Posted: Sunday, Aug 3, 2014 @ 1:13 pm | Written by Gene Quinn | 4 comments
Phil Johnson at IPO Inventor of the Year award ceremony, December 10, 2013.
The Washington Post recently reported that the anticipated nomination of Phil Johnson to head the United States Patent and Trademark Office is dead. News of the death of Johnson’s nomination is both a shocking surprise and yet all too predictable in a town that increasingly makes little logical sense. Johnson is extraordinarily qualified, he is willing to take the position, he has seen the patent system from virtually all vantage points, and yet his nomination has stalled after many months of vetting and no legitimate red flags surfacing.
It seems that Johnson’s major flaw may be that he strongly supports the patent system, which is a very sad commentary. In fact, there are some starting to believe that the only candidate that may be acceptable to certain political forces is one who opposes the patent system on a fundamental level. Of course, such a candidate would be unacceptable to a great many other powerful industry interests, so this could mean that the USPTO will indefinitely be without a politically appointed and confirmed leader, at least unless the White House is willing to step up and make a nomination.
I am on record supporting the nomination of Phil Johnson, and simultaneously pointing out that the proffered rationale used by his detractors is factually false. Those suggesting Phil Johnson hasn’t been supportive of patent reform efforts are simply misinformed. In fact, you would be hard pressed to find anyone in the private sector who has been more supportive of patent reform over the last 8 to 10 years. In fact, Johnson was a strong supporter of the American Invents Act (AIA), which has been one of President Obama’s signature accomplishments. Johnson was also a strong supporter of fee-shifting legislation. Stay tuned more on Johnson’s support of patent reform efforts in the coming days and weeks.
Posted: Sunday, Aug 3, 2014 @ 12:21 pm | Written by Gene Quinn | No Comments »
The IP Law Summit will be held from September 14, 2014, through September 16, 2014, at the Eau Palm Beach Resort & Spa, Palm Beach, Florida. The event will bring together senior IP Counsel from large corporations and mid-market organizations with service providers. The Summit is an invitation-only event that will take place behind closed doors.
Posted: Saturday, Aug 2, 2014 @ 8:00 am | Written by Gene Quinn | No Comments »
The patent laws require that a patent applicant to furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. Said another way, whenever a drawing would assist in the understanding of an invention you need at least one patent drawing. Based on my experience I can say that a patent drawing is almost always required.
The only time patent drawings are not required is when the invention relates to a chemical compound or composition is being claimed, or if there is just a method or process being claimed. Still, virtually every method or process can be depicted in one way, shape or form by illustration. That being the case it would be wise for applicants to provide illustrations even when a method is being claimed. Thus, there is a disconnect between what is “required” by law and what should be provided. The key is understand that anything included in the filing of an application makes up the totality of the disclosure, and the reality is that drawings are worth at least 1,000 words — likely much more!
It is important, in fact critical, for inventors and those new to drafting patent application understand that it is essential that the invention be described with as much detail and specificity as possible. You do not only want to describe the specific, but not describing the specific is an enormous mistake. I hear all the time that inventors don’t want to describe things specifically because they don’t want to be locked in and want very broad protection. That is wonderful, but if you only describe the very broad, general aspects of your invention the chance of getting a patent rapidly declines to asymptotically approach zero percent. The more broad and general the more likely what you describe will be within the prior art. Without layers of nuance and specifics you wind up having nothing to add to distinguish over the prior art and as a result wind up with no patent, or a patent with claims that are clearly invalid on their face.
Posted: Friday, Aug 1, 2014 @ 11:00 am | Written by Gene Quinn | 1 Comment »
Each year the Practising Law Institute hosts its annual Patent Litigation Seminar. I will be speaking at the New York Patent Litigation 2014 program, which will take place from November 10-11, 2014. There will be an earlier presentation of the program in Chicago, IL, from October 6-7, 2014. I have this on the brain at the moment because my written materials for my presentation were due last week.
In New York I will be presenting on the topic of ethics, which will result in 1 credit of ethics, always useful for those who are required by their State bars to obtain continuing legal education credits annually.
In addition to discussion of the relatively newly adopted USPTO Rules of Professional Conduct, my presentation will also discuss a variety of other matters. Those who have seen my ethics presentations before know that one of the things I particularly like to do is dive into the OED Reading Room and find interim decisions and final orders. These decisions and final orders give us the best insight into what type of activity the Office of Enrollment and Discipline focuses on. Such an approach winds up being informative, allows us to discuss the substantive ethics rules and alleged violations, and frequently to feel better about ourselves knowing that our practices are set up so that the catastrophe that lead to OED inquiry could never happen to us.
Of course, every once in a while review of OED disciplinary activity may make even the most conscientious among us take a hard swallow. This is not to suggest that many practitioners will believe they are potentially in trouble, but legal ethics is not about morality or morals in any larger sense. Legal ethics is about rules, and the wisest approach to the matter is to know where the line is and stand well clear. Sometimes, however, some might be far closer to the line than they might have anticipated.
IPWatchdog’s Companies We Follow series checks in with General Electric every few months to see what recent patent activities have been supported by this company’s research and development. Our recent perusal of the dozens of patent applications and issued patents filed at the halls of the U.S. Patent and Trademark Office and assigned to GE showed us an incredible swath of innovation in fields from medical care to electrical energy generation. Below, we’re sharing some of the inventions which we felt were most interesting with our readers.
Our exploration of General Electric’s recently published patent applications confirms the idea that this corporation is increasing its development in the field of locomotives. We feature a couple of patent applications in this field, including one that would protect a system for detecting the order of rail cars for cooperative braking and tractive operations. We also sharing some patent applications related to consumer appliances, such as one directed at a new design for a dishwasher filter media that can collect a wider range of particulate without clogging.
Posted: Thursday, Jul 31, 2014 @ 11:55 am | Written by Marc Ehrlich, Marian Underweiser, Mark Ringes & Manny Schecter | 25 comments
It has been over a month since the Supreme Court published its opinion in Alice v. CLS Bank. While the question on which certiorari was granted broadly considered the patent eligibility of computer implemented inventions, the Court ultimately issued an opinion that was tightly focused on the invention underlying Alice Corp’s patent. While many hoped that the Court would address this broader issue, the narrow opinion leaves many key questions unanswered. More importantly, the Court’s explanation of why the Alice patent was an ineligible abstract idea demonstrates the limitations inherent in applying that doctrine to computer implemented inventions. Those limitations will come to define the struggles confronting innovators, courts and the patent office as they attempt to operate in accordance with this opinion.
A review of the opinion and oral argument reveals that no participant was able to articulate a meaningful, repeatable, and predictable approach for determining which computer implemented inventions are too abstract and which are eligible for patent protection. The Court intentionally declined to broadly address this key issue: “[i]n any event we need not labor to delimit the precise contours of the “abstract ideas” exception in this case.” And that is because it cannot be done. As the Court itself acknowledged in Mayo v. Prometheus, “all inventions at some level embody” an abstract idea. And unlike laws of nature and natural phenomena, abstract ideas are not readily susceptible to line-drawing – where does the abstract idea stop and the eligible “application” of that abstraction begin?
Learned Hand lamented the intractable nature of this problem in the context of the idea expression dichotomy in copyright law. Struggling to separate the underlying unprotected idea from the copyright protected expression, he noted “…there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas’, to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.” See Nichols v. Universal Pictures Corporation.
Nikon is not a corporation we profile often in the Companies We Follow series. However, with our recent focus on Canon and other optical and imaging technology manufacturers, we felt that now was a good time to add Nikon to our rotation, a global leader in digital cameras and similar consumer devices. Our recent search of patent applications and issued patents filed at the U.S. Patent and Trademark Office showed us a very intriguing scope of innovative development in the world of digital image and video capture.
The patent applications published in recent weeks by the USPTO and assigned to Nikon include a couple of filings pertaining to camera accessories which we explored for today’s column. One of these accessories provides a continuous light for the better detection of light exposure conditions for a digital camera. Other patent applications are directed at improved configurations for interchangeable camera lenses and lens barrels. Another intriguing patent application discusses a method of displaying two-dimensional and three-dimensional images on the same screen without degrading the quality of either version.
In her prepared remarks, Lee substantively will begin by saying she is pleased that Congress approved “a FY 2015 appropriation bill that provides USPTO with the authority to spend anticipated fee collections as estimated by the Congressional Budget Office.” Sadly, this is something to be thankful for as odd as it seems. While significant user fees are generated by the USPTO, without the approval of Congress the USPTO cannot keep and spend the funds collected. Lee explained that by being granted permission to keep and use collected user fees the Office will “continue reducing the patent application backlog, shortening patent pendency, improving patent quality, enhancing patent administrative appeal and post-grant processes, fine tuning trademark operations, expanding our international efforts and investing in our information technology (IT) infrastructure.”