Posted: Wednesday, Aug 20, 2014 @ 11:41 am | Written by Gene Quinn | No Comments »
Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.
The administrative trial proceedings created by the AIA are: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.
For over a decade, design patent filings and grants have enjoyed uninterrupted growth and, according to the 2014 IP Record, the trend continues unabated. According to the data, in 2013, 1517 more design patents were granted compared with 2012, and the prospects are good for continued growth in design patent applications.
Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by the patentee to do so.
Don’t believe them.
When the Federal Circuit brings up the principle that one should not import the limitations of a single embodiment into a broader claim, expect the opinion to show how, under the particular, specifically limited facts of the present case, the inventor actually intended to limit the claims to the disclosed embodiment. The decision in Abbott Labs. v. Sandoz, Inc. provides an excellent example of the court’s reasoning. There, the specification described only a single embodiment, but the claims extended beyond the embodiment, but no issues of either prior art of enablement were present. The fact that the patent presented only a single example served as a starting point, after which the court was able to find “clear intent” to limit a broad claim term, “crystalline,” to a particular crystal.
Posted: Monday, Aug 18, 2014 @ 10:14 am | Written by Gene Quinn | 1 Comment »
Back on June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. A further 11 weeks has passed and we are still without a presidential nominee to run the USPTO. The letter from Senator Hatch to President Obama is reproduced below.
In the letter, Senator Hatch also questions whether USPTO Director Michelle Lee was appointed consistent with 35 U.S.C. § 3(b)(1). Dennis Crouch and Hal Wegner have covered that issue with some detail, so there is no need to rehash that here, but suffice it to say that the Director is supposed to nominate the Deputy Director for the position, but there has not been a Director of the Office since David Kappos left in January 2013. At the time Lee was nominated Peggy Focarino, the Commissioner for Patents, had been vested with the powers and duties of the Director by the Obama Administration, although not given the title.
Posted: Sunday, Aug 17, 2014 @ 10:39 am | Written by Peter J. Toren | 8 comments
General Keith Alexander (ret.)
Since retiring as the director of the National Security Agency in March of this year, General Keith Alexander has co-founded a company, IronNet Cybersecurity Inc., that reportedly charges up to $1 million a month to assist companies in protecting their computer networks from hackers. Gen. Alexander has suggested that this fee is justified in part because his company’s technology is based on his inventions relating to a “unique” approach to detecting hackers. Alexander has stated that he plans to file at least nine patent applications relating to this technology.
Certainly, Gen. Alexander can seek to leverage his NSA experience and expertise in developing a lucrative post-government career, however, the filing of the patent applications so soon after leaving government service and their cybersecurity subject raises serious questions about who actually owns these inventions and whether Gen. Alexander is seeking to profit from inventions that actually belong to the government. In interviews, Gen. Alexander has asserted that he discussed the ownership of these patent applications with lawyers at the NSA and has been assured that his inventions are not related to any work he did for the NSA, and, consequently, the inventions belong to him and not to the government. That NSA lawyers have purportedly concluded that his inventions are unrelated to his work is cold comfort in this era of Edward Snowden revelations.
Posted: Saturday, Aug 16, 2014 @ 9:42 am | Written by Gene Quinn | 2 comments
In my experience the reason most people do not succeed is because they just don’t know what to do, not because they are lazy or unmotivated. My hope is that this article will educate inventors and help take some of the mystery out of the steps associated with turning an invention into a profitable endeavor.
Before you consider contacting anyone the best first place to start is with a simple question, which will help you chart the right course. Ask yourself: What you want to do with your invention? Do you want to make and sell your invention? Or, do you want to sell your invention rights to an individual or company who would make and sell your invention? Or, do you want to try and license one or more individuals or companies to make and sell your invention? After you make this determination your initial strategy should come into focus.
Posted: Friday, Aug 15, 2014 @ 12:06 pm | Written by U.S.P.T.O. | 1 Comment »
On August 17th through 18th, the USPTO will perform maintenance on the following trademark systems:
(1) The Trademark Electronic Search System (TESS) will be unavailable from 12:01 a.m. until 5 a.m. on Sunday, August 17th.
(2) The Trademark Official Gazette (TMOG), Trademark Status and Document Retrieval (TSDR), Trademark Electronic Application System (TEAS), and Trademark Electronic Application System International (TEASi) will be unavailable from 12:01 a.m. until 8 a.m. on Sunday, August 17th.
(3) The Trademark Trial and Appeal Board Inquiry System (TTABVUE), Trademark Identification Manual for Acceptable Goods and Services (TIDM), TEAS, TEASi, TESS, TMOG, and TSDR may experience intermittent service disruptions from 11:30 p.m. on Sunday, August 17th until 3 a.m. on Monday, August 18th.
In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.
Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.