Posts in IPWatchdog Articles

The United States Patent and Trademark Office (USPTO) and Hungarian Intellectual Property Office (HIPO) signed a Memorandum of Understanding making permanent the Patent Prosecution Highway (PPH) program between the two offices and setting forth the common desire to implement further developments of the PPH program during a high level event in Budapest honoring Hungarian inventors and innovative companies.

As far as I can tell none of these goals is forwarded by the sale of computers to North Korea. Sure, North Korea is the exact type of country that WIPO has historically sought to help. Not because they are a rogue nation, aspire to have a clandestine nuclear program or because they support terrorism, but rather because the people of North Korea suffer so much and there is so little economic activity that it is misleading to even call what they have an economy. Such horribly mismanaged countries is where WIPO has done its best work, to encourage the adoption and respect of IP rights, which leads to international investment and economic development.

The Intellectual Property Owners Education Foundation currently has a Call for Nominations for their 39th Annual Inventor of the Year Award. Nominations are due by April 16, 2012, and the winner (and the nominators) will be honored on Monday, December 10, 2012, in Washington, D.C. at a gala event. I have already nominated one inventor from a University client of ours, and I encourage everyone to nominate those you represent (or those you know) who have made an outstanding contribution to innovation. The purpose of the award is to increase public awareness of inventors and how they benefit the nation’s economy and our quality of life.

Unfortunately this unspecific remand by the Supreme Court in AMP vacates as well the two-to-one ruling by this same Federal Circuit panel (Judges Lourie and Moore in the majority, Judge Bryson in dissent) that the claimed isolated DNA sequences were also patent-eligible under 35 U.S.C. § 101. What, pray tell, does Mayo Collaborative Services change with regard to that ruling in the original AMP decision? For those, like the plaintiffs in AMP (including the ACLU), who would like to upset this “applecart,” they’re likely to be very disappointed. I can describe what should be the impact of the ruling (and reasoning) in Mayo Collaborative Services on the claimed isolated DNA sequences in three short monosyllabic words: NONE AT ALL. And the Federal Circuit can (and should) say likewise, perhaps in far more words.

On Sunday March 25 and Monday March 26, 2012, I attended the Second Annual Women’s Entrepreneurship Symposium (WES) in Shreveport, LA. The event was hosted by the United States Patent and Trademark Office (USPTO) in Honor of Women’s History Month and was put together in collaboration with U.S. Senator Mary L. Landrieu (D-LA) and the city of Shreveport, Louisiana. WES was held at the Shreveport Convention Center and focused primarily on women entrepreneurs, innovation and the importance of intellectual property to business. I was honored to accept an invitation to present at this year’s event on social media and the importance of developing and leveraging online business relationships.

All and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and allowed to be added to the case. This should be quite beneficial to independent inventors, small businesses and start-ups who absolutely, positively need to get patents as quick as possible to continue to raise funds from investors.

The United States Patent and Trademark Office (USPTO) today announced that it will open the current Patent Law School Clinic Certification Pilot Program to admit 10 additional schools for the upcoming fall 2012 academic year. This pilot program allows law students to practice patent law before the agency under the guidance of a law school faculty clinic supervisor. Submissions from interested law schools will be accepted through Friday, June 1, 2012.

Many readers of IPWatchdog.com know that I hold two degrees from the former FPLC, both my Juris Doctor and my Master of Laws in intellectual property, and continue to have a special place in my heart for the institution and the people affiliated with the institution. It is good to see that the UNH School of Law continues the tradition of Franklin Pierce Law Center. UNH-FPLC has been ranked each and every year since U.S. News began their specialty law school rankings began in 1992.

The Prometheus decision shows that you can never know for sure what the outcome will be once you arrive at the Supreme Court. We also know that the Supreme Court is taking more patent cases now than ever, and those decisions have significant implications for the entire industry above and beyond the patent claims at issue and the parties involved. Your patent portfolio may be at risk because some other company obtained poorly written claims and the Supreme Court has taken the opportunity to decide not only the issues before them but to make decisions based on overarching concerns about the entire patent system.

The U.S. Department of Commerce’s Patent and Trademark Office (USPTO) and National Institute of Standards and Technology (NIST) Manufacturing Extension Partnership (MEP) yesterday unveiled a new web-based IP Awareness Assessment Tool designed to help manufacturers, small businesses, entrepreneurs and independent inventors easily assess their knowledge of intellectual property (IP).

The reasoning in Mayo Collaborative Services makes no patent law logical sense on numerous grounds, including disregarding an important paragraph in the Supreme Court’s 1981 case of Diamond v. Diehr that is not only binding precedent, but also tells us that Breyer’s opinion repeatedly does what this paragraph from Diehr says not to do in an analysis of method or process claims under 35 U.S.C. § 101. But the question now becomes what do we do to keep the reasoning in Mayo Collaborative Services from exploding into completely irrational, as well as patent law insane doctrine? The way forward to patent-eligibility rationality, as well as sanity, is through the remand decision in Classen Immunotherapies, Inc. v. Biogen IDEC. Put differently, there may yet be “light” in this currently “dark” patent-eligibility tunnel.

An exhibition showing the intellectual property (IP) behind Steve Jobs’ innovations opens to the public at WIPO on March 30, 2012 and will run through to World Intellectual Property Day on April 26, 2012. The exhibition ties in with this year’s World Intellectual Property Day theme – Visionary Innovators.

Unlike many in the biotech community I do not think the Prometheus decision will break the biotech industry or even seriously affect it. Much like the car mechanic in a small Caribbean island told me when my engine light came on in my rental car, “no worries, no problem!” I believe the holding in Prometheus prevents what could be a future legal quagmire, where overly-broad patents could serve to block entire fields of practice and create an enforcement nightmare in which ghosts of legal uncertainty and licensing ambiguities would haunt hospital hallways, R&D labs, boardrooms, and investment entities throughout the country. If the Prometheus decision would have gone the other way, it would not have been status quo, but rather been fairly harmful to future innovation.

You could attribute what happened here to “selective precedent amnesia.” But frankly such mishandling of binding Supreme Court precedent in Mayo Collaborative Services is a huge problem. (As one commentator has astutely noted, we now have Supreme Court precedent going off in two diametrically opposed directions on essentially the same patent-eligibility issue.) Any persuasiveness (or balance) in the opinion in Mayo Collaborative Services is greatly undermined by failing to directly (and fairly) address Diehr.