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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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Proposed Rules for Supplemental Examination, Revised Reexamination Fees and Deadline for Satellite Office Comments

Posted: Thursday, Jan 26, 2012 @ 4:21 pm | Written by Gene Quinn | 1 Comment »

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes will implement provisions of the America Invents Act

Washington – The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

Examining the Appealed Patent Allowances from Art Unit 3689

Posted: Thursday, Jan 26, 2012 @ 3:35 pm | Written by Gene Quinn | 30 comments

Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States.  The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.

The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise.  Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office.  Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit.  Allow me to call that out for what it is – hogwash!  Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world.  These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent?  If you believe that I have a bridge I want to sell you!

Chief Judge Rader Swears In New Administrative Patent Judges

Posted: Wednesday, Jan 25, 2012 @ 7:13 pm | Written by Gene Quinn | 3 comments

Chief Judge Rader with Director Kappos at USPTO

The United States Patent and Trademark Office earlier today welcomed 10 new Administrative Patent Judges of the Board of Patent Appeals and Interferences.

At 10:00am this morning in the North Auditorium of the Madison Building on the campus of the USPTO, Federal Circuit Chief Judge Randall Rader administered the oath of office to Jacqueline Wright Bonilla, Erica Franklin, James Housel, Deborah Katz, Neal Abrams, George Best, Andrew Caldwell, Thomas Giannetti, Andrew Metz and Grace Obermann.

The ceremony lasted approximately 45 minutes.  It was well done, together with several musical numbers.  After USPTO Director David Kappos’ brief opening remarks, Laverne Smith, a Board Supervisory Paralegal, sang “My Country, ‘Tis of Thee.”  The program was then concluded with “God Bless America,” which was sung by April Mosby, a Board Patent Attorney.

Participate in the 2012 U.S. IP Trends Survey

Posted: Wednesday, Jan 25, 2012 @ 5:26 pm | Written by Gene Quinn | Comments Off

Has the economy impacted your foreign filing strategy?   What do you see as the defining IP trend of 2011?

The third annual U.S. IP Trends Survey, sponsored by inovia, is now open for U.S. patentees and your input is needed to make the survey a success. The results of the survey will provide an in-depth look at the global outlook and foreign filing strategy of U.S. companies and universities.  It is anticipated that the survey will take only between five to fifteen minutes to complete, and responses will remain strictly confidential.  Only aggregate, anonymous information will be made public.

Click here to take the survey.

Ordinary Plain Meaning: Defining Terms in a Patent Application

Posted: Monday, Jan 23, 2012 @ 8:19 pm | Written by Gene Quinn | 25 comments

We say all the time that in a patent application you can define the terms you want to use in the claims to give them the meaning you intend; the meaning that will apply during any claim interpretation.  But what happens when you do not define a term in the specification?  Well, that really all depends.  As a general rule the ordinary plan meaning of the term will be used.  This issue of defined meaning arose recently in a high profile case, giving us a chance to review the ruling and discuss defining terms more generally.

Recently in the ongoing patent war between Apple and Motorola, Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit issued a ruling, while sitting by designation as a trial judge.  See Apple v. Motorola No. 1:11-cv-08540 (N.D. IL., Jan. 17, 2012). Motorola had argued that Apple’s U.S. Patent No. 7,479,949 was invalid because it used the term “heuristic,” thereby rendering the claims invalid as being indefinite and in violation of 35 U.S.C. 112, ¶ 2.

Business Methods by the Numbers: A Look Inside PTO Class 705

Posted: Sunday, Jan 22, 2012 @ 7:15 am | Written by Gene Quinn | 18 comments

The United States Patent Classification System is a system for organizing all U.S. patents into a smaller sub-collection of patents based on common subject matter. Each subject matter division includes a major component, which is called a class, and a minor component, which is called a subclass.  Few classes draw as much attention as class 705.  Class 705 is the generic class for innovations relating to the performing of data processing operations where the apparatus or method is uniquely designed for or utilized in the practice, administration, or management of an enterprise, or in the processing of financial data.  Class 705 was created in 1997 from the business and cost/price sections of computer classes 395 and 364.

The mere designation of an arrangement as a “business machine” or a document as a “business form” or “business chart” without any particular business function will not cause classification within class 705.  There must be significant claim recitation of the data processing system or of a calculating computer while at the same time having only nominal recitation of any external art environment within the claims.  If the claim mentions a particular tangible apparatus in combination with performing data processing or calculation operations then the invention is categorized in the classification that most closely matches the tangible apparatus.  In other words, class 705 relates to business method patents and the processing of financial data.

Failing Your Way to Success

Posted: Friday, Jan 20, 2012 @ 1:55 pm | Written by Edward Balassanian | 5 comments

Fifteen years ago, I started a business that took 12 agonizing years to fail. I invested $10 million of my own money in BeComm (later called Implicit Networks) to develop a media-rich operating system that in many ways anticipated today’s smartphones and tablets. Unfortunately, the hardware and applications needed to make use of such an operating system didn’t yet exist.

Like most failed entrepreneurs, I might have had nothing to show for all my effort but a lousy tee-shirt that says, “I ran a startup, too.” But because I learned some crucial lessons from that failure, I now have the beginnings of a thriving business instead — one that is run very differently from the traditional model for building high-tech startups.

Supreme Court OKs Public Domain Works Being Copyrighted

Posted: Thursday, Jan 19, 2012 @ 11:14 am | Written by Gene Quinn | 37 comments

Yesterday the United States Supreme Court issued a truly regrettable decision in the much anticipated copyright case Golan v. Holder.  At issue in this case was nothing short of whether the United States Congress has the authority to restore copyrights in works that were in the public domain, or in other words whether Congress has the authority to strip works from the public domain and grant copyright protection.  In one of the more intellectual dishonest decisions I have ever read, the U.S. Supreme Court, per Justice Ginsburg, determined that Congress can pretty much do whatever it is that they want with respect to copyrights.  Removing works from the public domain and restoring copyright protection is said to be a power granted to the Congress under the Constitution, and there are no legitimate First Amendment concerns.

To all those who can read the Constitution it has to be clear that the Supreme Court’s decision in Golan v. Holder is absurd.  It is a ridiculous decision that lacks intellectual honesty and defies common sense.  Further, the facts of this case provide ample ground for the suspicions of many who wonder why it is that the United States is so interested in losing its identity and compromising Constitutional principles in order to facilitate some ill conceived plan to join the world community.  Simply stated, treaties and international law cannot trump the Constitution.  With all due respect to the six Justices who ruled in favor of stripping works from the public domain, the Constitution does not support this decision and any attempts to argue to the contrary are insulting and show a contemptuous understanding of the history and role of intellectual property in America.

Patent Prosecution Across the AIA Divide: Warning to Patent Practitioners – Special Care is Needed to Avoid Legal Malpractice

Posted: Thursday, Jan 19, 2012 @ 7:30 am | Written by Howard Skaist | 20 comments

On and after March 13, 2013, any patent application filed is subject to new 102 (and new 103) unless it fits within an exception defined by the transition provisions of the AIA.  Therefore, imagine the following possibility: a continuation is filed on or after March 13, 2013, but because of the manner in which it is handled, it does not fit within the exception.  Now, new section 102 (and new 103) applies to the patent application.  What consequences might follow from such an occurrence?

This situation, which I describe in more detail below, has the potential to affect anyone prosecuting an application originally filed under current law, who files a continuation under the AIA to continue prosecution.  Therefore, most patent prosecutors can expect to be affected and may wish to consider more carefully how best to proceed in such situations. To comprehend the issue takes some elaboration because the situation is complex, unfortunately.  Several different legal threads, in effect, may come together to seemingly conspire against an unwary or unsuspecting patent prosecutor.

Accelerated Examination is Better Examination

Posted: Wednesday, Jan 18, 2012 @ 4:27 pm | Written by Mark Nowotarski | 6 comments

The USPTO’s 12 month accelerated examination program produces higher quality patents in less time and potentially less overall cost than conventional patent examination, or even the new “Track 1″ or other accelerated examination processes.  It’s also a high risk process with a large upfront cost due to the need to prepare an “examination support document.”  Anyone considering it for their own inventions should have a thorough discussion with their patent attorney/agent before embarking on it.

I spoke to five patent practitioners (attorneys and agents) who filed successful 12 month accelerated examination cases in 2011 to get their input on how the process went for them and what subjects should be considered by applicants and their patent counsel before embarking on it.  This will give you, our readers, a consensus view on the subject.  Each of these practitioners got their clients’ patents issued in less than six months.  That seemed like an excellent group to get solid guidance from.