One of the newer prior art research studies currently underway at Article One Partners is one that relates to U.S. Patent No. 6,332,158, which relates to a system that assists user’s in selecting desired domains. See Intelligent Domain Name Lookup #1802. This study is of particular interest because the patent in question is owned by a subsidiary of Acacia Research Corporation, which is one of the largest and most powerful of the patent assertion entities (PAE) in the industry today.
Indeed, Acacia reportedly maintains upwards of 100 patent portfolios and aggressively pursues licenses for its own technologies. It is also a publicly traded company, so the industry has far more information about Acacia that with respect to virtually any other PAE. For some of my writings on Acacia please see Mother of All Patent Trolls and Acacia Research by the Numbers: Inside the Belly of the Beast. From what I know about Acacia it seems to me that they have found a very lucrative niche and execute quite well. They seem to acquire solid patents and patent portfolios and they are quite adept at monetization.
Of course, in this industry one man’s well operated company is another man’s patent troll. While it is entirely possible that they have acquired a patent that could be invalidated in litigation or in other forums, it seems unlikely to me that they would purchase a patent or patent portfolio without engaging in reasonable due diligence. That doesn’t mean, however, that the search for prior art will be futile. It just means that Article One is going to need the assistance of everyone who is at all knowledgeable about the industry and technology field. So if you know of prior art or have some time to hunt I suspect your input in this search could be quite valuable.
October overwhelmingly means one thing in the legal world. No, not Halloween, although to some it may seem just as scary.
Every October the United States Supreme Court breaks its hibernation and starts its new session. Every case heard and decision handed down by the Supreme Court between October 1, 2012 and the end of June 2013 will be a part of the Court’s October 2012 term.
I know I am running a little late, because the Supreme Court heard its first arguments earlier in the week, but I have been planning to make October 2012 Supreme Court month on IPWatchdog.com. This, the first of what will be a handful of SCOTUS related intellectual property articles, is a summary of the most important Supreme Court copyright fair use cases dating back Baker v. Selden in 1879.
Stay tuned for similar articles on trademarks and patents, as well as other Supreme Court related articles I’m sure you will enjoy.
The Association of American Publishers (AAP) and Google announced earlier today that the parties had reached a settlement agreement in the ongoing copyright infringement lawsuit that pits content creators against Google. This copyright dispute started between Google and various content creators as the result of Google’s efforts to digitize books for distribution on the Internet without first obtaining copyright permission. According to AAP and Google, the settlement will provide access to AAP in-copyright books and journals digitized by Google for its Google Library Project. The dismissal of the lawsuit will end seven years of litigation, at least between these parties.
The Authors Guild, however, has not given up the fight and will continue to move forward against Google.
“The publishers’ private settlement, whatever its terms, does not resolve the authors’ copyright infringement claims against Google,” Authors Guild executive director Paul Aiken said in a statement. “Google continues to profit from its use of millions of copyright-protected books without regard to authors’ rights, and our class-action lawsuit on behalf of U.S. authors continues.”
The America Invents Act (AIA) has now gone through its second phase of implementation. Initially there were few things that went into effect over the initial 90 days after President Obama signed the legislation into law. The first major wave of the AIA took effect on September 16, 2012. See, for example, Citation of Prior Art, Supplemental Examination, Oath/Declaration and Post-Grant Review et al.The most significant of the changes to U.S. patent law, namely the shift from first to invent to first to file, will not take place until March 16, 2013. This is a monumental change to U.S. patent law so it is never too early to discuss the many issues that will present with this shift.
The first and most obvious place to begin any discussion of the shift to first to file is with a very basic question: What is prior art? This is anything but an easy, straight forward question even under first to invent laws that we know so well and have been familiar with virtually throughout the entire history of the United States. The complexity in what seems an otherwise simple question stems from the fact that prior art is defined by statute. There is no common sense way to conceptualize what is, or what is not, prior art.
The theme of the AIPF annual meeting this year is “intellectual property as a corporate asset.” There are indeed presentations sprinkled across the two days of this meeting that relate specifically to this topic. Another recurring and equally treated topic is the use of the Internet in practice in a variety of contexts — attracting clients, networking generally and use of the Internet for investigations.
I’m not going to rehash my entire day at the AIPF meeting, but there were several presentations that I found particularly interesting.
The Invisible Hand: Models for Monetizing Patents in the 21st Century
The first speaker of the day is Richard M. Ludwin, Associate General Counsel for IBM Intellectual Property Law. He is speaking about patent monetization. One of the first points he made was that intellectual property lawyers are different than many other lawyers because our work-product directly relates to the product that hits the market. That is, indeed, one of the things that makes patent practice exciting. From my perspective it is quite exhilarating to work with a client to figure out what pieces and parts of the grandiose innovation are likely to be protectable. Find that core and you can build in a direction that is unique, and which can be yours.
As you may have already heard, effective — October 2, 2012 — the United States Patent and Trademark Office will be adding a significant volume of newly testable material to the Office’s Registration Exam (i.e., the “Patent Bar Exam”). Specifically, the USPTO has added six new testable documents to the Patent Bar Exam, with these newly testable documents coming in the form of six Federal Register Notices. All of this is thanks to the America Invents Act (AIA). See AIA Phase 2 Implemented.
Does this mean that the Patent Bar will become more difficult? The answer to that question isn’t a simply YES or NO. So let’s break this down into two different questions. (1) Will the questions be more difficult on the Patent Bar Exam? (2) Will it be more difficult to pass the Patent Bar Exam? While exam questions likely won’t get more difficult, it would be naive to believe the Patent Bar will not become much more difficult with the addition of complicated new rules that only add to the legal and regulatory rules administered by the USPTO.
Let’s go back to the first question about the questions on the Patent Bar. Once upon a time the Patent Office administered the Patent Bar Exam once or twice a year to thousands of would-be patent attorneys and patent agents across the country. The October 2003 exam was the last exam administered in this way. The USPTO changed the examination to an on-demand examination that is prepared by the Patent Office, but administered by Prometric. Because questions are randomly served from the database and no two people take the same exam the Patent Office had to normalize exam difficult someway, so they scored questions on a scale of 1 to 10 in terms of difficulty. This ensures that each person gets an exam that the Patent Office deems to be of the same level of difficulty. Thus, the new material will be fit into the database and appropriately evaluated. There will not suddenly be questions of 11 or 12 level of difficulty. So in this respect each question will not be more difficult, at least from the Patent Office perspective.
At 2:30pm on Monday, October 1, 2012, I will be speaking at the annual meeting of the Association of Intellectual Property Firms (AIPF). My topic is the business of blogging for lawyers. This is a topic I have written about, and spoken about, in the past. Given the trajectory of my career over the past seven years the topic is one near and dear to my heart. While I have been operating IPWatchdog since October 1999, which almost doesn’t seem possible, I left full-time teaching in the summer of 2005. It was at that point that I started devoted full-time attention to IPWatchdog.
Many in the industry know that my professional persona causes me to wear several different hats. First, I teach a patent bar review course for the Practising Law Institute, which takes me out of the office for 6 days at a time between 8 and 10 weeks a year. I also have a patent practice at Zies, Widerman & Malek, which primarily focuses on software and Internet technologies. But the overwhelming majority of my time is spent with IPWatchdog.com, which is my blogging hat. Of course, blogging also leads to clients for me and the firm.
Blogging can lead to name recognition, establishing one as an expert and ultimately leading to client development, which is why many attorneys are interested in learning about how to go about “this blogging thing.” Like everything in life, there are steps that can and should be taken to pursue the path. So if you are interested in blogging for business let me give you some advice.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
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