In celebration of its mission to recognize and foster invention, the National Inventors Hall of Fame has announced its 2012 Inductees. The inventors to be honored this year created remarkable innovations that include the now ubiquitous laser printer commonly found in the workplace, the thin-film head technology that has contributed to the success of the disk drive industry, and the first statin which pioneered the class of drugs targeted at lowering cholesterol.

However, if prior users are keeping their technology secret while being protected, that leap-frogging from one breakthrough to the next be impeded. Disclosure is the backbone of the progression of the sciences for this reason. “[T]he ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure.” Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 151 (1989). Sharing ideas allows others to improve upon the state of the art and as a result, better products such as medicine and consumer electronics are brought to market thereby driving our economy and benefiting the welfare of the U.S. as a whole. Prior user rights, on the other hand, will inhibit this progression.

Six patent and litigation attorneys recently left the international law firm of Dorsey & Whitney LLP to join the growing Intellectual Property team at Winthrop & Weinstine, P.A. The addition of these six attorneys brings the total number of IP lawyers at Winthrop & Weinstineup to 30. This got us thinking that maybe this move is part of what seems to be a continuing trend in the intellectual property industry. With so many large firms vanishing and small to medium size firms flourishing. So I sat down to talk with Scott Dongoske, president, and Deb Cochran, marketing director, of Winthrop & Weistine for a conversation.

These proposed fees will undoubtedly be commented on, and the early criticism, which seems quite valid, asks how the addition of a single additional claim to be reviewed can add such large amounts to the cost. For example, if you file a petition for post-grant review and want 30 claims reviewed the fee will be $53,700. If you want 31 claims reviewed the fee will be $71,600, so that extra claim reviewed will cost you $17,900. Of course paying that $17,900 entitles you to bring challenges to 9 other claims, which would be free once you paid for the 31st claim. Essentially, with rigid segmentation of fees it is difficult, if not impossible, to see a cost of recover implementation at work. It would be far more in keeping with the statutory authority to have additional claim fees akin to what happens during prosecution when you go beyond three independent claims or 20 total claims.

hange does not come easily. At a minimum, the PTO must stop encouraging and rewarding examiners for actions that defeat the objectives of the office. As long as examiners are credited and rewarded for acting upon every application that they can force an applicant to file, examiners can be expected to seek the credit and reward, and the backlog will be with us. As long as examiner performance is based upon the conventional (N + D)/2, the incentives will foster counter-productive behavior in the examining corps and the Office will not make meaningful strides toward accomplishing its mission. Examiners will do what they are rewarded for doing – generating as many N’s and D’s as possible without regard to whether anything is really being accomplished.

Such is the case with the newest lobby in Washington, the self-described “ITC Working Group.” You won’t learn anything about this organization by searching Google — odd, considering that Google is a member — but according to industry sources, its aim is twofold: First, it wants to block the International Trade Commission (ITC) from hearing patent infringement cases brought by “non-practicing entities” — i.e., patent holders like universities, independent inventors, and others who license their patents for manufacturers to commercialize. And second, it wants to weaken the ITC’s power to block the importation of infringing products into the U.S.

After my presentation, as you might expect, I was approached by a number of patent attorneys. Story after story it was the same thing I have heard from so many others — depressing tales of not being able to get a patent. One particularly egregious thing I heard was from a patent attorney who told me about a conversation he recently had with a SPE from one of the business method art units. I don’t know which Art Unit, and frankly I didn’t ask, although it is probably easy enough to narrow down the Art Unit. This patent attorney told me that the SPE said: “we just don’t issue patents unless the Board orders us to.” If that is in fact what was said and is in fact what is happening then there is a systematic denial of due process at the United States Patent and Trademark Office, and that is wholly unacceptable.

Having spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of their own and even when you are 100% certain at the outset you make mistakes. If you are not 100% certain at the beginning you pretty much never recover anything.

AIPLA is proud to announce that Executive Director Q. Todd Dickinson will be inducted into the IP Hall of Fame for 2012. The IP Hall of Fame was created in 2006 by Intellectual Asset Management magazine to identify and honor individuals who have helped to establish intellectual property as one of the key business assets of the 21st century.

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Part 1 of the interview was published yesterday. What follows is the remainder of the interview. We discussed a range of topics in this segment, including average pendency of trademark applications, cease and desist practice and some of the misleading letters sent to trademark owners and applicants from various third-parties that provide dubious publication services.

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Cohn oversees all aspects of the USPTO’s Trademarks organization including policy, operations and budget relating to trademark examination, registration and maintenance. We spoke in her office on the 10th floor of the Madison Building for approximately 55 minutes.

In the recently issued case of ClearValue, Inc. v. Pearl River Polymers, Inc., Judge Moore, writing for the Federal Circuit panel, distinguished the holding in the 2006 case of Atofina v. Great Lakes Chemical Corp. In ClearValue, Judge Moore ruled that a process having a claimed raw alkalinity of “less than or equal to 50 ppm” was anticipated under 35 U.S.C. § 102 by a prior art process disclosing an alkalinity of “150 ppm or less.” I believe Judge Moore was correct in ruling that the claimed alkalinity of “less than or equal to 50 ppm” was anticipated by the art disclosed alkalinity of “150 ppm or less.” But her basis for distinguishing Atofina in ClearValue is very problematic in a number of respects, and could create further unnecessary confusion as to when a narrower claimed range in a process is anticipated by a broader range disclosed by the prior art. As illustrated by the ClearValue and Atofina cases, one area where the Federal Circuit sometimes struggles in articulating clear doctrine is when is a narrower claimed range in a process is anticipated under 35 U.S.C. § 102 by a broader range disclosed by the prior art.

The discussion was lively, perhaps even explosive. You could nearly see sparks fly when Chief Judge Rader continued to pepper Seth Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice. Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.” It is indeed troubling that the White House under both President Bush and President Obama have allowed lobbying by parties who seek a favorable DOJ amici brief. Interpretations of the law shouldn’t be for sale, or appear to be for sale to the largest donors.

The troubling news starts with the fact that a technical amendments bill to the America Invents Act (AIA) that is working its way around Capitol Hill, and in true government by ambush fashion it could work its way into a bill at any time! What is the big deal about technical amendments? The problem is that not all of the amendments will be “technical.” For example, there is a plot afoot to change the estoppel provisions in the AIA relative to post-grant review and inter partes review. In my opinion there would have been absolutely no chance that the America Invents Act would have passed if the estoppel provisions for post-grant review only applied to issues actually raised.

In short, today’s smartphone patent wars are simply “back to the future” when it comes to how disruptive new industries are developed. Every major technological and industrial breakthrough in U.S. history — from the Industrial Revolution to the birth of the automobile and aircraft industries on up to today’s Internet and mobile communications revolutions — has been accompanied by exactly the same surge in patenting, patent trading, and patent litigation that we see today in the smartphone business. This is how the rights to breakthrough new technologies have always been distributed to those best positioned to commercialize them — to the benefit of the whole nation in terms of new jobs, new medical advances, and new products and services.