News, Notes and Announcements

In this edition of News, Notes & Announcements, the USPTO announces it has signed an agreement with the Russian Patent Office to act as an International Searching Authority; the USPTO announces expansion of the Patent Prosecution Highway; PLI’s Patent Litigation 2010 starts next week and will travel across the US with stops in Virginia, Atlanta, Chicago and New York; BIO is hosting a Technology Transfer Symposium next week in San Francisco; Howard University will hold an IP Empowerment Summit on November 5, 2010, aimed at trying to help indigent inventors — USPTO Director David Kappos will participate; and BackWeb Technologies sues two computer giants — IBM and HP — on patents covering methods for transmitting information between a remote network and a local computer.

  1. On Wednesday, September 22, 2010, USPTO Director David Kappos and Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) Director Boris Simonov signed an Agreement Concerning Action of Rospatent as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty for international applications received by the USPTO. The signing took place during a ceremony at the World Intellectual Property Organization (WIPO) in Geneva. According to the agreement, Rospatent will undertake international search and international preliminary examination for international applications filed with the USPTO as the receiving Office. This will be beneficial for U.S. applicants as it will provide them with an additional choice at a lower cost, and with additional flexibility in choosing an International Authority based on the field of technology of the invention, the speed of services provided and the cost of search and examination. The cost of an international search carried out by Rospatent as the ISA will be $449.
  2. On Monday, September 27, 2010, the United States Patent and Trademark Office (USPTO) announced series of pilot projects for the Patent Prosecution Highway (PPH) with the Spanish Patent and Trademark Office (SPTO), Austrian Patent Office (APO) and the Russian FederalService for Intellectual Property, Patents and Trademarks (Rospatent). PPH leverages fast-track patent examination in each office to allow applicants to obtain corresponding patents faster and more efficiently in each country. It also will permit each office to benefit from work previously done by the other office, in turn reducing examination workload and improving patent quality. The USPTO plans to start a PPH pilot with both SPTO and APO whereby search and examination results of national applications between cross filings under the Paris Convention are utilized. On September 1, 2010 a similar PPH program with Rospatent was started. The USPTO will also be piloting a PCT-PPH program with each of the three offices. These PCT-PPH pilot programs will use international written opinions, and international preliminary examination reports developed within the framework of the international Patent Cooperation Treaty (PCT) and will greatly expand the availability of reusable work in the PPH program.
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  4. Every year the Practising Law Institute presents its patent litigation seminar, and Patent Litigation 2010 is all new and revised. This program is taught by a faculty of some of the best known private law firms, as well as in-house lawyers who have earned national reputations in patent litigation. The seminar provides comprehensive coverage of every phase of a patent lawsuit. Through lecture and demonstration, you will be able to hone your patent litigation skills and earn up to 14 CLE credits, including 1 credit of ethics. Patent Litigation 2010 starts in McLean, Virginia on October 4-5, 2010 and then proceeds to Chicago, Illinois on October 14-15, Atlanta, GA on November 8-9, 2010 and New York City on November 15-16, 2010. The seminar will also be webcast live on the Internet on November 15-16, 2010 from the New York City location.
  5. The Biotechnology Industry Organization (BIO) will be hosting a Technology Transfer Symposium on Monday, October 4, 2010, in San Francisco, California at the Palace Hotel.  For those not familiar with the Palace Hotel it is absolutely wonderful and the bar/restaurant — the Pied Piper — is probably the best hotel bar/restaurant I have been to, so if you are in the area I highly recommend checking it out.  The event starts at 2pm and ends with a networking reception from 5pm to 7pm.  The first session is titled How to Ensure Innovative Lab Discoveries Get into the Commercial Process: A Multi-Player Process and the second session is titled Creating Successful Collaborations: More than One Way to Get Married. For more information see BIO 2010 Tech Transfer Symposium.
  6. On November 5, 2010, the Institute of Intellectual Property and Social Justice (IIPSJ) will conduct its first National IP Empowerment Summit at the Howard University School of Law. The IP Empowerment Summit will bring together a diverse group of IP professionals, including IP lawyers from private practice, in-house counsel, and academia, to collaborate with legislators and public interest and community activists to devise strategies for community development built around artistic works and technological innovation. IIPSJ IP Summit Empowerment Committees will be formed to create both discrete plans on particular topics and to collectively construct a blueprint to help educate and empower socio-economically marginalized communities to protect and commercially exploit their own IP works for their own benefit. We expect these efforts to lead to the establishment of IP Empowerment Zones in strategic urban locations. The groups to be served include associations of artists; students in fine arts, engineering, and science degree programs; community development association; and inventors. IIPSJ IP Summit attorneys will also work to empower attorneys serving these communities to develop the competencies and skills to carry out this work. USPTO Director David Kappos will be among those participating in the program. No registration fee is being charged because of the generous support of the event sponsors.
  7. BackWeb Technologies Ltd. announced on September 24, 2010, that it filed lawsuits in the United States District Court in San Francisco, California against International Business Machines Corporation (IBM) (see complaint) and the Hewlett-Packard Company (HP) (see complaint), alleging patent infringement and seeking damages, an injunction and a declaration by the Court that the IBM and HP software update technologies infringe BackWeb’s patents. BackWeb alleges that IBM’s Tivoli Provisioning Manager for Software product and IBM’s recently acquired BigFix products infringe four U.S. patents owned by BackWeb covering methods for transmitting information between a remote network and a local computer and distributed client-based data caching systems. BackWeb alleges that HP’s Client Automation product infringes three U.S. patents owned by BackWeb — US Patent Nos. 5,913,040, 6,317,789 and 6,539,429 — covering methods for transmitting information between a remote network and a local computer. According to the press release BackWeb research and development teams have developed multiple patented technologies in the field of efficient and user friendly data communications, which would suggest that this is not a patent troll case. BackWeb is being represented in this matter by San Francisco Hosie Rice LLP.


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