Patent Law Practice Center

Live from the 6th Annual Patent Law Institute – Inside the PTO: AIA Rule Changes

Live from the 6th Annual Patent Law Institute, I am blogging from the panel entitled, “PTO Doings I: Rules and Regs That Are/Are Not Changing for 2012″. The featured panelists include Institute co-Chair John M. White, Brian Hanlon, Robert J. Spar. This afternoon’s discussion continues the close look at the outcome of the PTO rules and policy-making apparatus.  Highlights from our faculty speakers:

Two basic triggers for 2012 USPTO activity include:

1. Office self-initiated actions: The Office moved forward with a number of efforts to improve and streamline the examination/prosecution process, and
2. The AIA, enacted on Sept. 16, 2011: Required the USPTO to take implementing actions, essentially in 3 timed phases, for items effective in:

1. Phase 1: immediately, or within 60 days
2. Phase 2: in one year, or on Sept.16, 2012, and
3. Phase 3: in 18 months, or on March 16, 2013.

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Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: Making it Easier to Get a Patent – Guest author, Mark Nowotarski, shares the experience he has had in getting patent applications granted in this post. He notes that certain technology classes are harder to get a patent awarded in. As such, he explains how one can see if a technology class is getting easier or harder by plotting the patent filing dates in that class versus patent issue dates.

2) Patently-O: Kimberly-Clark v. Naty: Did Reexamination Clean the Diaper? – This post discusses how Kimberly-Clark has sued Naty Babycare for infringement of a diaper with an “elastomeric ear” having non-parallel edges. In 2010, an ex parte reexamination was begun and KC cancelled all 30 issued claims but then added an additional four claims. Unfortunately for Naty, the  patent still has one year on its term. (more…)

USPTO Report: “International Patent Protection for Small Businesses”

The AIA mandated that the USPTO release a study on how to best help small businesses file patents internationally. The USPTO worked in consultation with the United States Small Business Administration in researching the benefits and costs of developing an international IP strategy when the business is small or a start-up. The report’s findings suggest that small businesses would benefit from early investment in foreign patent applications, but the USPTO was unable to conclude whether or not a loan program or federal grant program would best remedy the problem of filing fees being too burdensome on the often cash poor new small businesses.

Here are some excerpts from the USPTO report.

American firms compete and grow by supplying products and services that consumers demand, and by internationalizing their businesses through licensing, franchising, or exporting. For many small companies, patent protection prevents competitors from simply copying their innovations, and aids in attracting investor capital needed to grow, build market share, and create jobs. Yet small companies face significant financial challenges in acquiring, maintaining, and enforcing patents outside the United States. Therefore, supporting small firms and fostering job creation requires a thorough understanding of these challenges and an exploration of possible remedies. (more…)

IP Watchdog’s Interview with David Kappos

A few months ago, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, Gene Quinn was granted an exclusive interview with USPTO Director and Under Secretary of Commerce for Intellectual Property, David Kappos. Throughout the lengthy interview, the focus shifted from acceleration of applications through the Track 1 program, to agency-wide uniformity despite having 7,000 examiners, and to current initiatives geared toward making the near future for the patent system more efficient. It is amazing to see how Quinn, one of the primary instructors of PLI’s Patent Bar Review, is treated with such respect by the Director of the USPTO.

For the transcript of the interview in its entirety, click here for the IPWatchdog postings. Here are some of the key points taken from the conversation between Quinn and Kappos: (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Chicago IP Litigation Blog: Court Finds Claim Preamble Limiting – This post reports on the matter of The Metraflex Co. v. Flex-Hose Co., No. 10 C 302, Slip Op. (N.D. Ill. Sep. 8, 2011).  It discusses how Judge Leinenweber construed the claims of the patent related to displaying a product selection on a website by highlighting the specific definitions reached upon by the court.

2) Patently-O: Federal Circuit Continues Split on Patentable Subject Matter – This post notes how the Federal Circuit decided in Myspace, Inc. v. GraphOn Corp. (Fed. Cir. 2012), once again not reaching a set standard regarding patentable subject matter. “The majority opinion here – penned by Judge Plager and joined by Judge Newman – argues that courts should avoid the metaphysical question of whether an invention is unpatentably abstract whenever possible and instead focus on the conditions of patentability found in §§ 102, 103, and 112 of the patent act.” (more…)