Posted: Wednesday, Mar 23, 2011 @ 3:25 pm | Written by Gene Quinn | Comments Off
Earlier today the United States Court of Appeals for the Federal Circuit granted the petition for writ of mandamus filed by Verizon, AT&T and Qwest Communications. See In re Verizon. The dispute arose initially when Red River Fiber Optic Corporation filed a patent infringement lawsuit asserting that the defendants’ end-to-end fiber optic transmission systems infringe U.S. Patent No. 5,555,478, entitled “Fiber optic information transmission system.” According to Red River it is “a Texas corporation that exists to improve the state of technology by licensing…”
Red River, a company incorporated in Texas, brought the lawsuit in the Eastern District of Texas, which is a good strategy for plaintiffs since they rarely, if ever, transfer cases, push for cases to settle or resolve them in a timely manner prior to trial. The trouble for Red River, among many other things, was the lack of a coherent geographical identity. At first they explained that their principle place of business was in Oklahoma, but had recently been recently relocated to Marshall, Texas, in what seems an obvious attempt to create the Eastern District as a proper venue for the litigation. However, in the papers they filed at the Federal Circuit they explained: “If this Court concludes that Red River’s Marshall-based location and documents are not entitled to any weight, it should also conclude that Red River, for transfer purposes, is located in Oklahoma.” I can only imagine what the judges must have thought, but is sure seems to me as if Red River and its attorneys were too cute by at least half.
Posted: Tuesday, Mar 22, 2011 @ 9:24 pm | Written by Gene Quinn | 23 comments
As patent reform moves forward with the first to file provisions still intact we can expect to hear from many corners that the thing that inventors and businesses need to do is file provisional patent applications. I am a big fan of provisional patent applications, and they can be a very useful tool, but only when they are done right. When a provisional patent application is done poorly you not only don’t get any benefit, the filing potentially demonstrates that as of that moment you were not in possession of an invention. Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention has not ripened past the idea stage at the critical moment the invention was memorialized at the filing date. Therefore, it is critically important to understand what is required in a provisional patent application and not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors.
Posted: Monday, Mar 21, 2011 @ 6:29 pm | Written by Gene Quinn | 21 comments
At least initially, President Obama was keenly interested in exploring how the United States government could use open source software rather than rely on proprietary software. President Obama was so interested in pursuing open source software solutions that on his second day in Office he asked Scott McNealy, a co-founder of Sun Microsystems, to lead his open source charge. In fact, President Obama reportedly asked McNealy to prepare a report on how the federal government could employ open source software, but as yet, some 26 months later there has been no mention of the report or across the board government adoption of open source software.
Open source advocates praised the fact that President Obama wanted to transition the U.S. government away from proprietary solutions and into open source, but now that the report has seemingly stalled and the White House has done little more than release open source Drupal code, what does the open source community have to show?
Posted: Sunday, Mar 20, 2011 @ 1:56 pm | Written by Gene Quinn | 19 comments
Most who are even casually familiar with patent law and patent practice understand that it is far better to file a patent application sooner rather than later. There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar of 35 U.S.C. 102(b) from preventing a patent from issuing. Perhaps the most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US patent application being filed. In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security. What so many inventors don’t realize is that third-party activity can start the 102(b) clock ticking. So many inventors think what they have invented is so unique that no one else could ever have come up with it, thus there is nothing to worry. This logic ignores the reality that creative people do frequently engage in the same inventive activities.
Posted: Saturday, Mar 19, 2011 @ 11:50 am | Written by Gene Quinn | 20 comments
One of the biggest problems that inventors face when setting out to define their invention is with describing what the law refers to as “alternative embodiments of the invention.” Most inventors are quite good at describing exactly what they have invented. The invention is your work and you know it best, so it is not surprising that most inventors can (with enough effort) explain the preferred version of the invention; what the law refers to as the “preferred embodiment.” Nevertheless, it is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to say those alternatives are covered by your disclosure, which will prevent any issued patent from covering those undefined variations. This may not seem like a big deal, but history has shown that it is critical. If you are lucky enough to have invented something of great importance there will be a number of individuals and companies trying to capitalize on the opportunity you have created. If you dismiss variations or entirely different and unique embodiments then you are leaving those to the individuals and/or companies that would seek to capitalize on a product or process that is similar to your own, but not specifically covered by your patent claims. So what can you do?
Before you do finalize your provisional patent application, or if you are working with a patent attorney or patent agent — before you finalize what information you provide to them, you should go back through what you have written and ask yourself whether you are using any terms that may have a particular meaning. With each term ask yourself whether it has a commonly understood meaning by those who are skilled in this field? If the term does have a commonly understood meaning in the industry it is absolutely essential that you use it to mean what others in the industry think it means. Do not get creative. While the patent laws do say that a patentee can be his or her own lexicographer, it is important not to make too much of this latitude. If those in the industry understand a term to carry a certain meaning that is the meaning the courts will use when interpreting the scope of the patent disclosure, but why take a chance? When in doubt it is always the best practice to explain through illustration and description rather than to simply rely upon a meaning that may or may not be understood in the industry. The specification you create and ultimately file is the glossary for the invention and is intended to describe what you have in its full glory and to define any terms or concepts so everyone understands and there is no ambiguity.
Posted: Friday, Mar 18, 2011 @ 10:06 am | Written by Gene Quinn | 3 comments
The tragedy unfolding in Japan currently is nearly unthinkable. One of the most powerful earthquakes ever recorded, followed by a tsunami which has devastated the country and brought the nation to the brink of nuclear disaster. At this time of crisis most, if not all, are focused on only the essentials. But life goes on elsewhere and with the law, particularly patent law, what that means is on top of this tragedy companies and inventors in Japan might find rights they have compromised in the United States. There is little that the United States Patent and Trademark Office can do, but yesterday they announced that they would offer whatever accommodations they can under the law. This is typical for natural disasters, and accommodations were given during Hurricane Katrina and several of the most recent earthquakes in California, although those are now years ago.
“Our thoughts and prayers are with the people of Japan who continue to suffer from the effects of the earthquake and resulting tsunami,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The USPTO is offering assistance in the form of flexibility on deadlines to the full extent allowable under our laws to Japanese applicants.”
Posted: Thursday, Mar 17, 2011 @ 9:50 am | Written by Renee C. Quinn | Comments Off
Renee Quinn (left) and Senator Landrieu (right) at the USPTO Women's Entrepreneurship Syposium
On Friday March 11, 2011, I attended the Women’s Entrepreneurship Symposium in honor of Women’s History Month at the United States Patent and Trademark Office. The program was co-sponsored by the US Women’s Chamber of Commerce and focused on women entrepreneurs, the importance of intellectual property protection for their innovations, how to leverage economic opportunities for women-owned businesses and what resources are available exclusively for women-owned small businesses. The topics discussed focused solely on American business.
Posted: Tuesday, Mar 15, 2011 @ 10:44 pm | Written by Gene Quinn | 1 Comment »
Seeking a writ of mandamus seems as if it is becoming a more popular avenue to pursue than it once might have been. A writ of mandamus essentially seeks an order from a higher court to direct a lower court to follow the law. They are extraordinary remedies because they come well before the case is over, which means that an ordinary appeal cannot be taken at that point; appeals are only typically allowed for final adjudications. Notwithstanding the extraordinary nature of a mandamus request, earlier today the Federal Circuit issued a writ of mandamus requiring a district court to dismiss a false marking lawsuit because the complaint did not contain allegations sufficient to allow the plaintiff to appeal. Essentially, even if each and everything in the complaint were believed the plaintiff could not possibly be entitled to a recovery. Kudos to the Federal Circuit for standing up and getting rid of a frivolous lawsuit initiated by an obviously defective complaint.
Posted: Tuesday, Mar 15, 2011 @ 5:44 pm | Written by Michael Lin | 1 Comment »
Certainly those of us involved with international IP protection have heard the horror stories about how IP protection in China is a waste of money, effort, time, etc. or how such a phrase may even seem to be an oxymoron. Honestly, when a study comes out showing that most government computers are running pirated Windows® software then the headlines are easy, and the politicians start pounding their fists to make political capital while the sun shines.
And certainly one can not pretend that IP in China is issue-free. However, as one who has been working in Asia for over a decade on IP matters, I tell you it is getting better.
Posted: Monday, Mar 14, 2011 @ 4:51 pm | Written by Gene Quinn | 7 comments
The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011. Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials. One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software. Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course. So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.
The statutory requirements for computer-implemented inventions are the same as for all inventions. That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112). Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases. Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101. The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm. It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112. Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method.