Last week I was in New York City teaching the PLI Patent Bar Review Course along with John White. The week was a good one, although the city was crazy with heads of state at the UN, terror worries about NY City hotels and President Clinton at the Sheraton across the street from PLI headquarters at the Clinton Global Initiative gathering. Despite all of this another group of patent bar students are going through the right of passage called the Patent Bar Exam. The last live course for the PLI Patent Bar Review will be in San Francisco, CA, the week before Thanksgiving, so if you or someone you know is going to be taking the patent bar and would like to study for it over down time during the end of the year it might make sense to take this live immersion course to ramp up quickly and get the patent bar complete before the USPTO changes the exam. Will the USPTO change the exam and actually start testing relevant laws? That is a good question. No announcement has been made, which is curious in and of itself. One would think that eventually the USPTO will have to change the exam and test laws that at least approximate practice, right? Who knows, but testing a version of the MPEP that is 4 or 5 years out of date is not a long term strategy.
At the beginning of August 2009 the United States Court of Appeals for the Federal Circuit issued its decision in Exergen Corp. v. Wal-Mart Stores, Inc., et al., Case Nos. 2006-1491, 2007-1180 (Fed. Cir. 2009), a decision that changed the playing field with respect to charges of inequitable conduct in patent litigation. Essentially, the Federal Circuit decided that since inequitable conduct is in essence a fraud based theory there needs to be highly specific information plead in the pleadings in order for the defendant to be entitled to raise the defense. It is still to early to state definitively how this will turn out over the long haul, but based on the test announced it seems like it could become very difficult if not impossible to plead inequitable conduct as a defense unless there is real factual evidence to suggest that there has in fact been inequitable conduct. As simple as this seems it is rather revolutionary, which is sad in and of itself. Gone are the days where inequitable conduct can be plead as a defense without any support and only to enable a fishing expedition during discovery. Likewise, as a result of In re Bose, which was decided on August 31, 2009, the days may be numbered for the loose application of fraud theories on the other side of the building at the USPTO. Specifically, the Federal Circuit has made it harder for there to be a finding of fraud on the Trademark Office, which could mean we are in for a complete reconstitution of fraud based theories. To the extent that means fraud actually requires intentional deception the Exergen and Bose cases are indeed very welcome and long overdue.
I hardly keep it a secret that the Practising Law Institute is a sponsor of IPWatchdog.com, although not necessarily the views expressed herein, which are mine alone. Occasionally I engage in some outright promotion activities, and stealing a good idea from the National Public Radio duo — Click & Clack — I sometimes refer to it as coming from the shameless commerce division. Call it what you will, but on Wednesday, September 16, 2009, PLI is sponsoring a lunch briefing titled Green Technology Patent Litigation: The Future is Here. I can honestly say that no one asked me to promote this program, so this edition of shameless commerce comes directly from me because this is a topic I am quite interested in, having done some work with green innovations. Perhaps I am always chasing something interested to write about, or perhaps I am an environmentalist at heart in a true Teddy Roosevelt sense. Whatever the case may be, I am looking forward to this briefing and I will be in attendance myself. I suspect it is going to be quite interesting, and like all PLI programs anyone who attends will learn something. The 1 hour of CLE credit is certainly a nice bonus as well. So what do you have to lose? Nothing really, and you might just gain some competitive insights into what is likely going to be the next big craze in both patenting and patent litigation.
In clear, concise, right-to-the-point language, this information-packed course leads you through the intricacies – and around the traps – of the Patent Bar Exam. You’ll get the hard facts, test-taking tips, sample questions and answers, and intense practice exams that mirror what you’re going to face when you sit down to take the real thing. Our PatWare software almost exactly predicted the current format of the Exam by many years. PatWare has now been expanded and updated to play an even more critical role in your preparation. There’s just one reason this is the essential PTO exam resource: It is simply the most user-friendly, comprehensive, in-depth, authoritative and Exam-focused course available today.
Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. The 2009 Federal Circuit Yearbook is now available, and includes all the information you need to catch up with what the Federal Circuit has been doing over the previous year. Covering everything from utility to claim construction, nonobviousness to infringement, inequitable conduct to inventorship, the Yearbook brings you readable summaries packed with authoritative commentary on the CAFC’s legal analysis and its current thinking on pivotal patent concerns. The 2009 Federal Circuit Yearbook is also available on Kindle.
Last month the seminal PLI Treatise, Mechanics of Patent Claim Drafting, was updated with information on claim drafting tips and techniques post Bilski, and a few other juicy items. Long time aficionados of the treatise will recall that this treatise was once upon a time called Landis on the Mechanics of Patent Claim Drafting, or simply the Landis Treatise. Landis has long since been deceased, and Robert C. Faber of Ostrolenk Faber LLP has been updating the text for many years now. About a year or so ago, PLI decided to change the title from Landis to Faber. It is the same great text that we are all familiar with, but now Robert Faber gets the credit he has been due for so many years. And in keeping with the times, it is also now available on Kindle through Amazon.com.
Gilles Bignan holds a PhD. in Chemistry, and soon will be a new patent agent. I met Gilles in October 2008, when he attended the PLI patent bar review course in New York City. When Gilles contacted me to let me know he had passed I asked him if he would be interested in doing an interview to discuss how he managed to pass the exam, the path he followed to get into the patent field and some of his successes as a research scientist. Gilles was kind enough to agree to this interview, which is reproduced below. He also gives some tips to those, like him, who are considering making the move from a long time research scientist into the patent field. As Gilles says, “it is never too late to initiate something new and fun in your life.” While many might not understand how science and patent law can be fun, I certainly share Gilles’ enthusiasm for this area.
Those familiar with the patent bar exam will remember that just under five (5) years ago, on July 26, 2004, the Patent Bar Exam moved to a computer-based, virtually on-demand exam, which is available at a Prometrics testing site near you. Prior to this change the patent bar examination was administered twice a year using examination booklets and multiple choice grading forms. The move to a frequently administered computer-based examination has made it possible for those interested in taking the exam to schedule the exam around their own schedule, making it convenient to fit in a patent bar review course and take the exam at a time when appropriate study can be devoted. Notwithstanding, some are uninterested, unwilling or unable to take a computer-based patent bar exam, so the United States Patent Office has continually offered a real-world, traditional, paper exam once a year. The written exam will take place in July 2009, and the PLI run of live courses for the Summer of 2009 begins in May in New York City.
I realize this is a plug from the shameless commerce division, but when the top patent treatises are on sale it deserves mention, particularly when the treatises are being sold by a sponsor of IPWatchdog.com. PLI’s outstanding patent law treatises provide comprehensive, up-to-date legal information and guidance, and they are available at a 20% discount if you order any of the titles below by April 8, 2009.
I am writing this post live from downtown Chicago at John Marshall Law School. I am in town this week for my bi-annual trip to the Windy City to teach the PLI Patent Bar Review Course. So far the weather here in Chicago is not what we typically experience for this time of year. It is warm and pleasant, although I hear cooler weather is on the way. In any event, I am sitting in the back of the classroom at the moment with John White at the podium. When I will actually be able to post this article is uncertain. I have my trusty Verizon Wireless Broadband Internet Card plugged in, but if you also have Verizon and are in Chicago or come here often you know that Verizon just doesn’t provide much of a signal in Chicago. Technology is wonderful when it works!
On Tuesday, March 10, 2009, at 1pm ET, the Practising Law Institute will host a 1 hour telephone briefing discussing the future of standard setting bodies in the wake of the recent decision of the United States Court of Appeals for the Federal Circuit in Qualcomm v. Broadcom. This discussion of standard setting is particularly topical at the moment given that just two weeks ago the United States Supreme Court decided not to accept the appeal of the Federal Trade Commission in the Rambus matter. You may recall that on Monday, November 24, 2008, the Federal Trade Commission filed a petition for certiorari with the United States Supreme Court (see also Appendix Vol 1 and Appendix Vol 2) seeking review of the April 22, 2008 decision of the United States Court of Appeals for the District of Columbia in Rambus Inc. v. Federal Trade Commission, which was an enormous victory for Rambus due to the fact that the DC Circuit did not find any support in the record to support the FTC’s determinations that Rambus engaged in unfair and deceptive activities while participating in a standard-setting organization without disclosing its relevant patents. The FTC had petitioned to seek a rehearing of the case by the entire DC Court of Appeals rather than just letting the panel decision stand, but this rehearing request was denied, thereby necessitating this appeal to the Supreme Court.
Today in New York City the Practising Law Institute begins its third annual Patent Law Institute. I am not in attendance this year at the event at PLI headquarters at 810 Seventh Avenue, which is just two blocks away from the David Letterman Theatre (known to some as the Ed Sullivan Theatre) and right around the corner from the best pizza place in all of New York (Leone’s on Broadway). I am, however, participating in this CLE event via webcast, tucked away at my own undisclosed location in a snowy Northern Virginia. Already getting access to the Internet has been somewhat difficult this morning with my trusty Verizon Wireless USB720, but with the sun finally starting to break through I have high hopes for the rest of the day. At the moment the first session titled Recent Court Decisions and Their Practice Impact has just come to an end and we are on a 15 minute coffee break, set to resume with the next segment on Patent Reform at 10:30am.
I have been away on an extended business trip, and I have now just returned. One of the stops on this trip was the headquarters of the Practising Law Institute (PLI) in New York City. As some of you may know, I am the editor and blogger for the PLI Patent Practice Center. On Monday and Tuesday of this week I was attending the Second Annual Patent Law Institute sponsored by PLI. I was attending the various programs and blogging away all day.
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. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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I hardly keep it a secret that the Practising Law Institute is a sponsor of IPWatchdog.com, although not necessarily the views expressed herein, which are mine alone. Occasionally I engage in some outright promotion activities, and stealing a good idea from the National Public Radio duo — Click & Clack — I sometimes refer to it as coming from the shameless commerce division. Call it what you will, but on Wednesday, September 16, 2009, PLI is sponsoring a lunch briefing titled 
Patent Bar Review
Gilles Bignan holds a PhD. in Chemistry, and soon will be a new patent agent. I met Gilles in October 2008, when he attended the 
