Patent Law Practice Center

Maintaining Rights to an Application under the First to Invent Laws – a.k.a. Avoiding the AIA § 3(n)(1) Trap

Written by Leonard R. Svensson, Partner at Birch, Stewart, Kolasch & Birch, LLP.

Patent practitioners know by now that applications filed before March 16, 2013 will be evaluated under the current “first to invent” laws. Commentators are debating whether this may result in a “bump” of applications filed just before the deadline. But if you rush to file by the deadline, care must still be taken to ensure that the resulting application(s) maintain the right to be evaluated under the current “first to invent” regime.

Suppose one files a provisional application on March 15, 2013 and then one year later converts that case to a regular utility application. If that application is directed to an invention in the life science field, experience suggests that there is a very high chance that at least the broadest claim will be rejected for lack of written description or enablement under 35 USC § 112. If the applicant thereafter amends and narrows such a rejected claim to overcome those rejections, what is the consequence? The unfortunate consequence is that the applicant just lost, forever, the right to have any claims in that application or any divisionals/continuations evaluated under the current “first to invent” regime. This is the consequence of the § 3(n)(1) trap, due to the language in the statute that defines the effective date of an application with the language “shall apply to any application for patent that contains or contained at any time such a claim” having an effective date after the effective date of the “first to file” provisions. Having fallen into the trap, the applicant will have wasted all the work expended to file a provisional application before the March 16, 2011 deadline. (more…)

Patent Litigation Strategies for Retailers Based Upon the PWC Patent Litigation Study

R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, passed along this post he wrote for his Retail Patent Litigation blog that discusses PWC’s 2011 Patent Litigation Study.

I [recently] wrote about some key implications of PWC’s excellent 2011 patent litigation study.  The study is so dense that it deserves more discussion.  Here are several of the key takeaways from the study.

• Big Dollars for Trolls.  Troll damages awards were nearly double those of practicing entities received by practicing entities.
• NPE’s Are Not All Equal.  Looking at all non-practicing entities, universities and non-profits are more successful than trolls, but their median damages awards are considerably lower.
• Trolls Wither on the Papers.  Trolls and practicing plaintiffs are equally successful at trial, but practicing entities are much more successful winning on summary judgment.  (more…)

Augme Attack on Yahoo! Streaming Media Patents among the Reexamination Requests Filed Week of 10/24/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last week Augme upped the ante in its patent fight with Yahoo! by requesting reexamination of two Yahoo! streaming media patents (see inter partes Request Nos. ((4) & (5)).  Yahoo! has accused Augme and its partner World Talk Radio of infringing the patents by operating websites and related infrastructure that employ Augme’s “BoomBox” technology.  The accused websites are VoiceAmerica^TM and World Talk Radio^TM Network.

Cisco has requested reexamination of a VirnetX network protocol patent – U.S. Patent No. 7,188,180 – which is one of six VirnetX patents in litigation in the Eastern District of Texas (see inter partes Request No. (2)).  Cisco’s request follows requests from the previous week by Apple regarding two other VirnetX network protocol patents – U.S. Patent Nos. 7,418,504 and 7,921,211.  (more…)

Press Release: Commissioner for Patents Robert Stoll to Retire from Government Service After 29 Years at the USPTO

As Per USPTO Press Release:

Deputy Commissioner Margaret “Peggy” Focarino to be Named Commissioner for Patents

WASHINGTON – Commissioner for Patents at the United States Patent and Trademark Office (USPTO) Robert L. Stoll has announced his intention to retire from the agency effective December 31, 2011. Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has announced that he will nominate current Deputy Commissioner for Patents Margaret “Peggy” Focarino to the position of Commissioner for Patents once Commissioner Stoll’s resignation becomes effective.

Stoll was appointed Commissioner for Patents by Under Secretary Kappos in October 2009. In his 29 years with the Patent and Trademark Office Stoll has held several leadership posts including training foreign officials on all aspects of intellectual property (IP), overseeing the Office of Enforcement, and directing federal legislative priorities for the Agency. In his tenure as Commissioner for Patents, Stoll was in charge of implementing initiatives to improve the speed and quality of the patent review process, and was instrumental in reducing the patent application backlog to under 670,000. Stoll also served as a principal liaison to representatives of government, academia and industry in order to raise awareness of the critical role patents play in economic development, and played a key role in the USPTO’s effort to enact historic patent reform legislation. (more…)

Point – Counterpoint: The Debate Over Prior User Rights

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Since prior user rights first came up as an issue in the patent reform debate I have been opposed to the idea.  Whether I like prior user rights or not, the reality is that prior user rights are now a part of U.S. patent law.  Nevertheless, the debate goes on about whether prior user rights are a good idea.  In fact, the United States Patent and Trademark Office is tasked through the America Invents Act with conducting a Prior User Rights Study.  To facilitate this study a public hearing on prior user rights was held on October 25 in the Madison Auditorium at its Alexandria, Virginia campus of the USPTO.

With this in mind I thought I would once again revisit prior user rights. One of the arguments I have heard recently supporting prior user rights is that a corporation that is going to invest billions of dollars into a facility should know that their investment is safe and that the plant can’t be shut down by a later filed patent application.  This argument is so specious as to be nearly laughable if you ask me.  This strikes me as just more of corporate America wanting the government to save them from themselves.

Click here for IPWatchdog’s full article.