Author: Judith

Women in IP Law Panel on Mentoring, March 27th, 6-8:30 p.m. in Palo Alto

Date: March 27th, 6 – 8:30 p.m.

Location:
Foley & Lardner, LLP
975 Page Mill Road
Palo Alto, CA 94304

Please join us for a panel discussion regarding mentoring and the positive effects it has on one’s career. This program is sponsored by WIPLA.

Panelists:
Nan Joesten, Principal, Rapid Evolution LLC
Bernie Shay, General Counsel, Miramar Labs
Felissa Cagan, Senior Patent Counsel, Johnson & Johnson

Moderator: Beth Roemer, Chief Empowerment Officer, Access Coaching

Please RSVP by March 26, 2012 via mail to Beth Roemer at bethroemer@gmail.com.

Do the new Derivation Rules published by the Patent Office include a Catch-22?

The Patent Office has published the new rules for instituting a claim of derivation.  Derivation proceedings were part of the shift to First to File, which allows someone who can prove that the first filer stole their idea to obtain the patent, even though they were not first to file.  It effectively replaces interferences, but requires not just first invention, but actual demonstration of theft.

The basics are that the petition must state with peculiarity the basis for the charge of derivation, must be filed under oath, and must be supported by substantial evidence.  However, the new rules appear to have a built-in Catch-22 with respect to publication.

The petition must be “filed within one year of the first publication by the earlier applicant of a claim to the same or substantially the same invention.” However, “derivation is unlikely to be declared even where the Director thinks the standard for instituting a derivation proceeding is met if the petitioner’s claim is not otherwise in condition for allowance.”

The requirement that inventors monitor the Patent Office publications closely is difficult, especially when the published claims may not reflect the (derived) later claims.  But more importantly, the timing can be impossible.

The senior applicant (e.g. the one accused of derivation) may request an early publication.  Currently accelerated publication ensures that a patent application is published as early as possible, and generally 14 weeks after receipt of the request.

This could mean that a junior applicant’s case may not even be filed, much less examined, even under the 18 month first action standard, before the petition to initiate the derivation proceeding has its deadline.  Even if the junior applicant files shortly after the senior applicant, with accelerated publication it’s unlikely that the junior applicant’s case would be in condition for allowance by the time the one year deadline rolls around.

Am I missing something?

US Patent Office PAIR Monitoring

There are numerous services to monitor Public PAIR.  This is useful to monitor the status of one’s own cases, as well as the status of the cases of one’s competitors.

For one’s own cases, for example, if an After Final Amendment or a Petition is filed, it does not stop the clock for a response.  Monitoring PAIR to ensure that any Advisory Actions or Petition responses are timely received is very helpful.  Similarly, once an Issue Fee is paid, you have until the case actually issues to file a continuation application.  While an Issue Notification is provided by the Patent Office, the Issue Notification is often provided days before the actual issue date.  Therefore, it is worth monitoring PAIR to ensure that this information is obtained at the earliest possible time.

For one’s competitors’ cases, it is useful to know when cases are going to be issuing, or substantive office actions are received.  As the post grant procedure comes into effect, starting on September 16 of this year, knowing right away that a competitor’s case is about to issue becomes even more important.

Of course, in any Reexamination, the timelines are tight, and having an extra few days by receiving the copies of any office actions or filings by the opposing party is useful.

These services range in cost.  For example,

CE Status for example provides a PAIR monitoring for $180.00 per case per year.

Cardinal IP monitors public PAIR for $10 per case per month (e.g. $120 per case per year).

Questel provides PAIR monitoring, as well as monitoring international patent offices.  I could not find pricing online. (If someone provides this data, I will update this)

Maxval also provides public PAIR monitoring for $60 per case per year.

Of course, it is possible to manually monitor PAIR as well.  There is an advantage to doing so in-house, because it enables access to Private PAIR, rather than just to Public PAIR, as with the listed services.  However, this is time consuming, and requires administrator time on a daily or weekly basis.  Currently my Admin monitors PAIR on a weekly basis, on Mondays.  The day of the week was selected because patents issue on Tuesdays, and I want to ensure I get even last minute issue notifications.

I’m working on writing a script to see if I can use Private PAIR with a script (though I may need to sign in manually).  Does anyone know of a functioning script or application that works well, and isn’t too expensive?

I’m attending the Patent Office’s Sunnyvale Fee Setting Hearing

I will update this post after the hearing, or potentially during the hearing if network is accessible. I expect that my opinions will not get much traction, since the Patent Office isn’t a big fan of small inventors, but I do intend to express my dislike of the huge increases in RCE fees & Appeal fees.

I would much rather have the fees shifted to either larger patents (e.g. patent size fees increased by a lot more) or shifted to maintenance fees. If you have opinions about the fees, and want to have input, attend a hearing, or write to the Patent Office. Let your voice be heard.

ITC Can Block Imports for Trade Secret Misappropriation Outside the United States

ITC can block imports for trade secret misappropriation outside the United States

In Tian Rui Group v. ITC, the Court of Appeals for the Federal Circuit ruled that the International Trade Commission (ITC) can prevent the importation of products made by a trade secret process misappropriated abroad, if the trade secret was developed in the United States.

In this case, Amsted (and American company) uses a trade secret process to make railway wheels. They license a different process to companies in China and elsewhere. Tian Rui hired former employees of Amsted, in China, to learn Amsted’s secret process. They made wheels, using the secret process, and shipped them to the U.S.

Amsted asked the ITC to block Tian Rui’s importation of the wheels produced by this trade secret method. The ITC issued an exclusion order, which was appealed to the CAFC.

The ITC relied on 19 U.S.C. § 1337(a)(1)(A) which provides the ITC authority over “Unfair methods of competition and unfair acts in the importation of articles . . . into the United States” if it will substantially injure and industry in the U.S. The ITC previously has used this section to bar products based on a variety of non-statutory unfair acts, including trade secret misappropriation. However, this was a case of first impression, with respect to actions taking place entirely outside the United States.

The CAFC, in a 2-1 decision (Bryson & Schall for the majority, Moore dissenting) ruled that while U.S. laws generally do not apply extraterritorially (e.g. outside the United States), the prevention of domestic injury from importation of products made using unfair methods justifies applying the statute to such acts.

The court further held that unfair competition bed actions are Federal, and thus ruled by federal law. Since the statute addresses importation, and provides a remedy in the ITC, federal rules should apply. By federalizing trade secret law, they could reach the conclusion, without expressly suggesting that U.S. trade secret law has extraterritorial reach. The court also noted that the statute does not require the use of the trade secret in the United States.

This ruling, which may yet be appealed, gives a powerful new weapon to U.S. companies, who face unfair competition from abroad. Since the law relied upon is not limited to trade secret misappropriation, the impact of the ruling may be quite broad.

If you believe that a product that is being imported by a competitor was produced using unfair acts, you may consider going to the ITC for a faster path to removing that competing product from the U.S. market. Keep in mind that the ITC judgment does not result in damages awards, but in exclusion orders.

Interesting Lecture on doing business in Germany

I couldn’t find a description of this lecture, which I received via email invitation from an accountant my family in Germany has worked with over many years. I thought it was interesting enough to repost, so here it is.

Haeckl & Partner GmbH,
The Munich Network e.V. and
YES Partners
Cordially invite you to a discussion on

Doing Business in Europe
Bavaria – Your Key to Success

Followed by a networking reception with Bavarian specialties

When: Tuesday, November 1st, 2011, 5.00 pm – 8.00 pm
Where:

Stanford University Faculty Club
439 Lagunita Drive
Stanford, CA 94309
Red Lounge

Admission: $25 prepayment or $35 at the door

To make payment: Go to www.bridgellp.com and
go to the MAKE PAYMENT PAGE
To register: Contact slubbering@bridgellp.com
or contact Samantha at 818.988.2233

Agenda

Registration

5:00pm Welcome & Introduction (Moderation)
Introduction of the “German” team
E. J. Dieterle – Global Executive Search – YES Partners
John Gosch, CPA – Bridge, llp
Achim Hoelzle – FeldbergPacific Law Group

5:10pm Business Location Bavaria: Facts and Figures
Lucie E. Merkle| Executive Director,
Bavarian U.S. Offices of Economic Development, LLC

5:20pm Tax and Legal Aspects of Doing Business in Germany
Reinhard Häckl | CEO, Häckl und Partner GmbH

5:40pm Mobile Security: How to collaborate with Giesecke & Devrient
Thorsten Roeske | Head of Innovation and Alliances,
CTO Office, Giesecke & Devrient

5:50pm Enabling Technologies: How to collaborate with Robert Bosch
Cyril Vancura | Investment Director, Robert Bosch LLC

6:00pm Test & measurement, communications and broadcasting
equipment: How to collaborate with Rohde & Schwarz
Chris Eriksen, Region Sales Manager, Rohde & Schwarz

6:10pm How Silicon Valley TechVentures can benefit from
Munich Network´s strong TechIndustry members
Curt Winnen | General Manager, Munich Network e.V.

6:20pm How the German Silicon Valley Accelerator works
Dirk Kanngiesser | CEO
German Silicon Valley Accellerator Inc.

Reception with traditional Bavarian specialties

Legal Challenge to End of False Marking Claims in America Invents Act

The first challenge to the America Invents Act is against the termination of the private right to enforce false marking. The end to false marking, providing that the only private litigants with a claim are competitors who can show actual harm, became effective immediately after President Obama signed the America Invents Act. It applied to all cases, including those pending. Since then, numerous cases have been dismissed, including some sua sponte.

Ken Brooks had a pending case against Dunlop Manufacturing, in the Northern District of California, San Francisco for false marking, filed back in 2010. In response to Dunlop’s Motion to Dismiss, under the new America Invents Act rules, Mr. Brooks brings a constitutional challenge to the AIA. In his memorandum Mr. Brooks states that he relied upon the statutory right which existed prior to the passage of the AIA, and that this destroyed an existing property interest. He cites to U.S. ex re. Stevens v. State of Vermont Agency of Natural Resources (162 F.3d 195, 2nd Circuit 1998) which held that qui tam plaintiffs have a private property interest in the outcome of such cases.

While the brief is written rather flamboyantly, and likely to appeal to lay readers not the judge, the point is interesting. Mr. Brooks did in fact invest some amount of money in pursuing this case, in the clear expectation of recovery, if he could prove a violation of the false marking act.

Of course, the Supreme Court held unanimously in the United States v. Carlton that retroactive tax laws were constitutional, thus making it unlikely that Brooks would succeed in his claim.

Furthermore, there are at least two cases that held that qui tam actions for false marking are unconstitutional, prior to the passage of the America Invents Act. This may mean that the court would find the act a mere clarification of an existing standard.

The more interesting question is whether, if any challenge is successful, the entire statute would be thrown out, since the America Invents Act does not include a severability clause.

Via Greg Aharonian‘s eponymous newsletter.

Timing of Changes due to Leahy-Smith America Invents Act

This is a handy table of timings and applicability of the various changes in the Act.

 

Item Date of Change and Applicability

 
Fee Surcharge (15%) September 26, 2011

For all fees paid after this date
First to File March 16, 2013

For all patent applications having an effective filing date on or after this date
Prioritized Examinations September 26, 2011

Applications filed after this date, upon payment of fees, or request based on economy/competitiveness regulations
Public use/on sale bar

international

 March 16, 2013

For all patent applications having an effective filing date on or after this date
Derivation Proceedings March 16, 2013

For all patent applications having an effective filing date on or after this date
Submission Of Art and

Argument by Third Party

 September 16, 2012

For all patents, then pending, or later filed
Assignee May File Patent

without inventor signature

 September 16, 2012

All patent applications filed on or after this date.
Elimination of Tax Strategy & Human Organism patents September 16, 2011

Applies to all patents pending on, filed on, or filed after this date.
Prior Commercial Use Defense September 16, 2011

Applies to all patents issued on or after this date
Post Grant Review for Business Method Patents September 16, 2012

Applies to all patents, regardless of issue date.
Post Grant Review September 16, 2012

Applies to all patents issued less than nine months before, on, or after this date.
Inter Partes Review September 16, 2012

Applies to all requests for inter partes reexam filed after this date.
Supplemental Examination September 16, 2012

Applies to any patent issued before, on, or after this date
Elimination of Best Mode In Litigation September 16, 2011

For any proceeding commenced on or after this date.
Restriction of Joinder and Venue September 16, 2011

For any proceeding commenced on or after this date.
Virtual Marking and restriction of

Marking cases

 September 16, 2011

For any proceeding pending on, or commenced on or after this date.

Zoe Lofgen about The State of the Net, on Sept. 19, 2011

Protect IP Act

Zoe Lofgren discussed the Protect IP Act which has a multi-pronged approach, to systemic piracy:   attack via removing the money, Visa and credit providers must cooperate; ensure no money via advertising; force ISPs to remove them from the Net: force DNS providers to remove pointers; and force search engines and other websites to remove all hyperlinks.  It also includes a private right of action to enforce these prongs.

Lofgen supports all money restriction, but worries about DNS security disruption and private right of action.  Private right of action, like with patent trolls, marking trolls, and copyright trolls, will lead to what is in effect legal extortion.

DNS issue may destroy security infrastructure (as people turn to less secure DNS providers).  A recent paper on this topic was persuasive to her.

By pushing through this legislation it will also destroy the budding cooperation between content providers and web infrastructure companies, which will lead to bad results.

Lofgren’s advice:  Follow the Money. We can develop a scheme to prohibit profit, and we can do this without destroying network security.  This will handle almost all of the issues.

State of the net is challenged.

Lofgren opposes Protect IP Act (because of DNS, search engine/website, and private right of action), but is only one of a handful in the House. Senate would likely also pass it, except for Wyden’s Senate hold.

HR1981: Protecting Children from Internet Pornographers Act:  

This law would require ISPs to acquire name and credit card info, and retain record of all sites visited by all. ISPs would make this information available to government, without a warrant. Cover for massive expansion of govt power. It should be HR 1984, since it’s about total surveillance.

Lofgren notes that we must speak up, or this will pass. FBI wants this. Congress will give it to them, unless we speak up. Passed out of judiciary committee. Will pass, unless people speak up.

Q&A:

The new PTO offices should include an office in California, and the California delegation has spoken to the Commerce Department about this. They have also discussed with SJSU the possibility of providing a free location of the office, which may tilt the field toward Silicon Valley, instead of someplace cheaper.

Internet taxation:  Republican opposition to taxes in general makes this unlikely.

All Internet companies combined spend less on lobbying than one single phone company. This explains some decisions.  Technology companies need better lobbyists, instead of flying in & flying out.

We should be concerned, because many members of Congress don’t understand how search engines, and other technologies, work. (ad in Hill paper re @Google stealing content, no real source in ad, but probably MS.)

ICE asserts jurisdiction on copyright enforcement. And they don’t know what they are doing.

DOJ owned and operated by Hollywood. Take-downs based on forfeiture rules. IP Tzar has tremendous lobbying and influence by Hollywood and Recording Industry.

ICANN to be taken over by UN?  China may wish this to assert control over the Internet via UN power, e.g. small client state votes. If we can, we should keep ICANN for free Internet.  Keep it independent is key.

She also voted against the America Invents Act, although she was one of the original sponsors of the patent act some years ago.  She has been working on this for 10 years.  But this version, in her view, has become so heavily tilted away from IP creators as to be a negative overall.

Some Scenarios Exploring First to File or Disclose

I’m trying to figure out corner cases under the new America Invents Act rules. In most cases, people won’t be directly affected by the rule change, but I can see the below four scenarios coming up.

• Scenario #1: Inventor A invents and immediately discloses (by publishing in obscure journal). Inventor B invents, and files a patent application, but does not disclose. Inventor A files a patent application, after Inventor B. Who if anyone gets a patent?
• Scenario #2: If Inventor A and Inventor B both disclose at the same conference. Both then file a patent, Inventor A files before Inventor B. Who if anyone gets a patent?
• Scenario #3: Inventor A discloses X. Inventor B files a patent for X+Y. Subsequently, Inventor A files a patent for X+Y. Who, if anyone, gets a patent, on X, Y, and X+Y.
• Scenario #4: Inventor A has a non-enabling disclosure. A third party C publishes an enabling disclosure. Inventor B files a patent on the invention. Subsequently, Inventor A files a patent. (Timing is A disclosure, C publication, B filing, A filing). Who, if anyone, can get a patent?