The United States Patent and Trademark Office (USPTO) will be holding a public roundtable discussion on its proposed Enhanced Examination Timing Control Initiative, also known as “Three-Track,” currently under consideration by the USPTO. The purpose of the roundtable meeting is to solicit opinions from the public on the proposed initiative. The meeting will be held on Tuesday, July 20, 2010, from 1:30 p.m. to 5:30 p.m. at the USPTO headquarters in the Madison Building Auditorium, which is located at 600 Dulany Street, Alexandria, VA, 22314. The meeting will also be webcast. Web cast information is available on the USPTO’s website by visiting http://www.uspto.gov/patents/announce/3track.jsp.
The proposed ”Three-Track” initiative would provide applicants greater control over when their applications are examined and promote greater efficiency in the patent examination process. The proposal is designed to provide applicants with the timing of examination they need and to reduce pendency of patent applications.
WASHINGTON– The United States Patent and Trademark Office (USPTO) announced that the period for receiving public comments regarding the agency’s 2010-2015 draft Strategic Plan has been extended until August 2, 2010. The extension has been made to allow more time for the public to provide feedback to the agency about the plan.
The draft plan includes the USPTO’s mission statement, vision statement and a description of the strategic goals, objectives and significant actions that the USPTO plans to take in order to accomplish its mission and achieve its vision over the next five years. The final plan will be posted on the Web site by September 30, 2010.
In a recent decision, the Eastern District of Texas has clarified the proper role of functionality in claim construction for design patents. By statute, design patents must be directed to “ornamental designs for an article of manufacture.” As a result, courts have struggled with how and when functional aspects of a design should be considered when construing a patent claim. The Federal Circuit addressed this issue earlier this year in Richardson v. Stanley Works, 2010 WL 774334 (Fed. Cir. 2010), in whch it appeared to direct district courts to factor out the functional aspects of designs during claim construction.
The claim at issue in Good Sportsman v. Li & Fung Limited, 2010 WL 2640385 (E.D. Tex. 2010), was for a clip-on book light. Plaintiff Good Sportsman proposed the claim construction of “an ornamental design for a clip light as shown in Figure 1 of the picture.” Defendant Li & Fung Limited sought a more limiting construction based on Richardson, which expressly discounted “functional” elements of the design, such as the design’s clip, headlamp, on-off switch, and flexible wire. Ultimately, the court adopted Good Sportsman’s approach, holding that the claimed design is best represented by the illustration contained in the patent and refused to provide limiting language regarding functionality in its claim construction.
Nick Godici, the former Acting Director of the United States Patent and Trademark Office, sat down with me on Tuesday, June 29, 2010, for an extended interview. Nick is one of a select few who have seen the Patent Office on every level, from patent examiner, to SPE, to Group Director, Commissioner for Patents and ultimately Acting Director. In Part 1 of the interview we discussed his philosophy on examining patent application, the historic allowance rate vs. the depressed allowance rate of the pre-Kappos PTO and a variety of other topics. In Part 2 we discussed how President Obama’s approach to revitalizing the USPTO under Director Kappos’ direction parallels President Reagan’s attempts under Gerry Mossinghoff. We also discussed building relationships between patent examiners and the patent bar, what the PTO is likely doing to announce 101 guidelines in the wake of Bilski v. Kappos, and what it is like to be Director of the USPTO.
In this final installment of my interview with Nick Godici we learn just how close the Patent Office was to sending out 9,000 furlough notices (to all those on the patent side of the building) during the Summer of 2009 as a result of lack of funds. We also discuss the historic patent allowance rate versus the 42% rate the Patent Office got down to during the Q1 of 2009. Godici also humors me by answering the fun questions and we learn that he was the primary examiner on a somewhat famous (or infamous) patent relating to a bird trap and a cat feeder, and he goes off the board with an interesting selection for most famous fictional inventor.
On Friday, July 9, 2010, Garmin International Inc., a unit of Garmin Ltd. (NASDAQ: GRMN), issued a press release touting the fact that they had managed to win a Motion for Summary Judgment in the Northern District of Illinois, with the Federal District Court granting Garmin’s motion in SP Technologies, LLC v. Garmin International, Inc. and TomTom, Inc. The Memorandum Opinion and Order, issued by Federal District Court Judge Rebecca R. Pallmeyer, hands famous, notorious and/or infamous (depending on your viewpoint) attorney Ray Niro a defeat. Niro, a favorite attorney of those alleged to be patent trolls, represented SP Technologies.
The Order granting Summary Judgment in favor of Garmin, which issued on July 7, 2010. explains that all asserted claims of U.S. Patent 6,784,873 are invalid. The did not decide the matter of non-infringement, finding it to be mooted as a result of the invalidity determination of the ’873 patent. Nevertheless, wining on validity, or invalidity as the case may be, is still and win, and this marks the third consecutive patent suit that Garmin has successfully concluded by aggressively attacking invalid patents asserted by non-practicing patent holding companies, also known as patent trolls in some circles.
Stephen Moore represented Dr. Tafas, now represents XPRT
The attorneys at Kelley Drye & Warren LLP are back at it making big news. You will likely recall that it was the attorneys of Kelley Drye & Warren that represented Dr. Tafas in the successful claims and continuations challenge, effectively prevailing against long odds against the United States Patent and Trademark Office. Now they are representing XPRT Ventures, LLC, in a enormous $11.4 billion lawsuit brought against eBay’s PayPal. The complaint filed in the United States District Court for the District of Delaware, asserts trade secret theft and patent infringement claims with respect to six XPRT patents. In a nutshell, XPRT asserts eBay unfairly stole the idea and method of payment used in eBay’s PayPal and similar electronic payment systems.
The complaint seeks $3.8 billion in damages at a minimum, but in no event less than a fair and full reasonable royalty, but also seeks tripled damages as a result of willful infringement, which would bring the total to $11.4 billion at a minimum. While willful infringement is quite hard to prove, if the facts actually are what is alleged it would seem as if the case is exceptional, which could lead to triple damages and attorneys fees as well. So when you add that all together and add pre-judgment and post-judgment interest, the total amount on the line could easily exceed $15 billion. And before you write this off as a patent troll trying to hold up a true innovator, which some of the uninformed in the popular press are doing already, read the rest of the article and take a look at the complaint. If the facts alleged even remotely resemble reality this could turn out to be an epic battle to which we will all want front row seats!
Nick Godici, currently with Birch, Stewart, Kolasch & Birch LLP, is a former patent examiner, Commissioner for Patents and Acting Director of the United States Patent and Trademark Office. During the Summer of 2009 he was personally asked by Secretary of Commerce Gary Locke to return to the Patent Office as a special adviser to the Obama Administration and to pave the way for David Kappos to take over as Director. On Tuesday, June 29, 2010, I sat down with Godici in his Falls Church office for an in depth interview. This is part 2 of a 3 part series. For part 1 see On the Record with Former PTO Director Nick Godici – Part 1.
In this interview we talk about how two Presidents that are extremely different on so many fronts, Presidents Reagan and Obama, are pursuing quite similar strategies regarding the Patent Office. We also talk about the importance of good working relations between patent examiners and the patent bar, the enormous backlog of applications at the Patent Office, the Patent Office process for handling decisions and issuing guidance in situations such as the recent Supreme Court decision in Bilski v. Kappos and what it is like to be Commissioner for Patents and the Director of the Patent and Trademark Office.
Congressman Conyers seems interested in providing funding to the USPTO
Recently the United States Patent and Trademark Office released its draft Strategic Plan for FY 2010 – 2015. This may seem odd given that FY 2010 is almost over, ending on September 30, 2010. So it is probably a better title to call it the FY 2011 – 2015 Strategic Plan, but there is no doubt as you read the document that under the guidance of Director David Kappos the USPTO has already well launched the short term Strategic Plan. Now if Congress would only be wise enough to grant funding for the Patent Office to actually accomplish what needs to be done!
Truth be told, it would be enough for Congress to just (1) stop siphoning off money from the USPTO through fee diversion; (2) grant the USPTO fee setting authority; and (3) stand out of the way. So my message to Congress would be this: put the pocketbook down, slowly step back and raise your hands over your head so we can see them!
On Tuesday, June 29, 2010, I had the opportunity to sit down on the record with Nick Godici, the former Acting Director of the United States Patent and Trademark Office and Former Acting Undersecretary of Commerce for Intellectual Property. Godici is one of only a small handful of individuals to have seen the Patent Office on every level, from newest patent examiner to SPE to Group Director, Commissioner for Patents and ultimately to Director of the USPTO. I have wanted to sit down with him for some time now, and some mutual friends of ours, who are mentioned in the interview in passing, made introductions. I was put in touch with Godici and now the rest is history, as they say.
I thoroughly enjoyed my time with Godici, and we managed to get into a wide variety of issues that ranged from his early days as a patent examiner, his patent examination philosophy and approach, the role of the USPTO, the Patent Granting Authority versus the Patent Denial Authority, examiner training, building relationships between patent examiners and the patent bar, the PTO work from home initiative, inequitable conduct, the Bilski decision and what the USPTO is now likely doing to address that, the parallels between the Reagan Administration and the Obama Administration in terms of patent and innovation policy and exactly what it is like to be the Commissioner of Patents and the Director of the Patent Office, and much more. Oh yes, we also talked about his getting a call from Secretary of Commerce Gary Locke last summer and returning to the Patent Office for a few months as a special adviser at the request of the Obama Administration.
Draft plan sets priorities to strengthen the USPTO, drive innovation and support economic growth
Washington – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos announced today that the USPTO’s draft Strategic Plan for fiscal years (FY) 2010-2015 is posted for public review and comment on the USPTO Web site at www.uspto.gov.
The draft 2010-2015 Strategic Plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide.
On May 17, 2010, Invention Submission Corporation (ISC) d.b.a. InventHelp® and IPWatchdog, Inc. settled the litigation initiated by ISC against IPWatchdog, Gene Quinn and Renee Quinn (collectively IPWatchdog). Effectuation of the settlement has taken longer than initially contemplated, and this article (published after review, contribution and acquiescence by InventHelp® and their attorneys), has gone through multiple revisions and is the final piece of the settlement. The case is now over and all terms of the Settlement Agreement have been satisfactorily met by both parties. The parties are pleased that the lawsuit was resolved to their mutual satisfaction. Aside from the details contained in this article the terms of the settlement will remain confidential, although the lawsuit itself may be discussed.
We want to explain to those who have followed this story the circumstances that have resulted in the resolution of our dispute. As many of you know, on January 21, 2010, ISC, which does business as InventHelp, sued IPWatchdog asserting that a variety of statements published on IPWatchdog.com were untrue and constituted unfair business practices. ISC also requested that the Court enter a preliminary injunction prohibiting IPWatchdog from engaging in the alleged unfair business practices. The lawsuit was filed in the United States District Court for the Northern District of New York, which is located in Syracuse, NY, where IPWatchdog maintains its corporate headquarters. In essence the allegations by ISC were that IPWatchdog was knowingly making false accusations that were harming ISC’s business. ISC was represented by Edward B. Friedman and J. Stephen Purcupile of Friedman & Friedman, with Candace J. Gomez of Bond, Schoeneck & King acting as local counsel.
One reason I was quite interested in Bilski was because the Supreme Court (not surprisingly) ruled that the Federal Circuit’s “machine or transformation” test was too inflexible, much like the “teaching, suggestion and motivation” (TSM) test in KSR International v. Teleflex. So why my intense interest in the Supreme Court (aka the Judicial Mount Olympus) relegating the “machine or transformation” (aka MoT) test to “second class status” in Bilski? Besides the inanity of MoT as the sole test for patent-eligibility, I am interested because of Judge Sweet’s ill-advised reliance on MoT (now smitten by the thunderbolts from our Judicial Mount Olympus in Bilski) for invalidating Myriad’s method claims using its BRCA1 and BRCA2 gene sequence technology.
David Kappos interviewed by Joff Wild, editor of IAM magazine
USPTO Director David Kappos made one of his rare excursions outside of the US at the end of June when he flew to Munich to take part in the IP Business Congress, organised by IAM – the magazine which I edit. Speaking to 450 delegates, many of them heads of IP at large corporations and SMEs, Kappos was clear that he has a major task in getting the USPTO fit for purpose and able to meet the myriad challenges it faces. I also discussed many of these with him in an interview we recorded at the congress.
Although he has only been in his job for a little under a year, Kappos is a well-known figure in Europe. He was a frequent traveller across the Atlantic during his time as head of IP at IBM and as a result has met many senior figures at the European Patent Office, as well as corporate IP big hitters. And you can say the same about Asia too. As a result, when it comes to the international aspects of his job, there has been no big learning curve. Kappos was familiar with the major issues already. It will come as no surprise to any reader of this blog to know that these are focused on closer co-operation between patent offices in order to improve quality, lower costs and reduce the huge patent backlog.
At the start of the new year I pledged that I would start to try and expand the scope of IPWatchdog.com to touch upon intellectual property matters outside the United States. In part this means trying to add an international flavor where appropriate, which is certainly always possible in part through discussion of the Patent Cooperation Treaty (PCT). In another facet it means profiling interesting stories relating to foreign intellectual property laws.
Some time ago Petosevic, a firm that offers a full range of intellectual property services in Eastern Europe, contacted us and offered us the ability to republish some of their news articles. So from time to time we will publish excerpts of their articles with links back to their website for additional information.
Last week Robert Holleyman, the CEO of the Business Software Alliance, published on op-ed article in the Mercury News. This article started by asking what the negative impact for the automotive industry would be on the incentive to innovate if 4 out of 10 automobiles were stolen right off the dealer’s lots rather than purchased. Holleyman went on to explain that this is exactly what is happening in the software industry today, with 43 percent of software being pirated in 2009, which is up 2 percentage points from 2008.
About three weeks ago Rosetta Stone Inc. (NYSE: RST), a leading provider of technology-based language-learning solutions, announced that the company had reached settlements in cases against ten individuals for copyright and trademark infringement. These individuals pirated software, including the unauthorized copying, downloading, sharing and selling of counterfeit Rosetta Stone® language learning software. These Rosetta Stone® settlements are important because they demonstrate that software piracy is not just a problem in developing nations, but is also a problem in the United States as well.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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