A United States patent search is normally the first step in the patent application process. Such a search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find knock-out prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. Of course, careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found  is critical. Unfortunately, in my experience a lot of inventors only give a cursory review of the patents found, thereby missing a great opportunity to use the prior art found to focus in on what is most likely unique and patentable.

Facebook, Twitter, LinkedIn.  These are a few of the more popular Social Networking sites that you have probably already heard of and may already be using.  But Social Networking platforms such as these are not just for playing online social games, taking quizzes, sending virtual gifts or reconnecting with friends and family.  In fact Social Networking is another way to advertise yourself and your business for free or at a very low cost.  In my last article The Importance of Having a Web Presence I talked about utilizing the Internet via a website of your own, in order to expand your reach, while incurring very little additional overhead costs.  Social Networking is a very inexpensive means for advertising what your business is and does and what services and products you offer.  In this article, Part I of a Social Networking series, we take an in-depth look at Facebook.

Presumably at some point the debate over health care will be over.  Either the government will radically reform health care, or they won’t.  While it is impossible to know for sure when the debate will be over, it does seem as if there is a light at the end of the tunnel.  Whether that light is a train or not remains to be seen, of course.  Within the next few days, few weeks or few months Congress will be released to consider other issues.  Whether they actually will actually get anything done between whenever health care passes or fails and the November 2010 elections is likewise questionable, and remains to be seen.  But one of the things that is seemingly on the horizon is consideration of patent reform, which itself has become a constant, nagging and unresolvable issue that has bogged down Congress for at least 5 years now.  As I continue to review the pending patent reform legislation there are questions that I have, and changes that I would like made to the pending bill.  So with the belief that sooner or later Congress will turn to patent reform, I present some of my thoughts on key changes that needs to be made to S. 515.

On February 12, 2010, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office (USPTO) issued an decision invalidating Pfizer’s broad claim for treating male erectile dysfunction (ED). U.S. Patent No. 6,469,012, entitled “Pyrazolopyrimidinones for the Treatment of Impotence” issued on October 22, 2002 and assigned to Pfizer, Inc. (NYSE: PFE). The patent issued from U.S. Patent Application No. 08/549,792, filed March 4, 1996, which is the national phase of PCT/EP94/01580, filed May 13, 1994, and which claims benefit to GB Patent Application No. 9311920, filed June 9, 1993. The patent claims cover the first commercially successful male impotence drug — Viagra®.  Immediately after the decision was handed down Pfizer spokesman, Chris Loder, said “the decision has no effect on Pfizer’s patent claims relating to Viagra.”  Loder also said Pfizer would appeal the decision.  As yet there remains no word on an appeal by Pfizer.

This week I am in Chicago teaching the PLI Patent Bar Review Course at John Marshall Law School.  It is about that time of the year where our calendar really starts to heat up.  This course, which happens every year during law school spring break, finds us in Chicago during St. Patrick’s Day festivities and the start of the NCAA College Basketball tournament.  In April we do not have a course scheduled, but we typically are out on the road going to as many law schools and engineering schools as we can to talk about patent law as a profession, the patent bar exam, finding a job and, yes, the PLI Patent Bar Review Course.  So if you are interested in a presentation let us know and we will see if we can work it into our schedule, or try and get something planned for the Fall of 2010.  Once our Spring school tour is over then we will be back on the road teaching courses in New York City (May), Southern CA (June), Boston (July), Chicago (August), New York City (September) and San Francisco (November).  We are indeed heading into our busy season!

The Biotechnology Industry Organization (BIO) has just announced that David Kappos, Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce for Intellectual Property, will be a featured speaker at the Intellectual Property Super Session taking place during the 2010 BIO International Convention. The May 3 event, entitled “Leveraging IP to Spur Global Biotechnology Innovation, Investment and Jobs,” will examine the role that intellectual property systems play in attracting biotech investment and how some countries are successfully leveraging their patent policies to foster economic growth.  Among the many events for BIO International, there will be BIO Career Fair, which is free to all job seekers.  Additionally, BIOPark will host academics, tech transfers and early stage companies looking to showcase innovative technologies.

“BIO is thrilled that Director Kappos, a renowned thought leader in IP policy, will be joining us at the 2010 BIO International Convention. His comments will provide attendees with new insight into global IP issues, the future of patent reform and the effect of patent policy on scientific discovery,” said BIO President and CEO Jim Greenwood.

The buzz continues about Lindsay Lohan’s suit against E*TRADE over its use of the name “Lindsay” to identify a “milkaholic” character in the latest in its ongoing series of talking-babies commercials.

The consensus seems to be that the case will be won or lost at the threshold, where Ms. Lohan has to demonstrate that the ad’s use of the name “Lindsay” is likely to invoke her identity. Her claim that Lindsay is a commonly-recognized single-name celebrity-identifier along the lines of Cher, Madonna, and Oprah appears unsupported by evidence that she has billed herself by first name only; nor is Lindsay as unusual or distinctive a name as those others.

Nevertheless, opinions as to whether the commercial actually invokes Ms Lohan appear to break down along generational lines, and to define a spectrum running from “of course they were referring to Lindsay Lohan” to “that would never have occurred to me.”

Docket Report subscribers and visitors to our website know that Docket Navigator tracks every patent case in every federal district court every day, and reports every significant event. Every day our team reads an average of 500 docket sheets, selects events that are worthy of reporting, and summarizes those events for our readers. As you might imagine, most of the court documents we review are pretty cut and dry, reflecting the serious business of dispute resolution. But occasionally we come across a bit of commentary that stands out from the rest.

In the case of Henryk Oleksy v. General Electric Company, et al (ILND 1-06-cv-01245), a settlement conference occurred recently; quite a normal activity in patent litigation cases. But something about this particular entry caught our eye. Patent litigators were complimented for being civil by the district court. This is not something you typically see, but when there are these types of “feel good” moments they are worthy of being noted.

When you want to learn about a new business, the latest news, the upcoming weather or the current sales at your favorite store, what is the first thing you do?  In today’s technologically savvy times, majority of all people asked this question would probably answer it the same way; they turn to the Internet.  Computer prices have dropped significantly since the inception of the home personal computer and now most homes, schools and libraries now have computers. When we want to find out more about a company, now we simply go to our favorite search engine and search for the company by name.  But how often do you find that the company you are looking to learn more about still does not have an Internet presence through a website of their own? When you go to business networking functions, do you still receive business cards only to find they have email address ending in @hotmail.com or the like? In today’s business world it is hard to fathom just how many businesses still do not have a web presence.

Earlier today Darby & Darby, one of the oldest intellectual property boutique firms in the United States, announced that they are dissolving. The announcement, which seems to have come without much warning, confirms rumors that started swirling last night that an abrupt end was near for the firm that has been in business since 1895. Darby & Darby has offices in New York, Seattle, Washington DC, Palm Beach Gardens and Frankfort. Details remain murky, and no one seems to know exactly when the doors will be shuttered, but here is the text of the announcement:

It is with a heavy heart that we announce that after more than 100 years in continuous operation, Darby & Darby will begin the process of winding down the firm in anticipation of an orderly dissolution. While we continue to have exceptional clients, from individual inventors to Fortune Global 500 Companies, and remain profitable, many of the factors frequently cited in demise of other firms’ have made a similar impact on us.

Earlier today Dale Halling, of Halling IP and State of Innovation Blog, brought to my attention an article on the IAM Magazine Blog from a few weeks ago. Joff Wild of IAM blogged about a study conducted by IPVision, Inc., which focused on analyzing the intellectual property positions of over 9,000 US venture capital backed technology companies. The study was conducted with the assistance of faculty at the MIT Sloan School of Management, and not surprisingly determined that there is a strong correlation between intellectual property assets, particularly strong patent portfolios, and success. In fact, the IPVision study shows that VC-backed technology “[w]inners are many times more likely to hold intellectual property than losers.” Further proof that those who due to ideological reasons forgo pursuing a patent portfolio are dooming themselves, and their investors, to an unnecessary uphill struggle right from the start.

The recent dispute involving Lindsay Lohan and ETrade (see AP report on YouTube) provides an opportunity for critically examining the right of publicity. The right of publicity is one of the newest intellectual property rights available under U.S. law. It allows a celebrity, such as Ms. Lohan, to control the commercial use of her name and/or likeness. This right is a distinct right that exists in addition to unfair competition and trademark rights.

Existing unfair competition law allows a celebrity to object to use of her name and/or likeness in a commercial context if the use is likely to confuse members of the intended market such that they believed the celebrity was endorsing the product. (See, e.g., 15 U.S.C. sec. 1125(a)). Additionally, a celebrity may be able to assert trademark rights in her name. But a trademark infringement action would also require demonstrating a likelihood of confusion among consumers. The right of publicity provides an additional right which enables a celebrity to object to use of her name and/or likeness even if no confusion exists among consumers.

Earlier this afternoon the United Inventors Association, a 501(c)(3) not-for-profit founded in 1990 and dedicated to providing inventor education and support, wrote to Congress to set the record straight on the UIA stance on patent reform efforts.  UIA Executive Director Patrick Raymond sent a letter to Senator Patrick Leahy (D-VT), who is Chairman of the Senate Judiciary Committee, and an identical letter to Congressman John Conyers (D-MI), who is Chairman of the House Committee on the Judiciary.  The primary purpose of the letter, as stated in the letter itself, was to make clear that the primary mission of the UIA is to provide reliable information to inventors and not to undertake lobbying efforts.  The letter makes clear that the UIA is “not involved in any campaign against this proposed legislation.” The letter goes on to explain that while some “coalitions” and “alliances” are claiming to speak “on behalf of all independent inventors nationwide,” they do not speak for or on behalf of the United Inventors Association or its membership.

By now most are likely aware that patent reform is back, once again, with the current draft legislation available for everyone to read.  It is becoming harder and harder to take patent reform seriously, given that it has started to become a little like a bad horror movie where the villain is killed only to reappear in the next episode, a la Jason from the Friday the 13th movie franchise.  Over the last 5 years or so we have been told that patent reform is a done deal, only to have it called off and proclaimed dead due to lack of compromise.  Is this time different?  At the risk of sounding extremely naive, I think this time is different and it is going to happen.  It looks like most of the contentious issues have been ironed out enough to have generated a bill that can be passed and become law.  However, the continued focus on health care reform by the Obama Administration promises to cripple Congress for at least a few more weeks, likely longer.  By the time Congress is operational again, will there be enough interest to do something, even anything?

There are certain “patent-eating” monsters that lurk nowhere else but in America.  One created by the “duty of disclosure” obligation is “inequitable conduct” which devours patents like a Tyrannosaurus Rex.  There’s also a stealthier but ravenous patentivour that is as deadly as a velociraptor in Jurassic Park.  It’s called the “best mode” requirement of 35 U.S.C. § 112, first paragraph.

The latest victim of the “best mode” patentraptor was a foreign patent applicant in Ajinomoto Co., Inc. v. International Trade Commission.  In the end, Ajinomoto was unable to outrun the “best mode” patentraptor.  And like the sequels to Jurassic Park, there are likely to be future instances where this patentivour devours other U.S. patents, including those of foreign applicants who may even be ignorant of this patent monster.  But ignorance of the “best mode” patentraptor is equivalent to not being aware that the bioengineered dinosaurs were multiplying in dangerous numbers in Jurassic Park.

Intellectual Property Today has once again come out with its much anticipated list of the top patent law firms. The 2010 list has many of the usual suspects on it, and the complete list of patent law firms is available in PDF for $25. You can also obtain the list by getting a copy of the March 2010 IP Today magazine, which will be provided on a complimentary basis while supplies last for those who subscribe to IP Today.

Even if you are not interested in the entire list, I do recommend visiting the IPToday.com blog where the top 25 patent firms are listed, together with information on the number of patents obtained during by these firms in 2007, 2008 and 2009, along with a percent increase in 2009 over 2008.

At the top of the list was Oblon Spivak, McClelland, Maier & Neustadt, LLP, with 4043 utility patents, 72 design patents, which represents an increase of 6.5% in 2009 over 2008.  When reached for comment Bradley D. Lytle, Partner, and Member of the firm’s Management Committee told me:

We are proud of our record accomplishment of obtaining over 4000 U.S. patents in 2009, the most by any law firm. In a challenging year of economic downturn affecting companies, law firms and the USPTO, we view our success as a product of the dedicated efforts of our staff to work collaboratively and effectively with the USPTO and our clients to promptly identify allowable subject matter of sufficient scope to protect our clients’ innovation.

On Friday, March 5, 2010, IPWatchdog, Inc., Gene Quinn and Renee Quinn filed responsive papers with the United States Federal District Court for the Northern District of New York (Syracuse, NY) in the matter of Invention Submission Corporation v. IPWatchdog, Inc.  I have retained the services of Hiscock & Barclay.   Michael Oropallo has filed an appearance and is the lead attorney.  John Cook has also filed an appearance and will be assisting Oropallo.  Both Oropallo and Cook are from the Syracuse Office of Hiscock & Barclay.  Also working on the case are Christopher Blank and Nicholas Gallo, both of whom are located in the Rochester Office of Hiscock & Barclay.

In a nutshell, we moved to dismiss the case, with a Motion to Dismiss hearing scheduled for April 9, 2010.  Not surprisingly, we also opposed ISC’s motion for preliminary injunction.  Everything we filed can be found below, including declarations in support of both the motion to dismiss and our opposition to the preliminary injunction, voluminous exhibits and memos of law.

The Federal Circuit’s recent decision in SEB S.A. v. Montgomery Ward & Co., Inc. (Fed. Cir. Feb. 5, 2010) (“SEB”) addresses a defendant’s liability for inducement as well as for direct infringement. It is significant in that it may expand the scope of infringement liability, particularly for foreign defendants, in multiple respects.  What follows is an Executive Summary of SEB v. Montgomery Ward: Extending the Reach of U.S. Patent Laws to Foreign Defendants—Developments in the Law of Direct Infringement and Inducement. A PDF copy of the full article is available here.

Since 2006, DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc) (“DSU”), has significantly improved defendants’ chances of defeating a charge of inducement. In DSU, the en banc Federal Circuit held that the “specific intent” requirement necessary to establish inducement requires that the plaintiff prove that the defendant either knew or should have known that his acts would induce actual infringement, and that this necessarily required the defendant to have knowledge of the patent at issue. Merely establishing that the defendant intended to induce the acts that happened to constitute infringement is not sufficient.

Over the weekend I was doing some research on stocks that I might be interested in purchasing.  In a previous life I was somewhat active in the stock market, and I am starting to once again get involved in the market.  It might be news to some, but back in 1999 when I acquired IPWatchdog.com the thought was that it would be used by me and a group of friends who together with me formed a think tank to build a business evaluating companies and stocks based on their intellectual property portfolios, of which patents are a primary component.

Obviously, that didn’t go as planned.  Many of those involved in our fledgling think tank went on to bigger and better things with high paying jobs.  Having acquired the domain name personally, after the think tank fell apart I decided to take IPWatchdog.com in a different direction, particularly after the bubble burst.  In any event, I have long wanted to try to at least occasionally get back to what was to be the IPWatchdog.com roots.  With this in mind I figured I would give it a try when I came across something interesting.  I think I have, but of course you will be the judge no doubt.  What I can say is that I have not been paid to write anything positive about this or any other company I may write about in the future, and the analysis is mine alone, relying on information available to the general public.

Many inventors operate under the misunderstanding that getting a patent is like owning Boardwalk and Park Place in the popular board game “Monopoly.” Unfortunately, turning a patent grant into cash is much more complicated than simply placing hotels on Boardwalk and Park Place.  Those who are against patents always seem to argue that a patent is a monopoly, or at least use those terms interchangeably.  Don’t be fooled into thinking that a patent is a monopoly.  Simply obtaining a patent will not result in the arrival of a money truck to your doorstep.