IP Spotlight

In the United States and many other countries, it’s common to mark patented products with the patent number.  Although marking is not required, it’s beneficial because marking serves as constructive notice to the world that the product is patented.  Thus, damages for patent infringement can begin to accrue on the data that the patent holder began marking its product in a continuous and conspicuous manner — even if the infringer had no actual notice of the patent at the time. 

Falsely marking a patent product, however, can create liability.  Anyone who falsely marks an unpatented product with a patent number for the purpose of deceiving the public violates Section 292 of the Patent Act and risks liability. 

It’s common for companies to list a “lanudry list” of patents on a product, and patent numbers often remain on the product after the patent expires.  However, this practice creates a risk of liability.  According to the Federal Circuit, an “unpatented article” is one not covered by at least one claim of each patent with which the article is marked.  Thus, whenever a product design changes, companies should review the patent markings to ensure that the patent still covers the product.  Also, the Eastern District of Virginia recently answered “yes” to to the question of whether an expired patent can give rise to a false marking claim.  In Pequignot v Solo Cup,  the court held that going forward from the date of a patent’s declaration, an article becomes “unpatented.”  

Liability under Section 292 still requires evidence of bad faith.  Since bad faith can be a subjective determination, patent holders should regularly review their product lines and remove expired patent numbers, as well as patent numbers that no longer cover the current product, from their marking protocol.

On May 8, 2008, the U.S. House of Representatives passed H.R. 4279, known as the Prioritizing Resources and Organization for Intellectual Property Act  — “PRO IP” for short.  The bill would revise various enforcement-related revisions to U.S. copyright and trademark laws.  Key sections of the bill include:

• a revision to the Copyright Act protecting the validity of copyright registrations that have a harmless error — specifically, the revision will excuse any inaccuracy in a copyright certificate of registration so long as the inaccuracy was not knowingly put into the application and correction of the inaccuracy would not result in refusal of registration;
• sections increasing statutory damages in counterfeiting actions and allowing treble damages in trademark infringement actions involving counterfeit goods if the violation was intentional;
• an expansion of Section 602 of the Copyright Act (which prohibits importation of infringing copies) to also cover exportation;
• a section increasing the government’s authority to sieze property used in connection with copyright infringement; and
• the creation of an IP Enforcement Division in the U.S. Department of Justice, the appointment of an IP adviser to the President, and the appointment of IP enforcement officers in foreign countries.

A companion bill is expected to be introduced into the U.S. Senate soon. 

On April 22, the U.S. Court of Appeals for the D.C. Circuit reversed a decision of the Federal Trade Commission and held that a company’s failure to disclose its patents to a standard-setting organization who was considering adoption of the patented technology did not - by itself - violate antitrust laws. 

Pepper Hamilton’s Antitrust and Competition Practice Group recently published a summary of the opinion in Rambus Inc. v. Federal Trade Commission, and they note that ”Rambus does not give companies carte blanche to lobby SSOs for adoption of patented technologies without fully disclosing their rights to such technologies.”  To read the complete summary from Pepper’s attorneys, click here. 

This week the U.S. Patent and Trademark Office announced its sixth “patent prosecution highway” (PPH) program to fast-track global patent examination procedures when the patent office of any participating country has deemed a patent application to be allowable. 

Under the PPH programs, a patent application that has received allowance of at least one claim in a participating country may serve as the basis for “fast tracking” related applications (i.e., applications sharing common priority) in other participating countries.  The “fast tracked” application may not already be undergoing examination, and the “fast tracked” application must be amended so that its claims sufficiently match the allowed claims.  Fast tracked applications will receive priority at the USPTO (or other PPH office) and in most cases will be moved up in the queue for faster examination.

To date, the USPTO has established PPH programs with the following countries:

• Japan:  full-time program implemented in January 2008
• United Kingdom:  one-year pilot established September 4, 2007
• Canada:  one year pilot program began January 28, 2008
• Korea:  one year pilot program began January 28, 2008
• Australia:  one year pilot program began April 14, 2008
• Europe:  one year pilot program announced April 28, 2008

Some of the participating counties also have their own PPH programs with the Japan Patent Office.  For example, PPH programs are available for Japan-Germany, Japan-Korea, and Japan-UK. 

Forms for requesting participation in the USPTO’s Australia, Canada, Japan, Korea, and UK PPH programs are available on the USPTO website.  Forms for participation in the US-Europe PPH program are expected soon. 

Patent applicants who want to take advantage of a PPH program should file an application in the common application format that was recently agreed upon by the USPTO, the Japan Patent Office, and the European Patent Office.  Each patent office will implement the format in 2009.  The format is for the most part consistent with current U.S. format, although it requires additional features not presently required by the USPTO.  (For example, each claim must be labeled as “claim 1″, “claim 2″, etc., and SI units must be used when describing measurements.)

The PPH programs can help speed prosecution of a global patent portfolio.  U.S. patent applicants may consider also filing in countries having shorter prosecution delays (such as Korea) in order to obtain faster examination in the U.S. under the PPH programs.  In addition, the PPH programs may reduce the number of Office Actions in a worldwide patent family, as patent examiners will have the chance to see the conclusions of other examiners before starting review of an application.

Last week’s Federal Circuit decision in DataTreasury Corp. v Wells Fargo & Company highlights the interplay between federal and state laws in IP license agreements.  In the case, a patent license agreement contained an arbitration clause in which the parties agreed that all disputes would be subject to arbitration.  The patent holder/licensor then assigned the patent to DataTreasury.  When DataTreasury brought suit against Wells Fargo (parent of the licensee) Wells Fargo argued that DataTreasury was subject to the license agreement’s arbitration clause.

The court disagreed.  Noting that the agreement was governed by Minnesota law, and that Minnesota law does not (in most situations) impose an arbitration clause on a party who has not expressly agreed to it, the court held that DataTreasury was not subject to the agreement’s arbitration clause.

The lesson for licensees:  In many situations, patent, trademark and copyright owners are not willing to restrict their ability to assign the license agreement.  If so, a licensee should ensure that the agreement expressly requires the licensor to bind any successor-in-interest to all terms of the license agreement.  This may allow the licensee to bring a breach of contract claim if the successor-in-interest fails to accept all of the license terms.

The USPTO has announced a pilot program in which certain patent applicants can meet with the Examiner to discuss the results of the Examiner’s prior art search before the Examiner issues a first Office Action. 

Under the new program, eligible applicants must submit a Request for First Action Interview Form before November 1, 2008.  The Examiner will conduct a prior art search and provide the applicant with the search results and an identification of potential rejections prior to the first Office Action.  The applicant will then have 30 days (with no extensions) to either: (i) decline the interview, or (ii) confirm the interview request and file any desired amendments.    The USPTO has published a set of suggested talking points for the interview.

The program, which will launch April 28, 2008, is available to patent applications that fall within one of the following two groups: Read the rest of this entry »

Theft.  Bribery.  Altered documents.  Intrigue.  And … patent attorneys? 

It’s not often that you can include “patent attorneys” in a list like the one above, but after reading Seth Shulman’s “The Telephone Gambit:  Chasing Alexander Graham Bell’s Secret“, I wonder if the book could serve as inspiration for something like “CSI:  USPTO”.   Read the rest of this entry »

Privacy and security are meant to work in tandem - so why have they grown apart?  My colleague Peter Adler examines this question in the April 2008 isssue of the Journal of the American Health Information Management Association.    As Peter states in the article:

Privacy and security regulations were intended to work together to effectively protect health information. In most covered entities, that hasn’t happened due to a number of historical and organizational reasons. But organizations that can integrate their security and privacy compliance efforts make the most of their resources and boost the effectiveness of their programs. In some instances, this may mean a reorganization of security and privacy roles and reporting structures. In others, it may start with the revitalization of a flagging HIPAA committee.

For the full article, with tips for coordinating privacy and security efforts, click here.

Today the U.S. District Court for the Eastern District of Virginia made permanent its injunction against the USPTO’s rule changes that sought to limit patent claims and continuations. 

The court found that the rules exceeded the USPTO’s rulemaking authority because they were substantive rules, rather than merely procedural rules.  Finding that the USPTO has no subtantive rulemaking authority, the court’s opinion then explained that the rules are substantive because, among other things:

• the limits on continuations change existing law (i.e., Section 120 of the Patent Act says that certain applications shall have priority benefit — and there is no numeric limit in the statute)
• the requirement that certain applicants submit examination support documents (ESDs) shifts the examination burden to applicants.

The court’s finding about examination support documents raises an interesting question:  can the USPTO make its proposed information disclosure statement rules final, since those also contain requirements similar to the ESD requirements?

(For details about the court’s previous, temporary injunction, click here.  For more details about the rules that have been enjoined, click here.)

A recent data security breach at the related Hannaford and Sweetbay grocery chains raised questions about what is required to comply with the PCI standards.  To some readers, the questions included:  What are the PCI data security standards, and do they have the effect of law?  Read the rest of this entry »