On October 10, 1999, IPWatchdog.com 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.
Hot on Social Media
Over the past several months we have had a number of articles that have gotten quite a bit of attention on various social media outlets. If you haven’t read these articles yet take a look, they seem to be driving an interesting debate.
Posted: Thursday, Feb 23, 2012 @ 2:26 pm | Written by Gene Quinn | 1 Comment »
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.
Posted: Wednesday, Feb 22, 2012 @ 2:27 pm | Written by Eric Guttag | 6 comments
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.”)
Posted: Tuesday, Feb 21, 2012 @ 4:33 pm | Written by Gene Quinn | 8 comments
Chief Judge Randall Rader, CAFC
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.”
Posted: Monday, Feb 20, 2012 @ 3:41 pm | Written by Gene Quinn | 7 comments
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.
Posted: Monday, Feb 20, 2012 @ 10:52 am | Written by Kenneth Lustig | 5 comments
To hear some critics tell it, the explosion of patent suits in the smartphone industry is evidence of a patent system that is fundamentally “broken,” at great cost to U.S. innovation.
Such histrionics, however, ignore one crucial but little known fact: throughout American history, the buying, selling, and litigating of patents has always been essential to U.S. economic success. Not only that, the truth is that today’s patent litigation rate is less than half what it was in the mid-19th century, a period widely-recognized as the “golden age” of American innovation.
Posted: Saturday, Feb 18, 2012 @ 5:19 pm | Written by Eric Guttag | 7 comments
Well the proverbial cat is now “out of the bag.” The United States Patent & Trademark Office (USPTO) has issued its long awaited (and in many quarters, apprehensively feared) proposed patent fee changes pursuant to its new authority under Section 10 of the America Invents Act. I usually refer to the AIA as the “Abominable Inane Act” and this new fee setting authority is one reason for that characterization. These proposed patent fee changes are summarized in an 8 page Table to a 34 page Executive Summary which was submitted to the Patent Public Advisory Committee on February 7, 2012. For those true “masochists,” there’s an even longer 85 page detailed Appendix on these proposed patent fee changes to digest.
Page 11 of the Executive Summary provides what it characterizes as summary of the “significant changes” to the current patent fee structure. After getting over my initial “shock” at how high some of these proposed fees are (for the new supplement examination and new post-grant review procedures, as well as the existing ex parte reexamination procedure, these proposed patent fees can be characterized as “astronomical”), as well as how much these proposed fee changes increase current fees, I then asked this question: what do these proposed patent fee changes really mean?
Posted: Friday, Feb 17, 2012 @ 10:50 am | Written by Gene Quinn | 6 comments
Commissioner Focarino in her office at the USPTO on January 27, 2012.
In this final installment of my interview with Peggy Focarino, Commissioner for Patents, we discuss the examiner count system, production and Art Units and Patent Examiners that do not issue patents. What can the Office do about rogue Examiners and rogue Art Units? Does the Patent Office even understand this is a problem? Focarino was enormously candid, and it is clear to me that senior management at the USPTO know they have a problem and are working to create fixes.
QUINN: Now with regard to the count system, from the attorney’s perspective, I think the new count system addressed the concern about RCEs pretty wellthere for a while it seemed, at least the perception was, and with every perception there is at least some reality how widespread it is, who knows, but there was the perception that it was very difficult to get some examiners to give a good treatment until you got into the RCE.
Posted: Thursday, Feb 16, 2012 @ 11:48 am | Written by Gene Quinn | Comments Off
Commissioner Focarino in her office at the USPTO on January 27, 2012.
On January 27, 2012, I interviewed the new Commissioner for Patents Peggy Focarino. In part 1 of the interview we discussed her career at the United States Patent and Trademark Office, the ombudsman program and more. In this installment we discuss a day in the life of the Commissioner for Patents, negotiating with the Examiner’s Union relative to the updated examiner count system and implementation of the America Invents Act.
Stay tuned for part 3, the interview finale, which will publish on Friday, February 17, 2012. In part 3 we discuss the fact that certain examiners and certain Art Units seem to simply not issue patents. We also discuss the process for determining where the Patent Office will locate satellite Offices.
Without further ado, part 2 of my interview with Peggy Focarino, Commissioner for Patents.
Posted: Wednesday, Feb 15, 2012 @ 1:51 pm | Written by Gene Quinn | 3 comments
Commissioner Focarino in her office at the USPTO on January 27, 2012.
On January 27, 2012, I had the privilege to interview Margaret Focarino, who is the new Commissioner for Patents at the United States Patent and Trademark Office. Focarino, known simply as “Peggy” throughout the Office, rises to the position of Commissioner for Patents after the departure of Bob Stoll. At the beginning of the Obama Administration, after the resignation of then Director Jon Dudas, Focarino became Acting Commissioner for Patents, a position she held until the appointment of Bob Stoll.
When I interviewed USPTO Director David Kappos in December I asked him about Focarino and the first words out of his mouth were: “What a wonderful leader.” Kappos went on to tell me:
Peggy’s the perfect next Commissioner for Patents. She’s got deep knowledge of the agency, extremely well respected in the IP community, rose up through the ranks, knows everything about patents and patent law and patent examination and works extraordinarily well with employees. She’s loved and she’s revered by the employees, not just respected. And if that weren’t enough, works terrifically well with the union. So Peggy’s the perfect package. She’s got tremendous judgment. She knows how to deal with people, she knows how to deal with issues, she’s very diplomatic and just a wonderful leader. I’ve been doing leadership for a long time. I’ve worked with and studied under some of the best leaders in the world and I know a good leader when I see one and Peggy is certainly one.
While that may seem to be unbelievable, lofty praise, it is consistent with what I have heard many times over the years. Indeed, I have only heard positive things about Focarino, and everyone expresses that she is not only a very nice person but a knowledgeable and respected leader within the Office. She is also someone that I personally respect and like.
Simply stated, the OPEN Act would be completely and totally ineffectual and, therefore, it must be opposed. There is simply no point in enacting more pointless legislation, we have enough pointless legislation already.
Anyone who is at all familiar with intellectual property knows that thanks to the digitization of content and the advent of the Internet infringement is rampant. With great frequency articles posted to IPWatchdog are cut and pasted and posted to various websites. On a daily basis companies and even government agencies are copying IPWatchdog articles verbatim and circulating them internally, presumably believing that the internal copying and distribution is not copyright infringement. Being a content creator, whether large or small, is exceptionally difficult because most people either don’t care or they don’t stop to think about what they are doing.