Frequently inventors will ask me if it is a good idea them to prepare and file their own patent applications. Whenever I am asked such a question I suspect the person doing the asking already knows the answer, but is hoping against hope that they might find someone who will tell them what they really want to hear.
You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix. You won’t die if you screw a patent application, which is virtually inevitable, but you will not likely be pleased with the outcome. If you do achieve rights they will be far more narrow than necessary and you will have created an unnavigable prosecution history that will almost certainly make the claims you do have rather useless.
Having said this, it is not at all uncommon for inventors to want to attempt to draft and file patent applications on their own. The cost of hiring an attorney to draft a patent application can price some inventors out of the market, so they are left with the choice of doing nothing to pursue their invention and dreams or trying to do something on their own. Inventors who are going to attempt to draft their own patent applications need to go into the process with their eyes wide open, realize that the resulting patent application will be better if a patent attorney is involved in the drafting, and most importantly understand that there are a good number of things that you can and likely will do that will lead to a resulting right that is compromised or completely worthless.
The Commission on the Theft of American Intellectual Property (IP Commission) released an 89-page report on May 22, 2013 assessing international intellectual property theft with a focus on China’s troubled IP regime and recommendations for changes in U.S. policy responses. The IP Commission is an independent, bi-partisan initiative led by the former Director of National Intelligence and Commander in Chief of the U.S. Pacific Command, Dennis Blair, and the former Ambassador to China and governor of Utah, John M. Huntsman, Jr. The IP Commission is affiliated with the National Bureau of Asian Research based in Seattle.
Recently, three Chinese researchers were charged with taking bribes from Chinese medical and research companies in relation to trade secret theft of NYU’s research on magnetic resonance imaging technology. The NYU study was federally funded. The panel in IP Commission acknowledged that this type of misconduct would still occur but would be reduced if their recommendations were adopted.
Recognizing the large scale IP theft that frequently originates in China, the IP Commission proposes designating the President’s national security adviser as the principal policy coordinator for all actions on the protection of American IP.
Anybody who has any involvement with Intellectual Property (“IP”) knows full well that protecting IP means a multi-step process. Obviously, step one is the conception of the invention, idea, trademark, trade name, or other innovation where protection might be necessary. Step two is the decision about what to do with the “new” idea, etc. in terms of the need to try for exclusivity on it –or not. Many “new” things do not need IP protection – and other “new” things may not qualify for it. If the “new” idea fits into the area where protection is desirable and it qualifies, then the next step is to seek legal protection. Of course, such protection will have a cost – whether or not the protection is sought by the inventor/conceptualizer himself/herself or itself (in the case of an organization) or assistance of counsel is required.
So, let’s assume the inventor/conceptualizer takes legal steps to protect the innovation – for the case of this discussion – a trademark. Such protection involves both common law claims and filing of a registration application at the United States Patent and Trademark Office (USPTO). Legal protection has a cost – not only in money, but also in time and other resources such as market research and prior art and trademark searches.
But, it doesn’t end there. If you must defend your property – that means litigation. The costs of litigation may outweigh the value of your trademark.
Johnson & Johnson is a very respected brand in the consumer medical devices and pharmaceutical goods industries. Well known for its highly recognizable personal care products, including Band-Aids, Neutrogena and Tylenol, Johnson & Johnson is also a major player in other healthcare fields. For example, a recent piece from the investment research online publication Seeking Alpha discussed the company’s attempts to build the world’s first artificial, fully-functioning pancreas.
As a result of all this research and development, Johnson & Johnson will often file patent applications with the U.S. Patent & Trademark Office. This week, IPWatchdog wants to take a look at the consumer and pharmaceutical health conglomerate to see what advances in personal medical care we can expect in the coming years. Perhaps the most exciting thing in our perusal of recent patents and patent applications is a patent just issued on certain topical anti-cancer compositions.
Many patent applications published also pertain to Johnson & Johnson’s extensive lineup of medical cosmetic products. One application would protect a dermabrasion kit with a detachable head for sensitive skin, and another was filed to protect a system of manufacturing bacteria-resistant contact lenses.
Johnson & Johnson is also focused on protecting medical devices designed by the company. Two other recent patent applications that we feature here are for punctal plugs (shown above right) and eye misting devices that can deliver medication directly to the body through the incredibly permeable membranes within the eye.
On Tuesday, May 21, 2013, Jeffery Lewis, who is the President of the American Intellectual Property Law Association (AIPLA), sent a letter to Sylvia Matthews Burwell, who is the Director of the Office of Management and Budget (OMB). In this letter Lewis, speaking on behalf of the AIPLA and its 15,000 members, challenged the legal interpretation of the budget cuts the Obama Administration says are required of the USPTO thanks to sequestration.
In the letter Lewis points out that the USPTO is at a critical point in the implementation of the America Invents Act (AIA), and this significant reduction in USPTO funding is based on an erroneous legal interpretation. Lewis also points out that the cut in funding to the USPTO is contrary to the promises made at the time the AIA was passed.
Those of us who followed the AIA debate and passage knew that it would only be a matter of time before the government reneged on its assurances that the USPTO would be allowed to keep 100% of the fees it collected. Senator Tom Coburn (R-OK) championed an amendment that ultimately failed, which would put into the Statute the requirement that 100% of fees collected be allowed to be used by the USPTO. That was rejected by Republican House leaders, who in turn promised in a letter that they would still provide 100% funding. A promise in a letter is, of course, worthless in Washington, DC.
Today at IPWatchdog, we’re going back to take a closer look at U.S. Patent & Trademark Office patents and patent applications assigned to Qualcomm Incorporated. This San Diego, CA, technology developer is a major manufacturer of mobile device products, including software and chipsets. Their technologies are involved in a wide range of industries. They’ve even recently been growing in the field of healthcare technology with their recent acquisition of HealthyCircles, a coordinated care digital platform.
One area in particular that receives a lot of focus from Qualcomm’s research and development functions is efficiency improvements to wireless network connections. Patent applications filed by Qualcomm and published recently by the USPTO seek to protect new systems of digital file sharing and power management during sleep mode, both of which conserve device battery resources. A patent awarded to Qualcomm this month protects a system of maintaining a data session for applications even if a network connection is lost momentarily.
Qualcomm’s other patent applications showcase a focus on improving device systems internally through better components or communication protocols. One such patent application describes a method of improving ultrasound reception for the use of a digital stylus. The last patent application covered by IPWatchdog in this column describes a system of controlling interference on wireless networks.
In a one-page memorandum to the Patent Examining Corpsdated May 13, 2013, Deputy Commissioner for Patent Examination Policy Drew Hirshfeld had a simple message to respond to the Federal Circuit’s en banc non-decision in CLS Bank v. Alice Corp. The message was this: “there is no change in examination procedure for evaluating subject matter eligibility.” (emphasis in the original)
This is hardly a surprise given that there were 7 different opinions with only one opinion garnering more than 5 out of 10 Judges. The sole opinion that achieved a majority was a mere 58 words in length and did nothing more than explain that given the fracture of the Court all that could reasonably be said was that the decision of the district court had been affirmed by an equally divided Court, which unfortunately rendered the claims all patent ineligible.
In his opinion Chief Judge Rader explained in footnote 1: “though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent.”
Critics argue that pharmaceutical patents are a barrier to wide-reaching access to medicines, especially for vulnerable populations in the developing world. They cast their argument in the phrase, “Patents Kill” and advocate against intellectual property (IP) protection for medical innovation and the trade agreements that incorporate them. Their position, however, begs the question of what truly influences a population’s access to medicines. This week, as the United States and a dozen other nations continue the Trans-Pacific Partnership (TPP) Agreement negotiations, the answer is more important than ever. Despite the critics’ position, recent students cast doubt on their argument, providing evidence that access is critically linked to a country’s level of economic development which is enhanced by strong intellectual property rights protection.
Access is defined as “having medicines continuously available and affordable at public or private health facilities or medicine outlets that are within one hour’s walk from the homes of the population” (United Nations Development Group, 2003). Fundamentally, access is largely continent upon the nation’s level of economic development and available infrastructure. Given this, there are two important reasons to believe that the TPP will not inhibit access to medicine. First, most would-be signatory nations are well developed. Second, trade and IP protection enhance growth and growth furthers access.
Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem.
AFCP 2.0 began on May 19, 2013 and will run through September 30, 2013. The USPTO says that any request for participation in the program must be filed on or before September 30, 2013. Of course, as is always the case, the USPTO left open the possibility that the pilot would be extended beyond that date.
You may recall that the AFCP was initially created by the USPTO at the beginning of 2012. See New PTO Initiative Gives More Opportunity to Amend After Final. The purpose of the program was to attempt to move cases along without the need to file an Request for Continued Examination (RCE) when the case was very near to completion. Under AFCP the applicant could engage with the examiner beyond what is otherwise allowed under the rules if the examiner determined that the response filed could be fully considered within 3 hours for plant or utility application, or within 1 hour for design patent applications. See USPTO Memo to Examiners.
Once again, a plethora of interesting events has occurred since the last time we stopped by. What was the biggest headline? That decision may be up for grabs, but certainly, the $500 million penalty paid by Ranbaxy Laboratories is high on the list. The generic drug maker ponied up to settle criminal and civil charges stemming from a long-running manufacturing failure and cover-up scheme.
The US Justice Department called this the largest “financial” penalty paid by a generic drugmaker for violating the Food, Drug & Cosmetic Act. Ranbaxy pleaded guilty to seven felony counts, including three for making false statements to the FDA; paid a $120 million criminal fine and forfeited $20 million. Another $350 million was paid for causing federal healthcare programs to overpay for various drugs.
For those who may not recall, Ranbaxy used raw chemicals from unapproved sources, fabricated in-house test data to meet FDA standards and concealed these activities from FDA inspectors by falsifying records. These infractions went on for several years, mostly at two plants in India, but also involved senior management there and in the US.
The Samsung Group of Seoul, South Korea, is a major international conglomerate involved in almost every industry. Here at IPWatchdog, we occasionally take a look at some of the recent technology patents and filed applications coming from this industry behemoth. For our complete series see Companies We Follow.
Over the past few years, electronic devices have become a staple for Samsung’s main subsidiary, Samsung Electronics. That subsidiary is a major standard bearer for the mobile device industry, and even recently announced plans to release consumer electronics on the 5G network as early as 2020, according to Forbes. This focus on technological research and development makes this international firm a common name at the U.S. Patent & Trademark Office.
Patent applications published by the USPTO recently and assigned to Samsung show the wide scope of the electronic developer’s operations. Different applications protect more space-efficient surgical robotic arms, a component device for video playback of broadcasts from different global regions and more precise systems of infrared 3D location sensing.
A few documents pertain directly to mobile consumer devices developed by the South Korean conglomerate. A fourth patent application covered here describes an enhanced system of analyzing touch gestures when reading e-books. A legal patent has also been awarded to Samsung for the protection of a hydrogen generating apparatus for powering fuel cells in electronic devices.
Chief Justice Roberts and Justice Kagan, August 7, 2010. Justice Kagan delivered the opinion for a unanimous Court in Monsanto v. Bowman.
In the case of Bowman v. Monsanto Co., Farmer Bowman may have believed that the “third time” would be “charm.” In two prior cases, Monsanto Co. v. Scruggs and Monsanto Co. v. McFarling, the Federal Circuit had ruled in favor of Monsanto, the owner of the patented Roundup Ready® soybeans, and against Farmer Scruggs and Farmer McFarling. Even so, Farmer Bowman, as probably did his legal counsel, may have believed that the Supreme Court’s 2008 decision in Quanta Computer, Inc. v. LG Electronics, Inc. would undermine the Federal Circuit’s view that patent exhaustion didn’t apply to Monsanto’s patented Roundup Ready® soybeans. But in a unanimous decision, the Supreme Court affirmed the Federal Circuit’s 2011 ruling that Farmer Bowman’s unlicensed planting of these patented Roundup Ready® soybeans (sold for commodity use only) was an infringing use that was not subject to the doctrine of patent exhaustion. Alas, Farmer Bowman found no solace in Quanta.
To understand the ruling in Bowman, you must first understand Monsanto’s patented Roundup Ready® soybean technology, its Technology Agreement with purchaser’s of those soybeans delineating the licensed use thereof, as well as the fairly complex fact situation of Farmer Bowman’s use (or more appropriately wily misuse) of the “commodity” soybeans he purchased from a local grain elevator and subsequently planted for the express purpose of harvesting the resulting seed. Monsanto’s patented technology involved genetically modified soybeans that exhibited resistance to N-phosphonomethylglycine-based herbicides (commonly known as “glyphosate” or “glyphos”), such as Monsanto’s Roundup® herbicide product. These genetically modified soybeans were known as Roundup Ready® soybeans because of their resistance to such herbicides.
Justice Kagan delivered the opinion for a unanimous Supreme Court.
Vernon Bowman is a 75-year-old, recently bankrupt small farmer in Indiana. Monsanto is a multinational corporation that is revered in the industry for its innovations in the field of genetically modified seed technologies, but equally reviled in the American heartland for its staunch protection and ruthless enforcement of its patent rights against small farmers. In a unanimous decision, the Supreme Court sided with Monsanto in finding that Bowman had infringed Monsanto’s patents on genetically altered soybean seeds. This would translate into tens of thousands of dollars in liability for the small farmer. Those reacting purely emotionally to the story will be inclined to sympathize with the small farmer. And recalling Steinbeck’s Grapes of Wrath, they would lament, “The small farmer was weary and frightened because he had gone against a system he did not understand and it had beaten him.” However, the Court’s decision is merely a classical application of basic patent principles.
For years, Vernon Bowman purchased Roundup Ready® soybean seeds from a Monsanto affiliate each year for his main crop of the season. The purchase required Bowman’s assent to a licensing agreement, which prohibited Bowman from saving any of the seeds for replanting. For his late-season second crop, however, Bowman would attempt to skirt Monsanto’s licensing agreement and instead purchase commodity soybean seeds from a grain elevator. The commodity soybean seeds are normally tagged for human or animal consumption only. Anticipating that a batch of commodity soybean seeds would surely contain some Roundup Ready® seeds, Bowman planted the seeds, applied Roundup herbicide to his fields, selectively recovered soybeans exhibiting the Roundup Ready® trait, and saved those seeds for further plantings. Bowman harvested eight late-season crops in this way.
Phil McGraw photographed for the cover of Newsweek magazine by Jerry Avenaim.
Dr. Phil McGraw’s company, Peteski Productions (Peteski), recently filed a lawsuit against Gawker Media (Gawker) for copyright infringement. It appears that Deadspin.com (Deadspin), which is owned by Gawker Media, posted portions of the doctor’s exclusive interview with the man behind the Manti Te’o girlfriend hoax online before the show actually aired in various parts of the country.
Deadspin originally broke the story, including the hoaxster’s catfishing scheme; however Dr. Phil was given an exclusive interview with hoaxster, Ronaiah Tuiasosopo. Dr. Phil’s interview with Tuiasosopo was a two-part episode, with a cliff-hanging first episode. But Deadspin took away Dr. Phil’s thunder (and seemingly lowered his ratings) by showing the “answer” to the cliffhanger online prior to Dr. Phil airing in most markets.
After providing the filing I explained that there are better ways to approach the situation, but I also looked into some publicly available statistics to see whether there was any explainable frustration that may have been experienced by this attorney. That part of the article looking at the statistics painted an inaccurate and unfair picture. I write today to set the record straight.
The examiner who was sent this inappropriate filing is a junior examiner — Examiner Valvis — who has been with the Patent Office only 8 months. In the article I suggested that there was reason for frustration. What I inartfully was trying to say was that at first glance there seemed to be a reason to be frustrated because in the database consulted there was no evidence of any patents being issued in 66 applications worked on. I then said: “But with only 66 applications total that might not be surprising.” It isn’t surprising because new examiners begin work on new cases and most cases are not allowed on a first office action. So someone who has only 66 applications was clearly a junior person and the pool simply too small to draw any conclusions one way or another.
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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