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Celebrating 15 Years of

On October 10, 1999, first went live on the Internet. It has been an honor and privilege to get to know so many wonderful people in our industry over the last 15 years, to talk to many industry leaders on the record, and to in some small way continue to push the debate forward. Thanks to our readers and contributors we have been recognized as as one of the top 100 legal blogs by the American Bar Association for 5 years in a row. For 3 of the last 4 years (2010, 2012, 2013) we were recognized as the top intellectual property law blog according to the ABA. In January 2014 we were also honored to be inducted into the ABA Blawg Hall of Fame. CLICK HERE to read more.

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Patent Mass Aggregators: The Giants Among Us

Posted: Monday, Feb 6, 2012 @ 6:43 pm | Written by Tom Ewing & Robin Feldman | 21 comments

The patent world is quietly undergoing a change of seismic proportions. In a few short years, a handful of entities have amassed vast treasuries of patents on an unprecedented scale. To give some sense of the magnitude of this change, our research shows that in a little more than five years, the most massive of these has accumulated 30,000-60,000 patents worldwide, which would make it the 5th largest patent portfolio of any domestic US company and the 15th largest of any company in the world.

Although size is important in understanding the nature of the shift, size alone is not the issue. It is also the method of organization and the types of activities that are causing a paradigm shift in the world of patents and innovation.

These entities, which we call mass aggregators, do not engage in the manufacturing of products nor do they conduct much research. Rather, they pursue other goals of interest to their founders and investors. Non-practicing entities have been around the patent world for some time, and in the past, they have fallen into two broad categories. The first category includes universities and research laboratories, which tend to have scholars engaged in basic research and license out inventions rather than manufacturing products on their own. The second category includes individuals or small groups who purchase patents to assert them against existing, successful products. Those in the second category have been described colloquially as “trolls,” which appears to be a reference to the children’s tale of the three billy goats who must pay a toll to the troll waiting under the bridge if they wish to pass. Troll activity is generally reviled by operating companies as falling somewhere between extortion and a drag on innovation. In particular, many believe that patent trolls often extract a disproportionate return, far beyond the value that their patented invention adds to the commercial product, if it adds at all.

Exclusive Interview Part 3: USPTO Deputy Director Terry Rea

Posted: Sunday, Feb 5, 2012 @ 2:18 pm | Written by Gene Quinn | 17 comments

USPTO Deputy Director Theresa Rea in her office on January 17, 2012.

This is the finale of my January 17, 2012, interview with Teresa Rea, who is the Deputy Under Secretary of Commerce for Intellectual Property.  We begin by discussing first action allowances and whether they are frowned upon, then discuss the examination process and weave our way to Track 1 and whether you really must use Track 1 for patents likely to be litigated because you get a much more condensed, streamlined prosecution history. For the rest of the interview please see Part 1 and Part 2.

Over the past 10 days I have also interviewed  Peggy Focarino (Commissioner for Patents), Deborah Cohn (Commissioner for Trademarks) and Peter Pappas (Chief of Staff).  These interviews are being transcribed and prepared for publication.  So stay tuned.  To view all of these latest USPTO interviews visit USPTO 2.0.

QUINN: I have noticed a lot of change at the Patent Office on almost every level. Things seem to be very, very different increasingly so. The one thing that I hear a lot is the fact that attorneys believe that when you get a first office action there are examiners that will go out of their way to find something that can be rejected even if there is something that seems it should be allowable. Recently in a stream of comments on one of the articles on our website, somebody who said that they were a patent examiner offered that it was his or her understanding that if you give a first office allowance, those are kicked out into a separate pile for quality review where they may be a little bit more stringent. If this perception is out there then that can be damaging.

Stopping Online Piracy in the Age of Entitlement

Posted: Friday, Feb 3, 2012 @ 5:30 am | Written by Gene Quinn | 64 comments

According to the United States Chamber of Commerce “rogue web sites that steal America’s innovative and creative products attract more than 53 billion visits a year and threaten more than 19 million American jobs.” NY Times Letter, November 18, 2011. Unfortunately, that doesn’t seem to matter much to those who believe they ought to be entitled to take, use, copy and distribute things that they legally do not own. We live in the age of entitlement.

All you have to do is look around at the various “Occupy this” or “Occupy that” groups that pitch tents and live rent free for months right in the heart of a once thriving business district. For crying out loud these “Occupy” people don’t even pay for permits like government makes the rest of us law abiding citizens do. There is an alarming double standard growing in the United States and frankly it is rather disgusting if you ask me.  Whether you want to believe it or not, billions of dollars every year are lost as the result of theft of intellectual property.

Trademark Skullduggery: Lawsuit Challenges Publication Service

Posted: Thursday, Feb 2, 2012 @ 5:23 pm | Written by Gene Quinn | 21 comments

After all these years I am finally getting around to registering various trademarks associated with IPWatchdog.  Recently I received a rather official looking notice in the mail from Global Business Option, Inc., which solicited payment of $960 per trademark for publication in the “The Global Trademark and Servicemark Selection of the USA” catalog.  Why would I want or need to have my trademarks published in some catalog?

The notice, which at the bottom says that it “is an offer, not an invoice,” stated:

The law considers a trademark to be a form of property.  Your above registration provides a notice to others that your described trademark/servicemark is already taken.  Our publication contains a depiction of your registered mark, the identification of goods and/or services, year of the registration and owner information as well.

Interesting, because there is no requirement that trademarks be published this way, and if folks were interested in searching and did even a basic trademark search using the USPTO system they would find our pending applications.  So the filing of a trademark application and receipt of a trademark already provides notice that the mark is taken.  I wonder how many people have fallen prey to this solicitation?

Exclusive Interview Part 2: USPTO Deputy Director Teresa Rea

Posted: Thursday, Feb 2, 2012 @ 5:35 am | Written by Gene Quinn | 6 comments

USPTO Deputy Director Theresa Rea in her office on January 17, 2012.

On January 17, 2012, I sat down with Terry Rea, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. We met in her office, which is on the 10th floor of the Madison Building adjacent to Director Kappos’ office and overlooking Dulany Street.

In part 1 of the interview we discussed USPTO hiring and Director Rea told me that the plan “this fiscal year was to hire approximately 1,500 examiners.” The Office, according to Rea, is also looking to hire another 80 Administrative Patent Judges during this fiscal year and the salary is approximately $165,300. With respect to APJs the Office is looking for “talented examiners to promote from within” but is “also interested in talented attorneys from outside of the agency,” said Rea.

Part 2 of my interview with Deputy Under Secretary Rea picks up with discussion of the America Invents Act. We generally discussed the rulemaking process, the fact that the post-grant proposed rules are a bit late in coming, comments and what the USPTO will do with them, as well as the upcoming Road Show the USPTO is taking across America for the purpose of discussing implementation of the America Invents Act.

Former PTO Deputy Sharon Barner Leaves Foley & Lardner

Posted: Tuesday, Jan 31, 2012 @ 11:06 pm | Written by Gene Quinn | Comments Off

Cummins Inc. (NYSE:CMI),  announced today that Sharon R. Barner, formerly a top official in the United States Patent and Trademark Office and a leading intellectual property litigator, has joined the Company as Vice President and General Counsel.  Cummins Inc. designs, manufactures and distributes engines and related technologies, including fuel systems, controls, air handling, filtration, emission solutions and electrical power generation systems.

Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.

Exclusive Interview: USPTO Deputy Director Teresa Rea

Posted: Tuesday, Jan 31, 2012 @ 6:00 am | Written by Gene Quinn | 8 comments

USPTO Deputy Director Theresa Rea in her office on January 17, 2012.

I have known for a while now that I would be doing an in-depth look at the Senior Management Team at the United States Patent and Trademark Office. The series is currently in progress, and this is the second installment – my interview with Theresa Rea.  Rea is a long time patent attorney and former President of the AIPLA.  Currently, however, she is the person in the federal government with the longest title — Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Her title is longer than her boss’ title thanks to the inclusion of the word “deputy” twice.

When I interviewed USPTO Director David Kappos in December 2011, after the interview was concluded I asked him to give me some thoughts on his Senior Management Team. “When I say ‘Theresa Rea’ what are the first things that come to mind,” I asked. Kappos responded: “Tremendous background knowledge, energy, fun person to work with and to team with, deep knowledge of the life sciences sector…” Director Kappos would go on to say that with Rea at the agency “we’ve got all the bases covered. I’m the corporate guy, she’s the litigator. I’m the IT guy, she’s the Pharma person.”  Indeed, Deputy Director Rae is the real deal and a nearly ideal compliment to Director Kappos.

Patent Drawings: An Economical Way to Expand Disclosure

Posted: Monday, Jan 30, 2012 @ 5:45 am | Written by Gene Quinn | 1 Comment »

From U.S. Patent No. 6,655,077, titled "Trap for a mouse."

The patent applicant is required to furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. Said another way, whenever a drawing would assist in the understanding of an invention you need at least one patent drawing. Based on my experience I can say that a patent drawing is almost always required, or at the very least you would do well to understand the rule as a patent drawing is virtually always required.

The only time patent drawings are not required is when the invention relates to a chemical compound or composition.  You can also get away without a drawing sometimes with method inventions, but I wouldn’t advise it.  There is almost always at least some illustration that could assist the reader (and patent examiner) and the drawings are a part of the overall disclosure. For example, just take a look at the illustration below, taken from U.S. Patent No. 6,618,977, which relates to a method and device for harvesting earthworms. 

How Your Telephone System Impacts Your Brand

Posted: Saturday, Jan 28, 2012 @ 10:24 am | Written by Renee C. Quinn | 2 comments

If you are a small business owner, you are located in a small personal office or you work from home, you probably use either a cell phone or personal landline as your business phone.  When you call a potential client, what shows up on their called ID?  What do potential clients hear when they call and want to leave you a voicemail?  What if they simply want to know your hours of operation or fax number?  You may not realize this but your telephone system’s features, including your caller ID display and voicemail greeting, have a major impact on how others see your brand.

Unless you are part of a company that has the resources to allow for a rather expensive professional telephone system, you probably have just the basics. Most small businesses do not have the resources or even the need for such an elaborate telephone system.  But it would be nice, right?  So chances are you are using the voicemail system offered as part of your landline or personal cell phone package.

Using US Patent Classifications to Enhance Key Word Searching to Achieve Higher Quality Patent Search Results

Posted: Friday, Jan 27, 2012 @ 8:00 am | Written by Brad Chassee | 5 comments

Over the last year, while building ArchPatent, I have spent a lot of time speaking with inventors and lawyers about various aspects of prior art research, and I learned a few great tricks along the way which I wanted to share. In particular, I wanted to write this article to explain how a key word patent search can be enhanced by filtering the results using US classifications and subclassifications. First, I’ll provide some background about the U.S. Patent Classifications Systems (USPC), discuss how filtering key word search results by US classifications and subclassifications fits within the seven step prior art search strategy outlined by the USPTO and provide specific instructions for how this type of search can be conducted to find highly useful results and save significant time over the current manual process.

Overview of US Classification and Subclassifications

In June of 2011, The USPTO published a helpful 15 page report titled, “Overview of the U.S. Patent Classifications Systems (USPC).” This report provides a very thorough overview for anyone seeking a deep dive into the US Classifications system.