ONDA TECHNO, a leading Japanese IP firm , is seeking a U.S. patent attorney with an electrical engineering background and at least five years experience of prosecuting patent applications.

The position offers the opportunity to learn about Japanese IP practice and to work with our major Japanese corporations.  State bar and patent bar registration is required.

The candidate will be stationed in our Tokyo, Japan office and his or her responsibilities shall include:

(1) Preparing, revising and checking English language patent specifications.

(2) Prosecuting US patent applications, as well as preparing invalidity, infringement, and search analyses.

Many of us in the patent world (me included) have pounded our heads against the reasoning (not result) expressed in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*.  The reasoning in Mayo Collaborative Services makes no patent law logical sense on numerous grounds, including disregarding an important paragraph in the Supreme Court’s 1981 case of Diamond v. Diehr that is not only binding precedent, but also tells us that Breyer’s opinion repeatedly does what this paragraph from Diehr says not to do in an analysis of method or process claims under 35 U.S.C. § 101.

But the question now becomes what do we do to keep the reasoning in Mayo Collaborative Services from exploding into completely irrational, as well as patent law insane doctrine?  The way forward to patent-eligibility rationality, as well as sanity, is through the remand decision in Classen Immunotherapies, Inc. v. Biogen IDEC.  See CAFC on Patent-Eligibility:  A Firestorm of Opinions in Classen.  Put differently, there may yet be “light” in this currently “dark” patent-eligibility tunnel.

An exhibition showing the intellectual property behind Steve Jobs’ innovations opens to the public at WIPO today and will run through to World Intellectual Property Day on April 26, 2012. The exhibition ties in with this year’s World Intellectual Property Daytheme – Visionary Innovators.

“A visionary innovator is measured by the extent of transformation that their innovation achieves in society and the economy,” said WIPO Director General Francis Gurry. “Steve Jobs certainly had vision – his ambition to make digital technology simple and accessible gave rise to a new paradigm for the delivery of entertainment.”

The biotech community has been chattering ever since the Mayo Collaborative Services v. Prometheus Laboratories (“Prometheus”) ruling was issued by the U.S. Supreme Court March 20, 2012.  Biotech folks, unaccustomed to the flurry of appellate activity surrounding some recent biotech cases, including the July 2011 Federal Circuit decision, Assoc. for Molecular Pathology et al. v. U.S.P.T.O. and Myriad Genetics, 2010-1406 (2011), are understandably nervous and have been engaged in a parlor game of guessing the effects of the decision on the biotech industry.  The dinner discussions in my own household have centered on the subject (my kids think their parents are total nerds).  Several posts and the many comments on this august blog and on other blogs are indicators that the biotech patent bar has found itself thrust into the legal limelight in a series of decisions which many fear may seriously harm the biotechnology industry, still struggling in a slow economy.  In fact, the stock prices of several prominent biotech companies fell at the news of the Prometheus ruling, including Myriad’s stocks, which had fallen 9% at one point.  As many of my esteemed colleagues have and will continue to dissect the case, I will instead focus on the effect of the decision on the future of biotech patents.

Unlike many in the biotech community I do not think the Prometheus decision will break the biotech industry or even seriously affect it .  Much like the car mechanic in a small Caribbean island told me when my engine light came on in my rental car, “no worries, no problem!” (our car, in fact, never broke down, even on a mountain road with no shoulders).   I believe the holding in Prometheus prevents what could be a future legal quagmire, where overly-broad patents could serve to block entire fields of practice and create an enforcement nightmare in which ghosts of legal uncertainty and licensing ambiguities would haunt hospital hallways, R&D labs, boardrooms,  and investment entities throughout the country.  If the Prometheus decision would have gone the other way, it would not have been status quo, but rather been fairly harmful to future innovation.

U.S. patent laws specifically allow for the protection of inventions that are improvements upon the work of others. The law says: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. 101 (emphasis added).  Indeed, virtually all inventions are improvements.  It is quite rare to see a truly pioneering invention, which is one that is the first of its kind.

But how do you go about patenting an improvement?  The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art.  You should absolutely focus on structure, not on the method of use.  Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case.  In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.

As many of you now understand, I’ve got many bones to pick with the reasoning in Breyer’s opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision*.  See also A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*.  But I may have found the ultimate “doozy” for why Breyer’s reasoning in the Mayo Collaborative Services opinion should be “hung, drawn, and quartered.”  (And I wished I had discovered this faux pas earlier.)

For lack of a better word, I call this faux pas “selective precedent amnesia.”  What I’m referring to is a paragraph from the Supreme Court’s 1981 case of Diamond v. Diehr (which held that a claimed rubber molding method using an Arrhenius equation was patent-eligible under 35 U.S.C. § 101).  Or more appropriately, Breyer’s opinion in Mayo Collaborative Services repeatedly doing what this paragraph from Diehr says not to do in an analysis of method or process claims under 35 U.S.C. § 101.

Earlier this month, on Thursday, March 1, 2012, the United States Patent and Trademark Office held a ceremony, welcoming 9 new Administrative Patent Judges to the Patent Trial and Appeal Board.  The  oath of office being administered by Chief Judge Paul Michel (ret.) of the United States Court of Appeals for the Federal Circuit.  For more on the ceremony see Patent Judges Sworn in at the USPTO.

You may have heard — the USPTO is hiring.  Not only is the USPTO actively hiring and searching for Administrative Patent Judges, but they are finding some extremely well qualified candidates to add to the ranks of those already serving.  With the permission of each of the new APJs, and the cooperation of James Smith, Chief Administrative Patent Judge, it is with pleasure that I share the bios of the newest APJs, each individually pictured with Rebecca Blank, Deputy Secretary of Commerce.

For those interested in applying see this job posting for Administrative Patent Judges.

UPDATED March 28, 2012 at 12:15 am ET

In my last article, I posed the question whether the “Smart Phone Patent Wars” were giving IP rights – and more specifically, patents – a bad rap?  My conclusion was an unfortunate “yes,” with the villains being a handful of companies that willingly contributed patented technologies to various standard setting organizations (SSOs), encouraged their use in a host of consumer electronics, and years later charge the very producers they encouraged to implement these standards with patent infringement.  Now in this article – the second in a six-part series – I examine the so-called “Fair, Reasonable and Non-Discriminatory” (FRAND) licensing terms that SSOs require of their participants.

First, before discussing the meaning of FRAND licensing terms, we must understand the nature and importance of SSOs.  These national or international organizations are typically private, non-profit organizations whose members include for-profit company participants seeking to establish one or more technical standards that will be incorporated into a product or technical system.  Some of the more widely recognized SSOs include the Institute of Electrical and Electronics Engineers (IEEE), the Joint Electron Device Engineering Council (JEDEC) and the Telecommunications Industry Association (TIA).  The technical standards adopted by these SSOs are voluntary (unless they are enacted into law by, for example, a state legislature), but influential.  Why, however, have technical standards?  Well, would you buy a smart phone if it could not connect to a mobile network so that you can communicate (by voice or text) to your peers, visit all your favorite websites on the Internet or download pictures, videos and the like?  That is, standardization delivers consumer benefits, especially in product markets where the very value of the product is the fact that a great number of other consumers use the same or a compatible product.