[An open letter from David Boundy, Vice President and Assistant General Counsel for a well-known financial services firm]

Dear fellow patent attorney:

I need your immediate assistance to help defeat a particularly bad patent bill now in its final stages of consideration by the U.S. Congress.  You have seen the blogs and emails explaining how the America Invents Act (formerly the Patent Reform Act of 2011) will dismantle our carefully-balanced patent system, the system that has made America the innovation engine for the world.  The bill is bad for America, bad for your clients, and bad for you as a patent attorney.  Other countries innovate at half our rate.  The multinationals want to “harmonize” our laws with those unsuccessful systems for their own convenience.  This bill imposes about $1 billion in costs by taking away options that domestic American businesses use, to save a comparatively trivial amount for the Patent Office and a small number of multinational corporations.

The appendix to this letter outlines the proposed law and how it will significantly damage our clients, our profession, and our country.

Because this bill has passed the full Senate and the House Judiciary Committee, it could be enacted within weeks.  The big multinational corporations have plowed untold sums of money into lobbying, and have the bill they want.  It’s essential that Congress hear from domestic American businesses and inventors, and hear from them now. Congress desperately needs to learn from small businesses and start-ups how they actually use the patent system to create new products, jobs, and wealth.

Congress is on recess until May 2, and your Representative will be in your district.  This is your best opportunity to inform your Representative that this bill will destroy American jobs by making it impossible for start-ups, small companies, and university spin-offs to protect the inventions they create, to obtain the funding they need to commercialize their inventions, and to earn the profits they need to grow new R&D-intensive businesses.

The “Asks”

Go to www.house.gov to find your Representative’s contact info.  To schedule a meeting, many offices will want you to FAX in a request letter.   Second best is a phone call to your district office (not the D.C. office).   Third best—and far less effective, but better than nothing—is an email.  www.reformaia.org can help you with some of these contacts.

Ask your clients to join you at a meeting, or at a minimum, to call or write.  This letter is accompanied by a “script” (see Action Alert) you can give to clients for them to make their calls.  Your representative should simply vote the bill down—overall, the bill does more harm than good, regardless of any other changes that might be incorporated.

If you live in Ohio, call Governor Kasich’s office, (614) 466-3555.  Point out that the governor’s $700 million Ohio Third Frontier jobs program cannot work, and that the Innovation Ohio Loan Fund will be not be repaid, if the federal Patent Act is changed to deter investment in university spin-offs and start-ups, and to make it harder for new businesses to succeed.

Please take the opportunity to meet or phone, or at least email your Representative. (A phone call has several times the weight of an email, and a meeting will have many times the impact of a phone call). You will be more likely to get a personal meeting, and you will have far more impact, if you as an attorney bring one or two of your clients with you.  Stay away from patent jargon, because the person you talk to will almost certainly know nothing about patent law.   It’s crucial that you discuss the effects of the bill in terms of destruction of innovation, jobs, start-up businesses, and the like, issues that a Representative or staffer can relate to.  Urge your clients to join you for a meeting.

It’s crucial to act now.  Please help preserve our gold standard patent system, one of the biggest engines of job growth in the U.S., and part of the reason U.S. attorneys can create so much more value for their clients than our counterparts in the countries to which Congress proposes to “harmonize.”

David Boundy
Boston MA
(212) 294 7848
PatentProcedure – at – gmail dot com

See Appendix here.

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Carbon trading has become a multibillion dollar business that appears to be on a future growth trend despite the uncertainties in the United States at the national level and about the international treaty under the aegis of the United Nations. ~ Scott Deatherage

In “Carbon Trading Law and Practice,” author Scott Deatherage provides practitioners with a comprehensive practical guide to the US and international practice of carbon emissions trading. The book includes a comprehensive examination of state, federal, and international climate change and greenhouse gas laws and regulations, emissions trading, international and EU law, other reduction programs, carbon credit projects and financing, climate change disclosure, and the US regulatory regime for greenhouse gas regulation and emissions trading. The book also provides a detailed description of the development and current status of greenhouse gas regulations in the United States, and the current state of affairs in terms of US carbon markets.

The Kyoto Protocol is by the United Nations Framework Convention on Climate Change (UNFCCC or FCCC), aimed at fighting global warming. The UNFCCC is an international environmental treaty with the goal of achieving the “stabilization of greenhouse gas concentrations in the atmosphere at a level that would prevent dangerous anthropogenic interference with the climate system.” Under the Protocol, 37 countries commit themselves to a reduction of four greenhouse gases (GHG) (carbon dioxide, methane, nitrous oxide, sulphur hexafluoride) and two groups of gases (hydrofluorocarbons and perfluorocarbons) produced by them, and all member countries give general commitments

Under the UNFCCC, countries are permitted to use a trading system to help meet their emissions targets. In principle, a country may allocate permits to individual companies for the emission of a certain quantity of greenhouse gases. Carbon emissions trading is a form of emissions trading that specifically targets carbon dioxide (calculated in tonnes of carbon dioxide equivalent or tCO2e) and it currently constitutes the bulk of emissions trading. This form of permit trading is a common method countries utilize in order to meet their obligations specified by the Kyoto Protocol; namely the reduction of carbon emissions in an attempt to reduce (mitigate) future climate change.

The value of the global market in carbon emissions permits edged up 1 percent in 2010 to $120.9 billion. The value rose due to higher carbon prices, notwithstanding a 12 percent drop in the total traded volume at 7 billion metric tons of carbon emissions allowances and offsets. The greatest decline was in the United States, where trade in a regional scheme in north-eastern states fell 76 percent, after the U.S. cap and trade was put on ice. The Obama administration is now considering a carbon-trading system under existing law if Congress doesn’t pass cap-and-trade legislation that allows companies to buy and sell the right to pollute.

The pros and cons of carbon credits continue to be debated by the international community. One criticism of carbon trading is that it is a form of colonialism, where rich countries maintain their levels of consumption while getting credit for carbon savings in inefficient industrial projects. Another criticism is this does not reduce emissions. Rather, it simply is a redistribution of emissions allowances.

However, more and more companies are participating in environmental credit markets, including regulated and voluntary markets for carbon and other greenhouse gas emission reductions and renewable energy credits.

Motivations for participating in these markets include:

  • Complying with international, national, state, or local mandates – or hedging against the risk of future mandates.
  • Demonstrating corporate social responsibility to customers or shareholders;
  • Gaining experience in new markets.
  • Taking advantage of emerging investment opportunities in new “green” or clean energy and technology markets.
  • Monetizing emission reduction or sequestration activities.

The use of market-based systems as a means of regulating emissions and other environmental pollution or degradation is a growing phenomenon. As nations and states appear to be responding to scientific pronouncements regarding the existence and causes of climate change, environmental markets appear to be one of the main tools that will be used to address greenhouse gas emissions. Carbon Trading Law and Practice provides the fundamental explanation and the underlying legal systems and issues that serve to create and sustain carbon credit creation and the trading of these credits, and a series of related legal and business issues.

Carbon Trading Law and Practice,” by Scott Deatherage, Oxford University Press, 346 pages is available from Amazon.

About the Author

Scott Deatherage has practiced environmental law for the last 20 years, and currently is a partner with the firm of Patton Boggs in Dallas, Texas. He is the head of Thompson & Knight’s Climate Change and Renewable Energy Practice Group is a member of the firm’s environmental, energy, and renewable energy groups.

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I apologize for the long outage of the Patent Baristas web site.  For the past two weeks, the site has been unavailable — even to the point were I could not even log in to try to figure out why I was constantly receiving the message “Error establishing a database connection.”

The web site was being bombarded with requests from a Chinese search engine/malware site called sogou.com, my logs showed lots of requests and were filling rapidly. This robot is nasty and somehow sniffs internet traffic and tries to access it.  Not only that, it even intentionally ignores my robots.txt (which tells spiders what pages not to crawl) and directly crawls all pages explicitly disallowed.

These requests were holding the database connection open and eventually overwhelming the connection pool causing the WordPress database connection error.

In case you want all the gory details, for spiders that won’t abide by the robots.txt protocol, it’s safer to block them via a .htaccess and mod_rewrite.  In your .htaccess file, include the following code:

RewriteEngine on
Options +FollowSymlinks
RewriteBase /

RewriteCond %{HTTP_USER_AGENT} ^Baiduspider [NC,OR]
RewriteCond %{HTTP_USER_AGENT} ^Sogou
RewriteRule ^.*$ – [F]

Here’s hoping this blockade helps.

[With thanks to WP Dude Neil Matthews in Newcastle,  England, for his assistance in squashing this bug!]

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When:

Tuesday, May 03 to Wednesday, May 04, 2011

Where:

Marriott Downtown, New York City, NY

What:

American Conference Institute’s Paragraph IV Disputes conference is the undisputed source for Hatch-Waxman litigation strategies for brand-names and generics. This event — which is widely recognized for setting the standards for Paragraph IV litigation and which also serves as the annual meeting place for the “who’s who” of pharmaceutical patent litigation — is now the single forum on which brand name and generic companies can rely for answers during this turbulent time in which the balance of power designed by the Hatch-Waxman Act may completely unravel.

Patents covering critical pharmaceutical products worth more than $30 billion annually are on the verge of expiration.  However, generic manufacturers are facing their own hurdles as fewer opportunities for 180-day exclusivity will remain.  Paragraph IV litigation is a no-holds barred fight and have raised the monetary ante to an unprecedented level.

Moreover, the passage of biosimilars legislation, the possible resurrection of patent reform and the never ending controversy surrounding reverse payment settlements have only added to the complexities surrounding this litigation.

Who:

An experienced faculty comprised of respected and renowned counsel for brand name and generic pharmaceutical companies will provide insights on all facets of Paragraph IV litigation: pre-litigation concerns – the commencement of suit – final adjudication – and every step in between. Sessions will address the key elements of Paragraph IV litigation in addition to some of the most pressing and recent controversies surrounding Paragraph IV cases, including:

  • Possible re-evaluation of the Invalidity standard
  • Double patenting obviousness
  • Inducement of infringement
  • Section 8 carve-outs
  • Inequitable conduct
  • Damages

We will once again offer our informative and hands-on workshops:

  1. Hatch-Waxman and BPCIA 101 — A Primer on IP Basics and Regulatory Fundamentals will provide you with the patent and regulatory backdrop for the more in-depth Hatch-Waxman litigation controversies discussed in the main conference; and
  2. The Master Class on Settling Paragraph IV Disputes – Drafting and Negotiating Strategies for Brand-Name and Generics will give you practical and hands-on strategies for drafting and negotiating settlement agreements that will pass muster with the FTC.

How:

Register now by calling 1-888-224-2480, faxing your registration form to 1-877-927-1563 or logging on to www.AmericanConference.com/ParagraphIVDisputesNYC

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When:

Tuesday, May 03 to Wednesday, May 04, 2011

Where:

Marriott Downtown, New York City, NY

What:

American Conference Institute’s Paragraph IV Disputes conference is the undisputed source for Hatch-Waxman litigation strategies for brand-names and generics. This event — which is widely recognized for setting the standards for Paragraph IV litigation and which also serves as the annual meeting place for the “who’s who” of pharmaceutical patent litigation — is now the single forum on which brand name and generic companies can rely for answers during this turbulent time in which the balance of power designed by the Hatch-Waxman Act may completely unravel.

Patents covering critical pharmaceutical products worth more than $30 billion annually are on the verge of expiration.  However, generic manufacturers are facing their own hurdles as fewer opportunities for 180-day exclusivity will remain.  Paragraph IV litigation is a no-holds barred fight and have raised the monetary ante to an unprecedented level.

Moreover, the passage of biosimilars legislation, the possible resurrection of patent reform and the never ending controversy surrounding reverse payment settlements have only added to the complexities surrounding this litigation.

Who:

An experienced faculty comprised of respected and renowned counsel for brand name and generic pharmaceutical companies will provide insights on all facets of Paragraph IV litigation: pre-litigation concerns – the commencement of suit – final adjudication – and every step in between. Sessions will address the key elements of Paragraph IV litigation in addition to some of the most pressing and recent controversies surrounding Paragraph IV cases, including:

  • Possible re-evaluation of the Invalidity standard
  • Double patenting obviousness
  • Inducement of infringement
  • Section 8 carve-outs
  • Inequitable conduct
  • Damages

We will once again offer our informative and hands-on workshops:

  1. Hatch-Waxman and BPCIA 101 — A Primer on IP Basics and Regulatory Fundamentals will provide you with the patent and regulatory backdrop for the more in-depth Hatch-Waxman litigation controversies discussed in the main conference; and
  2. The Master Class on Settling Paragraph IV Disputes – Drafting and Negotiating Strategies for Brand-Name and Generics will give you practical and hands-on strategies for drafting and negotiating settlement agreements that will pass muster with the FTC.

How:

Register now by calling 1-888-224-2480, faxing your registration form to 1-877-927-1563 or logging on to www.AmericanConference.com/ParagraphIVDisputesNYC

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On October 19, 2009, the U.S. Patent and Trademark Office released a “Notice of Change to Docketing of Requests for Continued Examination.” The Notice indicated that requests for continued examination (RCEs) filed on or after November 15, 2009 will be placed on the examiner’s “Special New” application docket instead of the examiner’s amended docket.

An examiner’s “Special New” docket also includes divisional and continuation applications, as well as applications accorded special status under 37 C.F.R. § 1.102.  Read the full notice here.

The stated purpose of this change is to allow examiners more flexibility in managing their workload, insofar as examiners will no longer be required to act on an RCE within two months of entry, as is required for applications on the examiner’s amended docket. This change in docketing procedure can significantly slow the prosecution of RCEs.

The Pabst Patent Group in Atlanta, GA, thinks the policy is being used to cut the perceived number of pending cases drastically. That is, when an applicant files an RCE, the USPTO is calling them all new applications. The Pabst Patent Group is trying to get the USPTO to move cases back to the amended docket.

The have written a letter to David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, urging him to rescind or revise the change to the docketing of RCE’s:

Prior to this change, the examiner was required to act in an expeditious manner on the case. Now, the case is treated as if it were a newly filed application, and cases that may have had extensive, time consuming, and expensive prosecution by the applicant and examination by the patent examiner, may not be acted on for one to three years. Attached is a list of some of the applications we are prosecuting which have already experienced significant delays due to the policy change. Examiners and their supervisors say they have no deadlines to act on these cases and therefore put them into the same docket as cases in which examination has not yet begun. This is detrimental to efficient prosecution and the effective resolution of issues.

RCEs may be filed for many reasons. In some cases, data from clinical or animal studies may not have been available earlier. In some cases, RCEs are filed due to poor examination in the first office action on the merits. It is not uncommon to have applications in which weak art is cited in the first office action on the merits.

See the entire letter here:  Letter to USPTO Director or Commissioner re Change to Docketing of RCEs

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The Biotechnology Industry Organization (BIO) hosted a U.S./China Biotechnology Examiner Workshop with U.S. Patent and Trademark Office (PTO) and China’s State Intellectual Property Office (SIPO) on March 28, 2011 in Beijing, China. The workshop which was organized by BIO for SIPO examiners, focused on biotechnology patenting and encouraged bilateral cooperation between SIPO and the USPTO.

The workshop was the first of a series of meetings intended to open communication and establish a relationship between the two groups. BIO will work with the SIPO to strengthen China’s regulatory system to encourage innovation and protect intellectual property within the country. The commitment of SIPO will be critical for sending a message to companies that want to do business in China.

“Since most Chinese attendees are examiners of intellectual property, [the workshop] provides an opportunity to share experiences and ideas with our American counterparts,” said Yang Xiaowei, deputy Director General of International Cooperation Department of SIPO.

In each of three panels, USPTO and SIPO speakers discussed how each issue is handled by the pertinent provisions in their current patent law and rules. They also addressed office practice and shared practical experiences with the different technical arts in biotech.

The workshop featured the following panels:

  • The first panel focused on taking a balanced approach to written description and enablement requirements, which are necessary for preventing impediments to patenting activity. Panelists also discussed the type of information that is required for an invention to satisfy the written description and enablement requirements.
  • The second panel focused on issues arising from claims with sequence homology. Panelists discussed the scope of claims using homology or percent of sequence identity language and issues that often arise during examination.
  • The third panel addressed meeting discussed China’s new requirements for patent disclosure for genetic resources, stakeholders’ experiences with China’s new genetic disclosure requirement, and alternative ways to ensure appropriate access and benefit sharing.

See more at BIOtechNOW

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A two-day “Invention Analysis and Claiming” seminar is being offered this May in New York (May 12-13), Chicago (May 16-17) and Santa Clara (May 19-20).

The program is based on the book “Invention Analysis and Claiming: A Patent Lawyer’s Guide” published by the ABA. The program presents strategic approaches for analyzing inventions and claiming them based on the problem/solution paradigm and other time-honored patent practice principles. The program is not about claim drafting mechanics an so is appropriate for both newly admitted and experienced attorneys and agents.

  • Are you using the claim drafting process as the vehicle for discovering the broad invention? If so, you may be missing the broad invention. Learn how to apply the problem-solution paradigm in new ways to uncover the full breadth of the invention before the claims are drafted.
  • Are your dependent claims doing the job they’re intended to do? Define an effective Planned Retreat in which each successive claim gives up as little valuable IP as possible while establishing a defensible position for what’s left.
  • Are you proactively protecting your claims against invalidity based on indefiniteness? Explore the use of dependent “definition claims” to define potentially indefinite terminology without sacrificing the parent claim’s breadth.
  • Are you dismissing as obvious inventions that might be successfully argued to be non-obvious? Engage Ron in arguing for and against the patentability of a number of everyday innovations that are right on the edge of being §103 obvious.

Who Should Attend?

This program is for newly admitted and experienced attorneys and agents. Using principles never before taught in the classroom, it presents a strategic approach to analyzing inventions as well as strategies for claiming them. This seminar is not about claim mechanics. Even old hands will experience new ways of thinking about the broad invention and its fallback features, as well as many other aspects of sophisticated patent practice.

More information is available in the attached and at www.sluskyseminars.com.

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