Tag Archives: Inequitable Conduct

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, USPTO News,

Where Will the Patent Satellite Offices Open!

  • There currently is a lot of lobbying going on by politicians to bring the USPTO to their state. Lawmakers from Silicon Valley, Colorado and Texas are trying to win one of the two satellite offices, since Detroit already is entitled to an office under Leahy-Smith. Colorado Sens. Michael Bennet and Mark Udall, sent a letter to David Kappos trying to sell him on the Rocky Mountain State. Also California lawmakers Anna Eshoo and nine other from sent a letter to Obama making their pitch for Silicon Valley. [Link]

Beacon Navigation Files Suit Against Car Makers

  • On October 11th Beacon Navigation filed patent infringement suits against all the big name automobile manufactures. Beacon claims that automobile manufactures infringed either all or some of their patents including 5,819,201, 6,163,269, & 5,878,368. Beacon claims that because the GPS navigation systems in their products are specially adapted for an infringing use of each patent, and embody a material part of the inventions claimed in each patent. As noted by PriorSmart, Beacon is the first plaintiff to file a high volume of individual cases since the new joinder restrictions were enacted. [Complaint]

Mark T. Banner Scholarship

  • The Richard Linn American Inn of Court is proud to offer the Mark T. Banner Scholarship for law students. This scholarship is part of The Richard Linn American Inn of Court's commitment to fostering the development of intellectual property lawyers of high ethics, civility and professionalism, and especially those from diverse backgrounds. [Link]

Patent Jobs:

  • Harman International is seeking a patent attorney with at least 8 years of experience. [Link]
  • Klarquist Sparkman is searching for lateral patent associates or patent agents with at least 1-4 years of experience. [Link]
  • Klarquist Sparkman is searching for a patent attorney or patent agent with 3+ years of experience. [Link]
  • Lee & Hayes is looking for patent attorneys with at least 3 years of experience. [Link]
  • Withrow & Terranova is seeking patent attorneys or patent agents with at least one year of experience. [Link]
  • Trading Technologies is searching for a patent agent with 3-5 years of experience. [Link]
  • Trading Technologies is seeking a patent attorney with 3-5 years of experience. [Link]
  • Volpe and Koenig is looking for a Japanese patent paralegal with prior experience as a patent paralegal. [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]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • 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,

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

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

    102(b) (1) reads:

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

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

Judge T. John Ward, Sr. Steps Down

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

WIPO's Statistical Country Profiles Tool

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

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

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

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

    102(b) (1) reads:

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

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

Judge T. John Ward, Sr. Steps Down

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

WIPO's Statistical Country Profiles Tool

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

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes,

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

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

    102(b) (1) reads:

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

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

Judge T. John Ward, Sr. Steps Down

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

WIPO's Statistical Country Profiles Tool

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

Upcoming Events:

  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

Opening of Franklin Pierce Center for IP

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

Biotech in Ottawa is Booming?

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

Great Patents!

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

Patent Jobs

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

Upcoming Events:

  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent,

Opening of Franklin Pierce Center for IP

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

Biotech in Ottawa is Booming?

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

Great Patents!

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

Patent Jobs

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

Upcoming Events:

  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes,

Opening of Franklin Pierce Center for IP

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

Biotech in Ottawa is Booming?

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

Great Patents!

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

Patent Jobs

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

Upcoming Events:

  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
  • The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

A Response to Professor Chiang

Guest Post, Patent, Patent Legislation

By Jason Rantanen

Professor Tun-Jen Chiang's post on best mode (below) argues that Congress must necessarily have intended that patent applicants would not disclose best mode, given that it was aware of the potential consequences of removing litigation enforcement.  Thus, Professor Chiang concludes, Congress not only abolished best mode, but then went about "lying" about it.  I have serious doubts about this conclusion.

Despite being styled as a reply to Professor Sheppard's description of Congressional thought about best mode, Professor Chiang misses the fundamental point of Professor Sheppard's post: that although Congress recognized that removing the litigation mechanism for enforcing best mode might result in reduced compliance, there remained alternative mechanisms – which Professor Sheppard discussed – for encouraging applicants to comply with the best mode requirement.

While I personally question the efficacy of the alternate mechanisms for enforcement – which rely primarily on criminal sanctions that, historically at least, have been rarely employed even to deal with more significant misconduct – it is clear that Congress has a higher view of these types of enforcement mechanisms than I do, especially given its treatment of inequitable conduct in the America Invents Act.  Thus, I find it difficult to accept Professor Chiang's dichotomy that either Congress must have been "dumb" or "lying," as well as his analogy to a child with matches.  This issue is far more complex than such an oversimplification allows, and it is entirely reasonable (and probably far more accurate) to recognize that Congress was attempting to balance a difficult issue: the costs of patent litigation versus the need or desire for disclosure of best mode, and elected to proceed by relying on alternative enforcement mechanisms that, while perhaps less often enforced, might potentially provide equal deterrence through more severe sanctions.  If one must use an analogy, it is more similar to giving a teenager a car, explaining that speeding might result in a criminal penalty, while nevertheless providing reassurance that you will not take away the car if he or she is caught speeding, than it is to a child with matches.

Construing Claim Constructions

Claim Construction, Patent, Patent Cases 2011, ,

By Jason Rantanen

Cordis Corporation v. Boston Scientific Corporation (Fed. Cir. 2011) Download 10-1311 -1316-1
Panel: Bryson, Mayer, and Gajarsa (author)

Stent
Cordis v. BSC turns on an interpretation of a construction of the claim term "undulating."  In this case, Cordis obtained a jury verdict of infringement of Patent No. 5,879,370 against Boston Scientific Corporation.  Prior to trial, the district court construed the term "undulating" to mean "rising and falling in waves, thus having at least a crest and a trough."  Slip Op. at 11.  After Cordis obtained its favorable verdict, BSC renewed its motion for judgment as a matter of law on noninfringement, arguing that "Cordis inappropriately altered the parties' and the court's understanding of the term 'undulating'," and that under the "intended" construction the evidence presented at trial could not support a conclusion that this claim element was met by the accused product.    Slip Op. at 11.  The district court granted BSC's motion and Cordis appealed.

Construing Constructions: On appeal, the CAFC confirmed the propriety of BSC's argument.  "The question here is whether BSC did, in fact, seek to alter the district court’s claim construction," a construction Cordis did not challenge.  Slip Op. at 12.  It did not.  "No rule of law restricted BSC from seeking to clarify or defend the original scope of its claim construction."  Slip Op. at 12.  However, "because BSC did not object to the court’s jury instruction regarding the construction of the term “undulating,” “[t]he verdict must be tested by the charge actually given [under] the ordinary meaning of the language of the jury instruction,” Hewlett-Packard, 340 F.3d at 1321."  Id.

In deciphering the "ordinary meaning" of the district court's construction, the CAFC first turned to a general purpose dictionary definition of 'waves' to conclude that 'crest' and 'trough,' "as used in the district court's claim construction, implicate changes of direction, with the curve extending beyond the point of inflection."  Slip Op. at 13.  Although Cordis cited expert testimony and dictionary entries of its own, the CAFC was not persuaded.  The CAFC also looked to the prosecution history, which further suggested a construction of "undulating" that meant more than just a single curve. 

Applying this interpretation of the district court's claim construction, the CAFC concluded that Cordis had indeed failed to offer substantial evidence of infringement.

Inequitable conduct: This case was involved in a prior appeal, Cordis Corp. v. Boston Scientific Corp., 188 F. App’x. 984, 985 (Fed. Cir. 2006), in which the CAFC addressed a district court finding of inequitable conduct.  In that appeal, the CAFC affirmed the materiality of the conduct at issue but remanded to the district court for further findings of fact relating to intent.  On remand, the district court reached an alternate conclusion, deciding that, on reflection, the evidence of record failed to support a finding of deceptive intent under a clear and convincing standard.  On appeal, the CAFC affirmed the finding of no inequitable conduct, noting in particular the deference given to district courts on issues of credibility.

***

Interpretations of constructions raise a difficult issue for the Federal Circuit, and have implications for litigation predictability.  While the panel in this case did not directly identify the standard of review it applied to the district court's interpretation of the construction, the analytic structure of the opinion follows the same approach that the CAFC has traditionally employed when construing claims generally: look at the evidence and arrive at its own conclusion, i.e. de novo.  In this instance, the methodology used by the panel seems to harken back to the Texas Digital line of claim construction: start by determining the ordinary meaning of a word using tools such as dictionaries, then look to the intrinsic evidence to see if it compels a different result.  Perhaps this approach may be more defensible in light of the subject being interpreted, but it seems at odds with the principles announced in Phillips.

The interpretation issue in this case also raises a possible red flag against the concept of routine interlocutory review of claim constructions, a proposal frequently offered as reducing litigation costs and enhancing the predictability of litigation.  If a claim construction itself is subject to a subsequent interpretation, are efficiencies truly added by having the CAFC offer an early construction?  There is a real possibility that, if such a proposal were implemented, the result would be a rise in appeals involving not just claim constructions, but interpretations of claim constructions.

Guest Post: Because Inquiring Minds Want to Know – Best Mode – Why is it One-Sided?

Best Mode, Guest Post, Patent, Patent Legislation, ,

(Today PatentlyO is starting a series of periodic guest posts by Professor Christal Sheppard on the underlying rationales for some of the sections of the America Invents Act.  Prior to joining the University of Nebraska Lincoln College of Law this year, Dr. Sheppard was Chief Counsel on Patents and Trademarks and Courts and Competition policy for the United States House of Representatives Commmittee on the Judiciary. – JAR)

By A. Christal Shepard

Since inquiring minds want to know, I will attempt to give, in a series of posts, insights into the underlying rationales for a few sections of the America Invents Act that are causing particular confusion among my friends and new colleagues who were fortunate to not have been as intimately involved in the machinations of the America Invents Act as I have been over the last three Congresses.  

***

I start this conversation with a blanket statement – these are my recollections of the rationales and do not represent the views of any particular member of Congress.  More importantly, do not shoot the messenger.  This blog is only intended to provide contemporaneous context, not a comprehensive analysis, before the march of time distorts memories.  I will not attempt to defend; I will merely explain.

There has been a great deal of consternation and confusion about the changes to the Best Mode requirement, Section 15 of the America Invents Act.  This section is plain on its face, and yes, it is, and was intended to be, bifurcated. The Best Mode requirement remains a requirement, unchanged, for obtaining a patent under 35 U.S.C. § 112 Paragraph 1; however, under the new law, Best Mode can no longer be used as a defense in any action involving the validity or infringement of a patent.  More specifically, a failure of an inventor to disclose their Best Mode is no longer a basis for invalidating, canceling or making a claim unenforceable even if it is later determined that the inventor unquestionably knew of a Best Mode and intentionally did not disclose it to the United States Patent and Trademark Office (USPTO) during examination.  

The bifurcated reform is a compromise that addresses the legitimate litigation concerns with the subjective nature of Best Mode without undermining the requirement for full disclosure that is the quid pro quo for the grant of a monopoly.  If Best Mode was removed completely, Congress could be seen as removing yet another obstacle to trade secret protections overlapping with monopoly rights.  

The impetus for removal of Best Mode from Section 112 of Title 35 of the U.S.C. came from several recommendations to Congress to limit the subjective portions of patent litigations.  I point to one such recommendation that was highly influential, the National Academies’ A Patent System for the 21st Century: 

Among the factors that increase the cost and decrease the predictability of patent infringement litigation are issues unique to U.S. patent jurisprudence that depend on the assessment of a party’s state of mind at the time of the alleged infringement or the time of patent application… Because the [Best Mode] defense depends on historical facts and because the inventor’s state of mind usually can be established only by circumstantial evidence, litigation over [Best Mode]— especially pretrial discovery— can be extensive and time-consuming.[1]

Although the National Academies’ report also states that eliminating Best Mode completely could be accomplished without “substantially affecting the underlying principles that these aspects of the enforcement system were meant to promote.”[2] Their, and others’, primary objection to Best Mode was that it was an unnecessary burden for litigation, similar to inequitable conduct, often pled but rarely found.

While Best Mode may be unnecessarily burdensome for litigation, Best Mode is not a superfluous requirement.  It is intended to implement the constitutional directive of "promoting the progress of science and the useful arts"[3] by preventing an inventor from obtaining patent protection, “the embarrassment of a monopoly,”[4] while simultaneously concealing a trade secret for the preferred embodiments.  “The purpose of this requirement is to restrain inventors from applying for a patent while at the same time concealing from the public preferred embodiments which the inventor has, in fact, conceived.”[5]  There is nothing else in the patentability requirements that mandates an inventor’s disclosure of their Best Mode. 

The fault with Best Mode in litigation is not a fault of principle; it is a fault of execution – the difficulty of understanding the contents of an inventor’s mind.

If one believes in the quid pro quo of full disclosure to the public in exchange for a limited monopoly, then the disclosure of an inventor’s Best Mode is essential.  If monopoly is the carrot in exchange for divulging what otherwise would remain hidden as trade secrets then trade secrets SHOULD be divulged in order to patent.  Changing the Best Mode requirement for obtaining a patent would be a significant deviation from U.S. policy and practice that was unnecessary to correct the perceived problem. 

The law should and still does require disclosure of Best Mode, but has eliminated Best Mode from litigation.  The reform addresses the concerns without undermining the requirement for disclosure. 

Many scholars have questioned the fact that, under the new law, the day after a patent issues, the inventor could state that, yes there was a Best Mode known at the time of application that was not disclosed and yet the intentional nondisclosure would have no effect on the claims.  The claims could not be invalidated, canceled or made unenforceable.  

There has been a lot of criticism that Congress did not contemplate this result.  Nothing could be further from the truth. This result was absolutely contemplated by the decision makers.

Essentially the question was, how does one stop inventors from lying to the patent office, that the inventor has no Best Mode, when the inventor in fact has a preferred embodiment?  The more accurate question to ask is, when there are no obvious ramifications, why would an inventor divulge a Best Mode when they can keep it as a trade secret?  

Congress did take this into account but did not address it in the legislation for a variety of reasons. I present a few of the considerations that were discussed.

  1. Give the USPTO authority to undertake  investigations when it is presented clear evidence from a court or third party that a Best Mode was intentionally not disclosed.  Here, the counterargument is that the USPTO is even less well situated than the courts for such a subjective determination.  Furthermore, it is not practical to move this determination from the courts to the USPTO. 
  2. Present evidence of intentional concealment of Best Mode to the Office of Enrollment and Discipline (OED) at the USPTO with the deterrent being the possible loss of the ability to prosecute patents, removal from the patent bar.  This is arguably already possible under 35 U.S.C. § 32, Suspension or exclusion from practice.  The obvious flaw is the same as in the first example; the USPTO is not well situated for subjective inquiries.  Additionally, it may result in punishing the patent practitioner for situations where the inventor intentionally concealed but the patent practitioner was unaware.
  3. Institute a mechanism, identical to that which ultimately ended up in Section 12 of the America Invents Act – the new Section 257(e), where evidence of material fraud on the USPTO shall be referred to the Attorney General for possible prosecution under 18 U.S.C. § 1001, a criminal statute penalizing anyone who knowingly and willfully “makes or uses any false writing or document knowing the same to contain any materially false, fictitious, or fraudulent statement or entry” on any matter within the jurisdiction of the executive, legislative, or judicial branch of the Government of the United States. Again, arguably this deterrent, which is up to a five year prison term, is already possible under 18 U.S.C. § 1001 without any change in the law.

Note that all of these resolutions are arguably already possible under existing law.

One suggestion, not put forth, for the answer to the riddle of “when there are no obvious ramifications, why would an inventor divulge a Best Mode when they can keep it as a trade secret?” is make the ramifications more obvious. The USPTO could add a check box to application forms, stating “I (we), the inventor(s) have no preferred Best Mode and are aware that failure to disclose a Best Mode can result in up to a five year jail term.” But that is a matter for the USPTO and not Congress.

Would a “check box” solve the problem?  No.  But it is an affirmative act, as opposed to an intentional omission.  This affirmative act may be useful in the exercise of 35 U.S.C. § 32 and 18 U.S.C. § 1001 should there be abuses and allows Congress to preserve the U.S.'s emphasis on full disclosure in exchange for the government grant of monopoly.

In the end, I do not disagree with the criticisms of the effect of the new law on Best Mode.  But I do vehemently disagree that the consequences were neither considered nor understood by Congress.

[1] Stephen A. Merrill et al., A Patent System for the 21st Century, no. 7, 121 (2004).

[2] See id. at 7.

[3] U.S. Const. art. I, § 8, cl. 8.

[4] Thomas Jefferson to Isaac McPherson, 13 Aug. 1813.

[5] Young Dental Mfg. Co., Inc. v. Q3 Special Products, Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997).

 A. Christal Sheppard is an Assistant Professor of Law at the University of Nebraska Lincoln College of Law and former Chief Counsel on Patents and Trademarks and Courts and Competition policy for the United States House of Representatives Committee on the Judiciary.  Look for her next PatentlyO posting on Supplemental Examination.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 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]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 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]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

Will the number of Provisional Patent Applications Filed Increase?

  • The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, Universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could be the assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure a filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. [Link]
    • Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately describe everything that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.

Maybe the End of Times, for False Marking Suits

  • Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases. [Link]

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

  • Elimination of References to Interferences. — (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

Patent Jobs:

  • Cantor Colburn is looking for an associate patent attorney (chemistry) with at least 2 years of patent drafting experience. [Link]
  • ON Semiconductor is seeking a patent administration/IP attorney with 5-7 years of experience as a patent attorney. [Link]
  • Baker & Daniels is searching for an IP associate with up to 4 years of experience in prosecuting patents. [Link]
  • Amin Talati is seeking a patent attorney with a science background and 10+ years of experience to work in their Chicago office. [Link]

Upcoming Events:

  • The University of Dayton School of Law is holding a patent symposium entitled "Designing the Design Patent System" on September 15 in Dayton, Ohio. Professor Mark Janis will analyze the history of the U.S. patent system. The program will also include a panel of IP experts such as Tara Rosnell and Christopher V. Carani. [Link]
  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 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]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

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

Law Professors and their Initial Remarks on the Leahy-Smith Patent Reforms

Best Mode, Patent, ,

Certainty + More Prior Art: While I'm concerned about the effect of first-to-file on small inventors, I am pleased that the rule will expand the universe of art that might invalidate obvious patents. Too often, art found within a year of filing is rendered uncertain because the defendant does not know the date of invention. By fixing the cutoff date at filing, the universe of prior art not only grows, but the administrative cost of asserting that art is also decreased. To be sure, some of the obviousness art may come after the invention date, but I'm not so worried about that; after all, simultaneous invention is a consideration for obviousness, so close in time inventions, even if after the patentee's, do not present a great harm to a system that is supposed to reward nonobvious advances. – Professor Michael Risch, Villanova University School of Law

Impact on NPEs: Early reports say that the new law will "do nothing" to impact NPEs. They are wrong. The law will forbid the NPE tactic of naming unrelated companies in a single lawsuit, and the economies of scale it produces. Innocent early infringement done in private, under certain circumstances, won't be penalized anymore. A follow-up study on prior user rights and the impact of NPE litigation are called for. The PTO has expanded fee-setting authority, and the public, a greater right to chime in on questionable patents. As the economics of litigation change, so, necessarily, will the business models based on them. – Professor Colleen Chien, Santa Clara University School of Law

Deceptive Intent: There has been little commentary on the new law's rather quiet removal of all seven occurrences of "without deceptive intention" from the statute. These are for: Inventorship changes (Secs. 116 and 256); reissue (Sec. 251); filing a disclaimer (Sec. 253); suing on a patent containing an invalid claim (Sec. 288); and foreign filing without a license (Secs. 184, 185). It was probably not done to encourage deceptive conduct, but to limit fights over mental state in these areas. – Professor Paul M. Janicke, University of Houston Law Center

Natural Experiment: As someone who practiced patent law for over 10 years before entering academics, I am ambivalent at best about the passage of the America Invents Act.  Unfortunately, we missed an opportunity to meaningfully address fee diversion from the Patent Office, one of the most important issues facing the patent system.  With a backlog of over 700,000 applications, the Patent Office needs to retain all the fees it collects.  As an outside academic observer of the patent system, however, there is a benefit to the America Invents Act.  Changing the patent laws provides me and others the chance to empirically evaluate the effects, if any, of legal changes on the patent system. – Professor David L. Schwartz, IIT Chicago-Kent College of Law

Date of Public Disclosure: The Congressional language about "first-to-file system" is somewhat misleading. The text of the bill, and floor remarks of Sen. Kyl, make clear that the key date is either an inventor's filing date or an inventor's earlier public disclosure date, provided the disclosing inventor follows up by filing within a year of the disclosure. In the latter event, the patent would not go to the first to file, but to the first to publicly disclose. – Professor Paul M. Janicke, University of Houston Law Center

Value of Secrecy: Information about new inventions is critical to technological progress.  By increasing the value of secrecy as an option for monetizing inventions, the Leahy-Smith America Invents Act represents a step backwards in terms of information dissemination.  The prior user defense created by the Act recalibrates inventors' decision between secrecy and patenting so as to favor the choice of secrecy.  This shift has the potential to reduce the number of patents that are filed on secret inventions (and the mandatory disclosures that accompany those patents), as well to encourage inventors to direct their investments in research towards secret inventions as opposed to those that require patents to monetize. – Professor Jason Rantanen, University of Iowa College of Law

Inequitable Conduct: The doctrine of inequitable conduct exists in part to encourage patent applicants to internalize some of the costs of the patent system and ensure applicant candor.  The Federal Circuit in Therasense recently took aggressive steps to relieve patent applicants of some of these obligations.  The Leahy-Smith America Invents Act pushes in the same direction.  With two limited exceptions, it provides that "A patent shall not be held unenforceable on the basis of conduct relating to information that has not been considered, was inadequately considered, or was incorrect in a prior examination of a patent if the information was considered…during a supplemental examination of a patent."  New 35 U.S.C. § 257(c)(1).   This provision appears to effectively empower patent owners with the ability to strategically manipulate disclosures to the PTO.  – Professors Lee Petherbridge, Loyola Law School Los Angeles and Jason Rantanen, University of Iowa College of Law

Whipped Cream: There is no mistake so bad that you cannot cover it up with parsley or whipped cream. – Julia Child via Professor Yvette Liebsman, St. Louis University School of Law

 

The Effects of the America Invents Act on Technological Disclosure

Patent, ,

By Jason Rantanen

(Note: Given the almost certain passage of H.R. 1249 by the Senate, this analysis refers to that version of the pending patent legislation.  It is available here.).

The principal justification for the impending changes to patent law is that they will promote technological progress in the United States (and thus create jobs).  The questions relating to whether this intended result will be realized are numerous, and in this analysis I focus on just one important issue: the effects the America Invents Act may have on the disclosure of technological information.  I conclude that while the new patent laws have the potential to encourage at least one category of disclosures, they may also negatively impact other types of information disclosures.

At least three aspects of the Act are likely to impact the quantity and quality of disclosures: the changes to the novelty rules of 35. U.S.C. § 102, the creation of a prior user defense, and the effective elimination of the best mode requirement.  Changes to the effectiveness of the inequitable conduct doctrine are also likely to have an impact, perhaps good, perhaps bad, an issue I will discuss at a later time.  Below, I offer a preliminary analysis of the effects of these changes with respect to two categories of disclosures: (1) the mandatory disclosures in the patent document itself, and (2) peripheral disclosures, which I define as the dissemination of information that would not occur but for the existence of a patent system.

Changes to Novelty Rules: The shift to a first to file system is central to the America Invents Act.  Along with that change comes a revamped set of novelty rules – a complete rewrite of Section 102.  Gone is 102(a), and the concept that prior art must precede the date of invention.  Gone too is 102(b) and the one-year statutory bar.  Instead, we will soon (i.e.: in eighteen months) have a new 102(a) under which a variety of things (i.e.: patents, printed publications, public uses, invention being on sale, etc.) that predate the patent's effective filing date constitute prior art, a much more potent statutory bar than presently exists.

This new rule comes with a major exception, however: prior art does not include disclosures (which I interpret as referring to any of the categories of prior art discussed in the new 102(a)) made within one year of filing if "the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor." (proposed language of 102(b)(1)(B))  (The section also contains an exception for disclosures by the inventor or another who obtained the subject matter from the inventor). In other words, inventors will have the ability to negate any prior art from the one-year period prior to filing by engaging in public disclosure. 

This provision has the potential to encourage early disclosures of information by the inventor.  Although on the surface it seems to provide no more ability for inventors to engage in disclosures than the existing one-year statutory bar, under which an inventor was free to disclose whatever it wanted for the one-year period prior to filing, it perhaps may result in more disclosures than under the present structure.  A disclosure race may be encouraged.  If, as Gideon Parchomovsky has suggested, inventors involved in a patent race sometimes engage in strategic disclosures to stymie their competitors, the new 102(b)(1)(B) has the potential to fuel this behavior.  Through early disclosure, inventors who are racing to develop a new technology can not only block their rivals from obtaining a patent—because the disclosure would operate as prior art against the rival's patenting attempts—but can also negate any subsequent attempt by the rival to disclose patent-blocking information of equivalent content.  Rather than a race to invent, perhaps this will produce a race to engage in early public disclosures.  Unfortunately, any such effects are likely to be largely limited to inventors who desire to only file in the United States due to the lack of a self-disclosure exception in many countries. 

Creation of a Prior User Defense: Even as the changes to the novelty rules seem to encourage early peripheral disclosures of technological information, at least for US-only inventors, the creation of a prior user defense pushes towards less disclosure, albeit through different mechanisms.  I see the creation of a prior user defense in Section 5 of H.R. 1249 as impacting the disclosure of technological information in two ways: it may reduce the quantity of patent applications filed, and thus the number of mandatory disclosures that accompany those applications, and it has the potential to shift investment in invention away from self-disclosing inventions to those that can be protected through secrecy mechanisms.

The types of inventions that the prior user defense most applies to are those with the capability of being protected through secrecy.  A prior user defense is less important for inventions whose workings are readily understandable once they are placed on the market because these products already represent potentially invalidating prior art; thus, this type of defense has most relevance for non-self disclosing inventions, a category that includes many processes.  Under the current law, inventors who develop non-self disclosing inventions are faced with a difficult choice: maintain the process as a trade secret, and run the risk of being blocked later by an inventor who obtains a patent, or file for a patent and disclose the process to the public.  Both options have significant costs associated with their selection but the patent and disclose option is hardly foreclosed.

A prior user defense reweights this decision in favor of maintaining secrecy because it reduces the risk of being blocked by a later inventor.  The directional effect of this change is to reduce the number of patents that are filed on secret inventions, and thus reduce the number of mandatory disclosures that accompany those patents.

Of course, not everyone accepts that these mandatory disclosures provide useful technological information.  Consider, however, the effects on peripheral disclosures – specifically, the impact on investment in self-disclosing inventions.  The creation of a prior user defense re-calibrates the scale as between secret inventions and self-disclosing inventions.  By making secrecy a more valuable protection strategy for inventors to pursue, inventors are likely to focus their efforts towards the creation of such inventions as opposed to self-disclosing inventions, at least when the social utility that the inventor can monetize is otherwise equal.  But self-disclosing inventions are inherently valuable for the information that they provide to the public and future inventors – a spillover that inventors cannot fully capture.  The directional result may be the creation of fewer of these valuable inventions.

Elimination of Best Most Requirement: Section 15 of H.R. 1249 effectively eliminates the best mode requirement by amending the list of invalidity defense to exclude best mode  While the best mode requirement remains in 35. U.S.C. 112, and thus theoretically could be used by a patent examiner to reject an application, failure to disclose best mode may also not be a basis for holding a patent unenforceable – i.e.: no inequitable conduct on this ground. 

Although the best mode requirement has been subjected to substantial criticism on the grounds that it represents a trap for the unwary independent inventor while being wholly ineffective for disclosure purposes, the actual impact of the abolition of this requirement may be far broader than expected.  From a directional standpoint, the only effect of this change is to weaken the mandatory disclosure obligations imposed on the applicant, and thus a decrease in the quality of individual disclosures should be predicted.  How great a decrease, and whether the elimination of this requirement will result in more disclosure-providing applications being filed, will be an area to monitor.

 

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

U.S. IP Brokers: No Ethical Regulations and No Standards

  • In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

  • Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

  • Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

    No first use of software patents against companies with less than 25 people.

    Is this a good idea and could it possibly work? [Link]

Patent Jobs:

  • Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
  • The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
  • The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
  • Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 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]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

U.S. IP Brokers: No Ethical Regulations and No Standards

  • In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

  • Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

  • Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

    No first use of software patents against companies with less than 25 people.

    Is this a good idea and could it possibly work? [Link]

Patent Jobs:

  • Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
  • The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
  • The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
  • Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 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]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

U.S. IP Brokers: No Ethical Regulations and No Standards

  • In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

  • Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

  • Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

    No first use of software patents against companies with less than 25 people.

    Is this a good idea and could it possibly work? [Link]

Patent Jobs:

  • Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
  • The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
  • The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
  • Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

  • The Chicago-Kent Supreme Court IP Review will be held on September 15th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 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]

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

USPTO Proposes to Modify Applicants Duty to Disclose, Following Therasense in Limiting the Scope of Materiality

Patent, ,

In a four-page Federal Register notice of proposed rulemaking of proposed rulemaking, the US Patent Office has indicated its intent to revise its duty-to-disclose standards based upon the recent Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). 

In Therasense, the Federal Circuit held that, apart from potentially affirmative egregious misconduct, inequitable conduct in patent prosecution should not be found unless it is proven that the misconduct was a “but for” cause of the patent issuing. Focusing specifically on the failure to disclose prior art, the court wrote: “[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.”  The office introduces its proposal as follows:

Specifically, the Office is proposing to revise the materiality standard for the duty to disclose to match the materiality standard, as defined in Therasense, for the inequitable conduct doctrine. While Therasense does not require the Office to harmonize the materiality standards underlying the duty of disclosure and the inequitable conduct doctrine, the Office believes that there are important reasons to do so. The materiality standard set forth in Therasense should reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, consequently reducing the incentive to submit information disclosure statements containing marginally relevant information and enabling applicants to be more forthcoming and helpful to the Office. At the same time, it should also continue to prevent fraud on the Office and other egregious forms of misconduct. Additionally, harmonization of the materiality standards is simpler for the patent system as a whole.

The newly proposed Rule 56(b) (37 C.F.R. 1.56(b)) would read as follows:

Sec.  1.56  Duty to disclose information material to patentability.

* * * * *

(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). Information is material to patentability under Therasense if:

(1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or

(2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

* * * * *

Under the new rule, the mere failure to disclose information will never be considered material to patentability if the pending claim is allowable. A parallel change would be made to the disclosure rules governing reexaminations.

The current Rule 56(b) defines material information as non-cumulative information that either (1) “by itself or in combination with other information…compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard” or (2) is inconsistent with “a position the applicant takes” arguing that the claim is patentable.  The current rule implemented in 1992 and was itself an attempt by the USPTO to limit the scope of materiality. The pre-1992 rule required submission of information whenever there was a “substantial likelihood that a reasonable examiner would consider [the information] important in deciding whether to allow the application to issue a patent.” 

Thus far in 2011, the average issued patent cites 42 prior art references.  This number is highly skewed because of a minority of patents that cite to an excessively large number of prior  art references.  The median patent in 2011 cites 17 references. Only 8% of the 2011 patents cite more than 100 references, but those patents collectively cite more references than the other 92% combined.

The USPTO is also seeking comment on other actions that “may provide an incentive for applicants to assist the Office by explaining/clarifying the relationship of prior art to the claimed invention.”

Written comments regarding the proposed rule change should be submitted to AC58.comments@uspto.gov within the next 60 days (by September 19, 2011).

Calcar v. Honda: CAFC’s First Post-Therasense Inequitable Conduct Opinion

Patent, , ,

By Jason Rantanen

American Calcar, Inc. v. American Honda Motor Co., Inc. (Fed. Cir. 2011) Download 09-1503-1567
Panel: Lourie (author), Bryson, and Gajarsa

In its first decision addressing the issue of inequitable conduct since Therasense v. Becton Dickinson, the Federal Circuit affirmed the district court's finding of materiality with respect to one patent, but remanded for further findings on materiality (in connection with the two remaining patents) and intent (with respect to all three patents).

The inequitable conduct issues in this case revolve around a family of patents sharing a common specification.  One of the patents, No. 6,330,497 ("the Three-Status patent"), relates to "a system that allows a user to select an option from a list, to be shown a preview of information about it, and then to activate it."  Slip Op. at 12.  Two other patents, Nos. 6,438,465 and 6,542,795 ("the Search patents") claim a system for performing searches on a system in a vehicle. 

Prior to the filing of the patent application, the inventors closely examined an Acura 96RL that contained a navigation system with features similar to those later claimed in the Three-Status and Search patents.  Although the 96RL system is described in the background section of the patent application, that description is limited to the navigation aspect of the system, not the user interface aspects.  Thus, the inventors "never disclosed to the PTO the aspects of the 96RL system relating to the three-status feature or the search feature."  Slip Op. at 14.This failure to disclose formed the basis of the district court's finding of inequitable conduct, which Calcar sought to overturn on appeal.

Jury Verdict Merely Advisory
In reaching its conclusion of inequitable conduct, the district court disregarded an advisory jury verdict of no inequitable conduct.  The CAFC rejected Calcar's argument that this constituted error.  "Inequitable conduct is equitable in nature, with no right to a jury, and the trial court has the obligation to resolve the underlying facts of materiality and intent…Where a court submits the question to a jury, and both parties agree that the jury findings will be advisory, the court shall treat them as such. [] That is the universal rule."  Slip Op. at 23 (internal citations omitted).

Appliation of Therasense
The CAFC next turned to the substance of the district court's findings.  With respect to the Three-Status patent, the panel concluded that, even under the "but-for" standard of Therasense, the district court had correctly found materiality.  "We agree with Honda that the undisclosed 96RL information was material to the Three-Status patent because the jury found, and the court upheld, the asserted claims as anticipated by the 96RL system, and ACI has not appealed that decision to us."  Slip Op. at 25. 

The materiality of the Search patents was more questionable, given that the jury had rejected Honda's invalidity arguments based on the 96RL system.  Nevertheless, "the withheld information may be material if it would have blocked patent issuance under the PTO's preponderance of the evidence standard, giving those patents' claims their broadest reasonable construction."  Id.  As a result the CAFC remanded to the district court to assess materiality under a "but-for" standard, applying the evidentiary standard and claim scope used by the PTO.  The CAFC did not give any guidance as to how the latter might differ from the scope previously applied by the district court.

The CAFC reached a similar result on intent, concluding that the district court had relied on a sliding scale standard, "basing its finding of intent significantly on the materiality of the 96RL system to the claimed invention."  Slip Op. at 26.  That approach was rejected in Therasense, and the CAFC remanded for further consideration in light of that opinion.

Note: The court also affirmed the district court's rulings of noninfringement as to several other patents and reversed its denial of judgment as a matter of law that another patents was invalid. 

For those who find this information noteworthy, the panel in this case included two members of the dissent in Therasense.  Judge Lourie, the author of this opinion, was a member of the Therasense majority.