Filewrapper® | A patent, trademark, and copyright law blog by MVS - News

MVS Filewrapper® Blog: Changes to Implement and Guidelines for Examination under AIA

Tue, 19 Mar 2013 17:03:00-0500

The United States Patent and Trademark Office has released its rules regarding changes under first inventor to file provisions of the Leahy-Smith America Invents Act. The rules published by the USPTO in the Federal Register on March 16, 2013 provide guidelines for implementing the new patent law and guidelines for examination of patent applications under the new standards. The documents cover a broad range of topics, with a high degree of specificity, but we provide highlights from both of the Federal Register publications are as follows:

- First-to-file standards only apply to applications filed on or after March 16, 2013

If an application claims priority to an application filed prior to March 16, 2013, it will be examined under the pre-AIA guidelines, i.e., first to invent standard. The application may not claim new matter, i.e., matter not supported by the originally filed application (priority application). If the application does have new matter, it will be examined under the first-to-file standards.

- Required statements from the applicant in transition applications

Transition applications are those where a non-provisional application is filed on or after March 16, 2013 that claims priority or the benefit of the filing date of an earlier application. If the application contains, or at any time contained, a claim to an invention that has an effective filing date of March 16, 2013 or after, the applicant is required to file a statement indicating that there is matter or was matter claimed that has an effective filing date on or after March 16, 2013. The guidelines clearly state that the particular limitation does not have to be specified. Thus, if any new matter is added to the claims of a transition application, the Applicant must inform the patent office in a statement.

- In certain respects, prior art under the statute is broader than before

For applications being examined under the first-to-file standards, prior art is broader than before. Now any patent or published patent application is prior art as of its earliest effective U.S., foreign, or international filing date. Furthermore, the first-to-file standard eliminates the requirement that prior public use or sale be “in this country,” and therefore may now be anywhere in the world.

- Interference proceedings have been replaced by the new derivation proceedings

Under the first-to-invent standards interference proceedings existed to determine who invented first. Under the new first-to-file patentability standards, interference proceedings have been replaced by derivation proceedings. The derivation proceedings are instituted to determine if a prior public disclosure of an invention was actually derived from the inventor and is one that does not bar the invention from patentability

New and Useful - January 23, 2013

Wed, 23 Jan 2013 09:10:00-0500

· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks—opposed the registration. The TTAB concluded that Amazon Technologies, Inc. had priority in the AMAZON.COM marks, and that there was a likelihood of confusion between Amazon Technologies’ marks and those of the applicant. The Applicant challenged the TTAB’s findings that (1) Amazon Technologies’ marks are famous, (2) the similarity of Amazon Technologies’ mark to AMAZON VENTURES, and (3) the similarity of the parties' services and channels of trade. The Federal Circuit confirmed the TTAB’s findings, based in part on the wide latitude of protection afforded to Amazon Technologies’ on account of its fame within the buying public.

· The Eighth Circuit Court of Appeals affirmed a district court’s judgment and damages for Hallmark Cards, Inc. against a former employee for breach of contract and misappropriation of trade secrets. The district court entered the jury’s award of damages in the amount of $860,000. The Eight Circuit affirmed $735,000 of the damages as they related to breach of contract and disclosure of trade secrets, but overturned $125,000 the former employee earned in compensation from a competitor.

· The Federal Circuit has dismissed as moot an appeal from a patent infringement suit. Allflex U.S.A., Inc. sued Avid Identification Systems, Inc. seeking a declaratory judgment that six of Avid’s patents were unenforceable due to inequitable conduct. The district court granted partial summary judgment in favor of Allflex, at which time the parties entered into a settlement agreement that resolved all of the claims and issues between the parties upon payment of $6.55 million from Avid to Allflex, except for a provision that allowed Avid to appeal three specific issues. The agreement further provided that Allflex could contest any appeal on the merits, but could not dispute the existence of a live case or controversy, and that if Avid were successful on any issue on appeal, the payment to Allflex would be reduced by $50,000. The district court accepted the settlement agreement and entered a stipulated order of final judgment that stated the case was dismissed with prejudice with the exception of findings the court considered “final and ripe for appellate review.” Avid then appealed to the Federal Circuit, but Allflex declined to file a brief defending the judgment of the district court.

The Federal Circuit concluded that the appeal was moot. Avid argued that, although the case would be moot if it were not for the $50,000 contingency payment, that payment ensured that there was a real controversy between the parties. The court dismissed Avid’s argument, concluding that while the district court’s decision was effectively final and therefore appealable, Allflex no longer had a legally cognizable interest in any of the issues in the case, and the payment was insufficient to create any interest

· The USPTO has announced the new fee schedule. The changes, initiated under the Leahy-Smith America Invents Act, are set to take effect March 19, 2013. Among the notable changes are:

o A 75% reduction in most fees for micro entities, including Universities.

o Increase in basic filing fee: $1,600 (large entity); $800 (small entity); $400 (micro entity)

o Increase in appeal fees, due in large part to a new “Appeal Forwarding Fee for Appeal in Examination or Ex Parte Reexamination Proceeding or Filing a Brief in Support of an Appeal in Inter Partes Reexamination”: $2,800 (large entity); $1,400 (small entity); $700 (micro entity)

o Decrease in issue fees: $960 (large entity); $480 (small entity); $240 (micro entity)

o Increase in maintenance fees:

§ First (3.5 years): $1,600 (large entity); $800 (small entity); $400 (micro entity)

§ Second (7.5 years): $3,600; $1,800; $900

§ Third (11.5 years): $7,400; $3,700; $1,850

o Decrease in supplemental examination fees: $16,500 (large entity); $8,250 (small entity); $4,125 (micro entity)

The complete finalized rules are available here.

New and Useful - Janurary 14, 2013

Mon, 14 Jan 2013 09:52:00-0500

· The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. The Court held that because Already failed to show that it engages in or has sufficiently concrete plans to engage in activities that would arguably infringe Nike’s trademark yet not be covered by the covenant not to sue, its claims could not survive Nike’s motion to dismiss.

· The USPTO has issued a Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents. The notice provides two separate roundtable events with the same agendas, one occurring in Silicon Valley on Tuesday February 12, 2013, beginning at 9 a.m. and the second occurring in New York City on Wednesday, February 27, 2013 beginning at 9 a.m. (both local time). Topics on the agenda include: (1) how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language; (2) identification of additional topics for future discussion by the Software Partnership; and (3) opportunity for oral presentations on the Request for Comments on Preparation of Patent Applications. Written comments are requested in response to the first two discussion topics. Written comments on the third discussion topic must be submitted as directed in the forthcoming Request for Comments on Preparation of Patent Applications. Registration for the events is requested by February 4, 2013. For additional information see the official notice.

· The USPTO has also extended a pilot program allowing an applicant to request a twelve-month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application, under specific conditions. The program has been extended until December 31, 2013, with the possibility of further extension. To qualify, the applicant must satisfy the following conditions: (1) Applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing, (2) the application must be a nonprovisional utility or plant application filed within the duration of the pilot program; (3) the nonprovisional application must directly claim the benefit under 35 U.S.C. 119(e) and 37 CFR 1.78 of a prior provisional application filed within the previous twelve months (the specific reference to the provisional application must be in an application data sheet); and (4) applicant must not have filed a nonpublication request. Additional information is available here.

· The Second Circuit Court of Appeals affirmed in part and remanded in part a decision by the Southern District of New York finding willful infringement on the part of a retailer for infringing the Fendi trademark by selling allegedly counterfeit Fendi-branded products. The district court awarded $12,324,062.66 in trebled damages, prejudgment interest, costs, and attorneys' fees, including disgorgement of Ashley Reed's based on a finding of willful infringement. The Second Circuit affirmed the district court’s finding of infringement and willfulness, but remanded for clarification of the period of disgorgement.

· The Federal Circuit has issued a new opinion on determining obviousness. A more thourough examination of the dicision in The C.W. Zumbiel Company, Inc. v. Kappos will be available soon here at Filewrapper.

Another Billion Dollar Patent Verdict

Thu, 03 Jan 2013 10:38:00-0500

Another billion dollar verdict has been handed out in a patent case. Read the verdict in Carnegie Mellon University v. Marvell Technology Group, LTD. here. This latest case continues a string of billion dollar verdicts highlighted by Jonathan Kennedy in the latest edition of MVS Briefs.

Carnegie Mellon brought suit alleging infringement of two of its patents, Patent No. 6,201,839 and Patent No. 6,438,180, relating to integrated circuits for computer memory systems. Marvell asserted that it did not infringe the patents, and in the alternative, the patents were invalid because they were anticipated or rendered obvious by the prior art.

The jury in the case found for Carnegie Mellon on all counts of infringement—including indirect infringement—and invalidity. In addition to the large damages award, the jury determined that Marvell had engaged in willful infringement of two patents held by Carnegie Mellon because Marvell knew of the asserted patents before the lawsuit, had no reasonable defense for its actions, and knew or should have known that its actions would infringe the asserted patents. The determination of willfulness by the jury could allow the presiding judge, U.S. District Judge Norra Barry Fischer, to triple the damages award.

A final judgment in the case is expected in May 2013, pending post-trial motions from both sides. Marvell has already announced its intent to appeal the verdict should its post-trial motions prove unsuccessful.

USPTO will remain open until April 18 in the event of government shutdown

Fri, 08 Apr 2011 10:31:00-0500

In a press release, the USPTO stated it has sufficient available funds not tied to the current fiscal year that it will be able to remain open for six days following any shutdown of government functions. Based on the current appropriations, that would put the USPTO open until April 18, assuming a shutdown begins April 11. After that time, limited functions should still be available, including accepting new electronically-filed applications and other IT functions. It is not clear what, if any, other services will continue to be available after that time.

To read the full press release, click here.

Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets

Mon, 26 Jul 2010 19:40:00-0500

Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA"). As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works. For example, it is arguably a violation of the DMCA to use a program to "break" the content scrambling system ("CSS") encryption used for standard DVDs in order to make a copy of the DVD, even if making such a copy would otherwise be considered fair use under copyright law (although a recent decision by the Fifth Circuit arguably holds to the contrary). The purpose of the exemptions is to adapt to any unintended consequences of the DMCA, such that lawful uses of copyrighted works are not unduly restricted.

Today, the Copyright Office issued the list of exemptions in this go-around of the triennial rulemaking process. Included among the newly-granted exemptions are circumvention of the above-mentioned CSS encryption to use "short portions" in new works for the purpose of criticism or comment, when the use is educational, noncommercial, or for documentary filmmaking. This is an important exemption, as it arguably covers the majority of videos on sites such as YouTube where short portions of movies, televisions shows, and the like are posted as a portion of a remix or other creative work.

In addition, unlocking a mobile phone to allow software to be run (commonly called "jailbreaking") is also exempted from the DMCA. Notably, this does not prevent phone providers (such as Apple) from placing the restrictions on a phone in the first instance, it simply makes it not a DMCA violation to remove the restrictions.

The Office also permitted circumvention of prohibitions on "read-aloud" functionality of e-books. Some e-books have been sold with a limitation that prevents the user from using their e-reader's "read-aloud" function, essentially turning the e-book into an audio book. This is now not a violation of the DMCA anti-circumvention provisions.

The Copyright Office revisits these exemptions every three years. Click below for the full text of the exemptions granted, or head to the Copyright Office website for the full release.

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USPTO proposes tiered system for patent application examination speed

Thu, 03 Jun 2010 14:35:00-0500

In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination. This is the latest in Director Kappos' attempts to control application pendency at the Office.

The "prioritized examination" track would be much like the current accelerated examination system in that final action on the application would be targeted to be within one year of filing. However, applicants would not have to provide the onerous examination support document with the application.

Similarly, the slow track would permit applicants to elect a delay of up to 30 months before the application is placed in the examination queue. There is no indication in the press release as to whether applications filed under this track would receive a break on the filing fee. However, this track would seem to be a favorable choice for companies that would prefer their patents to issue later (and therefore, with patent term adjustment, expire later).

There will be a Federal Register notice with additional details tomorrow [UPDATE (6/4): click here for the Federal Register Notice], and a public hearing is set for July 20 at the USPTO.

To read the full press release, click here.

USPTO to allow accelerated examination for "green" applications without examination support document

Tue, 08 Dec 2009 10:32:00-0500

In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start of the United Nations Framework Convention on Climate Change.

In a Federal Register notice today, the specifics of the program were provided in more detail. The applicable technologies include those that materially (1) enhance the quality of the environment, (2) contribute to discovery or development of renewable energy resources; (3) contribute to the more efficient utilization and conservation of energy resources; or (4) contribute to greenhouse gas emission reduction. The requirements for environmental quality enhancement applications are defined in MPEP § 708.02(V). The "renewable energy resources" include "hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources." Inventions that deal with more efficient utilization and conservation of energy "include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances." Greenhouse gas reducing inventions include those "that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)."

As to the technical requirements for the petition, they include:

The petition must be filed in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009)
The application must be classified in one of the classes identified in the Federal Register notice
The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds
The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements
The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met
The petition must be electronically filed on or before December 8, 2010, and at least one day before a first office action is mailed (which may be a restriction requirement)
The petition must include a request for early publication and the publication fee

As this is only a pilot program, only the first 3,000 applications will be elegible for accelerated examination on this basis. However, the USPTO anticipates extending the program if it is successful.

For USPTO the press release, click here. For the Federal Register notice with more details of the program and the requirements to participate, click here. USPTO Director Kappos also provides this entry on his official blog on the subject.

Highlights from oral arguments in Bilski v. Kappos

Wed, 11 Nov 2009 13:49:00-0500

On Monday, the Supreme Court heard oral argument in Bilski v. Kappos in an effort to determine the proper test to be applied to determine whether a claim is patentable subject matter under § 101. The oral argument transcript is available from the Court's website here.

Click below for our thoughts on the arguments and some of the more interesting quotes from the Justices' questioning.

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USPTO announces e-Office Action program for patent applications

Wed, 22 Jul 2009 11:17:00-0500

In a press release, the USPTO announced the availability of the e-Office Action program for patent applications. Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR. This avoids the time delay of mailing the office action, thereby getting notice of the action sooner than previously possible (and also has the benefit of reducing mailing and processing costs at the USPTO). If the office action is not downloaded within 7 days, the USPTO would then send a postcard notifying of the office action.

The program is opt-in, so current applicants and attorneys will continue to receive paper copies of office actions for the time being. However, it seems likely that in the foreseeable future the USPTO will implement this program for all applications.

Useful links:

Press release
e-Office Action program page
Private PAIR (to opt-in or out of the program)

Obama to nominate David Kappos for USPTO director

Thu, 18 Jun 2009 17:17:00-0500

According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office. The nomination does not yet appear on the White House's nominations and appointments page (Update: here is the While House press release). Back in May, it was speculated that Mr. Kappos may be selected for the position.

Mr. Kappos served as vice president and general counsel for IBM and is on the board of directors of the AIPLA. Other resources on Mr. Kappos:

HT: 271 Patent Blog.

Pirate Bay operators guilty of criminal infringement in Sweden; no webcast of US file sharing case

Fri, 17 Apr 2009 13:28:00-0500

In the past day, there has been two interesting bits of news in the world of cases alleging copyright infringement by way of peer-to-peer file sharing.

The first is that the individuals who operate and maintain the servers that host The Pirate Bay, the world's largest bittorrent tracker, were held to have committed criminal copyright infringement by a Swedish court. The four individuals were each sentenced to a year in prison, and ordered to pay a combined 30 million kronor ($3.6 million) in damages, substantially less than the $17.5 million in damages requested by the media companies. The Pirate Bay has video press conference on its site. The individuals are calling the verdict a win, vowing to appeal their conviction. As an author who wrote a book about the Swedish piracy movement stated:

If they're convicted, they'll be martyrs and the "piracy" movement will continue working for what they believe in, even more strongly. If they win, the signal to the public is that file sharing isn't illegal and The Pirate Bay will basically have achieved its goal.

The issue is far from over, with an appeal of the convictions upcoming, the leader of Sweden's Pirate Party issued a statement to the BBC that the verdict was a "gross injustice," and that:

This wasn't a criminal trial, it was a political trial. It is just gross beyond description that you can jail four people for providing infrastructure. There is a lot of anger in Sweden right now. File-sharing is an institution here and while I can't encourage people to break copyright law, I'm not following it and I don't agree with it. Today's events make file-sharing a hot political issue and we're going to take this to the European Parliament.

Despite the convictions, The Pirate Bay's website will continue operation, as the servers hosting it have been relocated outside Sweden.

The other development is a decision yesterday by the First Circuit reversing a district court's decision in a U.S. file sharing case. In that case (In re Sony BMG Music Entertainment), the district court granted the defendant's request that pretrial hearings be made available via webcast over the objections of various recording company plaintiffs. The First Circuit held this was not permitted based on the policy of the judicial conference of the United States and the district court's local rule 83.3. All relevant court documents may be found on the Recording Industry vs. the People blog, which is operated by Ray Beckerman, an attorney who has represented file sharing defendants.

All in all, a busy 24 hours in the world of file sharing cases.

Patent Reform Act of 2009 back before Senate Judiciary Committee today to consider compromise

Thu, 02 Apr 2009 13:45:00-0500

Today at 10:00 Eastern time the Senate Judiciary Committee will hold an executive business meeting to discuss the Patent Reform Act of 2009. The committee will consider some proposed amendments that represent a compromise on several key issues that have been points of contention over the course of the past several years when patent reform has been on the legislative agenda. Among these is the issues of damages, with the compromise version substantially softening the limits on infringement damages that have been dealbreakers in past versions of patent reform legislation.

A webcast of the meeting is available online at this link.

Update (1:45pm): Several amendments were considered at the meeting, with a total of three being adopted either at the meeting or before. The bill has passed out of committee and has been referred to the full Senate. No word on when, if ever, the bill will come up for a vote in the Senate; the Patent Reform Act of 2007 passed the Judiciary Committee easily but was never voted on in the full Senate.

Here are the amendments that were considered and their status:

Amendment GRA09451 (Leahy, Specter, Feinstein, Cornyn, Whitehouse, Kaufman) - Adopted
Amendment GRA09459 (Kyl) - Defeated, Vote: 4-13
Amendment GRA09294 (Coburn) - Motion to Table Agreed To, Vote: 10-9
Amendment GRA09400 (Leahy, Hatch) - Adopted - March 31, 2009
Amendment GRA09350 (Leahy, Hatch, Whitehouse, Specter, Feinstein, Kyl) - Adopted - March 26, 2009

More detail after the jump.

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Patent reform back again for 2009

Wed, 04 Mar 2009 09:24:00-0500

Yesterday Senators Patrick Leahy and Orrin Hatch (chairman and ranking member of the Senate Judiciary Committee) and Representatives John Conyers and Lamar Smith (chairman and ranking member of the House Judiciary Committee) introduced the Patent Reform Act of 2009.

Click below for more detail of the newly-introduced legislation, as well as links to other coverage of the legislation and press releases by the various industry groups who have lobbied heavily on the issue over the past several years.

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Patry copyright blog is no more

Sun, 03 Aug 2008 16:01:00-0500

It's a sad day in the blogosphere, as Bill Patry, author of Patry on Copyright and the Patry Copyright Blog, has announced he is shutting down his blog. We've linked to Professor Patry's commentary on copyright law on many occasions, and his additional insight into copyright issues will be missed.

Other blogs noting his departure:

He provides two reasons for his departure, the second of which is "profoundly depressing," as it is due to the current state of copyright law:

I regard myself as a centrist. I believe very much that in proper doses copyright is essential for certain classes of works, especially commercial movies, commercial sound recordings, and commercial books, the core copyright industries. I accept that the level of proper doses will vary from person to person and that my recommended dose may be lower (or higher) than others. But in my view, and that of my cherished brother Sir Hugh Laddie, we are well past the healthy dose stage and into the serious illness stage. Much like the U.S. economy, things are getting worse, not better. Copyright law has abandoned its reason for being: to encourage learning and the creation of new works. Instead, its principal functions now are to preserve existing failed business models, to suppress new business models and technologies, and to obtain, if possible, enormous windfall profits from activity that not only causes no harm, but which is beneficial to copyright owners. Like Humpty-Dumpty, the copyright law we used to know can never be put back together again: multilateral and trade agreements have ensured that, and quite deliberately.

It is profoundly depressing, after 26 years full-time in a field I love, to be a constant voice of dissent.

His voice will be missed in the blogosphere.

Update: Based on the response online, Mr. Patry has decided to put the blog's archives back online.