USPTO Proposes Electronic Sharing with Foreign Offices

The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Due to the confidential nature of unpublished U.S. patent applications, set forth in 35 U.S.C. 122, an applicant must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.

To facilitate electronic file sharing between IP offices, such as the sharing relating to the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO), USPTO is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the USPTO to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application. This would satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office.

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Federal Circuit Reverses Summary Judgment in Golf Club Infringement Case

On September 16, 2010, Nassau Precision Casting Co., Inc., owner of U.S. Patent No. 5,486,000, entitled “Weighted Golf Iron Club Head,” brought a patent infringement lawsuit accusing Acushnet of infringing claims 1 and 2 of the ’000 patent by making, offering to sell, and selling its Cobra S9, Cobra S9 Second Generation, King Cobra UFi, and Cobra S2 clubs. The ’000 patent describes what it says is an improvement in the distribution of weight within the head of a golf club. The purpose of the invention is to achieve “sweet spot-enhancement, i.e. significant improvement in the ball-striking efficacy of the club head, while maintaining the same starting overall weight of the club head.”

The United States District Court for the Eastern District of New York granted summary judgment of non-infringement to Acushnet. On June 6, 2014, the Federal Circuit affirmed in part, vacated in part and remanded after determining that, based on the district court’s claim interpretation, the only element found lacking from the accused device relative to claim 2 was in fact present in the accused device. See Nassau Precision Casting v. Acushnet Company, Inc.

Claim 1 of the ’000 patent reads:

1. In a golf iron club head of a type having a ball-striking body of weight-imparting construction material inclined at a selected angle for driving a struck golf ball a corresponding selected height during its trajectory, said body having spaced-apart top and bottom surfaces bounding a ball-striking surface therebetween, the method of improving weight distribution comprising removing construction material from said top surface, relocating said removed construction material from said top surface to clearance positions below said top surface located adjacent opposite ends of said bottom, surface whereby said removed construction material from a location not used during ball-striking service of said golf iron, is of no adverse consequence thereto and said removed construction material in said relocated positions contributes to increasing said height attained by a struck golf ball.

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Satellite Patent Office Update: Denver Opens June 30, 2014

The America Invents Act furthered the era of the satellite Patent Office. The law signed by President Obama on September 16, 2011, laid the foundation for the establishment of at least three satellite offices in addition to the one already planned for Detroit, Michigan. The cities selected for those three satellite offices were Denver, San Jose and Dallas.

The latest announcement from the United States Patent and Trademark Office (USPTO) on satellite offices came recently with the announcement that its permanent satellite office in Denver, Colorado, would officially open on June 30, 2014. The USPTO Denver satellite office will be located in the Byron G. Rogers Federal Building (pictured left) in Denver’s central business district.

The Byron G. Rogers Federal Building is home to multiple federal agencies and offers convenient access to downtown and suburban sites, including through the metro region’s array of public transportation options. The office will eventually house patent examiners, Patent Trial and Appeal Board (PTAB) judges, and outreach officials in a 45,000-square-foot space. There are currently nine PTAB judges working in a temporary location opened in Lakewood, Colorado, in January 2013. In addition to those judges, all of whom will relocate to the new office, the USPTO is currently seeking to hire additional judges and patent examiners for the permanent office, as well as a Deputy Regional Director for Outreach. The USPTO says that  100 examiners, 20 administrative patent judges, and their support staff will eventually be housed at the Denver location. All vacancy announcements are posted on www.usajobs.gov.

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Hatch Writes President Over Lack of PTO Director

On Monday, June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. The letter from Senator Hatch to President Obama is reproduced below.

In the letter, Senator Hatch also questions whether USPTO Director Michelle Lee was appointed consistent with 35 U.S.C. § 3(b)(1).

There has not been a Director of the Office since David Kappos left in January 2013. Still, the Director did not nominate Michelle Lee for the post as Deputy Director. There has been much made about this in some circles, some saying that the appointment of Lee was in violation of the law. I don’t see a real problem in this case.

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Chief Judge Rader Apologizes for Recusals

On Friday, May 23, 2014, right before the long holiday weekend, news began to circulate that Chief Judge Rader had announced that he would be stepping down as Chief Judge of the United States Court of Appeals for the Federal Circuit.

Immediately, the Wall Street Journal and Law.com began speculating that Judge Rader’s decision to step down was tied to an email endorsing attorney Edward Reines, a patent lawyer at Weil Gotshal & Manges LLP and president of the Federal Circuit Advisory Council. This speculation picked up when Rader released a letter (see below) to the public addressed to the other members of the Federal Circuit apologizing for the appearance of impropriety associated with his email to Reines (whom he did not name directly), which necessitated his several recent recusals.

I find myself speechless, which doesn’t happen often. On the one hand, those that know Judge Rader know that he is extremely strong-willed and always eager for a vigorous substantive debate. The thought that any familiarity with someone who appears before him would lead to any advantage strikes me as thoroughly nonsensical. On the other hand, ethics for lawyers and even more so for judges is not about truth, but rather appearances.

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