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.
December 9, 2009
The Solution to the BCS Conundrum, Found at the Patent Office
If you follow college football at all, or alternatively, the circus act that we call Congress, you have probably heard the controversy about college football. It happened just this past weekend. Is it fair how the players of the championship game for the Bowl Championship Series (BCS) are selected? Since I live in Florida, and I am surrounded by Florida Gator fans, the answer is a resounding NO! Just take a look at this year – the University of Florida Gators have been the #1 team all year long, and University of Alabama has been #2 for most of the year. Both teams were undefeated, and both are in the Southeastern Conference (SEC). It’s hard not to say that the SEC was the toughest football conference this year – and this is coming from a guy who bleeds Wolfpack red (yes, it was a tough season) and generally roots for the ACC (except for Carolina).
UF was a victim, and Alabama was the victor, of the strength of the SEC. The two were undefeated this season and, as such, were forced to meet in the SEC championship game. Someone was coming out of that game with a loss and, unfortunately, it was Florida. When a team has been as dominant over the past several years as Florida has been, a loss like that was a tough pill to swallow.
December 4, 2009
New IP Bully Award Nominees
by Philip Zies
Major League Baseball – for opposing two applications filed with the PTO by Mattingly Hitting Products, Inc., Don Mattingly’s sporting equipment and apparel company, to register a logo (pictured below). MLB alleges a likelihood of confusion with its “Silhouetted Batter Logo” (source)
Are you likely to be confused?
Global Findability – for suing Summit Entertainment, the producers of the sci-fi flick, Knowing
Nic Cage, fretting over impending patent litigation
As always, feel free to sound off in the comments about your favorite IP Bully, or email us at tacticalip@gmail.com.
November 16, 2009
What is Patentable? A Brief Background on Bilski and Where We Are Now.
Oral arguments before the United States Supreme Court In re Bilski were held on November 9, 2006. This case has been closely watched by the patent community because it can have some serious ramifications as to the type of subject matter that is patentable. The patent application filed by Bernard Bilski and Rand Warsaw is directed to a method of hedging risks in commodities trading. The Examiner issued a final rejection, noting that the invention was not directed to patentable subject matter, pursuant to Section 101 of Title 35, United States Code. Pursuant to 35 U.S.C. § 101, to be patentable, an invention must be directed to a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
The Applicants appealed the Patent Office’s decision to the Federal Circuit. The en banc Federal Circuit upheld the PTO’s decision and noted that patentable subject matter does not include “laws of nature, national phenomena, or abstract ideas.” The court went on to reiterate the “machine or transformation test” with respect to patentability. More specifically, patentable subject matter must be tied to a particular machine or apparatus, or it must transform a particular article into a different state or thing. Using that test, the Federal Circuit found that the method of hedging risks in commodities trading did not meet the requirements for patentability.
November 12, 2009
Patently-O’s First-to-File Survey
Professor Dennis Crouch
University of Missouri
School of Law
Not that we want to club anyone to death with stories about first-to-file patent reform, but given that Director Kappos has begun beating the patent reform drum, it’s becoming more important that all the facts are known. Up to now, there really hasn’t been any consensus on whether moving to a first-to-file priority system would be a drastic change. Dennis Crouch, over at Patently-O, insists that the Director may be using flawed statistics to demonstrate that change will not be so bad. Interestingly enough, after Professor Crouch and a few others posted comments about it on Director Kappos’s blog, the comments were closed off, ending the discussion on that forum. I guess Mr. Kappos is not really interested in hearing from the patent community — despite portraying that he will listen to feedback.
In an effort to come up with some real numbers, Professor Crouch has created a survey that is designed to record the position of patent professionals on this issue. If you have an opinion, one way or the other, you should take a minute, click over, and take the survey. You can’t complain later about how things end up, if you didn’t participate in the discussion.
UPDATE: It looks like Kappos’s blog has let through a few more comments, but they are clearly censoring responses.
November 11, 2009
Interferences and Dodo Birds
by Philip Zies
The dodo bird, last sighted 1662
As you probably already know, the first to invent is the one who has the right to a patent under current U.S. law. If you invent something and someone else has already filed a patent application in the U.S. for the same invention, the U.S. Patent and Trademark Office (USPTO) will conduct an interference proceeding to determine who invented first. Interferences can be beneficial to the first to invent because there is no presumption of validity in an interference proceeding, the first to invent can obtain the patent rights of the first to file if successful in the interference proceeding, and the threat of an interference can be used by the first to invent as a tool in negotiating a license with the first to file. Or, at least, that is how it is in the U.S. right now. There has been a lot of talk about the U.S. joining the rest of the world in giving the right to a patent to the first to file a patent application, regardless of who was first to invent. Some say that if Congress passes any patent reform legislation at all that the first-to-file will be a part of the legislation because it is the least controversial part of the present reform bill. In the past when patent reform appeared imminent, the USPTO delayed declaring an interference proceeding, sometimes for years. While interference delays don’t appear to be the norm now, the delays could reoccur if the patent reform dialogue heats up. So, before interferences go the way of the Dodo bird, if you feel it is important to establish who was the first to invent by way of an interference proceeding, do it now.
Board of Patent Appeals and Interferences
SIGN ON THE DOOR: Appeals Only (after 2010)?
If you are interested in finding out more, this article provides more detail.
November 10, 2009
The USPTO Embraces the Blogosphere, Lobbies for First-to-File
Kappos: “Hey Ted, can you show me how these here tubes work?”
The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.
In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog. In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.
The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention. The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in. The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention. The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.
Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.
