WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) announced the launch of a new pilot in which KIPO will classify some of its patent documents using the Cooperative Patent Classification system (CPC), a new classification system jointly managed by the USPTO and the European Patent Office (EPO). KIPO is the first foreign patent office to engage with the USPTO and EPO in this new system, which debuted on January 1, 2013.
The pilot between KIPO and the USPTO marks a major first step towards KIPO classifying its patent collection using the CPC. For the pilot, KIPO will apply the CPC classification to patent documents in particular technologies, namely, technologies for which filings have been especially active at KIPO. KIPO will work together with the USPTO to identify these technologies.
While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further congressional action. Specifically, the Patent Law Treaties Implementation Act (“PLTIA”) enacted December 18, 2012, implements the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. In making several important changes to U.S. design patent law, implementation of the Geneva Act importantly provides U.S. design patent applicants with increased flexibility and, like the AIA, further harmonizes U.S. patent laws with international norms.
In codifying the provisions of the Geneva Act, the PLTIA for the first time enables U.S. applicants to file a single, international design patent application (a so-called “IDA”) with the U.S. Patent and Trademark Office (“USPTO”) that, in many aspects, is the design equivalent of a Patent Cooperation Treaty (“PCT”) application. Whereas a PCT application does not itself grant any rights, though, a granted international design patent is enforceable in any of the member countries designated by the applicant at the time of filing. There are presently 60 members to The Hague Agreement, most notably the European Union (and many European countries separately). The complete country listing can be found at here. The following aspects of the international design patent under the Geneva Act are further of note.
Yesterday the U.S. International Trade Commission (ITC) issued a final determination in one of the many ongoing proceedings between Apple and Samsung. These companies are battling each other in a variety of forums across the globe, which all together form the worldwide patent war over smartphones and tablets between the two tech giants. In this case the ITC found a violation of section 337 and issued a limited exclusion order prohibiting Apple from importing wireless communication devices, portable music and data processing devices, and tablet computers that infringe claims 75-76 and 82-84 of U.S. Patent No. 7,706,348. The ITC also issued a cease and desist order against Apple prohibiting the sale and distribution within the United States of articles that infringe claims 75-76 and 82-84 of the ’348 patent. No violation of U.S. Patent Nos. 7,486,644, 7,450,114, and 6,771,980 was found.
Which Apple products are implicated? The ITC determined that Samsung proved that AT&T models of the iPhone 4, iPhone 3GS, iPhone 3, iPad 3G, and iPad 2 3G infringe the asserted claims of the ’348 patent.
The ITC determination is now final, and the investigation is terminated. Apple has the opportunity to appeal the ITC final determination to the United States Court of Appeals for the Federal Circuit. But there is also another avenue for Apple, which could essentially nullify the ITC determination. Pursuant to 19 U.S.C. 1337(j), the President has 60 days to review the ITC determination. If the President disapproves of the ruling for policy reasons he has the authority to nullify the determination. The statute specifically explains that upon disapproval of the President an ITC determination “shall have no force or effect.”
Under the DMCA or Digital Millennium Copyright Act, all content published online is protected under copyright law, regardless of it having the copyright symbol on the page. Any content, no matter the form it takes (whether digital, print, or media) is protected under copyright law. The prevention of copyright infringement requires constant vigilance; even using your own material in two different places and plagiarising unintentionally can land you in trouble.
Why It Is Important to Protect Your Online Content from Being Copied:
Copyright is important in all forms of media because it provides legal ownership over the work someone produces. This allows the author, artist, etc. control over how their work is used. Without copyright laws, content could be stolen from one creator and used by someone else; thus, a profit could be made by someone other than the creator from content that they put no effort into. Since it is the copyright holder’s responsibility to ensure that a copyright has not been infringed upon, it is vital to keep a close eye on your content and how it is used by others on the internet.
There is no doubt that the Obama position will be loved by Google and other Silicon Valley technology giants that despise the patent system. Given the revolving door between the Obama Administration and Google, the long-term close relationship between President Obama and Google (see here, here and here), and the fact that patent issues don’t resonate with John Q. Public, it seems likely that the President stepping in now to allow him to tout that he is engaged with issues of importance in the minds of tech giants who will be asked for large checks later this week.
But what executive action could the President really take that would make a difference?
Today the White House announced major steps to improve incentives for future innovation in high tech patents, a key driver of economic growth and good paying American jobs. The White House issued five executive actions and seven legislative recommendations designed to protect innovators from frivolous litigation and ensure the highest-quality patents in our system. Additionally, the National Economic Council and the Council of Economic Advisers released a report, Patent Assertion and U.S. Innovation, detailing the challenges posed and necessity for bold legislative action.
In 2011, the President signed the Leahy-Smith America Invents Act (AIA), a landmark piece of legislation designed to help make our patent system more efficient and reliable. As technology evolves more rapidly than ever, we must ensure our patent system keeps pace. As President Obama said in February, “our efforts at patent reform only went about halfway to where we need to go. What we need to do is pull together additional stakeholders and see if we can build some additional consensus on smarter patent laws.”
The AIA put in place new mechanisms for post-grant review of patents and other reforms to boost patent quality. Meanwhile, court decisions clarifying the scope of patentability and guidelines implementing these decisions diminish the opportunity to game the patent and litigation systems. Nevertheless, innovators continue to face challenges from Patent Assertion Entities (PAEs), companies that, in the President’s words “don’t actually produce anything themselves,” and instead develop a business model “to essentially leverage and hijack somebody else’s idea and see if they can extort some money out of them.” These entities are commonly known as “patent trolls.” Likewise, the so-called “Smartphone Patent Wars” have ballooned in recent years and today, several major companies spend more on patent litigation and defensive acquisition than on research and development.
General Electric Company, headquartered in Fairfield, CT, is a renowned international conglomerate that is involved with many industries, including energy generation and technology infrastructure. General Electric has been a large player in the wind energy generation industry in the past few years, and IPWatchdog recently profiled this in the Earth Day version of our Companies We Follow column. Recently, news reports have indicated that GE plans to become even more involved in the oil and gas industry, especially with fracking technologies.
The company’s robust research and development is often the subject of patents and patent applications published by the U.S. Patent & Trademark Office. This week, we profile some of General Electric’s most intriguing patent applications, especially those that pertain to smarter electrical and fuel systems.
One application describes a system of using devices to communicate fluctuating electricity costs in the case of a smart electrical grid. Another application would protect a system of monitoring travel conditions that affect fuel efficiency on trains. A third application we cover here describes improvements to wet gas compressors to reduce erosion within the compressor.
How can the Patents Bill appear so different to so many people? Why is it moving so slowly through the parliamentary process? Have we at last found the mythical kiwi chameleon?
The current law
The Patents Act 1953 defines an invention as any “manner of new manufacture”. Nobody looks at this literal definition any more. What is patentable subject matter and what is not patentable subject matter is defined by case law.
The Supreme Court on May 20, 2013, agreed to review a Federal Circuit decision that a patent licensee bears the burden of proof in its action for a declaratory judgment of noninfringement where the license remains in effect to preclude the defendant patentee’s infringement counterclaim. Medtronic Inc. v. Boston Scientific Corp., U.S., No. 12-1128, 5/20/2013.
The question presented in the petition for certiorari is as follows:
In Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.”
The question presented is whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.
On May 6, 2013, I interviewed Steve Kunin, who is the head of Oblon Spivak’s Post Grant Practice Group. In Part 1 of the interview we discussed the new post grant procedures for challenging issued patents, and started discussing the estoppel provisions. In Part 2 of the interviewwe concluded our discussion of estoppel and move into discussing secret prior art, the Economic Espionage Act, the algorithm line of cases from the Federal Circuit and the erosion of patent rights that started with eBay v. MercExchange. In this final segment of the interview we talk more about post grant procedures at the USPTO, whether the patent system is broken and then the important stuff — baseball and Sci Fi movies!
QUINN: So it strikes me that the more of these decisions you get from the Supreme Court and the more you get from the Federal Circuit on the disclosure the more you put into it and the more that feeds the problem that some in Congress are seeing so it’s almost like we’re pulling the string and the whole system might end up unraveling. And I know that’s a Chicken Little kind of a problem running around complaining but I don’t like the trajectory we’re on.
KUNIN: There’ve been many commentators with respect to the number of patents issued annually, the quality of those patents and the continuing trend with respect to the number of applications filed. To some degree what we’re seeing is the notion that these new post grant proceedings are at least Congress’ answer to the patent quality conundrum.