Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant, whether they be an independent inventor or a large corporation. Resources are finite even for the largest corporations, and throwing good money after bad is not a strategy for success.
When you do not want to give up on a patent application filing an RCE can be an extremely attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board within the United States Patent and Trademark Office. The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. These fees are double for large entities, and half as much for those that qualify as micro-entities. Filing an RCE also gives the applicant another two attempts, generally speaking, to convince the examiner that patentable claims are present in the application.
Filing an Appeal is a decision that many applicants simply forego at all costs. The cost of filing a Notice of Appeal is currently $400 for a small entity, double that for a large entity, and half as much for those that qualify as micro-entities. If you want an oral hearing that adds $650 for small entities, $1,300 for large entities and $325 for micro-entities. But the real cost of moving forward on appeal is the attorneys fees that will be encountered. According to the 2013 Economic Survey of the American Intellectual Property Law Association (AIPLA), the median attorney cost for preparing a brief is $4,500, and the median cost for those appeals that include an oral argument raises by another $4,100. Compare this with the filing of an RCE, which depending on the complexity of the technology will vary between about $2,000 to $3,500.
Justice Samuel Alito, authored the Limelight decision for a unanimous Court.
There are some who are questioning the wisdom and correctness of the Supreme Court’s recent decision, authored by Justice Alito for a unanimous Court, in Limelight Networks, Inc. v. Akamai Technologies, Inc. One particular point of criticism seems to be centered around the fact that the Supreme Court failed to take into consideration the existence of 35 U.S.C. § 271(f). Section 271(f) was enacted by Congress to overrule a 1972 Supreme Court decision that held that supplying parts to be assembled outside the United States could not result in infringement of a U.S. patented combination machine because the assembly occurred outside the territorial reach of the U.S., and therefore beyond the scope of the exclusive rights granted by a U.S. patent.
We recognize that certain Supreme Court patent decisions over the past several generations have legitimately raised questions about the Court’s familiarity with overall patent law concepts. Indeed, the Supreme Court has been criticized, including here on IPWatchdog.com, for muddying patent waters, failing to articulate clearly applicable standards and promulgating rulings that seem internally inconsistent, if not scientifically inaccurate. Any legitimate criticism of Supreme Court patent jurisprudence should, however, be on a case-by-case basis. Further, it is important to recognize that the Supreme Court does from time to time get a patent decision perfectly correct. See Diamond v. Chakrabarty, Diamond v. Diehr, Octane Fitness v. ICON Health & Fitness, Highmark v. Allcare, Gunn v. Minton, Bowman v. Monsanto, i4i v. Microsoft and Kappos v. Hyatt.
This current criticism swirling around Limelight seems misguided. Arguing that the Supreme Court erred by misinterpreting, or failing to apply, 271(f) misses the point entirely. The question presented in the appeal to the Supreme Court was whether there can be infringement under 271(b) if there is no direct infringement under 271(a). Infringement under 271(f)(1) was not at issue in the case, and 271(f)(1) was not relied upon by the Federal Circuit below.
The United States Federal District Court for the District of Nevada has dismissed a trademark infringement lawsuit against a foreign Internet poker site in a ruling that signals a rather substantial win for Internet businesses at large. The decision narrows the types of contacts that would confer general jurisdiction against foreign companies. The case is Best Odds Corp. vs iBus Media Limited, docket number 2:13-cv-020080RCJ-VCF.
Nevada-based online poker news site Best Odds Corp. sued the Isle of Man-based iBus Media Holdings for infringement of its MacPoker ® trademark, claiming that the Nevada courts had general jurisdiction over iBus Media’s poker news sites. Best Odds pointed to the defendants’ media kit, which alleged a significant U.S. presence. The court disagreed that these promotional statements conferred general jurisdiction over iBus Media.
In a June 4, 2014, ruling Judge Robert C. Jones granted iBus Media Holdings’ motion for dismissal of Best Odds Corp.’s trademark infringement lawsuit. Judge Jones said the plaintiff failed to make a case that Nevada courts had general jurisdiction over the foreign-based iBus Media, citing the Supreme Court’s recent Daimler AG v. Bauman decision, which Jones said “clarified that the reach of general jurisdiction is narrower than had been supposed in lower courts for many years.”
In our Companies We Follow series here at IPWatchdog, we try cover the corporations receiving the greatest number of patent grants from the U.S. Patent and Trademark Office to get a good view of global technological development. For the first time, we’re profiling innovations from Toshiba, one of the most regular applicants for U.S. patents in the entire world. Our recent foray into this company’s areas of technological development will bring our readers to a greater understanding of its business focus.
We begin our look at Toshiba’s recent inventions with a thorough look at today’s featured patent application, which describes a system designed to increase the speed with which transactions via check can be reconciled with a financial institution. This system creates a digital image of a check which can be analyzed for quick financial reporting, reducing typical delays in processing checks. An apparatus for aiding people attempting to write in a foreign language and a system for scanning produce items without barcodes are also discussed.
Recently I had the opportunity to interview Jane Muir, who is the President of the Association of University Technology Managers (AUTM). In the final segment of our conversation, which appears below, we discuss the tremendous success of Bayh-Dole legislation. We also discuss the motivation for the critics who year after year want to repeal Bayh-Dole despite the overwhelming successes it has created.
Without further ado, here is the finale of my interview with Jane Muir.
MUIR: I find it so perplexing that when you look at the associations that are involved in technology transfer and the biotech and pharma industries. I’m talking about all your alphabet soup, your BIO, your APLU, your AAMC, your COUGAR, your AAU. All of these people who understand those nuances and those complexities that we talked about at the beginning of our conversation who are saying to the people who want to enact these changes, hey, don’t do it, here’s all the negative ramifications that are going to occur. It just befuddles me that that can be ignored when the goal again of these universities is the betterment of mankind and the creation of knowledge. There’s no personal vendetta, no personal agenda there. But yet it seems as if it’s being ignored by the people who are actually making the changes which would — I shouldn’t say this — which would indicate to me that maybe there’s some personal agendas on the other side that are going on that may not be for the greater good. I just really don’t understand it.
Everyone views the world through a prism, and the prism I look through is different than the prism others look through. That should hardly come as a surprise given that we each find ourselves at any point in time being where we are as a result of the journey we have taken. It is, therefore, not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be success.
I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A where you have an idea or invention to point B where you dreams of commercial success are coming true, but with every choice there are associated risks. Unfortunately, many inventors still have not received the message about the importance of filing a patent application as quickly as possible. I know this to be true because every week I am contacted by inventors who either have already started selling or using their invention, or who are within a few days or weeks of the same. With the United States being a first to file system, a change that became effective March 16 ,2013, this can be a fatal mistake.
Generally speaking, an invention can be patented if it is new and non-obvious. What obviousness means these days is just about as clear as mud, thanks to the US Supreme Court decision in KSR v. Teleflex. Indeed, what is obvious is largely in the eye of the beholder, although the Patent Office has tried to articulate an objective standard reflected in the so-called KSR rationales. For now lets take a leap of faith and just pretend that there is a consensus with respect to what is and what is not obvious. At least in the first instance when determining whether an invention is patentable that is the way to proceed, because if your invention is not new we never have to ask whether it is obvious. For those interested in getting into the weeds with respect to obviousness I recommend Understanding Obviousness: John Deere and the Basics,Obviousness When All Elements are Not Present in the Prior Art, andWhen is an Invention Obvious.
Several weeks ago I had the opportunity to speak with Jane Muir, who now serves as President of the Association of University Technology Managers (AUTM). At the time of our conversation there had been a number of so-called “news reports” that were characterizing universities as trolls. That, of course, is utter nonsense. The role of the university is to push technologies into the marketplace and work with those who license university innovation, which is the antithesis of what a patent troll does. Still, some in the popular press who obviously have their own agenda see it otherwise, which is both curious and sad.
In this segment of the interview we talk about concerns over patent trolls and Muir explains exactly how and why universities are NOT patent trolls. To begin reading from the beginning please see Exclusive Interview with AUTM President Jane Muir.
QUINN: There’s this belief that innovation just happens. And that if you do come up with a great invention it’s 1, 2, 3 and you’re done and there’s going to be checks starting to arrive. And you’re going to be laying on a beach somewhere living a life of luxury. And that’s just not true. It’s not true for the individual, it’s not true for the startup, and it’s not true for the university.
MUIR: That’s absolutely correct. When you talk to an entrepreneur as an investor and the entrepreneur shows their plan with how long it’s going to take or how much money it’s going to require, you always take that and multiply by two or three, right?
QUINN: Exactly, because things are going to go wrong. Estimates are going to be wrong. I remember the first business I ever started. And this is, you know, many, many, many years ago. It was a shock to me that the electricity cost more when it was being sold to a business. Just silly things like that, you know, that if you’ve never started a business you don’t really understand that on every level, no matter how insignificant, it seems there’s a hurdle.
Jane Muir is the director of the Florida Innovation Hub at University of Florida (UF) and associate director of the Office of Technology Licensing. She is also the current president of the Association of University Technology Managers (AUTM). AUTM is a nonprofit organization with an international membership of more than 3,200 technology managers and business executives. AUTM members come from more than 300 universities, research institutions and teaching hospitals.
Several weeks ago I had the opportunity to chat with Muir on the record. We talked about the role of university research and some of the criticisms swirling in the popular press, which seem to largely be based on unfamiliarity with the technology transfer process and the vital role that universities play.
Without further ado, here is part 1 of my interview with Jame Muir.
QUINN: Okay, we’re not live. Thanks, Jane, for taking the time to talk to me. I really appreciate it. I know this is probably a very busy time of the year for you. You just coming in recently as the new AUTM president. With all the changes to technology licensing and patent reform and the issues about patent trolls what do you see as the major pressing issue for universities moving forward over the next year?
MUIR: So, I think the major pressing issue for universities is to work hard, to help those within their university administrations, within their states, and at the federal level to better understand the reasons that technology transfer is done and which, if you go back to the Bayh-Dole Act, you know, the underlining principle of the creation of our profession was to improve the human condition. It was about figuring out how to use the discoveries that had been generated as a result of tax-payer dollars and actually get them into the marketplace so that they could improve people’s lives.