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7 Common Misperceptions About Intellectual Property

As an aside, and somewhat related to the boring concept, is the idea that intellectual property practitioners are all basement-dwelling nerds. OK, maybe we’re a little nerdy in some ways, but I swear I do not live in a basement, my summer reading did not include the cheat guide to World of Warcraft, and I have NEVER been to Comicon. So what if I have the blueprints to the Millennium Falcon on my office wall and my favorite TV show is “How it’s Made”? You gotta admit some of the stuff we get to do and see in our professional lives is pretty freaking cool. The seediest infringement cases. The bleedingest edge of technology. The next rival to the power of McDonald’s logo or Coca-Cola trade secret. I wear my nerd moniker proudly.

Reshaping U.S. Patent Law. Who are the Winners & Losers?

It is fair to say that enactment of the AIA is not what most stakeholders championed early on. Many small inventors and innovation companies feel that some of the provisions are not in their best interest. IT would have preferred a bill that did more to change how patents are valued and enforced. Nevertheless, to most stakeholder, the final version of the bill is an improvement over previous versions of patent legislation. When patent reform legislation was first introduced in 2005, its primary objective was to reduce the infringement liability of large technology aggregators by significantly limiting equitable and monetary remedies, restrict venue, and make issued patents far easier to invalidate through post-grant review. In addition, earlier versions of the bill would have given the USPTO unprecedented substantive rulemaking authority and increased the cost and burden of filing a patent application. In combination, these measures would have significantly undermined the enforceability and value of patent rights, while increasing the cost, complexity, and uncertainty of obtaining patents. All of these reforms were advanced by a IT interests set on weakening the ability of small innovators to obtain and enforce patents.

USPTO Updates Fee Schedule Following Enactment of Leahy-Smith America Invents Act

There have been a number of inquiries from the public regarding the fees due when payments are made by postal mail just prior to the effective date of the 15 percent surcharge (September 26, 2011). The fee due is the fee in effect on the date the document is timely filed. At this time the USPTO may not offer the micro entity discount (75%) on any fees. As provided for in the Leahy-Smith America Invents Act (Public Law 112-29) these fees will be adjusted under the fee setting authority provided for in Section 10 of the AIA.

As Predicted, Congress Ready to Divert More Fees from USPTO

It isn’t exactly a newflash to announce that Washington, D.C. is dsyfunctional, anyone paying attention over the past few years has long since come to that conclusion. Thus, it is hardly breaking news to report that Congress is on the verge of passing a Continuing Resolution rather than actually doing their job and passing a budget for fiscal year 2012. Why do today what is required of you to fulfill the responsibilities of your job when you can just kick the can down the road? Of course, by so doing Congress will embark upon a path that will divert some $600 million from the USPTO during FY 2012.

Technology Solutions: In Support of a Clean Energy Economy

As global demand for energy continues to grow and the price of oil and gasoline continue to rise we must pursue solutions for cleaner, renewable energy. The technology that will ultimately support an alternative energy driven economy is not where we want it to be, if we do not aggressively pursue such technologies and build on early stage successes we will never get to the finish line. Complaining about the fact that the finish line is so far away and the technology incapable of providing a solution today is exceptionally myopic. Nothing worth doing is ever easy and without taking critical first steps the final celebratory steps are simply impossible to take.

Traps for the Unwary Regarding Patent Claim Drafting and Definition of Prior Art Under Leahy Smith

For example, the new provision retains the existing notion of “public use” and “on sale” under current law; however, a key difference is that the one year grace period of current law will not be available under new 102 (Another key difference is that activities outside the United States may create a so-called public use or on sale bar under new 102). The new grace period under the America Invents Act is personal to the inventor and relates to “disclosure,” which many believe could be interpreted not to cover “public use” or “sale” as those terms are presently understood. Therefore, there is a possibility that your client’s invention may already be unpatentable in the United States by the time he or she contacts you (such as if a “public use” or “offer for sale” even took place the day before he or she consults you).

The America Invents Act – How it All Went Down

On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage. This article is a play-by-play of the process and how it unfolded.

America Invents Act Exercises “Con-Troll” Over Patent Litigation

The economics of mass patent enforcement have changed. A patent owner will no longer be able to casually sue a multitude of parties with a single filing, participate in proceedings in a single action in a single venue likely convenient only for the plaintiff, and thereby expeditiously pursue a recovery against numerous disparate parties. Actions will have to be filed individually against each accused infringer. The patent owner will have to participate in, contend with and address procedural and substantive aspects of each action.

The Bill is Signed: President Obama Signs America Invents Act

President Obama started by commending the students of what he called “One of the best high schools in the country.” He mentioned that; “We have an exhibit of some of the projects that you guys are doing, including the fist high school student satellite, a wheel chair controlled by brain waves, robotics and more. He made the crowd smile when he jokingly said; “I am hoping that I will learn something just by being close to you; through osmosis. I already feel smart just standing here.”

America Invents: Immediate Changes to Patent Law Start Today

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act and, with his signature, which will marshal in major changes to the U.S. patent system. Many provisions of the Act take effect a year or more after this date including, e.g., procedures for post-grant review proceedings before the U.S. Patent and Trademark Office (after September 16, 2012) and a change to a first inventor to file system (after March 16, 2013). However, a number of changes will take effect on September 16, 2011, or soon thereafter. The immediate and nearly immediate changes are outlined here in this article.

Rush to Avoid Increased Fees Will Hurt the USPTO

Those rushing to pay fees before September 26, 2011, will save 15%, but the Patent Office will not have access to that money. The budgetary calendar resets on October 1, 2011, which marks the start of Fiscal Year 2012. While the America Invents Act does not put an end to fee diversion key Congressmen in the House of Representatives pledged that they would allow the USPTO to keep 100% of the user fees collected. Thus, presumably, fees paid starting October 1, 2011, would go to the USPTO to use for the purpose intended by the payor; namely the examination of applications and ongoing business operations of the agency.

Throwing Down the Gauntlet: Rader Rules in Utramercial that Breadth and Lack Specificity Does Not Make Claimed Method Impermissibly Abstract*

Some will undoubtedly view the Chief Judge’s basis in Ultramercial for distinguishing the ruling in CyberSource as being “slight of hand” and using “mirrors,” but it certainly illustrates the wide gulf of views between the various members on the Federal Circuit on the patent-eligibility question. I wouldn’t be surprised (and frankly it needs to happen) if both Ultramercial and CyberSource ended up before the en banc Federal Circuit. As I’ve noted previously, we’ve currently got what appear to be irreconcilable decisions in the Classen, Prometheus, and AMP cases in determining the patent-eligibility of certain medical (e.g., diagnostic) methods. With what appears to be similarly conflicting decisions in Ultramercial and CyberSource, the gauntlet has truly been thrown down. An en banc Federal Circuit needs to step in soon, or the conflagration that currently exists in the patent-eligibility “war” might soon consume us all.

Mining Patent Gold: What Every CEO Should Know

The truth is that Google bought a great deal more than patents when it acquired Motorola, though there are doubtless some real gems in the Motorola portfolio. As a relative newcomer to the wireless arena, the search giant in one bold move got its hands on the unmatched innovation experience of the longest-lived mobile phone company on earth. The technical acumen and product experience of those thousands of mobile software and hardware engineers will prove hugely valuable to Google as it seeks to dominate the $250 billion global market in smartphones, especially if it decides to become a handset maker as Motorola had been.

A Critique of Mark Lemley’s “The Myth of the Sole Inventor”

For example, regarding Thomas Edison, Lemley’s primary case illustrating the so-called “myth of the sole inventor,” he alleges that “Sawyer and Man invented and patented the incandescent light bulb” (Lemley 2011, p26) and that “Edison did not invent the light bulb in any meaningful sense” (Lemley 2011, p25). We disprove Lemley’s assertions and present five key facts that Lemley omits: for example, although Lemley cites a Supreme Court case in 1895 as a source for the statement above, he neglects to inform us of the decision reported in that case; it affirmed a lower court’s 1889 decision in favor of Edison and finding the Sawyer & Man patent invalid. Furthermore, the Sawyer and Man lamps were not commercially viable, having only a few hours life, whereas Edison’s invention was the basis for a lamp with a hundred times longer useful lifetime: electric lighting became economic and it was Edison’s invention that unlocked the field after three decades of experimentation by others in incandescent lamps. There was no candidate for an invention simultaneous with Edison’s invention.

Patent Bar Exam Craziness, Do You Know How Long a Month is?

I’m not suggesting that those who write the patent bar examination questions are testing irrelevant stuff, but what types of questions would you ask if you were writing an exam question that tried to determine whether someone who wanted to be admitted to the club understood the rules well enough to become a member? You would likely ask questions about organization rules and procedures that fell into one of several categories: (1) those that are commonly misunderstood or unknown by current members; (2) those that are of extraordinary importance due to the magnitude of harm that could accompany a misunderstanding or mistake; or (3) those things that are particularly weird. So it isn’t at all surprising that counter-intuitive rules that are commonly misunderstood or misapplied make up a statistically relevant portion of the exam.