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.

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

K&L Gates

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.

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. 

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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