In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.
Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of 35 U.S.C. § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.
Posted: Thursday, Aug 14, 2014 @ 8:05 am | Written by Gene Quinn | 3 comments
By agreement signed with the Patent Office Professional Association on June 24, 2014, the United States Patent and Trademark Office is once again providing tuition reimbursement for employees who are enrolled in law school seeking a Juris Doctor degree. See 2014 Supplemental Agreement on the Non-duty Hours Legal Study Program. To qualify the employee must have at least 2 years of USPTO experience and sign a continuing service agreement.
The continuing service agreement requires an employee who received tuition reimbursement to provide continued service with the federal government for 30 days for each credit paid for by the USPTO. If the employee leaves the federal government prior to completing the required length of the continued service, the employee’s tuition reimbursement obligation will be on a pro rata basis (based on thirty-day increments).
Posted: Wednesday, Aug 13, 2014 @ 11:15 am | Written by Gene Quinn | 7 comments
Last week the United States Court of Appeals for the Federal Circuit issued a decision in State of Vermont v. MPHJ Technology Investments, LLC. The decision, which was really not much of a decision because the Federal Circuit concluded they lacked jurisdiction, is interesting for at least several reasons.
While Vermont’s actions are undoubtably laudable, despite what some conclude I suspect that when challenged the legislation will fall because it pre-empts patent law, which is federal. For example, one of the factors that would suggest a bad faith patent enforcement under the Vermont statute is if there has previously been a lawsuit or threatened lawsuit based on the same or similar claim of patent infringement.
Currently, the USPTO targets of 10 months on average to a first office action, and an average of 20 months for total pendency were established with stakeholder input in the previous USPTO 2010–2015 Strategic Plan. In an effort to continue to take into consideration industry realities the USPTO would like to ensure a balance between workload, production capacity and the requirements of the stockholder community.
Time was, patent lawyers were magicians, and their bags of tricks were filled with claim drafting tools. Write “a widget,” and shazam! “a widget” becomes as many as one could desire, all through the rules of claim construction. Single sentence claims went on for days, every other word was “said,” and language included words like “slidingly.” The mechanical people all said “comprising,” and the chemical people all said “consisting,” but nobody knew why, except maybe Judge Rich and Irving Kayton.
Now we have patent practitioners. We think about monetization. Edison, Tesla, Kilby, Noyce—they are all gone, and now our idea of high-tech is a patented tax strategy. If a person commits the sin of colorful language, some guy from Chicago puts a price on his head.
The claim drafting wizard is gone, but no one notices that his passing is not a normal, stylistic change, going from gray flannel to bellbottoms to designer jeans.
Epson is a company that we’ve taken some time to examine in past columns published in our Companies We Follow series. Recently, the president of the Seiko Epson Corporation, Minoru Usui, was quoted in comments about his commitment to developing intellectual property and how it protects the corporation’s financial success. We’re always excited to discover innovations from a company dedicated to increasing the strength of their patent portfolio, and we found plenty of patent applications and issued patents from the U.S. Patent and Trademark Office related to Epson’s core printing business, as well as some intriguing side pursuits.
Posted: Monday, Aug 11, 2014 @ 5:48 pm | Written by Michael Lin | 31 comments
As a US Patent Attorneywho has been working abroad in Asia for a while, I’m often the Asia interface with US companies and firms seeking to get their patents granted in Asia, especially China. US Attorneys/Agents always complain about the narrowness of Asian claims – oftentimes limited to just what the examples describe – when the corresponding US claims are so much broader. My 2 cents: broader Asian Patent scope is possible – not easy, but possible. This past week I’ve struggled with 2 applications which we’ll get granted, but with claims merely covering the examples in the spec. However, given a little forethought, we would have achieved a broader scope. So I’m putting down my thoughts in the hope of helping US practitioners a bit with their Asian prosecution.
Laws & Practice Are Different
If you are experienced in Asia practice, know the risks, and have made a conscious decision to write applications in a certain way (i.e., because your US application is the most important), then that’s fine. That’s your decision and I’m all for it. Stop reading now and don’t waste your time. I’m writing this for those who never made that conscious decision and assume that patent practice everywhere is the same as the US. Sorry, but it’s not the same.
Posted: Sunday, Aug 10, 2014 @ 11:49 am | Written by Gene Quinn | 4 comments
Chief Judge Michel, CAFC (ret.)
This is the third and final installment of my recent interview with former Federal Circuit Chief Judge Paul Michel. In this installment of the interview we discuss the future of the Federal Circuit now that Judge Rader is a private citizen. We discuss the type of candidate that should be appointed to replace him, and the always concerning panel dependency.
QUINN: So now we still have one topic still to discuss. Perhaps, if you have the time, we could talk about the Federal Circuit. I don’t want to get into any of the touchy subjects, which some people are diving into. I’m more interesting in talking about moving forward, you know, Judge Rader is now a private citizen and he was clearly one of the champions of the patent system and a believer in the power and the importance of patents. And now he’s not on the Court any more. I wonder what that’s going to mean moving forward. I wonder— and then I can’t help but wonder about panel dependency, which is a problem that a lot of people talk about. And particularly in light of the fact that the Supreme Court has remanded Ultramercial to the Federal Circuit. And Judge Rader was on that panel. So you already have people talking about whether that outcome in what could be a very important case will become panel dependent.
MICHEL: Right. Well, first of all I think Judge Rader will continue to play a very constructive role as a vocal spokesman now in the private citizen realm. And in fact being a private citizen he can be much more frank and candid than he was able to be as a sitting judge. So his voice may get even more interesting and even louder as a part of the overall debate. His replacement will be very important. So just as people are focused on is Phil Johnson going to become the new patent director, will he get nominated, can he get confirmed, how will he do? All those interesting very important questions, people should also be asking who will replace Judge Rader? Who will get nominated, can that person get confirmed, can they get confirmed as fast as they need to get confirmed so the Court is at full strength?
Posted: Saturday, Aug 9, 2014 @ 12:51 pm | Written by Gene Quinn | 8 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.
Focusing only on the large picture and not describing nuances and alternatives 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?