I frequently ask myself why it is that patents continue to come under attack by those who want to pretend they are only a burden on society and provide no benefit. Believing patents provide no benefit to society demonstrates a failure to understand fundamental aspects of the patent system, disclosure and publication of applications, as well as the basic economic reality that to innovate requires funding. Innovation, particularly cutting edge innovation, requires quite a bit of funding, sometimes many millions or hundreds of millions of dollars of funding. Where will that money come if there is no reasonable expectation of recouping the investment? Free-riders are not innovators and policies that encourage free-riders at the expense of innovators are nonsensical.
At this time of the year all typically sit back and reflect on the year that has been, spend time with family and friends, watch some football and set a course to follow into the new year. It is also that time of the year where we are inundated with lists, top 10 this, top 10 that, it gets rather mind numbing after a while. So with that in mind — I have my own top 10 list. I know, I know, but they are so much fun to put together and there is something useful about looking back and reflecting that helps put things into perspective.
Without further ado, here are the top 10 events that shaped the patent, innovation and intellectual property industry during 2010 — at least according to me, and with a heavy patent emphasis. What did you expect?
Chances are you have already put some thought into Social media at some point over the course of 2010. And chances are you or your company is currently finalizing your advertising and marketing budgets for 2011. But how many of you have included Social Media as a part of your marketing and advertising campaigns? Are you on Facebook, Twitter, LinkedIn, Plaxo, IP Alley and other social media sites pertinent to your industry or specialty within your field? Those you have created profiles on different sites, how active are you in your social media marketing campaigns? How often do you update your work experience and other information? How often do you post content on your profile? How often do you tweet? These are all things you can and should do. And since we are nearing the end of 2010, I thought I would share with you a list of “Social Media Resolutions” that you should consider implementing in your 2011 Marketing and Brand Building Social Media campaign.
From US Patent No. 4,113,020, titled "Fire safety Christmas ornament."
It is that time of the year where when we prepare our homes for the arrival a jolly old magical chief elf who despite his enormous girth is still able to make his way down our narrow chimneys lickedy-split, while somehow managing not to get any soot on his pristine red and white trousers and overcoat.
In order to celebrate holidays I always like to profile some patents relative to the festivities, proving once and for all that the entire world does revolve around and can be answered by the creative and awe inspiring power of the patent system! Okay, maybe a touch of hyperbole there, but what do you expect? In any event, feel free to visit our growing list of Holiday Patents.
This year I asked Glen Kotapish of Planet Patent if he could provide me some examples of interesting or bizarre US patents that somehow relate to “Christmas trees.” I figured that Glen, the owner of a patent search firm, probably had come across an interesting Christmas tree patent or two over the years. Glen did not disappoint! Incidentally, if you are into bizarre patents I highly recommend visiting his Bizarre Inventions Weird Inventions page.
On March 10, 2010, District Court Judge Kathleen O’Malley was nominated by President Barack Obama to succeed Alvin Schall, who retired from the United States Court of Appeals for the Federal Circuit. Earlier today, Judge O’Malley was confirmed by the United States Senate, see Senate Confirms Five Judicial Nominees. O’Malley’s confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law. O’Malley will join 15 other colleagues on the Federal Circuit, 6 of who are on senior status.
Judge O’Malley has served on the the United States District Court for the Northern District of Ohio since being appointed by President William J. Clinton on September 20, 1994 and confirmed by a voice vote of the Senate on October 12, 1994. See Thomas: Nomination PN1786-103.
Have you ever heard of a design patent application that remained pending for nearly 11 years? Well, if you haven’t prior to now you have now. The design patent application was originally filed on January 4, 2000, and the design patent was issued earlier today as U.S. Design Patent No. D629,412. The long and tortured path to obtain the design patent on a drop down menu took 10 years and 50 weeks! Almost unbelievable. Getting this one patent application off the books should meaningfully help the averages, which is a sad commentary in and of itself.
In reviewing Public PAIR it becomes apparent that nothing was substantively done on this design patent application for a full 2 years. The first substantive event occurred on January 4, 2002, when the patent examiner issued a Non-Final Rejection. Prosecution proceeded forward at an excruciatingly slow pace for a design patent application, ultimately necessitating an Appeal Brief to be filed on January 5, 2004. Then the application seems to have done one of the truly great Rip Van Winkle impersonations of all time, again laying dormant for nearly 4 years. The next substantive entry is an Ex Parte Quayle Action dated December 11, 2007, some 3 years and 48 weeks after the Appeal Brief was filed, and now nearly 7 years after the application was initially filed.
On Friday, December 17, 2010, the United States Court of Appeals for the Federal Circuit issued a decision in one of the patentable subject matter cases that was returned to the Court by the Supreme Court in the wake of the Supreme Court’s decision in Bilski v. Kappos. Prometheus Laboratories, Inc. v. Mayo Collaborative Services first reached the Federal Circuit on an appeal brought by Prometheus, challenging the final judgment of the United States District Court for the Southern District of California. The district court had granted summary judgment of invalidity of U.S. Patents 6,355,623 and 6,680,302 under 35 U.S.C. § 101. In the original case the Federal Circuit held that the district court erred as a matter of law in finding Prometheus’s asserted medical treatment claims to be drawn to non-statutory subject matter under the machine-or-transformation test, which at the time was the definitive test for determining the patent eligibility of a process under § 101. In Bilski, however, the Supreme Court held that the machine-or-transformation test, although “a useful and important clue,” was not the sole test for determining the patent eligibility of process claims. The Supreme Court vacated and remanded the Prometheus case for further consideration in light of Bilski v. Kappos. On remand, once again, the Federal Circuit held (per Judge Lourie with Chief Judge Rader and Judge Bryson) that Prometheus’s asserted method claims are drawn to statutory subject matter, reversing for the second time the district court’s grant of summary judgment of invalidity under § 101.
News of Nathan Myhrvold’s Intellectual Ventures bringing a series of lawsuits should have displaced the above the fold headlines regarding the vague financial turmoil currently afflicting the U.S. and World Economy. Whereas one will pass, like kidney stones, with much watery eyed pain and gnashing of teeth, the other is far more insidious and potentially fatal to our collective future as a leading economy. Here’s why:
Just like in the story-line of Independence Day, where the alien death ships slowly but surely positioned themselves over each major city, with the eventual outcome well understood, so too is Intellectual Ventures (I.V.) slowly positioning itself as the patent overlord over many major industry segments. Just like in the movie, the eventual outcome is well understood. To wit: Complete usurpation of the U.S. Patent system. The outcome is a, gigantic tax/toll collector controlling the pulse of innovation in the U.S. or, like the movie, extermination of innovation.
Some patent applications are difficult to get agreement on. The examiner won’t allow and the applicant won’t abandon. The net result is that office actions and responses go back and forth with no apparent resolution in sight. We propose that progress with these difficult patent applications can be tracked by looking at two separate but interrelated metrics, “applicant effectiveness” and “examiner effectiveness”. These two metrics can then be used to diagnose and correct problems in patent prosecution and examination.
“Applicant effectiveness” is the fraction of office actions that have a new piece of prior art cited against the first independent claim. “Examiner effectiveness” is the fraction of responses that have a new amendment to the first independent claim. These metrics are described as “effectiveness” since they are measures of how skilled applicants and examiners are in convincing the other party that they are right. If an examiner cites a new piece of prior art against an independent claim, then it was the applicant who was effective in his or her last response. If an applicant amends an independent claim, then it was the examiner was effective in his or her last office action. We limit out attention to the first independent claim since this is the bottleneck in getting all claims allowed. It also saves time in collecting the data.
Sharon Barner, Deputy Under Secretary of Commerce and Director of the USPTO
Washington – Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO) Sharon Barner has announced she will be leaving the USPTO effective January 14, 2011.
Barner was appointed to the position by Commerce Secretary Gary Locke in October 2009. Among her many accomplishments is the development of the 2010-2015 USPTO Strategic Plan, which is designed to strengthen the capacity of the USPTO, reduce patent processing times and improve patent quality. In the international arena, Barner led 15 foreign missions to countries including Brazil, China, India, Mexico and Russia. During her travel, Barner met with representatives of government, academia and industry in order to raise awareness of the importance of intellectual property (IP) and its critical role in economic, social and cultural development.
On Monday, December 13, 2010, the United States Supreme Court issued a non-decision in the matter of Costco Wholesale Corporation v. Omega, S.A. The Per Curiam decision simply read: “The judgment is affirmed by an equally divided Court. Justice Kagan took no part in the consideration or decision of this case.” What this means is that the decision of the United States Court of Appeals for the Ninth Circuit will remain unchanged, and there is supposedly no precedential weight given to the stalemate non-decision by the United States Supreme Court. Of course, it will be argued by those who need to prop up the Ninth Circuit decision that it can be assumed that the former Solicitor General and now Justice Kagan would have agreed with the Department of Justice position in favor of the Ninth Circuit ruling. Unfortunately, this non-decision could well signal the beginning of the end for the first sale doctrine given that goods manufactured and sold outside the United States can apparently be controlled downstream by the copyright owner without the copyright owner having exhausted rights through the sale.
On a separate but related matter, one has to wonder how many of these non-decisions will be forthcoming over the next several years as Justice Kagan, who was the Solicitor General of the United States for the first 18 months of the Obama Administration, will recuse herself time and time again.