A relatively new blog that’s getting some attention is the Green Patent Blog, a site “dedicated to discussion and analysis of intellectual property issues in clean technology.”  I have to admit, I’ve become a little skeptical of all the greenwashing that’s been going on in the world so I sometimes roll my eyes at any effort that seems to spend more time and money telling you their green than actually goes towards being green.

But the Green Patent Blog is no wash job. Featuring patent items on everything from Carbon Sequestration to Fuel Cells, this blog highlights many interesting patents and developments in clean technology.

One noteworthy item highlights the Eco-Patent Commons, an initiative by IBM, Sony, Pitney Bowes and Nokia to share patented technology that (purportedly) protects the environment.  Each company has donated at least one patent to the Commons, which is administered by the World Business Council for Sustainable Development (WBCSD), a Geneva-based organization that promotes sustainability in business. 

Members of the Eco-Patent Commons (known as “pledgers”) sign a nonassert pledge promising not to enforce the donated patents against those who use the patented technology to achieve an environmentally beneficial result (known as “implementers”).   

But, in an effort to make it confusing,  depending on whether or not the implementer asserting its patent against the pledger is another pledger, the pledger may, at its option, terminate the nonassertion against you if:

(a) you are a member of the Commons and you (or someone acting in concert with you) assert an unpledged patent against that pledger’s infringing components where such components alone (or when included in a product or service) reduce/eliminates natural resource consumption, reduce/eliminate waste generation or pollution, or otherwise provide environmental benefit, or (b) you assert any patent against that pledger and you are not a Member of the Commons.

Got that?

We think you’ll like the Green Patent Blog and look forward to more good stuff.

Posted May 7th, 2008 by Stephen Albainy-Jenei in Blawg Reviews
| | No Comments Yet »

Senate Reform Bill

It appears that the Senate has pulled the plug on the Patent Reform Act (S. 1145) after Senate Majority Leader Harry Reid pulled the bill from the floor schedule. This is not a huge surprise given the interests against it. (via ars technica)

A problematic area was a proposed change to the award of damages under the provision for Reasonable Royalty Damages. Currently, courts generally consider the value of the entire product when any part of it infringes a patent. The proposed changes would allow judges to base damages only on the “economic value properly attributable to patent’s specific contributions over the prior art.” Opponents of the legislation say it would make it easier for large companies to infringe the patents of small companies or individual inventors.

No indication when the bill will be re-started but expect it back after the new administration comes in.

See also: Coalition for Patent Fairness Thinks Patent Reform Is Near

Tafas v. Dudas

On the other end, the Patent Office is forging ahead with its attempt to force rule changes onto the public whether it has the authority or not (via Patently-O).  The USPTO has filed an appeal with the Court of Appeals for the Federal Circuit in the Tafas v. Dudas case reported earlier.

Dr. Triantafyllos Tafas filed suit against the proposed U.S. Patent Office continuation rules for being void for exceeding the PTO’s authority and won a permanent injunction prohibiting the USPTO from putting the new rules changes into effect.

The court held that, under the existing patent, system an applicant may file an unlimited number of continuation or continuation-in-part applications, RCEs, and claims. As far as continuation and continuation-in-part applications go, 35 USC 120 provides that there is no statutory basis for fixing an arbitrary limit to the number of continuing applications that may be filed and that retain the benefit of the priority date.

See also: No Joke, Court Smacks Down New Patent Rules

Posted May 7th, 2008 by Stephen Albainy-Jenei in Patent Reform, USPTO
| | 2 Comments »

K&L Gates is hosting a free lunchtime webinar featuring John J. Doll, U.S. Commissioner for Patents.

U.S. patent law and practice is in its most dynamic period in recent memory. The landscape of patent laws and regulations is being modified by the Courts, Congress and the USPTO. Recent changes in case law, the Patent Reform Act of 2007, and proposed rules changes combine to make this a unique and challenging time for patent stakeholders.

Hear the U.S. Commissioner for Patents, John Doll, comment on current developments in patents, most especially those occurring at the U. S. Patent and Trademark Office, and participate in questions and answers.

Moderator: Stephen C. Glazier, K&L Gates, Washington, D.C. office

Registration is complimentary; however, virtual seating is limited, so please register as soon as possible here.

Webinar log-in instructions will be circulated via email prior to the program.

For further questions, e-mail Nancy Feldman or call 617.951.9257.

Tuesday, May 13, 2008, 12:00 - 1:00 p.m. (EDT)

Webinar Schedule:  Log-in opens: 11:45 a.m.  Program: 12:00 - 1:00 p.m.

Posted May 1st, 2008 by Stephen Albainy-Jenei in Conferences
| | No Comments Yet »

Growth opportunity available!  We are currently looking to add a Patent Agent/Technical Specialist to work closely with our legal staff. Working as part of the team, you can use your current scientific expertise to help with the legal issues that our firm is handling for our clients. 

The position involves defining new inventions, providing scientific advice and oversight in patent prosecution matters, preparing patent applications for filing, prosecuting patents, reviewing and researching patent applications and third party intellectual property rights, and assisting with other legal matters. Candidates should have an advanced degree in a biological or chemical field (Ph.D. preferred), with a concentration in analytical chemistry, biochemistry, biotechnology, organic, medicinal or pharmaceutical chemistry, or a closely related field.

For the right candidate, we are willing to hire a specialist without any previous patent experience.   We are dedicated to helping an individual succeed both professionally and personally and we can be quite flexible in our arrangements.  This can be a tremendous opportunity for someone who would like to make a switch from laboratory research to a growing patent career.  We can work with the candidate to provide an alternative/flexible work arrangement and schedule. 

All that is required is an ability to effectively communicate complex technical issues and a demonstrated ability to work in a team environment and with others at all levels of the organization. We are looking for dynamic individuals who are flexible and enjoy being challenged (and having some fun). In return, the successful candidate will receive intensive training in patent prosecution and will work closely with patent attorneys.

Please feel free to call or email me directly in confidence to talk about your particular situation. 

The Fine Print: 

To learn more about us and the communities we serve, visit our home page at www.frostbrowntodd.com.  Send resume, transcripts and writing samples to me or to Karen Laymance, Frost Brown Todd LLC, 2200 PNC Center; 201 East Fifth Street, Cincinnati, Ohio 45202 or by email to klaymance@fbtlaw.com. Frost Brown Todd LLC is an equal opportunity employer.

Posted May 1st, 2008 by Stephen Albainy-Jenei in Jobs, Frost IP
| | No Comments Yet »

The public comment letters on the proposed Markush Rules by the Patent Office are up on the USPTO website. The Patent Office is moving ever onward with its proposed revision to the rules of practice pertaining to any claim using alternative language to claim one or more species. That is, if the claims use Markush or other forms of alternative language.

Markush claims, officially sanctioned since 1924, is a claim drafting technique using the phrase ‘‘selected from the group consisting of’’ followed by a closed listing of specific members of the group. These types of claims allow an applicant to describe an invention where there is no available wording for the group.

According to the USPTO, the search and examination of such claims consume a disproportionate amount of Office resources as compared to other types of claims. I guess as opposed to claims that don’t use big words.

Specifically, the USPTO is complaining about applications claiming compounds by their chemical structure (read: they hate the Chemical and biotech arts). The proposed rules would allow the Office to require new application for each listed item.

The Office proposes to encourage applicants who use alternative language to provide an explanation as to why the claim is directed to a single invention. Under the proposed rules, an applicant is may explain, for example, that the species share a substantial feature for a common utility. Alternatively, applicants may explain that the species are prima facie obvious over each other. It’s a poor choice either way.

As to the suggested alternative, it is hard to imagine that Applicants would ever want to admit that species are prima facie obvious over each other. If applicants were to admit that their species are prima facie obvious over each other, they could not overcome a reference that anticipated one of the species by simply excising that offending species from the claim.

37 C.F.R. § 1.75(a) provides that “[t]he specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention or discovery. A claim must be limited to a single invention.” In the commentary related to this proposed section, it is stated that the “Office proposes that if a single claim defines multiple independent and distinct inventions, the examiner may apply a restriction requirement before examination.” (72 Fed. Reg. at 44995). Furthermore, it is stated that “[p]roposed §1.75(a) would provide the basis for objecting to the format of a claim that is directed to two or more independent and distinct inventions” (72 Fed. Reg. at 44997).

This is crazy. The language is confusing and unclear and would make mandatory a restriction requirement where more than a single invention was covered by a claim. 35 U.S.C. § 121 says that restriction is made permissive by the statute, and not mandatory. An examiner should be free not to require restriction within a single claim, and that claim should not be subject to attack even if it arguably is directed to more than a single invention.

The proposed language is confusing and unclear in suggesting that a claim must be limited to a “single invention.”

Among the many still smoldering hate mails, David Boundy of Cantor Fitzgerald fired off angry comments about proposed Markush Rules and the PTO’s Initial Regulatory Flexibility Analysis (IRFA) and Paperwork Reduction Act Information Collection Request.

His comments on the Markush rule changes came down to the markush rule coins a sui generis non-statutory definition for the word “invention,” which either renders the rules unintelligible or leads to unintended consequences:

The proposed rule text and preamble in the Notice of Proposed Rulemaking (NPRM) use the word “invention” to mean something other than “the scope of one claim.” Rather than use the long-established definition of the term “invention,” the NPRM uses the term in some loose sense, with no stated or inferable definition. This usage renders most of the NPRM simply unintelligible.

Since the late 19th Century, the term “invention” has been coextensive with the word “claim.” 35 U.S.C. § 112 ¶ 2 (claims “particularly point out and distinctly [claim] the subject matter which the applicant regards as his invention”) Throughout the patent law, the word “the invention” is constantly and consistently held to be coextensive with the scope of one claim, by definition.

By trying to split the two, and relying on some unstated informal definition for “invention,” the entire NPRM is unintelligible, and the text of the rules set no meaningful standards. For example, the NPRM proposes to amend 37 C.F.R. § 1.75(a) by adding the words “A claim must be limited to a single invention,” and to add § 1.140, “Two or more independent and distinct inventions may not be claimed in a single claim.” What can this sentence possibly mean? It represents such a departure from and is in such conflict with established meanings of words as to be meaningless, and can only serve to invite abuse by examiners. Is the sentence intended to be a meaningless tautology? Does “A claim must be limited to a single invention” mean that no claim may have more than one dependent claim? That no claim may cover two disclosed embodiments?

See also:

Patent Office: Application Costs Could Increase by $100,000 or More

USPTO to Limit Markush (Alternative) Claims: Serious Cost Increase in the Forecast

Posted April 30th, 2008 by Stephen Albainy-Jenei in Patent Reform, USPTO
| | 2 Comments »

The National Law Journal is reporting that the U.S. Patent and Trademark Office may have unconstitutional appointments of nearly two-thirds of its patent appeals judges and nearly half of the trademark appeals judges. This could call into question the validity of hundreds of decisions over the last eight years.

The flaw, brought to light by highly Prof. John Duffy of George Washington University Law School, was raised in a petition filed in the U.S. Supreme Court by a company whose patent was rejected by a three-judge Board of Patent Appeals and Interferences panel. That panel decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit, which set aside an $86.5 million infringement verdict won by the company. The petition contends that one of the three panel judges in its case was named to the board in violation of the Constitution’s appointments clause.

The petition relies on a Patently-O Patent Law Journal article Prof. Duffy wrote challenging the constitutionality of the current system. The dust-up was precipitated by Intellectual Property and Communications Reform Act of 1999, which transferred the power to appoint BPAI judges from the secretary of Commerce to the PTO director.

But, BPAI judges qualify as inferior officers under the appointments clause and the clause requires that inferior officers be appointed either by the president, the courts of law or heads of departments. The PTO director is not a head of a department.

Bummer.

Pending patent reform legislation, which appears stalled if not dead, would return the appointment power to the Commerce secretary not only for the BPAI but also for the Trademark Trial and Appeal Board.

The PTO had no comment.

See also:

CAFC Judge Linn Expresses Disappointment over Failures by the BPAI and Patent Bar

Challenge to BPAI Appointments Moves to Supreme Court

Posted April 28th, 2008 by Stephen Albainy-Jenei in USPTO
| | 2 Comments »

The 8th Annual World Intellectual Property Day is April 26, 2008, and focuses on celebrating innovation and promoting respect for intellectual property.  Dr. Kamil Idris, Director General of the World Intellectual Property Organization (WIPO), highlighted the intrinsic link between creativity, innovation and IP. 

Let us know what you think is the best way to celebrate World IP Day.  Out-Law.com is running a photography competition for pupils at two London schools as an event to mark the date.  No word yet if the Public Patent Foundation (PUBPAT) will be having any festivities.  You can see a whole round-up of activities here.

Think this is all much ado about nothing? Consider this:

1. Economists estimate that two-thirds of the value of large businesses in the US is due to intangible or intellectual property assets.
2. The World Bank estimates that, on average, 40% of company valuations are from intellectual property.
3. PriceWatershouseCoopers estimated that as much as 90% of the value of the world’s top 2000 enterprises would consist of intellectual property.

And so, on World Intellectual Property Day, here’s to you o’ inventors and artists, great and small, who enrich our existence with the fruits of their innovative thoughts and creative vision.  Cheer!

See more on World IP Day here. You can even download and print your own Innovation postcards.

Posted April 26th, 2008 by Stephen Albainy-Jenei in Current Affairs
| | 2 Comments »

The San Francisco Business Journal ran a feature suggesting that biotech companies are running into hurdles in doing deals with universities, specifically the University of California System in this case. The article writes that the problem is that it simply takes too long to get the deal done — that agreements took months rather than weeks to complete. From the Journal:

“Most of us would prefer not to work with” the UC System, [Don] Francis [chairman and executive director of the South San Francisco nonprofit Global Solutions for Infectious Diseases and co-founder of Vaxgen, Inc. of South San Francisco] said at a recent UCSF forum on product development partnerships.

Another issue is (at least the perception) that the University is too risk-adverse:

Deals must pass “the Chronicle test,” said Jack Newman, a UC Berkeley graduate and now senior vice president of research at Amyris Biotechnologies Inc. in Emeryville. In other words, UC system lawyers want to be sure no one — those pesky media types, in particular — can accuse them of giving away too much value.

As with most axioms, there is some truth to these assertions. But, as they say, there are always two sides to every story. Since I used to direct patents and licensing at a major university technology transfer office and now work in private practice helping biotech companies deal with universities, I have the unique distinction of having been on both sides of the fence. And, like many things in life, it’s always easy to criticize the other side.

So, what is true?

1. Universities are risk-adverse. True. Now get over it.

Trying to get a nonprofit research institution — especially a public funded university subject to state laws and regulations, union agreements, freedom of information act requests, and general, all-around status as public punching bag — to strive to take business risks in the hopes of a big payoff is just not going to happen.

Take a look at the UC System Mission Statement:

The distinctive mission of the University is to serve society as a center of higher learning, providing long-term societal benefits through transmitting advanced knowledge, discovering new knowledge, and functioning as an active working repository of organized knowledge.

Note that nowhere does it say anything about its mission being “making money for commercial ventures.”

Although, neither does Google’s but most mission statements are not terribly useful. As Guy Kawasaki noted:

The ultimate test for a mantra (or mission statement) is if your telephone operators (Trixie and Biff) can tell you what it is. If they can, then you’re onto something meaningful and memorable. If they can’t, then, well, it sucks.

In a university, there is very much an environment where no one gets fired if the deal doesn’t happen. You get fired when the deal causes a loss. In some public universities, there are even state laws that prevent the university from taking on any unfunded liabilities. All this aside, there is, in fact, always a fear of being at the center of an i-Team investigation for having given valuable university assets to a for-profit company — a loss at taxpayers expense. There are some newspapers that take particular pride in the sport of skewering public officials and employees be they in government or universities.

2. Universities take too long to get deals done. Half-true. Now get over that, too.

There are generally two causes of this effect: procedures and staff.

First, universities are risk adverse (see point 1) and hence, agreements have to be signed-off on by all the various stakeholders. This is where universities’ and private companies’ interest and expectations diverge the most. At a company, you have one stakeholder, the company (shareholders). At a university, there are many. For starters, any royalty received in a licensing deal is split between the inventor(s) and the university. In terms of the university’s portion, that revenue is generally split among the university, the college, and the department (or some sort of fee split). Hence, all of those parties are (usually) asked to initial their acceptance of the terms. Mostly, this is done because no one wants one of the parties involved to come back later to contest the deal.

Second, but perhaps more importantly, universities are typically not over-staffed. This has to do with mission priorities (see No. 1 above) and with budget restraints. University budget surpluses, like unicorns, sound nice but I haven’t seen one yet. This means that the personnel that must draft, review, negotiate and manage university licenses and contracts have an overflowing in-box. That’s just the way it is. Many universities are certainly improving and putting more resources into licensing and technology transfer but I would expect hiring to lag need.

However, there are ways to speed this up on both sides. Mainly, it helps to recognize university restraints and not try to negotiate points they won’t (or, more likely, can’t) negotiate like indemnification, disclaimer of warranties, retention of ownership, governing law, waiver of liability, and oh, did I mention indemnifications? Trying to argue over these types of provisions is, like cursing the darkness, a futile exercise (see No. 1 above).

3. The parties often have unrealistic expectations. True. Now let’s fix it.

Keeping the above points in mind, it is critical that companies and universities come into the process knowing the limitations of a university and work with the system, not against it. If you know it takes longer to get the deal done, start earlier. The number one offense? Waiting until the last minute to get a deal done. Don’t stop in on Friday afternoon saying you need this done before the weekend.

Also, as above, don’t come in expecting to get everything and give nothing. Too often, complaints about tech transfer offices come down to “They won’t give me everything I want! That’s so unfair!” Taking too long is often the result of too many back and forth negotiations as the parties try to get their way.

Of course, unrealistic expectations are a perennial problem with universities, too. There are still some universities that think that every invention is worth a fortune (”Why else would you be interested in it?“). Furthermore, tech transfer personnel are notoriously bad at understanding the realities of product research and development and the fact that a mere lead on an eventual product is not the total value of the end product.

University inventions are often early stage, undercooked ideas that more often than not fail to deliver and, even when things work out, need lots of development and still fail to delive a big hit. Universities often fail to fully appreciate the tremendous costs and risks involved with taking on a raw, undeveloped idea and trying to turn it into a viable product on the marketplace.

There is a lot of money to be made so I think it’s in everyone’s best interest to work well together. My number one tip for those working with universities is to be pleasant and treat the other side with the respect and dignity you would want to receive in return.  People are human and — while it may not be right — will often respond to a demanding jerk by acting the same.

If others have ideas on how to deal with universities and the length of time to get deals signed, please let me know.

See also:

Biotech Companies Running into Roadblocks in Entering into Deals with the UC System

Trouble With Tech Transfer…Or Expectations?

Posted April 25th, 2008 by Stephen Albainy-Jenei in Practice Tips, Technology Transfer, Licensing
| | 2 Comments »