Philip Brooks’ Patent Infringement Updates recently posted some useful statistics about the USPTO’s issuance of software patents, along with how frequently courts have declared software patents invalid over the last few years. Interesting nuggets from the stats include:
The USPTO granted 752 software patents in 2006 — far more than in any other year. However, in 2006, the U.S. Supreme Court began to question whether the USPTO was going to too far when granting software patents, as shown by Justice Breyer’s dissenting opinion in LabCorp v. Metabolite, Inc. and Justice Kennedy’s concurring opinion in eBay, Inc. v. MercExchange, L.L.C.
After all of this, the USPTO also began to more aggressively reject claims directed to software, and the number of software patents granted dipped to 707 in 2007. The number held steady at 707 in 2008.
Filed under: Patents
On December 4, 2009, the U.S. Court of Appeals issued a new opinion describing the situations in which a letter from a patent holder is sufficient to allow the recipient to file a declaratory judgment action to seek a declaration of non-infringement or invalidity of the patent.
In the new case, Hewlett-Packard Company v Acceleron LLC, Acceleron sent a letter to HP identifying an Acceleron patent and inviting HP to meet with Acceleron to discuss licensing – but only if HP would agree in writing that no case or controversy existed regarding the patent. After Acceleron rejected HP’s request for a mutual litigation hold period, HP filed a declaratory judgment action. Acceleron moved to dismiss the case for lack of subject matter jurisdiction. (more…)
Filed under: Patents
The USPTO recently announced that it will launch a program to speed up examination of certain patent applications covering “green” technologies.
According to the USPTO, the current wait time for review of patent applications covering green technologies is 30 to 40 months. Under the new program, the USPTO proposes that applications covering green technologies be given “special status” that will reduce this wait time by approximately one year.
The pilot portion of the program will be limited to 3,000 patent applications, and applicants must file a petition to request the special status.
The USPTO has not yet published details explaining exactly what technologies will qualify as “green” technologies under the program. Also, the USPTO has not yet explained whether the program will cover already-filed applications or just new applications. The USPTO expects to publish more details about the program in the Federal Register soon.
UPDATE: The USPTO published a notice containing guidelines for the program in the December 8, 2009 issue of the Federal Register. Under the guidelines, applicants holding applications filed before December 8, 2009 in certain technology classes may participate in the program by filing a Petition to Make Special. No filing fee is required for the petition, but a request for early publication and associated fee must be included with the petition.
In order to qualify, an application must be classified in one of certain listed USPTO classifications. The general categories of classification are:
- alternative energy production;
- energy conservation;
- environmentally friendly farming; and
- environmental purification, protection, or remediation.
The Notice includes a complete list of the classifications.
Filed under: Patents
On November 27, 2009, the USPTO announced a plan to reduce its backlog of pending patent applications filed by small entities. Under the new plan, a patent applicant who both (a) qualifies for small entity status and (b) holds multiple pending patent applications may ask that one of the applications be given “special status” – i.e., faster examination. In exchange, the applicant must agree to abandon one of its other pending applications.
My colleagues Paul Legaard and Dan Scolnick have published a more detailed summary of the program. For the full article at the Pepper Hamilton website, click here. The USPTO’s notice about the program is available here.
On December 1, 2009, the Federal Trade Commission (FTC) will adopt new Guides Concerning the Use of Endorsements and Testimonials in Advertising. The new Guides can affect a wide variety of online commercial activity, including product reviews by bloggers and websites that allow consumers to rate of products and services.
Section 5 of the Federal Trade Commission Act (5 USC 45(a)) prohibits the use of “unfair or deceptive acts or practices in or affecting commerce.” In the new Guides, the FTC applies Section 5 to new media (such as blogging, consumer ratings, and social media), as well as other endorsement activities.
According to the revised Guides: (more…)
The Pennsylvania Bar Institute (PBI) has planned a continuing legal education course that will focus on the legal matters affecting e-commerce. Now in its sixth year, PBI’s e-commerce update will provide an update on the latest legal issues affecting e-commerce, including:
- e-contracting
- issues that arise when using social networking sites for e-commerce
- privacy law
- records management
- security (practical and legal issues)
The course will be held December 1, 2009 in Philadelphia (with simulcasts by video in Erie, Mechanicsburg, and Greensburg); and December 8, 2009 in Pittsburgh. Additional details and registration forms are available here.
(Note” the author of this blog is a faculty member for the course.)
Filed under: Licensing
This week’s court decisions include two cases in which courts highlighted the importance of specific phrases or terms that the parties used in IP license agreements. One decision (Sunstar Inc. v. Alberto-Culver Company) highlights the importance of understanding non-English terms, or phrases that may have different meanings in different countries. The other (Imation Corp. v. Kononklijke Philips Electronics N.V.), focuses on what business entities are actually entitled to the benefits of a license. (more…)
Filed under: Patents
When patent applicants receive a final rejection from the USPTO, they currently have three options: (1) appeal the final rejection, (2) abandon the application, or (3) amend the claims and file a request for continued examination (RCE). Currently, many applicants file an RCE because it receives priority over new applications, with USPTO review occurring within two months of filing.
The USPTO recently issued a notice stating that it will change that procedure. The change will delay action on (and this remove some of the benefit of) RCEs. (more…)
Filed under: Electronic Communication
On November 10, 2009, the Pennsylvania Bar Institute will host a CLE course on the issues that attorneys and clients face when we (and when our clients) use social media such as Facebook, Twitter, and . . . yes . . . blogs. The course will be presented in two locations: Pittsburgh and Philadelphia.
The agenda for the CLE includes the following topics:
- Introduction to social media: how lawyers can use blogs and social networks for marketing and research
- Intellectual property and social media: privacy, copyrights, trademarks, and other rights
- Employment law and social media: policies and procedures for handling employees who tweet, blog, text, and post
- The in-house counsel perspective: a panel discussion with practical tips on how companies are dealing with the legal issues relating to social media
- Social media and litigation: what to do when lawyers, judges, witnesses, and jurors become “friends”; how to use social media to help win your case; how to manage data generated by social media in discovery
- Legal ethics: ethical questions facing lawyers who blog, tweet, and “friend” online.
Details and sign-up information about the course are available at the PBI website by clicking here. (Full disclosure: I am a course planner and faculty member for this CLE.)
Filed under: Patents
On October 8, after more than two years of controversy and litigation, the USPTO announced that it will rescind the proposed rules that sought to limit the number of claims and continuations that patent applicants may file. In a press release, USPTO Director David Kappos stated:
These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.
Based on this action, the USPTO and GlaxoSmithKline – one of the two plantiffs in a lawsuit against the USPTO which sought to prevent the rules from taking effect – will file a motion to dismiss and vacate the federal district court decision in that case.
