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

2010 National Medal of Technology and Innovation

The USPTO is accepting nominations for the National Medal of Technology and Innovation.  The nomination deadline is March 31.    The USPTO reports that the “Medals are presented annually by the President of the United States to men and women who have made lasting contributions to America’s competitiveness, standard of living and quality of life.”  Please consider nominating Michigan innovators for this award. (Nomination Form).

One organization promoting and providing resources for Michigan innovators is the Michigan Small Business & Technology Development Center.

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 Term Adjustment Refigured

The Federal Circuit recently rejected the USPTO’s method of calculating patent term adjustments (“PTA”) under 35 U.S.C. 154(b) in Wyeth v. Kappos No. 2009-1120 (January 7, 2010).  An issued patent has a term of 20 years from the filing date of the patent application, and then it expires.  35 U.S.C. 154(b) provides for adjustment of that patent term to extend the term due to USPTO delay in examining the application, which may be decreased due to applicant delay in prosecuting the application.  The Federal Circuit just rejected the USPTO’s interpretation of 35 U.S.C. 154(b)(2)(A) regarding “overlap” calculations.  Accordingly, the USPTO is in the process of changing its PTA calculations.  Please note that an applicant has 180 days after patent issuance to seek review of the USPTO’s PTA calculation.  However, patentees should consider whether they are eligible for patent term recalculation based upon this decision.

See also Dennis Crouch Patently-O posting:  Wyeth v. Kappos: Appellate Panel Confirms that PTO Is Miscalculating (Undercalculating) Delays in Prosecution and the Corresponding Patent Term Adjustment

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).

Microsoft Challenges Invalidity “Clear and Convincing” Standard

In an en banc petition to the United States Court of Appeals for the Federal Circuit, Microsoft challenges the “clear and convincing” standard of proof required to render a patent invalid.

It is black letter law in the field of patents that once a patent is issued, it is presumed to be valid and “clear and convincing” evidence is required to overturn the presumption of validity to prove a patent invalid.  In its petition in the Lucent v. Gateway litigation originating in the United States District Court for the Southern District of California, Microsoft argues that the standard of proof for an invalidity defense should be “preponderance of the evidence” for prior art defenses where the prior art had not been before the U.S.P.T.O. examiner during prosecution of the patent-in-suit.

USPTO Issues Interim Examination Guidelines for 35 U.S.C. §101 Statutory Subject Matter

Pending U.S. Supreme Court review of the Federal Circuit’s Bilski decision and recognizing that the state of the law in this area is in flux, the USPTO has issued instructions for its examiners to use in determining patentability under 35 U.S.C. §101.   The guidelines state that §101 patentability includes two requirements: (1) subject matter; and (2) utility.

Intellectual Property Attorneys | Patent Indemnity & The International Sale of Goods (“CISG”) Treaty

If you have been sued for patent infringement and the accusations are based upon goods that you purchased from an entity located in a different country, the CISG may be a vehicle to seek indemnity for intellectual property (IP) and patent damages.

Article 1 of the United Nations Convention on Contracts for the International Sale of Goods (“CISG”) treaty provides that it “applies to contracts of sale of goods between parties whose places of business are in different States” when the states are contracting states under the CISG.  Article 10 of the CISG provides that “if a party has more than one place of business, the place of business is that which has the closest relationship to the contract and its performance.

Active Inducement of Patent Infringement

35 U.S.C. 271(b) provides:

Whoever actively induces infringement of a patent shall be liable as an infringer.

Specific Intent

Liability for active inducement of infringement requires specific intent – that the inducer’s actions induced direct infringement and that he knew or should have known his actions would induce actual infringements.  DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc), citing, Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 554 (Fed. Cir. 1990); see also Cross Medical Products, Inc. v. Medtronic Sonfamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005) (“that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement”)

Contributory Infringement of Patent Rights

35 U.S.C. § 271(c) provides:

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

How do you determine if someone is infringing a patent?

Patent infringement is a two step legal analysis.  First, the claims of the patent are construed to determine, as a matter of law, what they mean.  Claim construction, or the meaning of the patent claims, is generally determined by review of intrinsic evidence pertaining to the patent.  Intrinsic evidence includes the patent itself (claims, specification, drawings), the file history comprising records of the prosecution of the patent before the U.S.P.T.O, prior art made of record during the prosecution, and file history records of any related patent applications claiming common priority to the patent at issue.  If claim meaning cannot be determined by the intrinsic evidence, extrinsic evidence may be considered.  Extrinsic evidence may include technical dictionaries or treatises contemporary in time to the priority date of the patent and relevant to the particular field or industry, industry use, prior art patents, evidence of what one of ordinary skill in the relevant field knew and/or inventor or expert testimony. 

Provisional Patent Application

Q. What is a provisional patent? A.  There isn’t a provisional patent.

Rather, one type of application for a patent that may be filed with the USPTO is a provisional patent application.  Generally speaking, a provisional patent application preserves a filing/priority date and stays alive for one year, after which the applicant may elect to convert it to a regular utility patent application, or allow the provisional application to die.  Unlike regular utility patent applications, the USPTO does not examine the provisional application.  It merely sits on the PTO shelf.  If the applicant elects to convert it to a utility case, then regular PTO examination of the case proceeds.  If the applicant elects to discontinue patenting efforts for the subject matter, the provisional application merely expires and the file remains unpublished.

Patent Litigation – an Investment Opportunity

Investors seeking new investment choices are turning to IP.  VC’s and others having made a business out of investing in start-up companies relying upon intellectual property to support new emerging technologies and business plans, report that IP is still hot as a lucrative investment choice.  Technologies such as green energy or industries likely to be receiving bail-out funds are examples of IP areas viewed as possible hot investment options.  In addition, given that many traditional investments are less desirable in the current economy, investors not previously having turned to patent assets, are opening their eyes to new possibilities, including funding patent litigation.  Patent litigation investment opportunities may include funding an individual patent litigation for a return based upon recovered damages, or establishing a fund to support a handful of cases, and in that sense creating a more diversified portfolio to spread investment risk.  Teamed with patent litigation counsel performing due diligence on patents and infringement cases, some investors are carefully selecting patent litigations in which to invest.

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).