Patent Attorney, Lawyer Law Firm. Handling Patent Prosecution & Litigation Cases

Patent Reform Isn't Over

As part of the patent reform act signed into law, Congress tasked with the PTO with making changes, but did not instruct the PTO how to implement changes.  Rather, Congress put ongoing requirements on the USPTO for change, in the form of proposing rules changes to implement the new law, gathering public opinion and comment regarding the proposed changes and devising final rules changes to implement many of the new provisions in the America Invents Act (AIA).  For example, in December, the PTO  published proposed rules for supplemental examination and to revise reexamination fees.  The PTO also announced public hearings and request for comments on genetic diagnostic testing per the AIA.  If you are interested in having your opinion heard by those who will be making the rules for the patent landscape for years to come, you have opportunity to get involved.

How long does it take for the USPTO to look at my patent application?

We've come to expect a 1-2 year time period before the USPTO issues a first office action in response to a newly filed utility patent application.  And that's typically just the beginning of the prosecution back and forth between a patent applicant and the patent examiner in trying to obtain allowance of the patent claims.  Under the America Invents Act (the patent reform legislation), the USPTO Director optimistically reported yesterday that the backlog of patent applications awaiting prosecution is now down to only 660,000.  That still seems like a lot, but he reports that the PTO has just hired a fleet of new examiners to attempt to tackle the backlogged cases. 

There also is an excellerated examination option, which provides for a quick patent examination period (12 months).  This option sets additional requirements upon a patent applicant, including payment of higher fees.  But for time sensitive inventions – where an inventor benefits greatly from having an issued patent now – this option is worth considering. 

International Patent Protection for Small Businesses and Prior User Rights Studies

The Federal Circuit Bar Association:  International Patent Protection for Small Businesses and Prior User Rights Studies

The USPTO is presently working on the International Patent Protection for Small Businesses and Prior User Rights Studies, both of which have reports due to Congress in mid-January. They recently published two Federal Register Notices (available on the PTO website) seeking written comments and/or testimony in a hearing setting from the public. The Notices are also available here:

• International Patent Protection for Small Businesses Study
  

• Prior User Rights Study

The agency would greatly benefit from public input on both studies, either through written comments and/or oral testimony at the hearings they have planned. Here are the logistics for those hearings:

•    International Patent Protection: Thursday, October 27th from 1 to 4 PM at the USPTO and Tuesday, November 1st from 9 AM to noon at USC Law School in Los Angeles
•    Prior User Rights: Tuesday, October 25th from 8:30 to 11:30 AM at the USPTO

Thank you, and we hope you can take advantage of this opportunity to participate in the dialogue about the America Invents Act.

Patent Reform Imminent

U.S. Congress has been discussing patent reform for a number of years now.  Various versions of bills have been tossed around and debated at length, and the patent issues generally have then been put on a shelf, taking back burner to other important issues requiring the attention of Congress.  It really had gotten to the “never cry wolf” stage for if/when anything was to come of the patent reform discussions and patent lawyers had grown weary with breath holding wondering if change was going to take place.  However, this week, both the House and the Senate have passed bills to make the proposed patent reforms into law.  The legislation has landed on President Obama’s desk.  It appears that he will sign the pending bill into law shortly.

Senate Passes Landmark Bill to Overhaul U.S. Patent System

On September 8, 2011, a late congress passed legislation dubbed “The America Invents Act” in an overwhelming 89-9 vote.  President Obama is expected to sign it into law within the next week.  In this CNNMoney report by David Goldman, the bill will mandate three things:

What is inequitable conduct in patent prosecution?

Inequitable conduct, often called “fraud upon the patent office,” generally means that in trying to obtain a patent, the applicant was not honest with the patent office and failed to disclose prior art or other information known by the applicant that was material to the patentability of his/her invention.  Patent prosecution rules include a Duty of Candor, which requires the applicant and his/her representatives to disclose material information to the USPTO during prosecution of the patent application.  Should an applicant withhold material information and thus commit inequitable conduct, the result is that the patent would be deemed unenforceable.  This is an equitable doctrine.  It means that even if the patent is valid, the applicant would be precluded from enforcing it against infringers due to the fraud upon the patent office.  Inequitable conduct is a defense sometimes raised to allegations of infringement.

Patent Validity: U.S. Supreme Court Grants Microsoft's Petition for a Writ of Certiorari

The U.S. Supreme Court has granted Microsoft’s petition for a writ of certiorari seeking review of the stand of proof required to prove a patent invalid.  Under current U.S. law, invalidity of a patent must be proven by “clear and convincing” evidence.  The clear and convincing standard is a higher standard than the most commonly used standard in civil cases: “preponderance of the evidence,” which is often discussed as “more likely than not” or considered to require proof just beyond 50%.  Patent infringement, as opposed to invalidity, is determined by the “preponderance of the evidence” standard.  The “beyond a reasonable doubt” standard, used in criminal cases, is a higher standard than “clear and convincing” evidence, and “clear and convincing” is generally considered to be somewhere between “preponderance of the evidence” and “beyond a reasonable doubt.”

Patent Infringement Dispute: Java FX Developer Oracle is Less Than Enthused with Google’s Android Software

Oracle Corporation (Oracle) filed the patent infringement lawsuit against Google in the U.S. District Court for the Northern District of California. Oracle’s complaint seeks monetary damages for willful infringement. Along with an injunction to immediately halt Google from building and distributing the Android Smartphone.

Wiki describes Oracle Corporation as a multinational computer technology corporation that specializes in developing and marketing enterprise software products — particularly database management systems.

The Android is Google’s premier Internet and social media Smartphone. Google’s use of open source code, on top of (and based off of) Oracle’s different Java codes, for use in running and writing applications for the Android operating system on its Google Android Smartphone, allegedly infringes on patented Java technologies.

Oracle’s complaint alleges that Google’s use of Java code source and applications opens Google up to liability for partial-infringement of seven different Oracle owned patents.

The complaint also alleges that Google knows, or should have known, of these different infringements because Google hired former Sun Java engineers to work in developing the Android operating system.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Patent Lawyer Update: Federal Circuit Examines Intent to Deceive Factor for Falsely Marked Goods in Pequignot

35 U.S.C. § 292 provides a powerful tool for enforcing patent rights against infringers who falsely mark a good as patented or patent pending when it is not actually patented or pending. § 292 provides that any person may sue for the penalty against infringers falsely marking a good as patented, where such infringers “shall be fined not more than $500 for every such offense.”

Along with the false marking element, § 292 also requires that the marking of an unpatented good is done with intent to deceive the public. Closely connected with the second § 292 element, liability for patent infringement requires that the infringer had notice of the infringement and ignored such notice.

An easy way for a valid patent owner to satisfy the notice requirement is to mark each patented good with the appropriate issued patent numbers. However, valid patent owners must take care in marking the goods so as not to open themselves up to § 292 patent infringement liability by mismarking a patented good or, conversely, by marking an unpatented and non-pending good as patented.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Supreme Court affirms Bilski

Today the US Supreme Court affirmed the determination in Bilski that the patent at issue was invalid, but rejected the Federal Circuit’s holding that the “machine-or-transformation” test was the sole test for determining patentability of a process under 35 U.S.C. 101.  The Supreme Court held that use of this test as a being determinative for patentability (as opposed to being useful and/or giving a clue as to whether something meets the statutory criteria for patentability) improperly reads additional requirements into patentability statutes and violates statute interpretation principles.  Fueled by hi-tech inventions where subject matter is no longer always grounded in traditional industrial tangible materials, the Supreme Court envisioned that patentable processes in the Information Age may fail the “machine or transformation” test yet still be patentable subject matter.  The Supreme Court did not want to fix the Section 101 on a test that may not apply for emerging technologies and which would not serve the statutory provisions of Section 101.  The Supreme Court also rejected a blanket rule banning patentability for business methods as a category of unpatentable subject matter.  Rather, in order to be patentable as a process under Section 101, the invention must meet the statutory criteria for patentability under 35 U.S.C. 102, 103, 112, as well as not be abstract.  In rejecting exclusive use of the “machine or transformation” test, the Supreme Court left open the possibility that the in the future the Federal Circuit may develop other limiting criteria that is not inconsistent with the text of Section 101.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).