Funding for Fiscal Year 2011 has been a thorny issue for quite a while now. Congress did not pass a Fiscal Year 2011 budget in the Fall of 2010, as they are supposed to do. It is widely believed Congress punted on this responsibility because of the 2010 elections and fear of the electoral response to budget negotiations in the election cycle. That, however, lead to a series of Continuing Resolutions that funded the government on a limited basis. The last Continuing Resolution (or CR) ran out on April 8, 2011, with an 11th hour agreement, which was ultimately passed by Congress and signed into law by President Obama the following week. When the dust had settled the United States Patent and Trademark Office did not fare well at all, with $100 million be diverted from the Patent Office. That lead to the Office today announcing severe austerity measures because they don’t have the funds available to operate as a going concern.
Celebrating 15 Years of IPWatchdog.com
On October 10, 1999, IPWatchdog.com 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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On April 4, 2011, I interviewed Manny Schecter, the Chief Patent Counsel for IBM Corporation. In part 1 of the interview we discussed patent reform, what affect prior user rights might have on IBM’s patenting decisions, working for David Kappos (who is an IBM veteran), the Supreme Court in general and the Microsoft v. i4i case in particular. We also talked a little about patent office reforms, and that is where we pick up part 2 of the interview, which is the final segment. More specifically, we talked about Peer to Patent, Watson on Jeopardy, where the Supreme Court is heading with patent law, the usual fun questions to get to know Schecter on a personal level and more. As we moved into the “fun stuff” you will learn that one famous IBM invention was tested out in the early stages by the inventors on a Thanksgiving turkey one year, proving that innovation never takes a holiday! We also learn that Schecter is something of a James Bond fan, and selected one recent Academy Award winning film as his favorite movie.
Without further ado, the final installment of my interview with Manny Schecter.
It is probably safe to say that most attorneys are very good at what they do when it comes to the law they practice. However, being a good or even great attorney does not a marketing expert make. One thing for sure is that attorneys are busy and pay great attention to detail in their work. When it comes to marketing their businesses however, attorneys may find it difficult to take off their attorney “hats” and look at things from the outside in. If an attorney or firm is to take on their own marketing agendas, there are some seemingly simple yet very basic elements that need to be implemented in order to see success.
Marketing and brand building for individual attorneys and small firms is crucial to business success, especially in the beginning stages of business development. For established firms and larger firms, effective marketing and brand building is also critical sustaining that which they’ve accomplished while also seeing new growth. What works for smaller firms and individual attorneys may not necessarily work for the larger more established firms. However, knowing the right ways to market your firm and build your brand will inevitably lead to success regardless of size.
On April 4, 2011, the United States Court of Appeals for the Federal Circuit heard oral arguments in the case dubbed Association for Molecular Pathology v. United States Patent and Trademark Office. This case has been commonly referred to here and elsewhere as either the ACLU case or the Myriad Genetics case. Myriad Genetics is the patent holder on various innovations relating to isolated DNA comprising an altered BRCA1 DNA and various methods of screening for cancer built upon various observations of the altered BRCA1 DNA. The patents challenged are U.S. Patent Nos. 5,747,282, 5,837,492, 6,593,473, 5,709,999, 5,710,001, 5,753,441 and 6,033,857.
Essentially, the American Civil Liberties Union (ACLU), along with researchers, competitors of Myriad Genetics and consumers filed a lawsuit challenging the constitutionality of gene patents and argued that gene patents should not be granted because patenting a gene is the same as patenting something that exists in nature. While this argument did succeed at the District Court, it won’t succeed at the Federal Circuit. The District Court Judge fundamentally based his ruling on the fact that, as he understood it, Supreme Court precedent “establishes that purification of a product of nature, without more, cannot transform it into patentable subject matter.” First, this is truly an oversimplification of the purification issue and, second, it demonstrates an acute lack of understanding of the science involved.
The conundrum created by the Federal Circuit’s joint infringement doctrine and its impact on protecting interactive computer-based technologies got worse last week with McKesson Technologies, Inc. v. Epic Systems Corp. McKesson Technologies involved a patented interactive electronic method for communicating between healthcare providers and patients about personalized web pages for doctors. Judge Linn’s majority opinion (and a “thin” at majority at that) ruled that, because the initial step of the patented method was performed by the patient while the remaining steps were performed by the software provided by the healthcare provider, there was no infringement, direct, indirect, joint or otherwise of the patented method.
At 11:03 am this morning Justice Scalia, sitting in for the recused Chief Justice John Roberts, called the most recent Supreme Court foray into patent law saying: “We’ll hear argument now in… Microsoft Corporation v. i4i Limited Partnership.” The Chief Justice recuses himself from any and all Microsoft cases before the Supreme Court, so eight Justices are left to decide whether it is appropriate to require clear and convincing evidence to find an issued patent claim invalid during litigation. In a nutshell, Microsoft and the amici supporting Microsoft would rather have a lower threshold (i.e., preponderance of the evidence) at least with respect to prior art that was not considered by the patent examiner during prosecution of the patent application at the United States Patent and Trademark Office. On the other side of the case, i4i, along with its amici and the Solicitor General, argue that the current standard should not be changed.
On April 4, 2011, I had the honor to interview Manny Schecter, the Chief Patent Counsel for IBM Corporation. I met Manny in October 2010 when I did a CLE presentation at IBM’s offices in Armonk, New York. Since that time I have worked to schedule a time to chat with him on the record, and we were recently able to coordinate and chatted on the record for approximately 60 minutes. During our conversation we talked about numerous topics, including patent reform, Microsoft v. i4i, Patent Office initiatives such as the Three Track initiative and Peer to Patent. We also discussed David Kappos, his former boss, as well as Watson’s Jeopardy triumph, the new Intellectual Property @ IBM blog and the usual fun questions.
We started the interview diving straight into patent reform. In the fast moving and shifting landscape of patent reform it is worth noting that the most recent amendments to the House version of patent reform had not been discussed or voted on when our interview took place, so for those who have been hanging on every twist and turn you will notice that the House Judiciary Committee vote on patent reform was not a topic of discussion because it had not yet happened.
The United States Patent and Trademark Office has updated the patent bar exam, sometimes referred to as the patent registration examination. Effective April 12, 2011, the patent bar examination now tests MPEP 8th Edition Revision 8, as well as critically important guidelines, such as the KSR, Bilski and 112 guidelines, not yet a part of any edition of the MPEP. See USPTO Updates Registration Examination. I have been teaching the PLI Patent Bar Review Course for over 10 years now, and along with John White (the original course creator) participated in revising our materials, lectures and questions to bring the course up to date with the latest edition of the exam now being offered. I continue to believe the PLI Patent Bar Review Course is the best course out there, and I have put together the following Top 10 reasons to take our Review Course.
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It is not uncommon for inventors to want to attempt to draft and file patent applications on their own, and I frequently get asked about sample patent applications. Here is where you as an inventor need to make a critical choice, and making a thoughtfully considered business decision is fine. Notwithstanding, I cringe at times because some will make a reckless choice, or choose because they think you can do as well as a patent attorney who has dedicated their entire career to mastery of the art. It is true that the cost of hiring an attorney to draft a patent application can price inventors out of the market, so they are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue seeking exclusive rights in the form of a patent, or you have to do something on your own that is within your budget.
If paying a patent attorney is out of the question on a budgetary level you probably would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask yourself whether you have the financial resources and abilities to pull off the project. Inventing, patenting and making money by commercializing does not come cheap, and if you have few resources you might be better off building your savings so you can appropriately pursue your inventions in the future. If you are truly an inventor you are creative and, trust me, there will be many inventions in your future.
ARLINGTON, VA — The American Intellectual Property Law Association (AIPLA) commends House Judiciary Committee Chairman Lamar Smith (R-Tex) for shepherding patent reform legislation another step closer to enactment with the Committee’s strong approval of H.R. 1249.