Leahy-Smith America Invents Act Implementation

The U.S. Patent and Trademark Office has an online guide on the  implementation of the America Invents Act and how the law effects patent examination, post-issuance matters, and USPTO fee and budgetary issues. The AIA website also provides the opportunity to submit comment on the AIA and the agency’s implementation of the law.

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What’s All This Patent Troll Stuff, Anyhow?

I was recently interviewed for a major article “Patent Trolls Come in All Shapes and Sizes” published today in the New York Observer.  The article is definitely worth a read.

One important case that is not mentioned in the article is Eon-Net v. Flagstar Bancorp.  And you may want to know what happened in that case because it was a bad day for non-practicing entities, that is, for patent trolls.

Eon-Net is a patent holding company that, with its related entities, had filed over 100 lawsuits against many companies for patent infringement.  In most cases, the companies settled for between $25,000 and $75,000 rather than going through the expense of a lawsuit, something which could easily exceed $1,000,000.   Flagstar Bancorp, however, decided to fight and spent over $600,000 to litigate the case, an amount that would have been substantially more had the district court allowed full discovery.

To the surprise of many, the court found in favor of Flagstar,

… Eon-Net’s case against Flagstar had “indicia of extortion” because it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation.

The court went on to state that Eon-Net “acted in bad faith by exploiting the high cost to defend complex litigation to extract a nuisance value settlement”, that cases like theirs are meritless, and that as a non-practicing entity (i.e. troll) Eon-Net faced little risk in filing lawsuits; they faced no business risk, were generally immune to counterclaims, antitrust, and unfair competition claims.

For their legally baseless infringement allegations, the Court of Appeals for the Federal Circuit affirmed the district court’s decision to impose Rule 11 sanctions against Eon-Net.

What does that mean?  It means the court may impose monetary penalties which may include awarding reasonable expenses, including attorney’s fees, to the prevailing party (in this case, Flagstar).

And it means a potentially very bad decision for trolls who now might want to reconsider their strategy of filing a barrage of lawsuits.

[Read more...]

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Full First Action Interview Pilot Program continues until May 16,2012

Under the program, participants were permitted to conduct an interview with the examiner after reviewing a Pre-Interview Communication providing the result of a prior art search conducted by the examiner.  Participants experienced many benefits including:  (1) the ability to advance prosecution of an application; (2) enhanced interaction between applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and (4) the opportunity to facilitate possible early allowance.

Requests filed on or after April 1, 2011 and before May 16, 2012 will be granted if all requirements are met.

Link: Full First Action Interview Pilot Program.

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Patent Reform Bill Clears Senate

The Senate approved the Patent Reform Act which would transition the U.S. to a first-to-file system instead of the current first-to-invent system.  The Act also creates a nine-month “first window” post-grant procedure to allow challenges to patents.

Links: WSJ, law.com, Patent Reform Act Bill 112 S 23 RS.

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USPTO Patent Data for August 2010

August 2010 Patent Data USPTO

August 2010 Patent Data USPTO

via bnet.com, USPTO Data Visualization Center.

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Supreme Court: Software is Patentable

The Supreme Court has issued its long awaited opinion in Bilski v. Kappos.  Read it here.  The Supreme Court essentially affirmed the Federal Circuit’s decision which is summarized here.

via Patently-O and Filewrapper.

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Business Method Patents at the U.S. Supreme Court

On June 1, 2009, the United States Supreme Court granted certiorari in Bilski v. Doll, and will consider whether the en banc decision of the Court of Appeals of the Federal Circuit “Federal Circuit” in subjecting business method patents to the “machine or transformation” test was appropriate. Specifically, the Supreme Court will consider the following two issues:

  • Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing “machine-or- transformation” test, to be eligible for patenting under 35 U.S.C. §101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”, and
  • Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. §273.

via Business Method Patents at the U.S. Supreme Court – Martindale.com.

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Apple Buys iPad Trademark from Fujitsu

ipad_fujitsu_apple_tm_assignment_124315Apple now owns the iPad trademark.  The trademark (Serial No. 76497338) was filed by Fujitsu in March of 2003 for their iPad wireless handheld computing device used by retailers.  Records at the U.S. Patent and Trademark office show that the trademark was assigned to Apple on March 17.

There has been much speculation over the last few months about the iPad trademark.  Apple initiated opposition proceedings challenging the validity of the mark in September last year.  However, the proceedings never developed into anything substantive and Apple simply filed three requests for extensions of time, presumably while they were in talks with Fujitsu.

The assignment is public record and can be purchased from the USPTO by requesting Reel/Frame: 4168/0447.

Links: IPAD Trademark Description and History, Assignment from Fujitsu to Apple, Order Copy of Trademark and Assignment.

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$2.322 billion to USPTO for 2011

* Up 23 percent from 2010′s expected budget.

* Proposal to increase statutory patent fees by 15 percent.

* USPTO hoping to reduce average of 34.6 months to approve or reject a patent application.

links: FY2010 President’s Budget Request, USPTO Budget, Plans, and Reports.

(via U.S. patent office gets boost in Obama budget | Reuters)

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PTO Rescinds Controversial Patent Rules

The claim and continuation rules that were supposed to go into effect on November 1, 2007 are dying a slow death… thankfully.

via Law.com – PTO Rescinds Controversial Patent Rules.

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