This week was a busy week in the patent field. With summer in full swing and the end of the month coming, many were likely on vacation or working feverishly to close out the month. So you might have missed a thing or two. Understandable, but we have you you covered. Here are three things from the week you might want to know about for your practice existence, and some interesting industry news to share at the dinner table with your kids so they don’t think patents are boring.
Congress Considers Weakening Design Patents in Auto Industry
The U.S. House Judiciary Subcommittee on Intellectual Property, Competition, and the Internet held a hearing August 1, 2012, on H.R. 3889, the “Promoting Automotive Repair, Trade, and Sales Act” or PARTS Act, legislation introduced by Representatives Darrell Issa (R-Calif.) and Zoe Lofgren (D-Calif.).
Here is what the bill says:
With respect to a design patent that claims a component part of a motor vehicle as originally manufactured —
(A) it shall not be an act of infringement of such design patent to make or offer to sell within the United States, or import into the United States, any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured; and
(B) after the expiration of a period of 30 months beginning on the first day on which any such component part is first offered to the public for sale as part of a motor vehicle in any country, it shall not be an act of infringement of such design patent to use or sell within the United States any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.
You can still get design patents, they just won’t be enforceable if someone needs to infringe in order to restore a motor vehicle 30 months after the first day the component was offered for sale.
Congress Considers Making Patent Trolls Pay if they Lose
Congressman Peter DeFazio (D-OR) andCongressman Jason Chaffetz (R-UT) introduced the Saving High-tech Innovators from Egregious Legal Disputes Act, or SHIELD Act for short. If ever passed into law the SHIELD Act would ostensibly adopt a variation on the English Rule, where the losing patent owner pays the legal fees of the victorious patent defendant when there was no “reasonable likelihood” that the patentee would prevail in the litigation.
The SHIELD Act is very short and is only directed at computer and software patents, which makes absolutely no sense if you ask me. The seminal provision of the Act states:
Notwithstanding section 285, in an action disputing the validity or alleging the infringement of a computer hardware or software patent, upon making a determination that the party alleging the infringement of the patent did not have a reasonable likelihood of succeeding, the court may award the recovery of full costs to the prevailing party, including reasonable attorney’s fees, other than the United States.
Authorize the USPTO to Transmit Search to the EPO
The United States Patent and Trademark Office issued an Advisory to the patent bar, reminding everyone about regulations of the European Patent Office that require search results to be filed with the EPO without delay after the search results are made available to applicants. This arises in the situation where a European patent application filed on or after January 1, 2011 claims priority to a previously filed application.
It is understandable if you missed this announcement by the USPTO. The Federal Register Notice (76 FR 82279) announcing this was published on December 30, 2011, and undoubtedly went unnoticed by many, which is likely why the USPTO thought it wise to rather randomly issue an advisory.
Nintendo Prevails in Wii Patent Lawsuit
A U.S. District Court judge has summarily dismissed a patent-infringement lawsuit against Nintendo brought by Copper Innovations Group, LLC. Copper had alleged that the Wii console and its controllers infringed on one of its patents (U.S. Patent No. 5,640,152). Judge David Cercone of the U.S. District Court in Pittsburgh granted summary judgment in Nintendo’s favor and ruled that there was no need for a jury trial.
“We are very pleased with the court’s decision,” said Richard Medway, Nintendo of America’s deputy general counsel. “Nintendo has a long history of developing innovative products while respecting the intellectual property rights of others. We also vigorously defend patent lawsuits when we firmly believe that we have not infringed another party’s patent, despite the risks that this policy entails. I would like to express our sincere appreciation for the tireless efforts of our legal team.”