IPthoughts

A Docketing Request

2006-05-25T07:46:00.000-07:00

As you may have noticed, the writer behind this blog has also written various IP practice books. One of them is Patent Application Practice.
Dennis Crouch and I are presently preparing the next update for PAP. One cotribution of mine to this effort is to take another look at the docketing section of the book with a view to updating and possibly expanding it. For that reason, I'd appreciate your help.
If you have a docketing memo - a description instructing your staff member in the intricacies of docketing all the various sorts of documents received from the PTO and keeping the attorneys informed to prevent a case going abandoned - I'd very much appreciate a copy of it, especially if it has proven suscessful in getting a case revived at the PTO. You can email a copy of it to me at onejehawes@aol.com. If there are limitations concerning its use by us, please let me know. Thank you. (JH)

Harmonizing US Patent Laws - a proposal

2006-05-25T06:20:00.000-07:00

For decades those interested in the US patent system have been discussing “harmonizing” our IP laws. For a review of these discussions, see for example Janice M. Muller, Introduction to Patent Law (2nd Ed.) or Donald S. Chisum, “Reforming Patent Law Reform,” 4 John Marshall Review of Int. Prop. Law 336 (2005).
Initially, what “harmonizing” meant was adjusting US technology patent laws to parallel the technology patent laws of other economically developed countries by eliminating first inventor rights and granting patents to the first to apply. (In other words, eliminating interferences.) Over the years since its initial proposal, harmonizing has come to be supported by the Intellectual Property Owners Assn., the American Intellectual Property Law Assn. (AIPLA) and many large businesses. Major opposition always has come from the inventor and small business communities. Some argue that harmonization will in fact benefit these opponents – see Robert Armitage’s forward to, and former PTO Commissioner Gerald Mossinghoff’s working paper, “Small Entities and the ‘First to Invent’ Patent System” published by the Washington Legal Fdn. in 2005.
The Patent Act of 2005 proposed legislation (H.R. 2795, S. 1020) “harmonizing” patent laws by changing all sorts of US patent rights to switch from our present first to invent system to a first to file system (of course), eliminate the best mode requirement, adjust the duty of candor, provide for certain post-grant proceedings, require consideration of third party submissions of prior art, and various other things. An excellent survey of all this should start with Matt Buchanan’s “The Patent Reform Library” posted on his blog promotetheprogress.com/archives/2005/06/the_ptp_patent_1.html – the POP blog.
Why stop there, though? Why not also harmonize our various patent laws with one another? Indeed, why not harmonize all our IP laws?

US IP rights –
IP laws of national scope include the patent laws (35 USC), trademark laws (15 USC §1050 et seq.) and copyright laws (17 USC). While the requirements set forth by each to establish the IP rights they govern are different, the rights they confer are much the same. With one exception: technology patents.
Specifically, trademark rights require a federal court to evaluate the likelihood of confusion between the registered and challenged marks to establish trademark infringement. A violation of copyright rights requires a showing of copying, which in turn requires a showing of access and substantial similarity, to establish the infringement. Design patent rights require the patent holder to prove a substantial similarity between the patented ornamental design and the ornamental design of the accused product to establish infringement. Plant patents require a showing that the patented plant has been asexually propagated, sold or used to be infringed. Only technology patents require something different.

Two Approaches to Technology Patent Rights –
Early on US technology patent laws required the patent owner to establish that the accused technology was substantially the same as that set forth in the patent; the patent covered the technology “constructed and operating substantially as herein set forth and described” (eg US pat. 1,000) or “as and for the purposes set forth” (eg US pat. 100,000).
Then, in the late nineteenth century US patent laws were changed to adopt a meets and bounds definition of the invention, much like real property rights are defined. The patentee had to define (claim) in the patent the exact meets and bounds of the invention. Infringement was established by showing that the accused technology came within any part of the meets and bounds of the patent. All this is discussed in many texts; see for example Patent Litigation: Procedure and Tactics by Lester Horowitz and Ethan Horowitz.
Some countries use this meets and bounds approach to define the scope of the invention protected by the patent. Other countries, like Germany, use an inventive step, gist or heart of the invention as illuminated by the disclosure and drawings, approach to defining the invention. In other words, they define the invention’s bullseye, while US practice defines the outer boundary of the invention target.
These differing ways of defining the invention lead to radically different infringement litigation scopes, costs and uncertainties. Largely because of the money involved in both defending and asserting a patent, US companies have questioned the value of US technology patent rights. Indeed, many groups have come to assert that the US patent system is now in a state of crisis. See for example the AIPLA’s response to NSA’s report “A Patent System for the 21st Century” (this and many other relevant references are cited in the POP blog).

Design and Plant Patent Litigation –
Every year at least a few design patent cases are reported. Having litigated some myself years ago, and having talked with a few attorneys who have more recently litigated design patent rights, it appears that the average design patent litigation currently costs in the mid-six figure range. Judges seem willing to accept the PTO’s determination that the design merits a patent. The litigation therefore usually focuses on the similarity between the patented and accused designs. Defendants often assert that certain features (especially those most notable) of the patented design are well-known or are dictated by non-aesthetic considerations (eg they are functional) and must be eliminated from the substantial similarity analysis, but the extent to which judges do this is unclear. Our federal judiciary often seems to be willing to reach a seat of the pants, looks the same to me, sort of decision. And the CAFC seems to be willing to go along with such trial court evaluations if couched in the language of both an overall similarity to the ordinary observer and appropriating the ornamental novelty which distinguishes the patented design from the prior art. Read Corp. v. Portec, 970 F.2d 816 (CAFC 1992).
While I have no first hand experience, I expect plant patent litigation to be about the same in scope and cost as design patent litigation. At least the few recent decisions in this area would so indicate to me. See for example Imazio Nursery Inc. v. Dania Greenhouses, 69 F.3d 1560 (CAFC 1995).

Technology Patent Litigation -
To litigate US technology patents is an entirely different matter.
First, the patent owner must go through all sorts of pre-litigation matters. It must recheck the initial inventorship determination and re-evaluate all known prior art, including any that may have been cited in any related foreign patent application. It must review the adequacy of the US patent’s disclosure and chart the infringement of the patent’s claims by the target infringer’s technology. Many cases require a lot more than just this. See for example the Horowitz book previously cited.
If all these pre-filing efforts confirm that litigation is warranted, then after the case is filed and the defendant served, a great deal still must be done to prepare the case for trial. Among these matters are a Markman hearing to determine the meaning and scope of the patent’s claims, and discovery of the accused infringer’s technology related to the patent and knowledge of the patent being litigated. While this is going on the defendant undoubtedly is conducting its own discovery related to inventorship, disclosure adequacy, prior art, claim meaning and scope and many other things. Eventually a settlement will be reached or the case tried. Whatever the trial court decides, very likely there will be at least one cycle of appeals, and maybe more. All this can and has taken a decade or more to reach a final conclusion.
From the AIPLA’s 2005 economic survey, litigating a complex technology patent costs, on average, $4.5 million. And that’s just the average, and just through trial. This cost has been growing at about 10% per year in recent years. (For comparison, the AIPLA Survey reports that litigating a high value trademark will cost about $1.25 million through trial, and a high value copyright about $1 million.) The number of patent lawsuits grew by 80% between 1994 and 2004. Companies have reported spending 32% more on outside IP litigation counsel in 2003 than 2002, compared to a 1% increase for non-IP counsel.
No wonder, then, that many experienced patent owners now think the US patent system to be in crisis.

Harmonizing Technology Patent Laws –
What if technology patent rights were harmonized with the rights conferred by design and plant patents? What might be the result?
Specifically, what if the presence of the invention in a technology patent was defined as the technology substantially as set forth in the specification? Or, if a more focused definition were desired, what if it was set forth in a claim, or set of claims, in which first the area of technology was generally stated, then the invention was defined by a set of clauses preceded by something like “the invention being characterized by . . .” followed by a listing the distinguishing characteristics of the invention, and maybe even concluding with something like “substantially as and for the purposes set forth herein?” In other words, what if the US gave up its meets and bounds approach to invention definition for a bullseye approach?
We used to do it this way for technology inventions. We still do it this way for design patents, trademarks and copyrights. In at least these areas of IP rights we let the trial court evaluate the substantiality of the copying, if any – we let the trial judge, using equitable guidelines, decide whether or not the asserted right has been violated. The Germans and others do it this way for their technology inventions.
What might be the result of such a change? I expect a bullseye approach to defining the invention in US technology patents would considerably simplify technology patent litigation, bringing it more into line with other IP litigation for example in time, scope and cost. Competitors would focus on the invention, rather than on the meets and bounds. Judges would focus on reaching a just and equitable result in technology patent litigation, just as they now do for design patents and other IP rights. Much of the complexity of patent litigation would cease. Indeed, this simple change in invention definition could carry our patent system a long way from its present crisis mode to the harmonized, “best practices” objective of the PTO’s 21st Century Strategic Plan.

Conclusion –
Let’s expand the discussion of “harmonizing” US patent laws to include a consideration of changing a meets and bounds style of invention definition to a characterized by (or substantially as shown and described by, for example) style of invention definition.
If it turned the presently outrageous nature of technology patent litigation into something more akin to design patent litigation, I expect many patent owners, and even many accused infringers, would welcome it. Judges might too. What do you think? (JH)

Dirty Tricks at the PTO

2006-05-15T14:15:00.000-07:00

I’ve just been shocked to my core, and made thankful once again that I am retired. How do you that are not retired deal with this kind of outrageous crap?
Thanks to the diggings and publicity of Bill Heinze, Steve Nipper and Hal Wagner, it seems that a whole cartload of higher officials at the PTO and Dept. of Commerce (DC) are without even the most basic of ethics. Specifically, in early January while the NTP v. RIM litigation and the related patent re-examinsations were in full swing and making the news almost daily, in response to a request by RIM the following officials were involved in preparing for an ex parte meeting with RIM at the PTO on Jan. 4:
Deputy Sec. DC Under Sec. DC Acting Gen. Counsel DC
Director PTO Deputy Dir. PTO Gen. Counsel PTO
Deputy Gen. Counsel PTO Deputy Gen Counsel and Sol., PTO
And others, including “possibly” representatives from DOJ
It is unbelievable to this old litigator and patent atty. that NONE of this group thought to question the propriety of the meeting or to invite NTP to the meeting. Instead, they met ex parte with RIM’s President and some of its attorneys to discuss (again, judging from the briefing documents obtained by FOIA requests) the status of the re-examinations and the NTP v. RIM litigation history. Whatever was decided – or even if NOTHING was decided - at this meeting, having it clearly violated all sorts of PTO and litigation ethics rules and prohibitions, including 37 CFR 1.955 and the FRCivP.
To me, this seems akin to the dirty tricks of the Nixon era. Either we are a nation ruled by officials, or by laws. If the latter, then officials who so clearly violate our laws should and MUST be held to account for their actions. I hope Congress sees fit to do so. If you agree, please write your Senators or Congressional Representatives.

Values of IP

2006-05-02T18:50:00.000-07:00

What do you think the most valuable IP right is? Are patent rights the most valuable, or are trademark rights, or copyrights?
My guess is that most patent attorneys think patents are the most valuable of IP rights. Well, let’s look at some data.

Patents –
The ploymerase chain reaction, a technique for amplifying genetic material, was invented by Dr. Kary Mullis in 1983. His employer, Cetus Corp., received the patent; Dr. Mullis was awarded the Nobel Prize. In 1992 Cetus sold its PCR patent portfolio to Hoffman LaRoche for about $700 million.
Recently RIM settled for $612.5 million a lawsuit in which the plaintiff, NTP, asserted that RIM’s BlackBerry personal data system infringed an NTP patent. In view of that, the NTP patent might be said to be worth $1 billion.
These two data points represent, I believe, the top zone of patent value.

Copyrights –
What’s the top zone for copyright values? George Lucas’ Star Wars “franchise,” which includes all the Star Wars related products and spin-offs, has been estimated by Forbes to have a value of about $20 billion.
J.K. Rowlings’ Harry Potter series and related products has been projected to have a value of about $12 billion. So this $12 to $20 billion range is probably a fairly representative estimate of the top zone of values for copyrights today.

Trademarks –
What might some of the best known trademarks be worth?
How about the Microsoft trademark? Last year Microsoft earned more than $12 billion on almost $40 billion in revenues. Of course, a considerable amount of this income and earnings is attributable to the Windows programs and to technical quality. But other software companies have programs of similar quality. Let’s say that one-third of Microsoft’s 31% profit on sales was attributable to its trademark. The company’s shareholder equity last year was a bit more than $48 billion; the stock market valued Microsoft at $284 billion. If a third of the valuation above shareholders’ equity was attributable to the trademark, then the Microsoft mark would have a value of about $75 billion.
How about Johnson & Johnson - what’s the value of the J&J mark? Using an approach similar to the Microsoft valuation analysis, J&J’s profit was about 20% on revenues of about $50 billion, which might be said to be about twice that of its market segment. The excess of its market value over shareholders’ equity last year was about $142 billion; half of that would be $71 billion, which as a ballpark figure would be the value of its J&J trademark.
As a third example of a company in a competitive market with strong earnings, consider Cisco Systems. Its profit last year was about 23% of revenues, which again might be said to be in the neighborhood of twice the average for its market segment. Its market value exceeded its shareholders’ equity by about $110 billion, giving its Cisco mark a value of $55 billion.
So it would seem that marks of highly successful companies might be said to have a value of $50 billion or more.

Conclusion –
From the foregoing analysis, it would seem that trademarks clearly are the most valuable of IP rights.
One notable characteristic of trademarks is that their life is potentially infinite, while the lives of patents and copyrights are both limited by statute. So only trademarks continue to build value with use over the years.
Obviously the above is only a rough approximation of values. I’d welcome your comments about where it went off track, and what you think the most valuable IP right is.

Your First Job

2006-04-23T10:57:00.000-07:00

Since my posting about the risks of being a patent attorney prompted so many responses – or maybe I should say, stomped on so many toes - let me offer these observations in the hope of assuaging any still hurt feelings.
The basic point I wish to make in this note is that the first job any new attorney takes in the profession is critical, for it will largely determine how they are going to practice law for the rest of his or her career, and the enjoyment they will derive from that practice.
How can that be? Isn’t the practice of law the same everywhere in the US? Can’t I determine how I am going to deal with my clients and others independently of whoever first supervises me? Conceptually, of course the law is the law, and the practice of law is reflective of the attorney’s nature, not whomever he or she learned under. In reality, though, it seems to me that things are quite different.
Consider the practice of law in New York vs. in Los Angeles. (I happened to have practiced with, and against, firms in both cities, so I have first-hand experience here.) I found, and still find, that NY attorneys often are very combative, dispute everything, give nothing and are generally as unpleasant socially as they are professionally. On the other hand, LA attorneys, while just as competent as NY attorneys, usually are less combative (ie they can be persuaded), listen as well as dispute, are willing to negotiate without considering it akin to throwing in the towel, and are often pleasant socially even in the midst of a heated court battle or deposition.
This realization occurred to me one day during a deposition. My opposing attorney also had practiced on the east coast, although at the time we were both practicing with LA firms. During a break, one of us happened to mention how different the practice of law was in LA than in NY. The client / deponent couldn’t understand what we were talking about. He probably assumed that the practice of law was pretty much the same everywhere. So we agreed to show him by pretending to take up his deposition as if we were in NY. One of us asked a question and the other stated some off the wall objection. Redundant. Asked and answered. Irrelevant. Whatever. The other disagreed in a forceful manner with a rising voice. We both then rose up out of our chairs and started to almost shout at one another across the table, one saying how unfounded and ridiculous the question was, the other pointing out at the same time, and with at least equal force and volume, that he had just about had enough of these obstructionist tactics and was ready to take the whole matter before the judge for sanctions. The client was shocked. He had never heard such stuff (except maybe on TV, because it can be entertaining.) But that’s the way things are back east. In a nutshell: more entertaining but less accomplished.
If your first job is with a NY firm, or more generally an east coast firm, very likely you are going to be expected to reflect in your dealings with others the style of the firm, which I bet will be very much like the NY style I’ve described. You might later move to the midwest, or even to the west coast. But having learned this style of practice, very likely you will carry it with you throughout your career. And to a significant degree it will determine the satisfaction you derive from being an attorney. If it is reflective of your nature, then you will most likely enjoy the practice of law. On the other hand, if your nature is more like that of LA attorneys, you will not enjoy the practice of law with a NY style. And the reverse is true too. If argument is what attracts you to the law, then you will get a lot more satisfaction practicing on the east coast than on the west coast.
So, for those coming to the end of their law school days and looking forward to a career in the law, or just beginning their legal career, pay attention to the style of practice followed by your first employer, for very likely it will be your style for the rest of your legal career. (JH)

Links

2006-04-14T10:34:00.000-07:00

Maybe eventually I will figure out how to add references to other blogs in the sidebar area that seems to be intended for that sort of stuff. Until I do, here are the blogs I like and regularly refer to: 1. Patently-O, the very popular (and rightfully so) blog by Dennis Crouch about all sorts of IP topics; 2. The Invent Blog: Stephen M. Nippers' blog focusing on mainly patent topics; 3. Patent Baristas - bio/pharmaceutical patent news; 4. Promote the Progress, by J. Matthew Buchanan, covering mainly patent law and policy; 5. PHOISTA, a mysterious blog with mostly trademark topics; 6. Copybites, a copyright law blog by Cory Hojka; 7. Daily Dose of IP, by Mark Reichel about mostly patent matters; 8. I/P Updates by Bill Heinze posting notes of interest to IP attorneys; and 9. Technolawyer.com - publishing technical information for lawyers. If I've missed your favorites, post a comment giving them. If you know how to indent and align the numbered statements of this note, or get them into a sidebar, I admire you greatly. (JH) Stephen Nipper responded to this post with: Thanks for mentioning The Invent Blog in your list of blogs you read. Other IP blogs I enjoy:
Anything Under the Sun Made By Man
http://www.krajec.com/index.php?/weblog/
IP Counsel Blog
http://ipcounsel.blogspot.com
IP Funny -- Intellectual Property Humor
http://ipfunny.blogs.com/ip_funny_intellectual_pro/
Just a Patent Examiner
http://just-n-examiner.livejournal.com/
Patent Prospector
http://www.patenthawk.com/blog/
rethink(IP)
http://www.rethinkip.com/
Shape Blog
http://www.shapeblog.com/
The Patent Librarian
http://patentlibrarian.blogspot.com
(Now how did he get this word processing program to do that?)

Know it all?

2006-04-11T06:52:00.000-07:00

First, thank you to all the readers of this blog. And particularly, thank you for your comments and observations in response to my notes.
Second, I am surprised to see, by the number of comments, that you are most interested in non-IP stuff. With that in mind, let me propose this question:
Will there come a time when we know
everything about everything?

The Increase in Scientific Knowledge –
About two hundred years ago the sum total of scientific knowledge could be set forth in a cabinet-full collection of books. Or at least in a not very large library of books.
Now, according to Stephen Hawking, the increase in scientific knowledge is such that if all the new books reporting this increase were put on a shelf, the row would be growing at the rate of 90 mph! In other words, our understanding of at least the physical world and universe is exploding.
As a concrete example, consider our understanding of gravity. In Newton’s time we came to understand gravity as a force operating across vast distances, and could describe the action that force would exert between two objects in space, such as between the sun and a planet. Einstein revised that understanding, leading us to see gravity as a curvature of space-time, and pointing to many other of its attributes such as acting, not instantaneously as Newton thought, but across space at the speed of light, and also suggesting the existence of black holes, which was later confirmed. Now scientists are coming to see our universe as best described by superstring theory positing eleven dimensions. For more about all this see The Elegant Universe by Brian Greene.
Given, then, this increasingly refined scope and depth of scientific knowledge over time, is it reasonable to imagine that, at some point in the future, we will come to understand everything about everything?

The Nature of Knowledge –
If we assume that the scientific laws operating in our universe are finite in number, even though our universe might be infinite in its spatial extent, then it seems reasonable to me to consider that there will come a time when we understand everything about everything.
On the other hand, we might assume that the nature of our universe and the scientific principles it embodies is such that the more we come to understand, the more questions that understanding raises. This seems to many to be what has been happening in recent times. Which in turn suggests that ultimately the principles operating in our universe are infinite? If so, then we will never come to a complete understanding of everything.
Which assumption is right? Or, put differently -

Does the Nature of Knowledge Matter?
If the scientific laws operating in our universe are finite, then as we understand more and more about more and more, the rate of increase in our understanding can be expected to gradually slow as it asymptotically approaches a complete understanding of everything.
If, however, knowledge is potentially infinite, then the increase in our understanding over time will always accelerate.
How can we measure the increase in our understanding? The speed at which our library shelf of scientific books is growing might give a very rough estimate. I suppose that it may well be possible to develop some algorithm to filter the actual increase in knowledge from all the scientific information being published, and use the filtered residue to better estimate the rate of increase in our understanding. That in turn might tell us if scientific knowledge is finite or infinite.
Would the answer matter? I think so. If it turns out that scientific knowledge is finite, then there may well come a time when we can begin to see the nature and extent of all scientific knowledge, to anticipate the coming and ultimate understanding of everything. If scientific knowledge is infinite, then it may well be that each era will add so much to our understanding that it is always completely different than what was known previously. In this case, there would be no point to try and look at the sum total of scientific understanding at any time, for it would always give an incomplete and distorted view.

Some Tentative Conclusions -
Can we conclude from this that only if science is finite should we pursue our efforts to understand? I think so. For if the nature of scientific knowledge is infinite, then we will never be able to understand everything. The advances in understanding achieved during each era will produce a different but equally distorted increase in understanding, leading us over time to describe a spiral of confusion. That hardly seems to be a worthwhile endeavor unless all we ask of science is greater ease and comfort.
Can we conclude from all this that eventually we will come to understand everything about everything? That we will come to know it all? I hope so. For otherwise there hardly seems to be any point to rationality, to being able to understand. Is not understanding everything the final prize inherent in our innate yearning to understand?
What have I missed or overlooked in all this? I solicit your comments. JH

Every moment is unique, but . . .

2006-04-04T14:42:00.000-07:00

On Wednesday of this week, at two minutes and three seconds after 1:00 in the morning, the time and date will be 01:02:03 04/05/06.That won't ever happen again.

U.S. Design Patent Application Disclosures

2006-04-03T10:39:00.000-07:00

35 USC §171 reads:
“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
“The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”

The provisions of title 35 that apply to patents for inventions include those set forth in 35 USC §§ 102 to 112. So, to be patentable a design must be new in both the §102 and §103 sense, and the application must meet the requirements of §112. We all know this.

Section 112-
Section 112 requires the specification to contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most clearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor for carrying out his invention.” We all know that, too.

Current PTO Practice -
But it seems that the PTO does not apply section 112 to design patent applications. The design patent group for decades has not required a design patent application to describe the manner and process for making the article of manufacture incorporating the design, nor to set forth the best mode for carrying out his design. Why not? There is no statutory exception I can find for not applying this part of §112 to design patent applications.
So for decades I have included in the design patent application specifications I prepare a short paragraph describing the manner and process for making it, and for carrying out the invention. Each time such an application has reached the point that it is ready to be allowed, the examiner cancels this paragraph by examiner’s amendment. Which is fine by me. I figure that I have complied with the statutory requirement by including such a paragraph in the application.
Many, or maybe even most every, design patent application does not include a paragraph describing how to make and use the design. I suppose some might argue that such a paragraph is unnecessary for the design that is the subject of the application: how to make and use it will be obvious to those of ordinary skill in the relevant field. But that statute does not include such an exception. Its requirements seem clear. So why take a chance? Include this paragraph in the design patent applications you prepare in the future.

What To Do? -
Might such a paragraph be added to design patent applications now pending before the PTO. MPEP §2163.06 discusses the new matter prohibition of 35 USC §132, observing that “if the content of the amendment is not described in the application as filed,” it will be refused entry as new matter. So, is a description of the manner and process of making the new design, and for carrying out the new design, new matter when added by an amendment? Put differently, might not the design itself, as shown in the drawings of the application as filed, convey to a person skilled in the relevant art how to make and use the same, and how to carry out the invention? I suppose that there might be cases – maybe even a lot of cases – when this is so. But what about the cases when the inventor of the design has some quirk in the manner and process for making it, or for carrying out the design, that is not generally known? In at least such a case I suspect that any resulting design patent will be invalid.
The bottom line – discuss with the inventor of the design how it is made, and whether or not the inventor has any special or preferred way to make it. Also discuss how the inventor carries out the new design, and include a short description of all this in the application when filed. That should prevent any subsequent challenge.
A postscript: this area would seem perfect for a statutory amendment blessing the practice that has been followed for decades at the PTO. (JH)

The Risks of Being a Patent Attorney

2006-04-01T12:35:00.000-08:00

Have you thought recently about the risks of being a patent attorney?
Put differently, would you recommend to your son or daughter, or to a close relative or friend, that they enter the field of patent law?

I think the risks patent attorneys face today are far more significant than those I faced when I entered the profession almost 50 years ago. (Wow, was it that long ago?) The purpose of this note is to explain and consider the implications of that assertion.

The Changing Risks -
In the 1950s and 1960s the state of patent law was relatively stable. There was the 1952 statute. The PTO applied it using well-known standards, and the CCPA followed similarly well-known standards in reviewing PTO actions. Across the fields of patent prosecution and litigation the standards were both simple and stable. We didn’t have to worry about the duty of disclosure, reexamination, best mode, business methods, the reverse doctrine of equivalents, Festo, etc. etc.

That is certainly no longer the case. Moreover, the standards for preparing and prosecuting a US patent application today are very likely not the standards that will be applied in 10 or 15 years from now when the resulting patent is being litigated. The court then, whether the CAFC or some other judicial entity, will then (as now, and as for every case between now and then) rethink whatever standards are in effect and apply them to the issues before it. Unfortunately, if that court is as little fettered by practical knowledge and professional experience as the CAFC is now, very likely the standards it applies will result in the patent being held to be invalid, or at least unenforceable.

Is that scenario realistic? Is the outlook for today’s patent applications so bleak? I think so. Why? Simple: money.

Today’s Appeal of Patent Law -
In the last decade patent law has become the premier specialty in the premier profession. It leads all other legal specialties in compensation, which is the measure most apply today to their career decisions. In part, this is because of the weird combination of talents patent law requires – engineering, law and writing – and the relatively small pool of people who have such talents. Of course, there are those who enter the patent profession who are not engineers, but they are not writing and prosecuting patent applications. They are litigating patents. And with all the creativity they can bring to bear on the case. Which is and will continue to be considerable.

Will patent law continue to be the premier money fount of law? Of course. Today innovation is, and is seen as, the driving force behind long-term corporate success. And to be that, the fruits of innovation must be patented to be protected from copying and to yield their largesse. So given the very limited pool from which patent attorneys can be drawn, the profession will always command a premium. It can be expected to be among the most lucrative of legal specialties for as far into the future as we can see. This premium will continue to attract non-engineers, lawyers who can only litigate, not draft and prosecute. And this group will continue to be exceedingly talented and creative. They will continue to perceive and apply new standards and tests to patents that today we don’t use, or even suspect to exist. Thus, I think it reasonable that the patent applications we are preparing and prosecuting now will eventually be held to be invalid by virtue of their not meeting one or more of the ever increasing number of new standards and tests future courts will recognize.

Tomorrow’s Risk Exposure -
This in turn suggests that today’s patent attorneys better have good malpractice insurance, and better maintain it throughout their careers. Would a $1 million, $2 million or even $5 million policy be adequate? No. Just look at the Wall Street Journal, or the business section of any national newspaper, and most any day you can find an article about some company involved in a patent dispute. Take a look at their stock price, and how it fluctuates with the successes and failures of such disputes. You will find fluctuations in the $10s of millions to be fairly common, and some occasionally even in the $100s of millions. And that is today. Ten years from now, add one or two zeros to these numbers. This is the kind of malpractice protection that will be required when today’s patent application is held to be invalid or unenforceable 10 or 15 years from now.

If what I’ve said so far doesn’t seem too far off to you, consider the implications. Every patent you obtain represents a multi-million dollar claim on your assets. If your malpractice insurance then doesn’t cover that claim, your assets will have to be used to make up the difference. Your investments will be sold. Your nice home will be auctioned off, and you will have to move into something more modest. Or maybe even into an apartment. Don’t forget: your acts in preparing and prosecuting the application that resulted in the now invalid patent were all intentional. Thus, they are not dischargeable in bankruptcy, so you won’t be able to preserve even a residual of your assets from levy and sale to satisfy any deficiency between your insurance and the malpractice claim.

Clearly this prospect is not appealing. But given the high flux now present in patent law and the profession, and the considerable values involved, I think this scenario to be realistic, even likely.

Conclusions -
So, what advice can I give? First, if you must get into patent law, become a litigator, not a prosecutor. If you already are a patent prosecutor, work for a corporation and under the supervision of a more senior prosecutor. Working in a private firm of patent attorneys surely will expose you to the liabilities I’ve mentioned. And unless this group is an LLC, any firm attorney’s goof will expose you to the major liabilities I’ve mentioned.

Sorry to be the bearer of such bad news. But better to know it now than in 10 or 15 years. And better to take steps now to avoid or minimize your exposure, rather than later when such risks are becoming realities in your life. (JH)

Pig in a Copyright Poke

2006-04-01T10:35:00.000-08:00

Pig in a © Poke

No doubt you’ve been cautioned about buying something sight unseen – a pig in a poke. Yet at the Copyright Office no such caution exists. They’re glad to register a pig in a poke.
But should they? Put differently, is it proper for a US government agency to grant an exclusive right of a scope that no citizen can determine? I don’t think so.

Statutory requirements - 17 USC §408 sets forth the requirements for registration of a copyright claim. Among other things, subsection (a) requires the claimant to deliver to the Copyright Office “the deposit specified in this section. . . ” Subsection (b) states the material that is to be deposited. This section seems to me to be both clear and absolute: a deposit of the work is required as part of the registration. (Section 407 (c) exempts certain works from the deposit for the Library of Congress requirements. This exemption does not apply to the registration deposit requirements.) Implementing regulations - The regulations implementing 17 USC among many other things specify the materials to be deposited for registration of various kinds of works – see 37 CFR §202.19 et seq. Sec. 202.21 permits the deposit of identifying materials instead of copies for certain types of works. As an example, it allows the deposit of one copy of “identifying portions of the work,” which means “either the first and last 25 pages or equivalent units” or (for databases) “50 representative pages.” (See 202.20 (c) (2)(D)(1) and (5). For secure tests and their answer sheets, the Copyright Office will return the deposit to the applicant after examination provided that adequate material is retained to constitute a sufficient archival record of the deposit. Sec. 202.20(c)(2)(vi).
Copyright Office practices - So, what does the Copyright Office really do? These days an applicant can come in with an application to register, for example, an unpublished computer program whose printout is maybe 10 inches thick (or a CD with the equivalent), submit the first and last 25 pages as the deposit and get a registration. Often computer programs are written to define parameters or variables in the first 25 or more pages, and to close down these variables in the last 25 or more pages. So all the Copyright Office will be left with is a deposit that is simply a bunch of variables. Hardly a “sufficient archival record.” But this is what happens.
Pig in the poke registrations - Assume that this registrant later sues for infringement of his copyright in the computer program, and produces now for the defendant the text between the first and last 25 pages, a text that has much or all of the defendant’s program. What’s the defendant to do? The plaintiff claims to have written the code himself, to have tested the program on his own computer and to have thrown away long ago all the development materials. The answer to the question seems to be – “pay up.” And stop using the program, or also pay a license fee. Which is precisely the problem with these pig in the poke registrations.
Pig in the poke registrations are not authorized by the statute. There is no longer any space or size reason for them – with all the data storage options now available, the Copyright Office can store, for example, computer programs with even multi-million lines of code. And, most importantly, such registrations are unfair to the public. They should not be issued. (JH)

A comment re: the three requirements of patentability

2006-03-23T12:28:00.000-08:00

A friend who is very knowledgable has responded to the note, the three requirements of patentability, and given me permission to post the comment anonymously.
The response begins: I would argue that there are four requirements for patentability: 1) potentially patentable subject matter, 2) utility, 3) novelty / no loss of right; and 4) non-obviousness. I can't view obviousness as just an aspect of novelty. At least since the Supreme Court's 1850 "doorknob" decision in Hotchkiss v. Greenwood, patentability has required "something more" than mere novelty. Figuring out just what that something more is, of course, has been and continues to be a struggle. Maybe the Supreme Court will grant cert in the KSR case and enlighten us all.
I am also wary of suggesting that the novelty requirement is based on section 101. That section does refer to new" inventions, but as GSR stressed in In re Bergy, novelty has long been analyzed in all its gory details under section 102.
What are your thoughts? Send a comment.

What's in the best IP library?

2006-03-23T12:13:00.000-08:00

If you are a practicing IP attorney – and why else would you be reading this? – no doubt you have a collection of IP books in your library. You probably acquired the collection over a period of years, and have kept them up to date by buying their updates as issued.
This can be expensive. Indeed, for many IP books, buying the updates costs each year about what the book cost to purchase new. Ouch.
The purpose of this note is to present what I think would be the best IP library if you were buying it today. It reflects my biases and prejudices. I invite you to post a comment setting forth what you think to be the best IP library, and why.
First, the library must meet your needs. They are different if you prepare and prosecute patent applications, or handle trademark registrations, or litigate IP rights. What follows assumes that you do all of that – prosecute, litigate, handle licensing, counsel businesses about IP matters, etc. Also, it assumes that you are buying printed books. Many of the cited books are available electronically, too. I haven’t tried to figure out what substituting the electronic version for the printed text would do to the cost of maintaining the library. If you know, please post a comment.
A complete listing of IP books is set forth at the website www.IPlawbookreviews.com. It also presents reviews of the listed books. So if you are tempted to post a response to this note, I urge you to first check that website to make sure you are selecting your library from a full set of the IP books now being published. And that you consider their current pricing and update schedules in making your selections.
OK. So much for the preliminaries. Now for the best IP library.
If you prepare and prosecute patent applications, I think you need both a patent law treatise and a patent practice book. If you are just getting started in patent law, you should have a one volume introduction to the field. Many think you should also have a case reporter. Let me address that first.
The “standard” patent case reporter is the United States Patents Quarterly (USPQ). Its advance sheet pamphlet is published weekly. But it reports decisions usually issued about six months earlier. For many that is too long a lag time, especially when these decisions are now available on websites of the courts involved, and are promptly gathered on websites such as that maintained by the Cornell University Law Library. If you are among this group, save the considerable cost of the USPQ and just search the Cornell collection for cases reported during the last year or two. If you subscribe to the USPQ you are going to do that updating search anyway, so why not use it exclusively?
What patent books does this perfect library need? Certainly a treatise such as Chisum on Patents. It gives a comprehensive and authoritative overview of patent law. Or if you decide it costs too much, then use Chisum’s Patent Law Digest. The best introduction to patent law is Mueller’s book of that name. And for a patent practice book of general scope, I’d pick (of course) Patent Application Practice. If your practice was focused on computers, biotech, business methods, pharmaceuticals, or some other specialized field, then add a book specifically addressing patents in that field to your library.
If a lot of what you do involves foreign countries, add a foreign patent law and practice book to your library. The one I’d pick is – Patents Throughout the World. It is two volumes, includes the basics for most all countries, and is reasonably priced. There are other treatises that are longer and more expensive, but you should never need one. Instead, rely on your foreign associates for detailed guidance in their countries.
For patent litigation, I guess I’d pick IP Counseling and Litigation. It presents a lot of good advice from experienced litigators. If you need a litigation forms book, check out Patent Disputes by Battersby et al. If you need a blend of guidance and forms, use IP Litigation Guide by Upchurch.
For those involved in trademark matters, the standard tome is McCarthy on Trademarks and Unfair Competition. If trademark registrations are part of your practice, Trademark Registration Practice is the choice. If you litigate trademarks and want a book that focuses on trademark litigation (as opposed to litigation generally) I’d pick Trademark and Copyright Disputes and Litigation: Forms and Analyses. It also has the advantage of covering copyright litigation matters. Foreign trademark laws and practices are best covered, I believe, in Trademarks Throughout the World. As with the patents book, this two volume set covers the basics. If you need more consult with your foreign associate.
If your practice includes much copyright work, you should have a copyright law treatise. I’d choose Goldstein on Copyright, although I recognize that many others would choose Nimmer on Copyright. If your practice in the copyright field is specialized, such as focusing on multimedia matters, or music licensing, or entertainment, or publishing, etc. you might add one of the books that focuses on this aspect of copyright law. The copyright registration guide to have is Copyright Registration Practice.
Licensing law and practice presents a number of choices. Some are very comprehensive and expensive; some are more abbreviated and cheaper. I’d pick
Milgrim on Licensing. It blends licensing law and forms. There are also a number of specialized licensing books – see IPlawbookreviews.com for a listing.
Trade secrets seems to me fairly specialized. Yet much of the advice an IP attorney provides to corporate clients touches on this area, so the IP library should have at least one trade secrets book. I guess I’d pick Trade Secrets by Pooley.
There are many other specialized IP books, and some IP books of general scope, that might find their way into your law library. They too are listed on the website IPlawbookreviews.com.
How about government publications? I don’t think one can prosecute patent applications without having a copy of the Manual of Patent Examination Procedure at hand. Of course, it will be out of date because it is update so infrequently and on such a slow cycle, so maybe the best place to check it is on the PTO’s website. While there, you can also check the practice advisories, which are always more current and often more helpful too. But in the trademark area, I’d use the Practitioner’s Trademark Manual of Examining Procedure, for it is reasonably current and annotated to include relevant cases and materials that the PTO’s TMEP overlooks or ignores or hasn’t gotten to yet.
To summarize, then, here’s my best IP library selections:
Patent –
Chisum on Patents - to buy, $2430; yearly updates, $2070.
Patent Application Practice - to buy, $515; yearly updates, $480.
Patents Throughout the World - to buy, $500; yearly updates, $400.
IP Counseling and Litigation - to buy, $1170; yearly updates, $1000. (est.)
Trademark –
McCarthy on Trademarks and Unfair Comp. - to buy, $1695; updates,$1600.
Trademark Registration Practice - to buy, $440; yearly updates, $350.
Trademarks Throughout the World - to buy, $450; yearly updates, $300.
Trademark and Copyright Disputes - to buy, $185; yearly updates, $140.
Copyrights –
Goldstein on Copyrights - to buy, $625; yearly updates, $600 (est.)
Copyright Registration Practice - to buy, $460; yearly updates, $420.
Licensing –
Milgrim on Licensing - to buy, $530; yearly updates, $400. (est.)
Trade Secrets –
Trade Secrets by Pooley - to buy, $195; yearly updates, $200.
Government – none; instead use the internet and:
Practitioner’s Tm. Manual of Exam. Proc. - to buy, $210; updates, $380.

So, what does this “best” IP library cost? If you are buying it new today, about $9400. If you have these books already, their yearly combined updating costs should total about $8340. If your practice does not cover the entire IP waterfront, these numbers would be less, of course. And if you are willing to settle for Chisum’s Patent Law Digest instead of his tome, you can save about $2300. on the purchase costs of the library, and about $1900 on its updating costs per year. Especially if you forego Chisum's tome, you shuld have Mueller's An Introduction to Patent Law 2d Ed.
At least that is what I think the best IP library would be. And why. And what it would cost. What do you think? Send a posting and tell the IP world. (JH)

PTO Fees and 1, 2, 3

2006-03-23T11:33:00.000-08:00

This actually happened. A patent application was pending before the PTO. In forwarding a response that required an extension of time, being on the cusp and not sure when the response would be sent or received, the applicant paid the extension of time fee using the PTO’s credit card option (37 CFR 1.23b), instructing the PTO to charge the requisite fee to a designated credit card.
Tilt. The response , it turned out, required payment of a two month extension fee. However, when other than a specific amount for an extension of time is designated on the credit card payment form, the practice at the PTO is to charge a one month extension to the card. Which meant that the fee was insufficient. Which meant that the applicant was notified of this. Which meant that a MUCH larger fee had to be paid to return the application to the examination group.
Is this one month rule proper? Rule 1.23b in relevant part states: “payment of a fee by credit card must specify the amount to be charged to the credit card . . .” The applicant argued that the original credit card authorization had directed that the appropriate fee for the required extension of time be charged. The PTO did not do this. Instead, it charged a one month fee when a two month fee was required.
The applicant was informed by the petitions examiner of the one month rule, the petitions examiner citing Rule 1.23b. The applicant responded that this rule only requires that the specified amount be designated, and it was: the amount for the required extension of time. The petitions examiner replied, again citing the one month rule and explaining that an open-ended fee authorization can only be used for fees charged to a deposit account at the PTO.
So, what does all this teach?
1. Don’t use a PTO credit charge authorization for payment of a fee designated in any way but as a stated dollar amount.
2. The PTO is interpreting “must specify the amount to be charged” in Rule 1.23b, when it applies to “the requisite” extension of time payment, as authorizing only a one month extension fee. When it is insufficient, too bad.
3. Don’t argue. Just bite the bullet and pay.

It sure looks to me like the PTO is interpreting Rule 1.23b in an unjustified way. The Rule only requires the amount to be charged to the credit card to be “specified.” What it apparently means, or is being interpreted to mean, is that the charge must be in a specified dollar amount. When it is not, and when the charge applies to an extension of time, then the one month rule applies. (JH)

March 17, 2006 - The Three Requirements for Patentability

2006-03-17T12:31:00.000-08:00

Again and again I see in decisions and articles, and hear in speeches, the three requirements of patentability – an invention must be new, useful and non-obvious. That is WRONG.
The requirements for patentability are set forth in the Patent Statute – 35 USC sec. 101 clearly states that, for an invention to be patentable, it must be new, useful and in one of the four named statutory classes – process, machine, manufacture or composition of matter.
So the three requirements for patentability are: (1) the invention must be new, (2) the invention must be useful, and (3) the invention must be in one of the four statutory classes.
The requirement of non-obviousness set forth in section 103 is just an aspect of the novelty requirement set forth in section 102. Indeed, §103 even begins: “a patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences . . .” etc.
So the “new” requirement of §101 includes both the identical aspect of §102 and the non-obvious aspect of §103.
Please, if in the future you refer to the three requirements of patentability, and go on to state them, say that the invention must be new, useful and in a statutory class. Anything else is wrong.

March 17, 2006 - What's in a Name?

2006-03-17T11:47:00.000-08:00

Shakespeare thinks, “Not much.” Trademark owners think, “Everything.”
Patent attorneys, however, don’t seem to care. For decades they’ve called design patents and plant patents by those names, probably because that is what the patent statute and everybody else calls them. But they call sec. 101 patents "utility patents."
Inventions covered by 35 USC §101 are called, in the statute, “patents for inventions.” (See for example §§ 161 and 171.) Patent attorneys have for decades called them “utility patents,” possibly because of the “useful” requirement of §101. Yet plant patents are “useful” in the at least the senses set forth in §163, and design patents are also useful in that same way. So to call a §101 patent for an invention a “utility patent” doesn’t seem to be quite apt. And if we patent attorneys pride ourselves in anything, it is being apt.
What better name might a §101 patent be called. I think, and suggest, that the best way to distinguish a §101 patent from at least the other kinds of US patents is to call it a “technology patent” for clearly it must relate to an invention in one of the four classes of technology set forth in §101. In contrast, a design patent is for something that is ornamental - an ornamental article of manufacture. It relates to ornamentation, not technology. Similarly, a plant patent relates to an asexually reproducible variety of plant. It may incorporate considerable technology, but the plant patent itself only prohibits asexual reproduction of the plant, not use of the technology it incorporates in any other way. If the inventor wants to prevent others from using the plant’s technology, then a §101 patent must be obtained.
For these reasons it seems to me that a §101 patent is aptly described as a “technology patent,’ not a “utility patent.” If you, too, like apt things, you are welcomed to use this designation as often as you wish. If you think of a better name, please post it. (JH)