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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.

Most Recent Articles on

Do Corporate Giants Fare Better at the US Patent Office?

Posted: Sunday, Feb 12, 2012 @ 6:17 pm | Written by Gene Quinn | 12 comments

If you have been in the patent industry for any length of time and you represent individuals or small entities, you have almost certainly heard complaints about the perception that corporate giants are treated differently at the United States Patent and Trademark Office. Until recently determining whether there was any merit behind the often mumbled whispers alleging disparate treatment was exceptionally difficult.  With the recent unveiling of PatentCore, however, it is easy to collect all kinds of information about Patent Examiners and Art Units.

Although not a part of their basic offering, PatentCore also provides detailed analysis of assignee portfolios, including issued patents, pending applications and abandoned files.  So what do you suppose those numbers show? It does seem clear that the allowance rate for large corporations is much higher than the average allowance rate for all patent applications. But does that suggest some nefarious bias? Not so fast my friends!

The Law of Recipes: Are Recipes Patentable?

Posted: Friday, Feb 10, 2012 @ 6:04 pm | Written by Gene Quinn | 16 comments

One of the most common questions I receive, dating back to the very beginning of, is whether recipes can be protected by any form of intellectual property.  Typically the question presents specifically by a reader asking whether a recipe can be patented, or how once can patent a recipe.

In most cases the typical recipe for a “killer Margarita” or “the best barbeque sauce ever” will not be patentable because they won’t be unique enough, typically failing on the non-obviousness requirement.  Of course,  the only way to know for sure is to understand how the Patent Office reaches its conclusions relating to what can and cannot be patented.  It is certainly possible to obtain a patent on a recipe or food item if there is a unique aspect, perhaps if there is something counter-intuitive or a problem (such as self live or freshness) is being addressed.  The trick will be identifying a uniqueness that is not something one would typically think to try.

Does the First Amendment Protect False and Misleading Speech?

Posted: Thursday, Feb 9, 2012 @ 5:06 pm | Written by Gene Quinn | 40 comments

Last week I wrote an article titled Stopping Online Piracy in the Age of Entitlement, which lamented the egregiously false claims made by those who challenged and protested the Stop Online Piracy Act (SOPA).  The truth is there are anarchists who simply believe that they have the right to steal creative works of others without paying for them and that causes real damage to businesses, to the economy and to workers who lose their jobs or are not hired.

A recent comment to the aforementioned article explained the problem perfectly.  The commenter — Big Greg — explained:

[T]heft of our company’s creative works occurs regularly and costs real money. The effort our small group is forced to spend policing our IP from both ignorant and purposeful Internet thieves is so unproductive. And, win or lose, the cost to play in federal court is so daunting. I’d much rather put that effort and those resources into growing a business, hiring creative staff and making tangible contributions to our customer’s lives.

PTO Proposes Rules of Practice for Patent Trials before Board

Posted: Thursday, Feb 9, 2012 @ 4:46 pm | Written by U.S.P.T.O. | Comments Off

USPTO Proposes Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions

Washington – The United States Patent and Trademark Office (USPTO) has proposed a consolidated set of rules related to trial practice before the Patent Trial and Appeal Board. The proposed rules implement the provisions of the Leahy-Smith America Invents Act relating to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.

USPTO Seeks Public Input on Proposed Fees

Posted: Wednesday, Feb 8, 2012 @ 2:34 pm | Written by U.S.P.T.O. | 5 comments

Begins process mandated by the America Invents Act’s fee setting provisions to deliver on promises to the IP community and achieve long term financial stability

Washington – Under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO), for the first time in its history, was given the authority to work with IP stakeholders to set fees through the regulatory process. The agency took a first step towards that end this week when it published proposed fees for all of the patent services it provides. See Table of Patent Fee Changes and Executive Summary: Patent Fee Proposal.

Patents for Humanity Announced at White House Event

Posted: Wednesday, Feb 8, 2012 @ 1:45 pm | Written by Gene Quinn | 13 comments

President Obama delivers his State of the Union address, January 24, 2012.

In the annual State of the Union Address President Obama explained: “Innovation is what America has always been about.”  Today the Obama Administration took major steps forward to collaboratively work with private industry to tap American ingenuity to assist in a world-wide humanitarian effort.  The United States government will work with the private sector, universities, and non-profits to foster game-changing innovations with the potential to solve long-standing development challenges in health, food security and environmental sustainability.

I had the honor of being invited to the White House today for the Innovation for Global Development Event, which was held in support of the President’s commitment to using harness the power of innovation to solve long-standing global development challenges.  As a part of this event, David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, launched a pilot program dubbed Patents for Humanity, which is a voluntary prize competition for patent owners and licensees.  The pilot program seeks to encourage businesses of all kinds to apply their patented technology to addressing the world’s humanitarian challenges.

Will Congress Break the Internet?

Posted: Wednesday, Feb 8, 2012 @ 7:30 am | Written by Bob Zeidman | 6 comments

A frenzy of protest activity was recently unleashed and directed at two bills that sought to prevent online piracy of copyrighted materials. These two bills being considered by Congress would have assisted intellectual property owners who so frequently have their rights infringed online. The PROTECT-IP Act (PIPA) was the Senate version of the bill; The Stop Online Piracy ACT (SOPA) was its counterpart in the House of Representatives. Protests led to many leaders withdrawing support and the bills were scrapped. Further consideration of the issues is, however, ongoing in alternative forms so it is likely useful to substantively address some of the key criticisms of PIPA and SOPA, which are virtually certain to resurface.

The essence of the bills was to enable U.S. law enforcement or a private party to shut down websites that are “dedicated to infringing activities.” Such websites are defined in the bills as those whose primary purpose is infringement.The accuser must show that the website has “no significant use” other than engaging in, facilitating, or enabling any of the following:

  1. Copyright infringement; or
  2. Infringement or violation of any of the protections contained in the DMCA (Digital Millennium Copyright Act) including its anti-circumvention provisions; or
  3. The sale or promotion of counterfeit goods.

Crowdsourcing Patent Research: $2 Million in Reward Money

Posted: Tuesday, Feb 7, 2012 @ 10:55 am | Written by Gene Quinn | 7 comments

Article One Partners (AOP), the world’s largest patent research community, earlier today announced that the company has achieved a significant milestone — more than $2 million dollars in financial incentives to its global research community. This milestone comes 11 months to the day from when Article One announced that they had reached the $1 million award milestone.  The company has been in business since November 2008, which means the company took approximately 27 months to pay out its first million.  There is no doubt that the brand of crowdsourcing for prior art patent research pioneered by AOP is gaining in popularity.

Back in November 2008 I was highly critical of the AOP model, writing that I just didn’t think it would work.  At that time I wrote, in part: “While there is nothing wrong with paying to collect prior art references there is an extreme lack of incentive in the Article One business plan because the criteria for awarding the bounty are subjective and ambiguous.  Furthermore, rather than paying a bounty the far better model is to hire competent researchers…”  There will always be a place for hiring trained patent searchers, but the proof is in.  I couldn’t have been more wrong about the AOP business model.

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.