Deputy Under Secretary for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO) Teresa Stanek Rea and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu, signed a Joint Statement of Intent on November 8, 2011, to launch two new Patent Prosecution Highway (PPH) pilot programs on December 1, 2011.These landmark patent worksharing initiatives represent a major achievement in the growing bilateral cooperation between the two patent offices. These pilot programs will apply to qualifying patent applications filed under both the Paris Convention (“Paris Route”) and the Patent Cooperation Treaty (PCT).
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Posted in: China, International, IP News, IPWatchdog.com Articles, Patent Cooperation Treaty, Patents, USPTO
What if the Spouse of Every Inventor Living in a Community Property State has an Undivided Interest in an Invention?Posted: Monday, Nov 7, 2011 @ 2:00 pm | Written by David Hricik | 10 comments
Posted in: Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patents
If you think the title only raises a wild possibility, consider what happened in a recent case decided by the Federal Circuit.  After being sued for infringement, the defendant had the ex-wife of the inventor of the patent-in-suit sell to it any interest she had in that patent. The defendant argued that as a result there could be no infringement, both because plaintiff lacked standing and because the defendant had acquired an undivided interest in the patent.
It almost worked.
The Federal Circuit stated that under California law the patent was “presumptively community property in which [the wife] had an undivided half interest.” Fortunately for the accused infringer, however, the wife had not listed the patent as community property when she was divorcing. Accordingly, the court held that res judicata precluded her from arguing that she in fact had an interest in the patent, and so that meant the defendant had acquired nothing from her.
Posted in: China, Guest Contributors, International, IP News, IPWatchdog.com Articles, Patents, Practising Law Institute
As the second largest economy in the world, China is emerging to the center of the world’s economic stage. This emergence has been accompanied by constant changes in its legal and economic sectors. The intellectual property sector also has witnessed numerous recent changes. There have been significant new advances in China’s national innovation policies. New trends in Chinese patent filings have emerged. A growing number of Chinese companies are creating their own IP and increasingly filing infringement suits against foreign companies and their local competitors in China. China’s third patent law amendment has materially changed patent practice and procedures in that country.
These changes and trends will have profound impacts on foreign companies doing business in China, especially in intellectual property areas. What are the best ways to deal with these important changes? The following several considerations should be evaluated in determining a company’s patent strategies in China. I will also discuss these and other considerations in my upcoming Practising Law Institute presentation IP in China: Strategies for Doing Business While Maximizing and Protecting Your IP, which will take place on Wednesday, November 16, 2011 from 1pm to 2pm ET.
Posted in: Business, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Business & Deals, Patents
Earlier this week, on Thursday, November 3, 2011, Eastman Kodak Company (NYSE:EK) reported that it was continuing its march forward toward becoming a profitable and sustainable digital company. A sustainable digital company? That type of announcement is not they type that typically instills confidence, and the news did not play well, although Kodak stock is already so low that relatively little additional loss was felt. Not much good can be happening internally when a company feels the need to announce that they are making steady progress toward becoming sustainable.
In filings with the Securities and Exchange Commission Kodak also explained that moving forward it’s intellectual property strategy has three goals: “To provide the company with design freedom to develop and introduce innovative new products, to provide access to new markets and new partnerships, and to generate income and cash.” How will Kodak seek to generate cash from its intellectual property portfolio? The company is shifting gears and is pursuing a plan to sell 10% of it is patent portfolio to attempt to raise cash to remain in business.
Posted in: Books & Book Reviews, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, Technology & Innovation
In my experience, the passion to invent is stirred by two things: dissatisfaction with an existing product or service (i.e., too large, too slow, too expensive, too difficult to use), or a dream and desire to create something entirely new, a product or service that will augment humanity’s capability to reach farther, move faster, aggregate and analyze all sorts of data, or bring together pieces and form a whole that is greater than the sum of its parts.
Over my career I have been a named inventor on 147 U.S. patents. Over my career I have developed a process for identifying consumer needs and creating unique, patentable solutions that are relevant in the marketplace. I call this the Eureka Method. The Eureka Method is a mental discipline that can be learned and practiced to help you produce a Eureka! moment. You may call it an epiphany or a flash of insight, brilliance, or creative genius. It’s that moment when an inventive solution finally crystallizes in your imagination. I call this critical event a “Eureka! moment” in reference and tribute to Archimedes who had been wrestling with the problem of certifying a goldsmith’s claim that the crown he had made for the king was of pure gold. Upon solving the problem Archimedes exclaimed, “Eureka!” Translated, the Greek word means “I found it!” He had his solution and I found the title for my book.
Posted in: Gene Quinn, International, IP News, IPWatchdog.com Articles, Patent Basics, Patent Cooperation Treaty, Patents
The Patent Cooperation Treaty, or the PCT as it is typically referred to, came into existence in 1970, and has been subsequently several times. It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). The Treaty, which like any other Treaty is a legal agreement entered into between various countries. The purpose of the PCT is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries. By filing through the PCT process you can embark on the path to seek patent protection for an invention simultaneously in every country that is a member to the Treaty. You accomplish this by filing an “international patent application.” Indeed, the term PCT is largely synonymous with “international patent application.” So you will sometimes hear people talk of filing an international patent application or a PCT application.
An international patent application may be filed by anyone who is a national or resident of a Member Country. A Member Country, also referred to sometimes as Contracting States, are simply those countries that are members to the international Treaty. In PCT speak, which can sometimes seem to be a language all to its own, those countries that have ratified the Patent Cooperation Treaty are referred to as Member Countries or Contracting States.
Posted in: IP News, Patents, USPTO
UPDATE 2 on 11/2/2011 @ 6:15pm ET
Commissioner for Patents at the United States Patent and Trademark Office (USPTO) Robert L. Stoll (right) has announced his intention to retire from the agency effective December 31, 2011. Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has announced that he will nominate current Deputy Commissioner for Patents Margaret “Peggy” Focarino (left) to the position of Commissioner for Patents once Commissioner Stoll’s resignation becomes effective.