Patent Law Blog (Patently-O)

Application Publication to Include Amendments

Amendments made prior to publication may now be included as part of the 18-month application publication, provided that such amendments are submitted in sufficient time to be entered into the file wrapper (typically 9-14 weeks before projected publication date). To ensure publication, the patent office recommends submitting the application, as amended, through the EFS (electronic filing). This raises two issues: First, if you are hoping that publication of your application will provide notice to infringers and allow back-royalties, then you may want to make sure that the amendments are included in the publication. Second, published amendments may provide even easier access for competitors who hope to get a glimpse of your R&D activities. Arnold Silverman discusses whether publication reveals confidential information.

See the link (pdf) for more information on the changes. Anyone can search patent applications.

Necktie Inventor

When worn, Josh Maggert's necktie appears identical to a conventional necktie. . . . Secretly, however, the necktie has a lint-brush backing. When Josh wants to remove lint from his shirt, he simply brushes the back of the tie over the offending debris. (U.S. Patent 6,170,085).

Read necktie history here.

David Johnson has written a history of the necktie. The Lemelson-MIT program provides resources for inventors. Thanks to Kevin Heller for his link to tiegate.

Independent Inventors Beware

The USPTO has urged independent inventors to beware of commercial invention-promotion services. The patent office warns people to examine the disclosures that invention promoters are now required to give to potential clients. They include: How many inventions they have evaluated; How many of those inventions received positive or negative evaluations; The total number of customers; How many of those customers received a net profit from the promoter's services; and How many of those customers have licensed their inventions because of the promoter's services. The Wichita Eagle, Eric Heels and Nipper have the story.

Daniel Sorid (Reuters) has a story about some big-time invention acquisition firms. (These firms are not the scammers that the USPTO warned against.)

Weekly Thank You

It is time for my weekly thank you for those who have helped with the weblog.

Israel Encinosa helped with editing; Chan Stroman provided a listing of UChicago weblogs; Paul Goyette provided a listing of Chicago weblogs; Adam Charnes, Matthew Dallett, Ronald Coleman, Erin Mulder, Jeremy Blachman, Bruce MacEwen and Adam Kessel provided useful links. Hopefully, Todd Flaming will be a content contributor in the future.

Proposed Amendments to 35 U.S.C. 102(f) and 103(c)

Representative Smith (R Texas) talks on the Congressional floor about three recent Bills that have passed the House and are awaiting action in the Senate. Rep. Smith recently gave a speech to the ABA IP Section discussing the bills and other IP matters.

One of the recently passed Bills is the "Cooperative Research and Technology Enhancement (CREATE)." Under the Bill's proposed amendments, 35 U.S.C. 102(f) references will not be considered prior art or as evidence of obviousness under section 103. (Section 102(f) references show the subject matter to be patented was not invented by the one applying for the patent.)

In addition, section 103(c) would be amended so that subject matter developed by another person and prior art under 102(e) or (g) will not preclude patentability if the subject matter and the clamed invention were, "at the time of the earliest filing date for which benefit is sought . . . owned by the same person or subject to an obligation of assignment to the same person." The new law would not be retroactively applied.

The parallel Senate Bill S.2192 was introduced by Senator Hatch (R Utah). You can read Senator Hatch's introduction of the Bill. According to co-sponsor Senator Leahy, this Bill will circumvent the ruling in OddzOn Products, Inc. v. Just Toys, Inc. (Fed. Cir. 1997) (holding that non-public information may be used as prior art under certain circumstances), thus allowing more collaboration. Philip McGarrigle published an article in IDEA discussing the OddzOn Products. Brian Murphy disagreed with OddzOn Products in the Fordham IP Law Journal. Additionally, James Gambrell discusses the use of section 102(f)/103 prior art in the Federal Circuit Bar Journal.

Taxing Patent Donations

Parallel Bills have been introduced in the House and Senate to limit income tax deductions for charitable contributions of patents and similar property by requiring a "qualified appraisal." S2103 H3867

Michigan State University provides some details for giving a charitable contribution of intellectual property as does giftlaw.com. Janal Kalis provides a story on changes made at the IRS regarding patent donations. According to the story, the IRS is cracking down because corporations were claiming greater donations than they were entitled to. Nipper provides more information and a link to the Intellectual Property Owners (IPO) commentary. The IPO has sent an open letter to Senator Grassley opposing the Bills.

Snippets

Snippets^TM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (April 2004):

1. Anthoula Pomrening, Drafting the Technology Game Plan, Part 4: Effective Trademark Searching
2. Blair Hughes, The New Statutory Interference Bar: Should you Monitor Competitors’ Published Patents?
3. Alison Baldwin, Patent Validity Assessments: Your Guide to Avoiding the On-Sale Bar
4. Michael Greenfield and Jennifer Swartz, Claim Construction 101: Unlocking the Meaning of Preambles
5. Brian Harris, Caveat Sender: What Else is Attached to Your E-Mail?

Those interested can request a pdf version of the publication by emailing your contact info to the editor.

Monsanto Co. v. Homan McFarling (Fed. Cir. 2004)

Monsanto Co. v. Homan McFarling

McFarling replanted some ROUNDUP READY(r) soybeans that he had saved from his prior year's crop in violation of the Technology Agreement that he signed as a condition of his purchase of the seeds from Monsanto. (U.S. Patents 5,633,435 and 5,352,605). On appeal from a summary judgment, McFarling argued that the Technology Agreement involved an unlawful misuse of Monsanto’s patents by restricting use of “god-made” second-generation seeds. The Court disagreed. Because the first-generation seeds (sold by Monsanto) were nearly identical copies to the second-generation seeds, the court found that the patent scope includes both generations. Thus, the Court rejected McFarling's appeal and held that the Technology Agreement did not impermissibly extend Monsanto's rights.

The Court vacated and remanded the district court's damages award under Missouri law as an "unenforceable and invalid penalty clause."

Andrew Hagen provides some anti-GMO comments and links. Canola Farmers may also be violating Monsanto's patents. Here is an older article on the Roundup Ready soybean controversy, and here is another. Andrew Raff provides further commentary.

Update: Farmers in Argentina are allowed to cull seeds for replanting new crops. Apparently there is also a large black-market for GM seeds. (Thanks to Carol Nottenburg for the link).

Inland Steel Co. v. LTV Steel Co. (Fed. Cir. 2004)

Inland Steel Co. v. LTV Steel Co. and USX Corp.

The Court found that USX was a "prevailing party" on a claim before the district court, even though USX prevailed on the issue of invalidity in a different forum (a PTO reexamination). (U.S. Patents 4,421,574 and 4,483,723). Thus, USX may have a right to attorney fees and costs under 35 U.S.C. 285 and Rule 54(d) of the Federal Rules of Civil Procedure. The major indication of the status of prevailing party cited by the Court is that the case would have res judicata effect as to any claims brought against USX in the future with respect to the patent claims that were at issue in the district court case.

Reversed and remanded to determine whether the case is "exceptional" or if the court should exercise its discretion to allow or deny costs to the prevailing party.

Northern District of Illinois Recent Opinions

The Northern District of Illinois has implemented a "recent opinion search page." Searches can be done according to judge, filing date, nature of suit, etc. Thus, it is easy to find recent patent opinions. The N.D. Ill. webmaster does not know of any other district court that has implemented a similar tool. The text of the opinions are delivered in pdf format are not yet searchable. Lawyers Weekly provides links to sites providing opinions from the other district courts.

Answering Machine Inventor

Joseph J. Zimmermann Jr., who invented the telephone answering machine in 1948 and patented it a year later, has died at age 92.

Chicago Tribune has the story. About.com provides more on the history of the answering machine. The Occupational Adventure Blog provides advice about a career as an inventor.

Traditional Knowledge

The USPTO has announced that it "supports greater protection for traditional knowledge and folklore." I spoke with a patent official who headed the U.S. delegation to the WIPO Geneva Convention. According to him, the protection should come through methods external to the USPTO. These methods include a database of traditional knowledge and better accessability to model contracts.

The BBC has more on the traditional knowlege front. See also, Gerard Bodeker's presentation on "Indigenous Medical Knowledge: the Law and Politics of Protection."

Update: (April 13, 2004) The Honey Bee Network provides resources for local innovation in its campaign for protection of Intellectual Property Rights of Grassroots level innovators.

Update (April 21, 2004) Nipper has provided links for non-patent prior art databases for searching.

Phillips v. AWH Corp.

Phillips v. AWH Corp. (Fed. Cir. 2004)

In a case involving modular wall panels for prisons (U.S. Patent 4,677,798), the Federal Circuit interpreted the term "baffles" to structures oriented at angles other than 90 degrees. Although the ordinary meaning of the term ("something for deflecting, checking, or otherwise regulating flow") includes 90 degree orientations, the Court listed two reasons for abandoning the ordinary meaning. First, the only embodiment shows "baffles angled at other than 90 degrees." Next, the Court found that baffles angled at other than 90 degrees better realize the invention's purpose of providing impact or projectile resistance.

In dissent, Judge Dyk argued that 1) a patent describing only a single embodiment is limited to that embodiment, and 2) impact or projectile resistance was not the only objective listed in the patent and claims are not required to be capable of achieving all of the objectives of an invention.

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NOTE: This case is scheduled for a rehearing en banc and will likely create dramatic changes to patent litigation procedures, just as Markman has done. Read more here.

Trademarks as Economic Indicators

Dechart LLP has released its Annual Report on Trends in Trademarks for 2003. The report finds a slight increase in trademark filing -- indicating a moderate economic recovery.

The article was also covered in the New York Times (entitled "Patents as Economic Indicators").

Although Dechart uses trademark data, others have contemplated the use of patent data as an economic indicator or a proxy for innovative activity.
Sources:
1. Crouch, D.D. and Crouch, H.L. (2003), "Environmentally Conscious Patent Histories," Proceedings of Environmentally Conscious Manufacturing III, SPIE Proceedings 5262, 165-73.
2. Porter, M.E. and van der Linde, C. (1995), “Green and Competitive: Ending the Stalemate,” Harvard Business Review, September-October, 120-135.
3. Jaffe, A.B. and Palmer, K. (1997), “Environmental Regulation and Innovation: A Panel Data Study,” Review of Economics and Statistics, 79(4), 610-619.
4. Griliches, Z. (1990), “Patent Statistics as Economic Indicators: A Survey,” Journal of Economic Literature 28, 1661-1707.
5. Kortum, Samuel (1993), “Equilibrium R&D and the Patent-R&D Ratio: U.S. Evidence,” American Economic Review, 83(2), 450-457.

Lawrence Solum's Blog directed me to Petra Moser's presentation of How Do Patent Laws Influence Innovation? Evidence from the Nineteenth-Century World Fairs.

Plasma display panel (PDP) patents.

Japanese firm Fujitsu has sued Samsung in a US federal court, accusing the South Korean group of infringing its plasma display panel (PDP) patents. BBC has the story.

Fujitsu apparently holds approximately 800 patents on various features of PDP technology.

No Appeal for Halliburton

U.S. Supreme Court Will Not Listen to Halliburton Appeal

By David Ivanovich, Houston Chronicle Knight Ridder/Tribune Business News

The Supreme Court refused to hear Halliburton's appeal to a $101 million infringement judgment in favor of BJ services. The allegedly infringed patent covers technology for extracting oil and gas.

See the Federal Circuit's opinion.

Norian v. Stryker (Fed. Cir.)

Norian v. Stryker

In the most interesting portion of the case, the Appellate Court found that the District Court erred in allowing the jury, while determining validity, to consider factual misstatements made by the patentee during prosecution. (Jury did not rule on inequitable conduct.) The Appellate Court did not overrule the verdict on that point, however, because no objection was made at trial.

The case was reversed and remanded on other grounds.

Manual for Complex Litigation

The Federal Judicial Center has recently revised the Manual for Complex Litigation. "This edition updates the treatment of electronic discovery and other aspects of pretrial management and describes major changes affecting case management in the substantive and procedural law in mass torts, class actions, intellectual property, employment discrimination, and other types of litigation. A new chapter deals with managing scientific evidence."

Disclaimer

This weblog is intended to provide limited information and commentary on current events in the area of patent law. This weblog is NOT LEGAL ADVICE. Please do not rely upon any information or commentary in this weblog because it may be in error or may be out of date. Please independently confirm any developments.

I encourage anyone with legal questions to consult an attorney.

The contents of this weblog are the personal views of the weblog creater and are not to be imputed to the creater's law firm. The weblog creater does not intend to create an attorney-client relationship by providing this information to you.

Novartis Pharmaceuticals v. Eon Labs (Fed. Cir.)

Novartis Pharmaceuticals v. Eon Labs

Novartis patented a cyclosporin hydrosol (aqueous solution) and sued Eon for infringement. (U.S. Patent 5,389,382) Eon's cyclosporin, however, is suspended in ethanol rather than water. The infringement argument was that a Eon's drug formed a hydrosol when ingested by a patient.

The court held that "hydrosol" as used in the patent is limited to an "aqueous medicinal preparations prepared outside the body," and thus, that Eon's formulation did not infrnge.

See Eon's press release.