August 19, 2010
The Passing of a Great Inventor
This is a departure from my typical article, but very important to the Intellectual Property Community nonetheless. I received some news late last night that deeply saddened me. A great inventor, Dr. Shalaby W. Shalaby, who happens to be my Godfather, passed away on Wednesday August 18, 2010. Dr. Shalaby was a great man, and you would be hard pressed to find someone who could possibly say otherwise. In fact, you would be hard pressed to find someone who can remember a time when he was not smiling.
Dr. Shalaby W. Shalaby
In the early 90’s, Dr. Shalaby founded Poly-Med, a privately owned company, in Anderson County, South Carolina. Thereafter, a new research and development laboratory facility was opened in April, 1995 at the Center for Applied Technology in Pendleton, SC. Poly-Med describes their core mission as “applying scientific and engineering principles toward developing proprietary polymers analytical testing and fiber spinning services.”
Dr. Shalaby is the named inventor on more patents than you can imagine, and built a business based on research, development, and licensing of Poly-Med’s intellectual property. Take a look at the number of patents that are listed on Poly-Med’s website. As indicated, Poly-Med holds many US and Foreign patents. Poly-Med did not stop at the patent phase. They developed their products, gave them names, and secured trademarks on those names. Take a look at the number of trademarks that are listed on Poly-Med’s website.
Dr. Shalaby and Poly-Med are a great example of the value of intellectual property and the need for patent reform, a reduction in the backlog of patent applications, and the economic impact that intellectual property can have on the economy. When viewing the intellectual property that Poly-Med was responsible for, I begin to ask myself some economic type of questions. How many people did Poly-Med employ? What was the economic trickledown effect of the intellectual property that was developed by Poly-Med? How many technologies were developed using Poly-Med technologies as a springboard?
We can go on and on about the success of Poly-Med and how intellectual property played a big role, but the real point of this short article is to pay tribute to a great man, a great friend, and a great inventor. Dr. Shalaby has left quite a legacy and will be missed by many. He is survived by his wife, Dr. Joanne Shalaby, his four sons, and ten grandchildren.
July 23, 2010
OZZY OSBOURNE AND TONY IOMMI SETTLE THEIR TRADEMARK DISPUTE OVER THE BLACK SABBATH NAME
The lawsuit between Ozzy Osbourne and Tony Iommi over the Black Sabbath trademark has been “amicably resolved” (source). Ozzy filed a lawsuit in May of 2009 after finding out that Iommi filed a trademark application for “Black Sabbath” with the U.S. Patent and Trademark Office. The lawsuit claimed that Iommi illegally took sole ownership of the trademark when he filed the application with the USPTO. The relief sought in the complaint for a 50 percent interest in the trademark, along with a portion of the profits that Iommi may have realized from use of the trademark. Ozzy claimed that it was his vocals that gave the band it’s extraordinary success. I’d bet that’s the same case for “The Osbournes,” the MTV reality show.
Black Sabbath is an English band formed by Ozzy, Iommi, Geezer Butler and Bill Ward in 1968. The band went through many iterations, but the one constant throughout the years was Iommi. Ozzy left the band in 1979. The original lineup reunited in 1997 and released one album.
Don't we all own the trademark???
This case was kind of interesting to me because it seemed to be a trademark dispute between two guys (Iommi and Ozzy) over a trademark that many people could probably claim an ownership interest in. From what I can see, there were more than 20 members of Black Sabbath over the years. It seems to me that many of those members, or their estates, could be entitled to some of the profits that are derived from the “Black Sabbath” trademark. Without question, Iommi and Ozzy are the most popular members of that band, and probably did lead to most of its success, but this case had every potential to get ugly quick. I am sure that this came up in the settlement discussions, i.e., some attorneys probably sat around a table and advised the two that if the case got dragged out, they should not be surprised if several other members of the Band came out of the woodwork to claim their piece of the pie.
Iommi is welcome to join our family anytime!
Appraently, the possiblity of yet another reunion has not been ruled out. It is a crying shame that “The Osbournes” reality show is not still around. Theycould have had entire episodes based solely on this lawsuit. The ratings would have been through the roof. Wishful thinking!
July 20, 2010
THE ROADMAP TO THE SUPREME COURT FOR BERNARD BILSKI
Many of my clients have been following the Bilski case. As our readers know, the case of whether or not a method for hedging risks in commodities trading was recently decided by the U.S. Supreme Court (see our updates here, here and here). The Supreme Court decided that Mr. Bilski’s “invention” was not directed to patentable subject matter. But how, you ask, did the question of whether or not Mr. Bilski’s invention was patentable get all the way to the United States Supreme Court? Shouldn’t these matters normally be decided by the U.S. Patent Office? Allow me to step you through the road map on how a patent applicant can find themselves before the United States Supreme Court arguing that the Patent Office, and everyone up to that point, is wrong about their invention.
The patent process begins with a spark of genius, i.e., coming up with your invention. The prudent inventor writes their invention down in an inventor’s log (try using a notebook that cannot have pages torn out of it). After the inventor gets their invention down on paper (or otherwise reduces the invention to practice), a search is in order. A great place to start your search is at www.google.com/patents. If you hit a brick wall, i.e., you cannot find anything close to your invention out there, then talk to a patent attorney and have a search done. It is highly unlikely that there is absolutely nothing out there like your invention. There is normally at least something related out there. After you have found the closest prior art, read it in detail, and point out the differences between the prior art and your invention. These are points of novelty that will form the basis of your patent protection.
At this point, it seems as though you are ready to file a patent application. Go to a patent attorney and see which patent application is right for you (see my previous posts on the right patent application for you here). Let’s assume that you have filed a utility patent application including claims directed to your invention. The claims of a patent application are the most important thing. Claims can equate to a property description. They lay out the boundaries of your protection and serve as the club with which you will later beat infringers or command a high licensing fee.
We are the gatekeepers of all invention!
Patentability is initially determined by the Patent Office through an initial opinion issued by a Patent Examiner in the form of an Office Action. It is not uncommon for an initial Office Action to be in the form of a rejection of all the claims that you have filed. The rejection is not the end of the world. When filing your application, you should have drafted some broad claims in an attempt to seek as much protection as possible. Similarly, the Examiner will likely read prior art references broadly and use them to reject your claims.
After receiving an Office Action, you will engage in a “negotiation” process with the Examiner. You will attempt to either amend your claims to narrow the scope somewhat, or argue that the prior art cited by the Examiner does not read on the invention as recited in the claims. In Mr. Bilski’s case, those arguments were futile, and the Examiner issued a Final Office Action. Your option at this point is to file a response to the Final Office Action, file a Request for Continued Examination (RCE) or appeal. An RCE starts the examination process over again and, in short, gives you another bite at the apple.
Mr. Bilski filed an appeal of the Examiner’s decision. An appeal of an Examiner’s decision is heard at the Board of Patent Appeals and Interferences (BPAI). The initial step is to file a notice of appeal and an appeal brief. The Examiner, in turn, files a response brief. The briefs are reviewed by a group of Examiners prior to going to the BPAI. Often times, issues are resolved at that level, but not in Mr. Bilski’s case. If you do not like the decision of the BPAI, then your option is to appeal to the United States Court of Appeals for the Federal Circuit (CAFC). This is the first step that the inventor has taken outside of the Patent Office.
This is truly a legal proceeding. At the CAFC, the inventor will file an appeal brief, and the Patent Office will file an answer brief. The case will initially be heard by a panel of three judges who will hear the inventor’s arguments and the Examiner’s arguments. The CAFC will issue a decision either upholding the Examiner’s decision, overturning the Examiner’s decision, or sending it back to the Patent Office with some instructions on how to further examine the case. In Mr. Bilski’s case, the CAFC upheld the Examiner’s decision and noted that Mr. Bilski’s invention was not patentable. The game did not end there, however. Off we go into extra innings (as I’m typing this I’m watching the Phillies/Cubs game).
Since Mr. Bilski was obviously dissatisfied with the decision of the three judge panel at the CAFC, he then requested a rehearing before the CAFC en banc, meaning that all the judges of the CAFC should hear the case. It was the decision of the en banc CAFC that gave us the “machine or transformation” test. As noted in my previous post, the en banc CAFC held that Mr. Bilski’s invention was not patentable because it did not meet the machine or transformation test.
The case didn’t end there, however. Mr. Bilski, and much of the patent community, was not satisfied with the en banc CAFC test as it had ramifications in many industries, and essentially did away with business method patents. The next step was to appeal this decision to the United States Supreme Court. The parties filed their respective briefs were filed, and several third parties filed amicus briefs (as was also the case at the CAFC) putting forth various points and opinions for both sides. After the Court took into consideration the briefs filed by both sides, as well as amicus briefs, they eventually handed down the decision that is before us today.
Clearly it was a long road for Mr. Bilski, and quite the dissatisfying one, but as a patent practitioner, I sure am glad he stuck with it. His decision to take this case to the High Court brought to the forefront the issues that have been plagued the Patent Office for years, i.e., are business methods patentable and are software inventions patentable. The answer to both is yes, but that came along with some more questions. I’ll be back soon with some more analysis about these issues.
July 12, 2010
BILSKI IS FINALLY DECIDED AND NOW WE HAVE SOME REAL QUESTIONS
As many of you already know, the United States Supreme Court has finally handed down its decision in the case of In re Bilski (Decision). For some background on the Bilski case, please see my previous posts here and here. The Court of Appeals for the Federal Circuit held that Mr. Bilski’s invention was not patentable. In doing so, the Federal Circuit essentially did away with business method patents and pronounced the “machine or transformation” test for patentability.
The Bilski Patent Application has Died
The Supreme Court affirmed the Federal Circuit’s decision with respect to Mr. Bilski’s patent application, i.e., his invention is not patentable. Mr. Bilski’s invention relates to a system for hedging risks in commodities trading. Although the Supreme Court noted that the Federal Circuit’s decision was too restrictive, the Court still held Mr. Bilski’s invention to be unpatentable. More specifically, the Court held that Mr. Bilski’s claimed invention fell into one of the three specific exceptions to §101 of the patent statute, finding that it was an abstract idea. The other two exceptions are laws of nature and physical phenomena.
In holding that the “machine of transformation” test is not the only test of patentability, the Supreme Court noted that the Federal Circuit erred by violating two principles of statutory interpretation: Courts should not read into the patent laws limitations and conditions which the legislature has not expressed and that unless otherwise defined, words will be interpreted as taking their ordinary meaning. Since Mr. Bilski’s invention was defined as a “process” the Court held that there is no meaning of process that would require Mr. Bilski’s invention to be tied to machine or to transform an article.
Finally, the Supreme Court held that the term “process” does not exclude business methods as being patentable. The Court specifically noted that it is not clear whether a business method exception would exclude technologies for conducting a business more efficiently. Of course, that raises many questions for inventors and patent practitioners across the board. It seems to me that it would be impossible to write a patent application that was not tied to machine or apparatus without it being an abstract idea. After all, is that not what Mr. Bilski was trying to do? The court does note that while §273 of the patent statute appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions. Therefore, the Court just let us all know that if you can somehow get a business method through the PTO, it had better be very narrow. I suppose you have to question the value of such a patent, i.e., is a patent that can be very easily designed around very valuable? In many cases, the answer can certainly be yes, but it is something that needs to be analyzed during the patent prosecution process.
Probably the toughest part to swallow about this decision is that the debate over business method patents and, more than likely, software patents, is far from over. This is evident in the last paragraph of the syllabus when the Court invites the Federal Circuit to develop other limiting criteria that further the Patent Act’s purposes and are not inconsistent with its text. At the end of the day, this decision likely created more questions than answers, but at least we know that patent litigators will still be busy over the next few years trying to flush out that which is still patentable. Stay tuned for some follow up articles on how the Patent Office is handling this decision.
March 30, 2010
Mi iPad, Su iPad
For a company that has blissfully innovated technology in our world that we hold so dear to our hearts, Apple sure does lack innovation in naming of their products. Good thing that Apple is popular and has some deep pockets – we’re talking the kind of deep pockets that compare to Ed Harris’s decent in The Abyss (1989). Using those deep pockets, Apple has managed to attain the trademark “iPad” from Fujitsu, and move to a 3-0 record in name bouts (their battles over the “Apple Inc.” and “iPhone” names coming before).
The iPad, Apple’s newly anticipated product, which seems to fall between their iPhone and iMac products, will allow the user to surf the web, listen to music, browse photos, and access iBooks, just to name a few functions. The name “iPad” was formerly held by the Japan-based company, Fujitsu, for a similar product used in retail stores. However, Fujitsu and Apple recently negotiated the assignment of Fujitsu’s interest in the “iPad” trademark to Apple for undisclosed terms, coming just before the release of Apple’s iPad on April 3, 2010. For the uninitiated, undisclosed terms roughly translates to big, giant settlement dollars!
March 23, 2010
@USPTO: *Wyeth* didn’t you calculate my patent term correctly?
These days it’s all about that little extra. Why should it be any different when it comes to the United States Patent and Trademark Office? It was recently decided in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010) that the USPTO’s calculation of the Patent Term Adjustments (PTA) took that little extra away from patentees. The PTA is the amount of additional time allotted to a patent when certain deadlines are not met during the examination process.
The deadlines are laid out in two different subsections within Title 35 of the United State Code: § 154(b)(1)(A) and § 154(b)(1)(B). The deadlines included in §154 (b)(1)(A) include an issuance of an Office Action within 14 months of the date the patent application was filed, 4 months to respond to a reply, 4 months to act on an application after a decision by the Board of Patent Appeals and Interferences, and 4 months to issue a patent from the date the issue fee was paid. Anything longer than that is an “A Delay.” Pursuant to §154 (b)(1)(B), the USPTO must issue a patent within 3 years of the application of the patent (provided, of course, that the subject matter meets the other requirements for patentability). Anything longer than that is a “B Delay,” according to the Wyeth Opinion. Should any of these provisions occur, the patentee is entitled to an extension to the term of their patent until the provision is satisfied.
March 7, 2010
Patent Reform Act Moving Forward
Well, I’ve heard this one before – the Patent Reform Act is moving forward. This is something that has been, allegedly, moving forward for years. The article that I read noted that patent reform has been introduced in each of the last three Congresses. Does this one have a chance of passing? There’s really no telling.
Senators Leahy and Hatch have been big proponents of patent reform over the years. I appreciate that they realize the importance of intellectual property. Over the years, the various versions of the patent reform act have attempted to address issues such as moving to a “first to file” system, damages, and third party comments on pending patent applications. This proposed bill addresses those issues, as well as others allowing the U.S. Patent and Trademark Office to set fees in an attempt to address the backlog problem.
February 22, 2010
Bill Gates Calls for Innovation
In a recent article posted by Bill Gates, he noted that in order to reach certain goals for reduction of CO2, insulation is not the answer, but rather through innovation. The goals referenced by Mr. Gates include a 30% reduction in CO2 by 2025 and an 80% reduction in CO2 by 2050. As Mr. Gates points out, the 2050 goal is likely not attainable – not without major innovation.
The issue, as I see it, is that this is a global goal. It is tough to have a global goal, however, if every country is not on board. If that is the case, then we must look to the law of averages. If only one of the major CO2 producing nations is not completely on board, then there is no way that the goal can really be attained. That is, not unless the remaining countries take their CO2 production down to nearly 0%. Unfortunately, there are some greenhouse gas emissions that we just cannot stop. As noted in the article, this may include, for example, the decaying process, making fertilizer, etc. So what does that mean for the USA? I believe it means a major shift in our transportation and energy production industry. It means that we will need a complete shift away from the archaic idea of burning fuel, i.e., petroleum, coal and even natural gas, in order to generate power.
January 27, 2010
The Problem with the PTO Pilot Program to Accelerate Examination of “Green Technologies”
Back in December, the USPTO announced a pilot program to accelerate examination of patent applications directed to “green technologies.” Oddly enough, this announcement came just before the United Nations Climate Change Conference in Denmark. I will refrain from ranting about the politics of this, but I only wonder if the USPTO will decide to accelerate examination of those technologies that may have an impact on any other upcoming international conferences. I think national defense and anti-terrorism are pretty big topics nowadays, but I still have not seen anything in the Federal Register about accelerated examinations of patent applications in those fields. Well, enough of that.
The pilot program aims to decrease the pendency time for patent applications in certain green technologies. The current pending time (i.e., number of months between filing an application and receiving a final decision), according to the article, is about 40 months – with an average of 30 months passing before a first Office Action is mailed to the applicant. By my count, that’s not bad compared to several other technological fields. I represent some clients that have patent applications which have been pending for going on four years. The pilot program is open to the first 3000 patent applications related to green technologies in which a proper petition is filed.
December 17, 2009
Some Irony That Will Make Any Trademark Attorney Laugh
One of the partners from our firm, Philip Zies, told me about a story that really made me laugh today. (No, I’m not going to write LOL, and you’re a putz if you use that too often.) Apparently, the ship design used in The Pirate Bay logo has been hijacked by a Swedish Company for its own commercial exploitation. (Source.)
For the uninitiated, The Pirate Bay is a site where users “share” BitTorrents. Who knows what the real intent of the site is, but the fact of the matter is that The Pirate Bay has become a site where users obtain copyrighted materials illegally. A user can simply download music, movies, software, television shows, etc. without the mess of having to pay for it. I am not saying that every use of The Pirate Bay is an infringing use, so please do not take it that way. It is just that most users of such sites are generally trying to obtain copyrighted materials for free.
