The USPTO recently issued a forceful “no” to an applicant who tried to do so.  In 2003, patent attorney Andrew Knight began promoting the idea of “storyline patents”, and he sought claims covering methods of performing and displaying certain combinations of plot elements. 

Thanks to Peter Zura’s 271 Patent Blog for first reporting on a USPTO Office Action that reads more like a legal brief — or perhaps a law review article — than the typical USPTO rejection.  Describing the history of US and English intellectual property laws since 1624, the Office Action lays a constitutional foundation for its rejection, explaining that:

Congress created two separate forms of intellectual property - copyrights (under the Coypright Act of 1790) and patents (under the Patent Act of 1790) to protect the rights of authors and inventors respectively. . . . Throughout the entire history of the republic, Congress has maintained this dichotomy.

The USPTO’s action also included a heavy dose of policy, asserting that “such a class of intellectual propety would actually have the effect of discouraging the progress of science and the useful arts”, and that  “storylines are not subject to improvement.  Storylines may be changed, but not improved.”  The Office Action suggests that patents on storylines would have prevented the publication of Moby Dick, which used portions of a storyline originally created by Owen Chase. 

In May 2008, the applicant filed a detailed response, and this case is likely heading for appeal some time over the next year. 

This week the U.S. Supreme Court once again took action in the field of patent law.  This time, the Court addressed the “patent exhaustion” doctrine, which limits a patent owner’s right to restrict subsequent sales of a patented item after an initial, authorized sale occurs.  The Court’s decision has been the topic of much attention in the legal media this week.  However, it leaves at least two questions unanswered, and patent holders should consider those questions when drafting license agreements or filing patents in the future. Read the rest of this entry »

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 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.

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 »

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.)

Intellectual Asset Magazine reports that later this month it will publish an article about “the controversial subject of patent quality” in the United States.  As reported by Joff Wild in the IAM blog, the USPTO’s allowance rate has dropped from 72 percent in 2000 to 44 percent in the first quarter of 2008.

Does decreasing the allowance rate improve patent quality? If so, has the USPTO gone too far in the other direction so that prosecution costs for inventors are unfairly increased, and valuable innovations are excluded from patent protection?    

The article will present a variety of viewpoints, including those of USPTO director Jon Dudas; Judge Pauline Newman of the U.S. Court of Appeals for the Federal Circuit; European Patent Office president Alison Brimelow; and IP professionals from Fujitsu, Microsoft and GlaxoSmithKline.   I look forward to the article’s publication in the next issue of IAM later this month.

In one of my early posts in this blog, I wrote about due diligence practices for a situation where a buyer wants to investigate the effect of a potentially-concerning patent on a seller’s business.  In the post, I noted that sellers sometimes cite a practice of not reviewing any patents in order to avoid risking liability for willful patent infringement.  However, my view is that it’s usually preferable to know about a patent — and design around it or take a license — early in the stage of a product or company, rather than risk liability for infringement after the a new product achieves market success.

I wrote my first post before last year’s Federal Circuit opinion in In re Seagate Technology, LLC , where the court stated that mere knowledge of a patent is not sufficient to find liability for willful patent infringement, but instead a showing of “objective recklesness” is required.  To establish willful patent infringement under Seagate, the patent holder must show that the infringer acted “despite an objectively high likelihood” that its actions constituted patent infringement.

In the due diligence context, a buyer will want to know whether there is an objectively high likelihood that the seller is infringing a patent.  Sellers should be prepared to address significant issues of concern to buyers, and a seller’s response of “I don’t want to see the patent” may be harder to defend after Seagate.