Recently we received a press release announcing that six prominent patent and litigation attorneys had left the international law firm of Dorsey & Whitney LLP to join the growing Intellectual Property team at Winthrop & Weinstine, P.A. The addition of these six attorneys brings the total number of IP lawyers at Winthrop & Weinstine up to 30.

This got us thinking that maybe this move is part of what seems to be a continuing trend in the intellectual property industry. With so many large firms vanishing and small to medium size firms flourishing. So I sat down to talk with Scott Dongoske, president, and Deb Cochran, marketing director, of Winthrop & Weinstine for a conversation.

RENEE QUINN: I know that Dorsey & Whitney is one of the largest law firms in the United States. They have about 600 attorneys internationally. And I understand that currently your firm has 100 attorneys, 30 of which are under patent law. So by adding 6 more, you are basically quadrupling the size of your patent department. Why were you interested in growing that service area within your firm?

As most of you are undoubtedly aware, the United States Patent and Trademark Office has been cranking out proposed rule packages one right after another.  The speed at which these rules packages are coming out is impressive, but also makes it virtually impossible to keep pace while you continue to try and represent clients.  The USPTO is obviously putting in a lot of time and effort, and by and large it seems that they are doing a good job.  But as you start to review proposed rules package after proposed rules package you start to get the sense that the America Invents Act (AIA) is going to change even more than anyone expected.

One of the rules packages that is sure to capture the attention of patent attorneys and litigators alike is the recently released Rules of Practice for Trials Before the Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (hereinafter “Board rules”).  What a mouthful! This particular rules package is some 35 pages in the Federal Register 3 column format.  If you copy and past into Word with Arial 12 point font this rules package is 86 pages, just to give you some idea of the magnitude.

Much has been said about the fact that the USPTO has struggled for too many years yet fails to keep up with filings.  In a message dated January 25, 2012, Professor Harold Wegner pointed out that, currently, 46% of “new” applications are not new at all but are actually RCE’s.  USPTO “count reform,” intended to encourage greater efficiency in the examination process, had only reduced the rate of growth of RCE filings to 10.7 percent.  At least one response to Prof. Wegner, shared in another posting on January 25, stated the view that doing away with RCE practice would serve only to generate a staggering number of appeals and shift the backlog to the Board of Appeals, make the application process inordinately costly, and discourage inventors from ever applying for a patent at all.  As things stand, there is not much doubt about such a result.

Considering the amount of hand-wringing that has occurred over the matter, and the disappointing results thus far, it appears that, as things stand, there is little hope for the PTO to get is work done in any timely manner except by hiring a veritable army of examiners, legions of administrative patent judges, together with innumerable support staff.   It is not difficult to foresee how a budget request for such an approach would be received in Congress.

Whenever a newly-minted lobbying group proposes to radically curb a government agency’s enforcement powers, it’s wise to ask, Who will benefit?

Such is the case with the newest lobby in Washington, the self-described “ITC Working Group.” You won’t learn anything about this organization by searching Google — odd, considering that Google is a member — but according to industry sources, its aim is twofold: First, it wants to block the International Trade Commission (ITC) from hearing patent infringement cases brought by “non-practicing entities” — i.e., patent holders like universities, independent inventors, and others who license their patents for manufacturers to commercialize. And second, it wants to weaken the ITC’s power to block the importation of infringing products into the U.S.

Art 4Last week I spoke at the 6th Annual Patent Law Institute hosted by the Practising Law Institute.  The topic of my presentation was largely a “dealer’s choice” if you will, with the segment being billed as PLI Authors: Hot Topics in Patent Prosecution. I spoke at the New York City location and Jeffrey Sheldon, author of How to Write a Patent Application.  With me being able to pick whatever prosecution topic I wanted, I decided to focus on Track 1 as a strategy to deal with Art Units where patents seem to go to die, which allowed me to discuss what I was finding from PatentCore relative to the Art Units that handle business method patents.  See Business Methods by the Numbers and Appealed Patent Allowances.

After my presentation, as you might expect, I was approached by a number of patent attorneys.  Story after story it was the same thing I have heard from so many others — depressing tales of not being able to get a patent.  One particularly egregious thing I heard was from a patent attorney who told me about a conversation he recently had with a SPE from one of the business method art units.  I don’t know which Art Unit, and frankly I didn’t ask, although it is probably easy enough to narrow down the Art Unit.  This patent attorney told me that the SPE said: “we just don’t issue patents unless the Board orders us to.”  If that is in fact what was said and is in fact what is happening then there is a systematic denial of due process at the United States Patent and Trademark Office, and that is wholly unacceptable.

Lately I have been getting a lot of inquiries again from inventors who are interested in contingency fee representation.  There is no such thing as contingency representation for purpose of preparing, filing and ultimately obtaining a patent.  Patent attorneys and agents just don’t take contingency clients when the matter is patent procurement.

I write on this topic with some frequency, the last time being the spring of 2011.  Please don’t take offense, this is a “tough love” article that may come across as a lecture.  I have always believed that the overwhelming majority of inventors want to hear it straight and are looking for a road-map to get from point A to point B.  The thing I preach all the time, and the theme of this article, is understanding the industry.  The more you understand about what you should do, when you should do it and the economic realities facing the various players you will come in contact with the better off you will be to safely and successfully navigate the difficult waters of going from invention to money.

AIPLA is proud to announce that Executive Director Q. Todd Dickinson will be inducted into the IP Hall of Fame for 2012.

The IP Hall of Fame was created in 2006 by Intellectual Asset Management magazine to identify and honor individuals who have helped to establish intellectual property as one of the key business assets of the 21st century.

“We are thrilled that Todd will receive this recognition,” said William G. Barber, AIPLA President. “Todd has been a great leader at AIPLA since he took over in 2008, and it is wonderful to see his long-time contributions to our industry recognized.”

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Part 1 of the interview was published yesterday.  What follows is the remainder of the interview. We discussed a range of topics in this segment, including average pendency of trademark applications, cease and desist practice and some of the misleading letters sent to trademark owners and applicants from various third-parties that provide dubious publication services.

To see all of my recent interviews with senior USPTO management please visit USPTO 2.0.

QUINN: I wonder why it is that the patent side seems to operate from differently than the trademark side from a technology standpoint. Is it just about the scale of the system?

COHN: Patent and Trademark systems are separate because the requirements are different.

QUINN: Okay. Well, can you give me a sense of what is the scale difference between the trademark office and the patent office?

COHN: Last year we received almost 400,000 new application classes. And we examined about 390,000 applications last year.

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Cohn oversees all aspects of the USPTO’s Trademarks organization including policy, operations and budget relating to trademark examination, registration and maintenance. We spoke in her office on the 10th floor of the Madison Building for approximately 55 minutes.

Commissioner Cohn joined the USPTO in 1983 as a trademark examining attorney and rose through the ranks to managing attorney and group director before becoming Deputy Commissioner for Trademark Operations in 2006. She also served as Acting Chief Administrative Officer for the agency from October 2007 to April 2008 and from May to September 2010.

It has been some time since I have engaged in filing and prosecuting trademark applications, increasingly over the years devoting my practice to patents. With that in mind I reached out to two attorneys at my firm who do a significant amount of trademark work — Mark Malek and Mark F. Warzecha — to ask for suggested questions for Commissioner Cohn.

To view all of these latest USPTO interviews visit USPTO 2.0.

 

In the recently issued case of ClearValue, Inc. v. Pearl River Polymers, Inc., Judge Moore, writing for the Federal Circuit panel, distinguished the holding in the 2006 case of Atofina v. Great Lakes Chemical Corp. In ClearValue, Judge Moore ruled that a process having a claimed raw alkalinity of “less than or equal to 50 ppm” was anticipated under 35 U.S.C. § 102 by a prior art process disclosing an alkalinity of “150 ppm or less.” I believe Judge Moore was correct in ruling that the claimed alkalinity of “less than or equal to 50 ppm” was anticipated by the art disclosed alkalinity of “150 ppm or less.” But her basis for distinguishing Atofina in ClearValue is very problematic in a number of respects, and could create further unnecessary confusion as to when a narrower claimed range in a process is anticipated by a broader range disclosed by the prior art.

As illustrated by the ClearValue and Atofina cases, one area where the Federal Circuit sometimes struggles in articulating clear doctrine is when is a narrower claimed range in a process is anticipated under 35 U.S.C. § 102 by a broader range disclosed by the prior art. A significant contributor to this problem is the unfortunate and interchangeable use by the Federal Circuit of the phrases “overlapping” and “encompassing.” (I have also found patent examiners fail to understand the difference between these phrases.) In my view, the phrase “overlapping” should be used only when the claimed and the art disclosed ranges partially overlap or share at least one common end point. By contrast, when a narrower claimed range fits within a broader range disclosed by the prior art, the term “encompassing” is more appropriate to describe the relationship of the claimed narrower range to the disclosed broader range. (Some refer to an “encompassed” range as a “sub-range.”)

Last week at the 6th Annual Patent Law Institute presented by the Practising Law Institute last week in New York City I found myself a little star struck; or maybe “surprised” is the right way to characterize it.  The term “All Star Panel” is thrown around too liberally in the CLE world and relative to programming at various annual meetings.  Having said that, the panel titled “Dialogue Between the Bench and Bar” was comprised of some of the biggest names in the industry, and they didn’t seem interested in pulling punches.  Nothing seemed sacred, at least in terms of topics, which lead to a lively and entertaining discussion that lasted 90 minutes without a single question from either the live audience or the webcast audience.

The panel that ended the first day of the program was moderated by Don Dunner of Finnegan, Henderson, who is the unofficial “Dean of Federal Circuit Advocates.”  I had the pleasure of interviewing Dunner nearly a year ago and always enjoy listening to his thoughts and soaking in his wisdom.  To his left was Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit, and to Rader’s left was Seth Waxman former Solicitor General of the United States and now of Wilmer Hale.  To Dunner’s right was Judge William Young of the United States Federal District Court for the District of Massachusetts, and to Young’s right was John Whealan, currently of George Washington Law School and former USPTO Solicitor.

The discussion was lively, perhaps even explosive.  You could nearly see sparks fly when Chief Judge Rader continued to pepper Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice.  Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.”

On Wednesday of last week I was in Washington, DC, and then on Thursday and Friday I traveled to New York City for the 6th Annual PLI Patent Institute.  Over these days out and about I heard similar stories from well placed individuals in the industry.  Had I heard it only once from one source I would have believed it to be true, given who was telling me, but I heard substantially the same thing from several very credible sources.  The troubling news starts with the fact that a technical amendments bill to the America Invents Act (AIA) that is working its way around Capitol Hill, and in true government by ambush fashion it could work its way into a bill at any time!   Everyone interested in stopping substantive changes to the AIA needs to be prepared to act fast!  In fact, I understand that if the Stop Online Piracy Act (SOPA) had moved forward the AIA Technical Amendments bill would have been attached to it.

What is the big deal about technical amendments?  The problem is that not all of the amendments will be “technical.”  For example, there is a plot afoot to change the estoppel provisions in the AIA relative to post-grant review and inter partes review.  As enacted, estoppel attaches relative to any ground raised or which reasonably could have been raised during the proceeding.  There is an intense effort to have the technical amendments modify the estoppel provisions to provide estoppel only for that which was “actually raised,” thereby excising the “reasonably could have raised” language.  This is obviously a substantive amendment, and a truly terrible idea.