent applicants enjoy the fact that the USPTO lists all cited and considered references on the face of each patent. That listing provides an apparent presumption that the newly patented invention is a step beyond anything found in those references. Economists have even shown that patents with more cited references tend to be relatively more valuable. Patent applicants are also under a duty to submit prior art references that are material to patentability. 37 C.F.R. §1.56.

A negative side of citation is now emerging. Recently, copyright owners have begun trolling non-patent prior art citations to see whether any of their works were copied and submitted to the USPTO. Of course, following standard law firm practice additional copies were likely generated for the file and for review by the inventors or attorneys. These copies may be hard copes or electronic versions, but as MegaUploads can now attest, that makes no difference in copyright law. Statutory damages for copyright infringement range from $750 to $150,000 per work. The exact figure is largely within the discretion of the judge and is based upon what the "the court considers just" and whether the infringement was willful.

A number of scientific journals have begun to threaten law firms and their clients for submitting copies of journal articles to the USPTO.  The typical cease & desist letter that I've seen says something like the following:  

"We've been trolling through USPTO records and found that you submitted a copy of one of our articles articles to the USPTO and we suspect that you maintained other copies in your files and distributed additional copies within your organization. These actions constitute copyright infringement and are not fair use.  We will sue you unless you come into compliance with our CCC licensing scheme."

To be clear, the focus in the letter is on copies being submitted to the USPTO as well as copies retained in the file and distributed internally.

I looked-into the CCC automated licensing system and found that they offered the right to make copies of a NATURE article (one of the journals taking action) for $32 per copy. 

USPTO Response: In a surprisingly bold statement, the USPTO's General Counsel Bernie Knight released a statement late last week indicating the USPTO's belief that submission of unlicensed copies of copyrighted materials to the USPTO for the purpose of complying with Rule 56 cannot create copyright liability because that action is fair use under 17 U.S.C. 107.  This issue previously arose when the USPTO was building the PAIR electronic record system.  It was because of potential copyright concerns that the USPTO decided not to make available non-patent prior art through the PAIR system. However, the USPTO has offered its position that it is fair use for the agency to charge a fee to make and distribute paper copies of the copyrighted works (as part of the file history).

The USPTO took no position on whether applicant's creation of file-copies and internal distribution of copies also qualify for the fair use defense. In addition, applicants who have obtained limited licenses to works may be under a contractual duty to avoid making further copies even if those copies would have been fair use.

How much money?: On an annual basis, I would estimate that at least five hundred thousand journal articles are submitted to the USPTO for consideration.  Each submission probably results two local copies for the file & review by the attorney, inventors, and others in addition to the submitted copy.  That takes the annual licensing market to around $50 million.  Not a tremendous amount for a nationalmarket, but that may be enough to save the struggling scientific journal industry.

Fair Use: An interesting aspect of fair use analysis is that the outcome can change based upon market conditions and general custom.  Here, for instance, if it is very easy to obtain a license by simply paying a fee online and a number of patent applicants begin paying that fee regularly, an action that was once considered fair use may again fall under the copyright infringement umbrella. 

How will your firm respond? Should your engagement letter be amended? 

Guest Post: Should you Submit Third-Party Prior Art?

Patent, , , , , , , , ,

By Paul Morgan

Introduction and Summary

On January 5 the PTO proposed a new 37 CFR §1.290 in the Federal Register for third party pre-issuance submissions of prior art in patent applications of others. The new rule is needed to implement the new statutory provision – 35 U.S.C. §122(e) – found in Section 8 of the AIA [Leahy Smith America Invents Act]. 35 U.S.C. §122(e) will be effective as of September 16, 2012, and will be usable against any pending applications [including reissues but not reexaminations] filed before or after that date. It will permit anyone to submit patents, published patent applications, or other printed publications, to the USPTO for consideration and inclusion in the record of a patent application as long as the submission includes a "concise statement of relevance" and meets some other paperwork requirements, which need not be discussed here since they will be clearly spelled out in the final PTO rules. As discussed below, §122(e) includes a significant expansion of the time period for submitting prior art documents to be put into someone else's pending application. The statute also expands what you can say about the documents (accompanying explanations and arguments) well beyond the present limitations found in 37 CFR §1.99. The submission process will remain cheap and simple, but it will still present the same conundrums as to whether or not you should use it?

In the same Federal Register is the proposed PTO rulemaking for amending 37 CFR §1.501 to accommodate the amendment of 35 U.S.C. §301. This amendment will slightly expand what information anyone can submit to the USPTO for inclusion in an already issued patent file when accompanied by a written explanation regarding the "pertinency and manner of applying" the information to at least one patent claim. That expand [new] information which can be put into an issued patent file will include written statements made by the patent owner before a Federal court or the Office regarding the scope of any claim of the patent. But the Office's use of such written statements will be limited to determining the meaning of a patent claim in reexamination proceedings and post grant review proceedings. This provision is also effective on September 16, 2012.

The Present Situation [PRE AIA]

First keep in mind that the PTO considers it to be actionable unethical conduct to put any papers into anyone else's ex parte [normal] patent application file unless there is an express statutory basis for doing so. Furthermore, papers attempted to be filed in a reexamination in which you are not a party [other than just the initial request papers for an ex parte reexamination], will not be entered. Adverse prior art submissions for anything in the PTO are quite restricted.

37 CFR §1.291 "Protests by the public against pending applications" and 37 CFR §1.292 "Public use proceedings" have existed for many years, but have been rarely used, and I suspect that few PTO practitioners or PTO personnel have ever seen one. Some senior PTO officials I asked at a CLE meeting several years ago doubted if there had been more than a handful per year. The rare Rule 292 proceedings are mostly used in connection with a parallel interference. Rule 291's potential usage was significantly restricted when the statute providing for U.S. 18 month application publications went into effect, ending Rule 291 "protest" filing opportunities after an application publication date.

The PTO at that time also put severe rule constraints that were not statutorily required into a 37 CFR §1.99 limiting what could be submitted and when. Rule 99 has a short time limit of only two months following the application publication date. Rule 99 also expressly states at (d) that a "submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section." There is also a limit of 10 submitted documents. The PTO even threatened to reject submitted prior art patent copies if they were merely marked or high-lined to show the examiner where the relevant teaching or disclosure was buried in the patent! It seemed obvious to me at that time that the PTO did not really want to be bothered with any extra examiner work from third party prior art submissions. [The AIA has now at least made it clear that that is not quite what Congress has in mind.] An English language translation must be provided for all relevant portions of any listed non-English language document to be considered by the examiner, and that requirement will continue under the proposed new rules. Some patent attorneys reportedly consider it preferable to just send prior art to an applicant's patent attorney by registered mail and rely on the inequitable conduct concerns of that patent attorney to get that patent attorney to file the prior art the application, or to set up an IC defense if they do not.

35 U.S.C. §301 above [with its original 37 CFR §1.501] was enacted years ago accompanying the first [ex parte] reexamination system. It is simply to allow people to place prior art in an issued patent file without having to initiate a reexamination, so that the art might hopefully be considered if anyone subsequently requested a reexamination. It is understood that §301 has rarely been used, and I am not aware of any PTO statistics to the contrary, even though §301 says that it can be done anonymously. My very limited experience was that the PTO clerical staff did not know what to do with the [rare] §301 submittal and it was not placed in the patent file until we made follow-up efforts. [A copy of the PTO submittal mailed to the patent owner was helpful for a licensing discussion, but I wouldn't count on that happening often.]

What's New?

New 35 U.S.C.122(e)(1) and its proposed new rule 37 CFR §1.290 will greatly expand when you can legally put prior art into someone else's pending application file. As shown below, that is awkwardly expressed as "before the earlier of .. or the later of" three events in an application. But clearly it will normally be available for a much longer time period than the mere 2 months after a patent application is published of present Rule 99. It may be submittable for several years for applications not yet having a first office action with a claim rejection, as long as there is as yet no notice of allowance. Nor can the present unreasonable Rule 99 prevention of any explanations or comments on the submitted art remain, since "a concise description of the asserted relevance of each submitted document" is specifically required by this new statute:

(e) Preissuance Submissions by Third Parties-

(1) IN GENERAL- Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of–

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

(B) the later of–

(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or

(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS- Any submission under paragraph (1) shall–

(A) set forth a concise description of the asserted relevance of each submitted document;

(B) be accompanied by such fee as the Director may prescribe; and

(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

As noted, the proposed amended 37 CFR §1.501 for the AIA amendment of 35 U.S.C. §301 will just slightly add to the information can be submitted to the PTO to merely put into an issued patent file. That information can now comprise or include written statements made by the patent owner before a Federal court or the Office regarding the scope of any claim of the patent, and that information can supposedly be used in subsequent actual reexaminations. However, even if that made sense tactically or strategically in some situation, perhaps in anticipation of a potential ex parte reexamination initiated by the patent owner itself, I fail to see how that kind of material can affect that many reexaminations? The Fed. Cir. requirement that claim scope in a reexamination apply a "broadest reasonable interpretation" test is not the same as claim interpretation in patent litigation.

But Do You Really Want To Do It & How Likely Is the Overall Usage?

How likely is it that this somewhat increased opportunity to cite prior art in applications or patent files of others will be used? That depends largely on whether you think doing so is really a good idea or not. That obviously includes guessing how likely is a regular examiner in normal ex parte patent examination [not a reexamination] going to consider and apply that prior art to reject claims? A prior statistical study published by Prof. Crouch on his Patently-O blog of a low examiner usage rate of prior art cited by the applicants themselves is not encouraging. But perhaps a novel third party submission is more likely to get an examiner's attention and claim rejections than routine applicant IDS dumps?

Even if that effectiveness was predictable, there is clearly a serious risk in third party submissions of art into applications of others under any system. It will case the application owner to think that someone else thinks their patent application is important enough be worth attacking its claim scope. That is logically going to cause the patent application owner to put extra effort into getting that application allowed, with broad and variable scope claims, including possible RCE's and appeals if necessary, and possibly filing and keeping divisionals and continuations pending. Furthermore, the claims can be amended to distinguish the third party cited art without incurring "intervening rights" as would be the case in a reexamination. While the third parties citing the prior art do not face dangerous estoppels [as in inter partes reexaminations or PGR] they do risk greatly strengthening the enforceability of the resultant patent against that or similar prior art if not all potentially infringed claims are finally rejected.

The rare use of any of the present third party prior art submission systems does not suggest their likely future use, [unlike the increasing use of reexaminations]. The PTO has apparently never kept statistics on the number of prior art filings in other peoples patent applications under present 37 CFR 1.99 (in force since 2000), or otherwise. But I was cognizant of a docketing operation that was handling thousands of pending patent applications, and only one such third party prior art submission was ever identified as being filed against any of those thousands of U.S. applications [excluding those in interferences] and it was not successful in getting any claims rejected.

Perhaps there will be somewhat higher usage and success rates for the new 35 U.S.C.122(e)(1) and 37 CFR §1.290 because it will allow attached explanations of the relevance of the cited art. But until that is demonstrated, the conservative tendency of patent attorneys to save prior art defenses until they think they can be used more effectively later, especially in an inter partes reexamination [where the patent owner cannot make completely unchallenged ex parte arguments against the cited art] seems likely to prevail.

There is of course an academic myth, supported by some companies presumably for its PR value, that was at play in the lead-up to these AIA changes. Namely a strange inherent assumption that large numbers of the public have nothing better to do with their time and money than to undertake the tens of thousands of prior art searches and claim-relevant submissions that would be needed to have any significant effect on patent examination quality for the more than 500,000 patent applications a year, even though they are not aware of any that could ever threaten any of their products. A mere couple of hundred patent applications were provided with prior art submissions under a pilot "Peer to Patent" system, despite all its publicity, of which only a minority resulted in claims being rejected using the submitted prior art.

As usual, I would appreciate comments from others with relevant information on these subjects.

2011 Recap: The Practically Important Elements of the America Invents Act of 2011

Patent, , , ,

As a new year begins, Paul Morgan reflects on the practical importance of the Leahy-Smith America Invents Act of 2011 – the major patent reform effort that was enacted in September 2011. Although admittedly oversimplified (like any short-list), Paul's list provides some food for thought for patent strategists. He looks forward to comments.

By Paul Morgan

1. Regarding the hyper-hyped "first inventor to file" replacing of "first to invent" — the number of situations in which two different parties file patent applications on the same or substantially the same invention, and the second to file obtains valid dominant patent claims, is miniscule (now less than 20 a year). Cases involving invention "derivation" are a small percentage of even that miniscule number. In other words, the removal of alleged prior "invention date" arguments is not a significant AIA change.

2. The most significant AIA changes, which will affect almost every patent applicant, are in the definitions of what counts as prior art. The AIA provides a considerable simplification (albeit with a few ambiguities). Also, most prior art will now become instant "bars-to-patentability." U.S. application foreign priority filing dates and foreign public disclosure dates both becoming U.S. prior art dates will provide a significant prior art increase. The ending of PTO Rule 131 alleged prior invention dates declarations "swearing behind" earlier prior art dates will have a limited effect on some patent grants, but little or no effect on successfully litigating patents. [Rule 131 declarations are ex parte, uncontested, and often inadequately examined, so they rarely survive litigation challenges and easily raise inequitable conduct issues.]

3. Delaying filing patent applications after publicly disclosing one's invention is foolishly dangerous now, and will remain so. It will also continue to destroy foreign patent rights. There is a [sole remaining] one year "grace period" for doing that, but that grace period is ambiguous as to its disclosure extent requirements and effect. Delaying the filing of at least provisional applications for new products still under development will become more dangerous even if kept secret, due to the above changes in prior art and its effective dates.

4. The AIA significant increases the value of trade secrecy protection (instead of or even in addition to patenting) for any inventions which can be kept secret while being commercially exploited. There is potential dual IP protection from the AIA elimination of "best mode" defenses. Even more so if disputed ambiguities in AIA 102(a)(1) are held to overrule the long-established Metalizing Engineering doctrine that "forfeits" patenting after having already commercially exploited an invention, which would allow tacking on full term patent protection after unlimited years of trade secrecy protection. A rather surprising impact of "patent" legislation.

5. The ability to eliminate any inequitable conduct defense before patent litigation is provided in the new "Supplemental Examination." [An ex parte reexamination solely for patent owners to request and participate in, and thus a potentially powerful new tool for patent enforceability, although its PTO rules and actual usage remain to be seen.]

6. Ending the "false marking suits" plague and the naming of numerous defendants in the same patent suit [to avoid venue transfers] is already accomplished. Also, there is a new "virtual" marking system that really ought to be used.

Finally, the practical effects of many other text-extensive AIA changes, such as the new or amended and Board-run inter partes reexaminations and 9 month only PGR opposition systems, are too soon to predict. Especially given their potentially dangerous estoppels, predictable higher costs, un-issued PTO rules, and the limited number of them that the PTO will accept each year.

Guest Post: Supplemental Examinations and the Client-Practitioner Relationship

Patent

Guest Post by Professor Lisa A. Dolak

Pursuant to the America Invents Act, supplemental examination will be available as of September 16, 2012.  Patent owners will be able to ask the U.S. Patent and Trademark Office “to consider, reconsider or correct” information that was not considered (or was inadequately considered) during a prior prosecution.  And the courts will be barred from holding a patent unenforceable based on information that was considered during a supplemental examination (and any resulting USPTO-ordered reexamination).

The introduction of supplemental examination raises many questions, and our understanding of the implications of this new opportunity will develop as the USPTO rule-making unfolds and as patent owners, litigants and the courts gain experience with it.  But some potential implications concern the relationship between practitioners and their clients, and may prompt new thinking about that relationship on the part of each.

Inherent in the design of supplemental examinations is the opportunity for the patent owner to liberate the patent from any taint resulting from misconduct in its procurement.  The supplemental examination proceeding is designed, in fact, to divorce the patent owner’s property right from any actual or alleged past misconduct on the part of the patent owner or its representative.  In particular, as illustrated by the legislation’s “carve out” for USPTO-detected “material fraud”, the enforceability of a patent that has undergone supplemental examination is a separate issue from the obligations of registered practitioners, inventors, and others who participate substantively in patent prosecution to disclose (and refrain from misrepresenting) known material information to the USPTO.   It is this opportunity to detach the enforceability of the patent from any misconduct in its procurement, in particular, that has the potential to impact the client-practitioner relationship.

From the perspective of the patent owner, supplemental examination provides an opportunity to have the USPTO consider, reconsider or correct information relating to patentability, and to remove that information as a potential basis for a viable inequitable conduct challenge in the courts.  In some cases, at least, it can be expected that the patent owner’s primary or even sole consideration, then, will be the “cleansing” of the patent.

However, as noted above, the very legislation that creates this opportunity for patent owners requires the USPTO to refer suspected material fraud to the United States Attorney General.  And, as is expressly preserved by the AIA, the USPTO retains its authority to discipline registered practitioners.  Thus, where misconduct such as an intentional candor violation did occur or might reasonably be suspected to have occurred, supplemental examination could lead to disciplinary or even more serious consequences for practitioners.  Accordingly, the interests of patent owners and the practitioners who assisted in the procurement (or a prior examination) of the patent as they relate to the use of supplemental examination have the potential to diverge – significantly.

For those patent owners who are themselves not potentially subject to criminal or disciplinary investigation or sanction, this possibility should not present a problem.  Patent owners are free, of course, to hire different counsel for supplemental examination than they used to prosecute the patent in the first place.  And, given that deceptive intent is irrelevant to supplemental examination and that any consequences for misconduct unearthed in supplemental examination will effect only the person(s) suspected of being involved in that misconduct, a patent owner (it appears) need not be concerned about whether a supplemental examination request suggests such misconduct.  But practitioners may find such a situation disconcerting, as they may have concerns about being thrown under the proverbial bus, even where the patent owner did not so intend.

For one thing, by definition, a practitioner who is not asked file a supplemental examination request relating to a prior prosecution in which she was involved will not have the opportunity to participate in the development of such a request.  But a practitioner who is engaged to request supplemental examination regarding a patent he prosecuted may have an additional or different concern, namely, whether the circumstances create a conflict between his client’s interest in cleansing the patent and his personal interest in his reputation and good standing.

Much in this regard will depend on what information the USPTO requires or permits (or receives) in supplemental examination requests, and whether supplemental examinations ultimately lead to any conduct-related investigations or charges.  Although we’ll learn something about the former from the upcoming USPTO rule-making, the latter, at least, will take some time to develop.  In the meantime, the potential effects of supplemental examination relating to the relationship between clients and practitioners are among the questions raised by this proceeding.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

USPTO news

  • On December 20th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
  • The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

  • The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

  • Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

  • On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

  • Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
  • Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
  • Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
  • Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
  • Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
  • Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
  • Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
  • Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
  • Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
  • An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

  • The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

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

Evaluating Supplemental Examination

Patent,
By Jason Rantanen
As seen in the recent Powell v. Home Depot case that Professor Crouch wrote about last week, the net effect of a weakened inequitable conduct doctrine post-Therasense is an increase in the ability of applicants to engage in troubling behavior during patent prosecution.  My colleague Lee Petherbridge and I expressed this concern shortly after Therasense issued, particularly warning about its consequences for patent prosecutors who are arguably worse-off post-Therasense, caught between clients who may be more interested in playing fast and loose with the rules and their own ethical and legal responsibilities.
Therasense was not the only significant development in the area of inequitable conduct this year, however.  The creation of a mechanism for supplemental examination in the Leahy-Smith America Invents Act further alters the landscape of inequitable conduct, and not necessarily in a positive way.  In a short essay recently published in Michigan Law Review First Impressions, Professor Petherbridge and I examine the supplemental examination mechanism created by the AIA and conclude that it may jeopardize American innovation, job creation, and economic competitiveness.
A copy of the piece is available via SSRN.

Therasense: Encouraging Intentional Deception?

Dissent, Inequitable Conduct, Patent, Patent Cases 2011, , ,

Patent2011053Powell v. Home Depot (Fed. Cir. 2011).

Michael Powell’s invention is fairly simple –  it covers a guard for a circular saw on an arm.  In 2004, Mr. Powell developed the guard and provided several prototypes to Home Depot for the company to use in its in-store saws for cutting raw lumber to customer specifications.  Rather than having Powell manufacture the guards, Home Depot turned to another company for its 2,000 stores.  Powell obtained a patent then sued Home Depot.  After a three-week trial, a Florida jury awarded Powell $15 million in damages.  The district court also awarded enhanced damages, attorney fees, and pre-judgment interest — bringing the total to $24 million.

On appeal, the Federal Circuit affirmed claim construction, infringement, willfulness, inequitable conduct, and damages. Dissenting-in-part, Judge Dyk argued only that the finding of willful infringement was incorrect because Powell did not prove that Home Depot’s non-infringement defense was objectively unreasonable as is required under the objective prong of the willfulness inquiry.

Inequitable Conduct: One interesting element of the appeal involved inequitable conduct.  During prosecution, Powell had filed a Petition to Make Special on grounds that he was obligated to manufacture and supply devices embodying the claims sought. MPEP 708.02.  That original petition was roughly correct based upon ongoing manufacturing negotiations with Home Depot. Although negotiations with Home Depot fell-through before the PTO granted the petition, Powell never informed the PTO that he no longer qualified for the Special designation under the prospective manufacture prong and actively encouraged the PTO to decide the petition.

In a pre-Therasense decision, the district court held that the failure to inform the  PTO was done with intent to deceive the PTO, but that the intentional omission was not material because (1) the timing was not related to patentability and (2) Powell could have instead filed a petition to make special based upon ongoing infringement of the applied-for claims.  Under Therasense, inequitable conduct will not normally be found based upon an applicant’s improper omission unless the omission is the but-for cause of the patent being issued.

On appeal, the Federal Circuit affirmed — holding that:

Where, as here, the patent applicant fails to update the record to inform the PTO that the circumstances which support a Petition to Make Special no longer exist—that conduct does not constitute inequitable conduct. That is so because Mr. Powell’s conduct obviously fails the but-for materiality standard [of Therasense] and is not the type of unequivocal act, “such as the filing of an unmistakably false affidavit,” that would rise to the level of “affirmative egregious misconduct. Id.

This case creates further difficulty for patent attorneys by giving a free-pass to patent applicants who intentionally deceive the PTO in order to benefit their case.  Although participating in such activity violates the rules of conduct for patent law professionals under 37 C.F.R. 10.22, patent owners apparently will not face consequences.  Adding to the incentive for bad behaviour is the PTO’s lax enforcement through the Office of Enrollment and Discipline; the new statute of limitations on attorney misconduct charges; and the new supplemental examination procedures that allows patentees to whitewash patents obtained through inequitable conduct.  For some this may not be intuitive, but the primary solution is not increased enforcement but instead for the PTO to avoid relying upon attorney statements.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [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]
  • 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]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [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]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [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]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [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]
  • 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]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [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]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [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]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [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]
  • 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]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [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]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [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]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

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