At this festive time of year we always try and profile turkey and/or Thanksgiving related patents, because after all what better way is there to celebrate a holiday than to celebrate American ingenuity? This year we did a slightly different article for the occasion. We bet you didn’t know the role Thanksgiving leftovers played in achieving the fundamental breakthrough that led to the invention of LASIK, but that only proves that inspiration can come at any time from anywhere. We also invite you to check out our holiday articles from Thanksgivings past. Happy Thanksgiving everyone!
Posted: Tuesday, Mar 20, 2012 @ 1:44 pm | Written by Gene Quinn | 144 comments
The sky is falling! Those who feel the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. is terrible are right, although many won’t likely fully apprehend the gravity of the situation at first. Those in the biotech, medical diagnostics and pharmaceutical industries have just been taken out behind the woodshed and summarily executed by the Supreme Court this morning. An enormous number of patents will now have no enforceable claims. Hundreds of billions of dollars in corporate value has been erased. But that might be a good thing. Immediate attention now must turn to Congress. Thank goodness that the technical amendments to the America Invents Act are outstanding. This will provide a perfect opportunity for Congress to save an industry that employs many millions of people, while at the same time undoing a pathetic, narrow-minded decision of the Supreme Court.
What is all the fuss about? Earlier today the United States Supreme Court issued its decision in Mayo v. Prometheus, holding that the process claims at issue in the case are not patent eligible subject matter. To make matters worse, Justice Breyer, writing for a unanimous Court, continually acknowledged that the claims at issue did not specifically cover a law of nature because there were “administering” and “determining” steps. Yet, he and the other Justices determined that those “administering” and “determining” steps were well known and conventional, thus meaning that the claims lacked patent eligible subject matter. Come again? Did all nine of the Supreme Court Justices just conflate patent eligibility with novelty and non-obviousness? Yes they did! But it gets worse — they explicitly admitted doing so! The Supreme Court also further specifically ignored the Government’s objective, reasonable and until today correct assertion that any step beyond a statement of a law of nature transforms the claim into one that displays patent eligible subject matter, with issues of whether those steps are known to be properly resolved by 102 and 103.
Posted: Tuesday, Mar 20, 2012 @ 8:15 am | Written by Andrew Beckerman-Rodau | 1 Comment »
The Associated Press recently sued Meltwater alleging in its complaint that “[Meltwater] has built its business on the willful exploitation and copying of the AP’s and other publishers’ news articles for profit.” AP asserts copyright infringement claims as well as a common law hot news misappropriation claim under N.Y. law. AP notes that it has to expend significant resources to create its news content. It complains that Meltwater free-rides on its efforts by misappropriating AP’s news and information which Meltwater can then sell for minimal cost via the Internet. It characterizes Meltwater’s actions as a “parasitic” service whose free-riding could make it cost-prohibitive for AP to profitably compete; and, therefore, AP’s economic incentive to continue its business could be significantly threatened.
AP’s common law misappropriation claim has its origins in a remarkably similar suit AP brought against a competing news service almost a century ago. In INS v. AP the Supreme Court, in 1918, enjoined INS, a competing news service, from free-riding on the work product of AP. The misappropriation action was based on INS re-distributing information to its customers which AP had previously released into the public domain. INS was enjoined from using the information for a limited time period while it was hot news (i.e. while it had commercial value as news). The Supreme Court’s decision was based on two rationales: (1) preventing unacceptable conduct in the form of a commercial enterprise free-riding on the investment of time and money by a competitor; and (2) avoiding the resulting ruinous competition that could result from a commercial enterprise free-riding on the efforts of a competitor.
Posted: Tuesday, Mar 20, 2012 @ 7:30 am | Written by Gene Quinn | 5 comments
Raymond P. Niro is a nationally recognized trial attorney specializing in the enforcement of patent, trade secret and related intellectual property rights. The name Niro, however, is not like any other in the patent industry. It was as a consequence of a lawsuit one of his clients brought against Intel in 2001 that the term “patent troll” was coined. It seems to me, however, that the fact that Niro is viewed by some as a bad guy is owed to the fact that he has been extremely successful, which means infringers have paid his clients an awful lot of money over the years.
On March 12, 2012, Niro went on the record with me in an exclusive interview. This interview came about because Niro and I will be speaking at the Managing Intellectual Property program titled US Patent Reform Forum 2012 on March 27, 2012 in Washington, DC. In a preview of what Niro will discuss on the 27th, we discussed many things, including the nearly constant attempts to erode patent rights, efforts to make it more difficult for patent owners to seek redress for infringement and what the America Invents Act will mean for patent litigation moving forward. We also discussed the undeniable reality that there are bad actors in the industry.
Posted: Monday, Mar 19, 2012 @ 5:13 pm | Written by U.S.P.T.O. | Comments Off
Program aims to foster relationships between patent examiners and innovators/scientists
Washington – The United States Patent and Trademark Office (USPTO) and the Association of University Technology Managers (AUTM) announced on Friday, March 15, 2012, the launch of the USPTO/AUTM Patent Examiners Training Initiative, a joint program designed to improve the strength and quality of U.S. patents through specialized training between patent examiners, innovators and scientists.
“This announcement represents an important step in partnering with the petri dish of creativity and research: the American university,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “We’re working hard to cultivate the work done there and get it to the world through the power of the U.S. patent.”
Posted: Monday, Mar 19, 2012 @ 4:33 pm | Written by Eric Guttag | 1 Comment »
In USPTO v. Bilski, U.S. Supreme Court confronted us with a “fuzzy” composite of opinions about the standard for patent-eligibility under 35 U.S.C. § 101. See Through the Fuzzy Bilski Looking Glass: The Meaning of Patent-Eligible under 35 U.S.C. § 101 where I noted five key “takeaways” from those composite opinions, including what to make of Justice Scalia joining the Opinion of the Court except for Part II B-2 and C-2. The Federal Circuit is also not immune from composite opinions that make you scratch your head as to what the final ruling is. See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Company where an en banc ruling by the Federal Circuit on whether there is a separate “written description” requirement under 35 U.S.C. § 112, first paragraph, spawned (in addition to the Opinion of the Court), four additional concurring and dissenting-in-part opinions. In affirming the judgment of the district court “by an equally divided court,” the recently issued Marine Polymer Technologies, Inc. v. Hemcon, Inc. case requires yet some more figuring about another “muddled” Federal Circuit en banc decision.
The “muddle” that became the en banc decision in Marine Polymer revolved around two primary questions: (1) the meaning of the claim term “biocompatible”; and (2) when does “intervening rights” apply to reexamined claims? See CAFC: Intervening Rights for Claims Unamended During Reexam* where I discussed both of these questions in the Federal Circuit panel decision in Marine Polymer. In the en banc decision, and by a 5 “yea” to 5 “nay” vote (with Judges Moore and O’Malley not taking part), the Federal Circuit deadlocked over the district court’s interpretation of “biocompatible” to mean “low variability, high purity, and no detectable biological reactivity as determined by biological reactivity as determined by biocompatibility tests.” In jurisprudential parlance, such a “tie vote” means the district court interpretation prevails by default.
Posted: Sunday, Mar 18, 2012 @ 8:00 am | Written by Gene Quinn | 5 comments
Raymond P. Niro is patent litigator with tremendous experience and a reputation that is larger than life. To some he is a champion of independent inventors and small business community, frequent clients of his. To others he is nearly the definition of evil.
It is certainly true that Niro is responsible for the coining of the term “patent troll,” a term first used by a journalist writing about a case he filed on behalf of a client against Intel in 2001. But how is it possible to characterize as a bad actor when those he represents are so often victorious? If you ask me the bad actors are the ones who infringe on patent rights, not those who stand up to have their rights vindicated. But I digress.
Niro has been trial counsel in literally hundreds of intellectual property cases, and since 1996, has won verdicts and settlements for his clients totaling more than $1 billion. In 2006, for example, Niro tried 6% of all the patent cases that went to verdict and, in the first six months of 2007, recovered the 11th, 15th and 35th highest patent verdicts (highest as of 2007), each resulting in a finding of willful infringement, an injunction and cumulative damages of more than $100 million.
Posted: Saturday, Mar 17, 2012 @ 7:30 am | Written by Gene Quinn | 11 comments
Inventors and entrepreneurs who are looking to cut costs frequently want to do their own search. This is a wise first move, but you really need to be careful. It is quite common for inventors to search and find nothing even when there are things that could and would be found by a professional searcher. So while it makes sense to do your own search first, be careful relying on your own search to justify spending the thousands of dollars you will need to spend to ultimately obtain a patent. In other words, nothing in this article should be interpreted as me suggesting that inventors can or should forgo a professional patent search. There is simply no comparison between an inventor done patent search and a patent search done by a pro. Having said that, every inventor should spend time searching and looking if for no other reason than to familiarize themselves with the prior art. Of course, if you can find something that is too close on your own you save time and money and can move on to whatever invention/project is next. For more on patent searches generally see US Patent Search FAQs and Patent Searching 102: Using Public PAIR.
If you are going to do your own searching and find relevant patents you are going to need to learn some strategies, and also about the free tools that are available to you. If you are going to do your own preliminary patent searching you will want to take a look at the United States Patent Office patent search page. A lot of information can be found free, and the system is not terribly difficult to use. There is also an excellent Help Section on the Patent Office website to educate inventors on how to use the online search features. There is also another excellent (and free) site that you should use when searching – Free Patents Online. Whenever I search I always use both the USPTO and Free Patents Online. Perhaps the best thing about Free Patents Online is that they provide copies of the actual PDF documents, which contain all the images. Using the images on the USPTO website to obtain these full text PDF documents that contain the images is cumbersome to say the least.
Posted: Friday, Mar 16, 2012 @ 7:15 am | Written by Gene Quinn | 1 Comment »
Francis Gurry, WIPO Director General
Despite difficult economic conditions worldwide, international patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7% when compared with 2010, and the fastest growth since 2005. China, Japan and the United States accounted for 82% of the total growth, and the Chinese telecommunications company ZTE Corporation was the largest filer of PCT applications in 2011. 2011 also saw the filing of the two millionth PCT application, which was filed by US-based mobile technology company Qualcomm.
“The recovery in international patent filings that we saw in 2010 gained strength in 2011,” said WIPO Director General Francis Gurry. “This underlines the important role played by the PCT system in a world where innovation is an increasingly important feature of economic strategy. It also shows that companies have been continuing to innovate in 2011 – reassuring news in times of persistent economic uncertainty.”
Posted: Thursday, Mar 15, 2012 @ 7:30 am | Written by Gene Quinn | 8 comments
The U.S. Patent and Trademark Office is on the cutting edge of telework programs within the United States federal government and according to the United States Inspector General the USPTO telework program is a great success. SeeThe Patent Hoteling Program is Succeeding as a Business Strategy. The telework program affords employees the ability to work from home from 1 to 5 days a week, and the largest of these telework programs — the Patent Hoteling Program (PHP) — had 2,600 patent examiners participating at the end of fiscal year 2011. According to the Patents Dashboard, at the end of fiscal year 2011 there were 6,885 patent examiners working for the USPTO, which means that 39% of patent examiners were enrolled in the PHP and working from home.
The PHP is voluntary for eligible, participating patent examiners. To be eligible to participate in PHP, individuals must achieve a satisfactory rating, which corresponds to a rating of 3 or higher out of 5. I have long wondered whether the PHP is a good program myself. Certainly there is a lot to be gained by allowing patent examiners to work from home, but there is potentially a lot that is lost as well. With so many patent examiners working from home does the “brain drain” affect the learning curve of new patent examiners who have fewer people around to help and mentor. The Inspector General’s report does not address the issue of “brain drain,” but does quite clearly demonstrate that those examiners that work from home are more productive than examiners who report to work on campus at the USPTO.
Posted: Wednesday, Mar 14, 2012 @ 7:30 am | Written by Gene Quinn | 1 Comment »
Last month I wrote an article titled Trademark Skullduggery: Lawsuit Challenges Publication Service. This article discusses the recent lawsuit by Leason Ellis against USA Trademark Enterprises, Inc., which is one of the many companies that sends unsolicited mailings to trademark applicants and owners seeking to sell what in my estimation are worthless publication services. It is gratifying to see that recently the United States Patent and Trademark Office has posted a warning to its website warning individuals and businesses, saying: “Beware of companies with misleading solicitations to ‘help’ you with your trademark.”
Right after I wrote Trademark Skullduggery I was contacted by Matthew Bryan, who is the Director of the PCT Legal Division at the World Intellectual Property Organization (WIPO). He suggested: “a patent-side profile may be very useful and help complete the picture on these notifications…” It was an excellent suggestion, which lead me to write Patent Skullduggery: Patent Offices Warn of Patent Subterfuge. On the patent-side of the intellectual property world it seems that the schemes are even more scandalous because some companies seem send what truly appear to be official invoices.
As this was going on I contacted Bryan and asked him if he would be willing to answer a few questions on the record. He graciously obliged, and this brief interview was conducted via e-mail. As you will see, these schemes are lucrative. In one case that Bryan tells us about, in which he was an expert witness, a court in Florida “found that in the 2 years of operating, FIPTR had received over 2.5 million dollars in payments from PCT users just in the State of Florida.” With that kind of money potential it is easy to see why the scams persist.