On Monday, December 13, 2010, the United States Supreme Court issued a non-decision in the matter of Costco Wholesale Corporation v. Omega, S.A. The Per Curiam decision simply read: “The judgment is affirmed by an equally divided Court. Justice Kagan took no part in the consideration or decision of this case.” That meant that the 2008 decision of the United States Court of Appeals for the Ninth Circuit remained unchanged. But this was not the last to be heard of this controversial case.
On November 9, 2011, the United States District Court for the Eastern District of California, per Senior Judge Terry J. Hatter, Jr., granted Costco a summary judgment victory due to the fact that Omega engaged in copyright misuse. Yes, the plot thickened. The district court originally granted summary judgment to Costco on the basis of the first sale doctrine, which was overturned by the Ninth Circuit and then affirmed by the Supreme Court in the tie decision, or non-decision of December 2010. That meant that the case would proceed because the first sale doctrine summary judgment victory was erased. But not so fast! Judge Hatter had other ideas!
The unfortunate truth is that many inventors and entrepreneurs have had their share of difficulty with the various invention promotion companies out there. You have probably seen them advertised on television, usually in the extremely late night or extremely early morning hours. They promise free information, and tell you that they will help you patent your idea, make your invention and/or market your product. Many inventors and entrepreneurs have learned the hard way that many of these companies talk big and perform little, but sometimes charge exorbitant fees.
Just the other day I had someone contact me about a design patent and he claimed he had been quoted $12,500. I don’t know the particulars around the quote, maybe there was a lot of product design work associated with the quote, but what I can tell you is that $12,500 for a design patent is outrageous — nearly 5 times what it would likely cost from start to finish. Inventing and pursuing a patent can be expensive, and usually is if you do it properly from start to finish, but inventors need to be particularly careful when there are those in the industry that price gouge. There is no substitute for arming yourself with information and being cautious.
You may have noticed that there is a new addition to IPWatchdog’s extensive arsenal of information available to IP professionals, employees and employers alike. This week IPWatchdog.com has launched its newest brand, the JobOrtunities™ Help Wanted Section; which will feature available career opportunities within the IP world.
In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. In an effort to continue to move forward in the absence of true global cooperation, the Trilateral Offices at their 29th Trilateral Conference considered proposals to reduce the burden for patent applicants by increasing cooperation on procedures and improving the exchange of procedural information.
Meeting for their Annual Trilateral Conference near Paris, France, the heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.
Consider the title of this article a very mild way of stating my frustration with the Patent Office. Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on. I could not figure it out. I know that my digital certificate is up to date and I know that I had the right password. What in the world could possibly be wrong?
Maybe it was because I was using Google Chrome. My paralegal that does most of the filing uses Internet Explorer. That had to be the problem, right? Mind you that I am now 20 minutes into this frustrating process, all to file a document that took me less time to draft! So, I open up IE and try to log on. Guess what? Authentication error again. Now the mild cursing begins (if you know me, you know that this is when spectators start giggling). I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one. You guessed it – that didn’t work either. How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???
News broke several days ago that Senator Jon Kyl (R-AZ) has raised the issue of funding for the United States Patent and Trademark Office in his role as a member of the so-called Super Committee, which is charged with finding $1.2 trillion in budget cuts over the next 10 years. See Super Committee Considering an End to USPTO Fee Diversion. This means the patent community has another chance to urge Congress to do the right thing and adequately fund the USPTO. Everyone in the patent community can and should get involved and be heard — patent attorneys, patent agents, patent bar groups, patent bloggers, corporations, inventor groups, inventors and industry organizations such as the ABA IP Section, the AIPLA and IPO. It is time to get involved!
Many will recall that recently we came up to the doorstep of putting an end to fee diversion through the creation of a revolving fund for the USPTO. The revolving fund proposed by Senator Tom Coburn (R-OK), would have tied a revolving fund together with taking the USPTO out of the appropriations process. This would have meant that the USPTO would be guaranteed to keep 100% of the user fees collected without Congress being able to divert fees over and above what they specifically appropriated. The revolving fund made it into the enacted America Invents Act, but not the part about taking the USPTO out of the regular appropriations process, which essentially just kept the status quo.
The breaking news from the United States Patent and Trademark Office today is that Peter Pappas, who has been the Director of Communications at the USPTO, will be assuming the role of Chief of Staff of the USPTO as part of a restructuring of the Kappos leadership team.
In the Director's Office, July 2010. L to R: Drew Hirshfeld, Peter Pappas and Director David Kappos.
Effectively immediately Pappas is the new Chief of Staff and the immediate past Chief of Staff, Drew Hirshfeld, will assume the role of Associate Commissioner for Patent Examination Policy, which for a long time has been a key role within senior management at the USPTO.
Those familiar with the USPTO senior management remember that initially Director Kappos appointed Rob Clarke to serve as Chief of Staff. After several months Clarke needed to step aside for personal reasons. Clarke is now on the Board of Patent Appeals and Interferences. At the time Clarke stepped aside Hirshfeld, who had just been appointed Associate Commissioner for Patent Examination Policy, was tapped to become the new Chief of Staff. Thus, Hirshfeld returns to assume the management position he only briefly held before agreeing to take on the responsibilities of Chief of Staff.
Today the U.S. patent community sits perilously in the path of an oncoming train. The Leahy-Smith America Invents Act (AIA) Act mandates – but fails to fund – a wholesale conversion of the USPTO from an expert examining agency to one that not only examines patents but also adjudicates patent disputes in ways that promise to be faster and cheaper than patent litigation in our courts.
Senator Kyl is raising PTO funding on the Super Committee.
Without predictable funding, the Congressionally mandated reforms of the AIA will likely turn out like the agency’s “fast track” and Detroit office initiatives: announced, planned, but then delayed by the lack of one essential element – money. Indeed, without predictable funding, the reforms mandated by the AIA will likely result in a greater patent backlog, significant additional delay in finalizing the value of disputed patents, and a confused and discouraged agency workforce, all of which will significantly delay the recovery of our national innovation-based economy.
The coming train wreck would have been avoided if the 95 Senators who voted for ending fee diversion (with the support of every significant stakeholder in the otherwise-divided patent community) had had their way. It can still be avoided at no cost to taxpayers. And it can be avoided quickly, before Thanksgiving’s leftovers are gone, via the Super Committee. Let me explain.