Lightning Strikes

The following is a sampling of various "Lightning Strikes" that have been sent out by email to interested parties. If you're interested in receiving these, please contact us.

U.S. Patent Office Makes Radical Changes Affecting All Patent Applicants

The U.S. Patent And Trademark Office has just implemented changes that require patent applicants to review their patent portfolios or risk losing patent rights. The new rules are complicated, are retroactive to all pending applications, and are generally very detrimental to the patent applicant. There are significant steps we must take to minimize their effect on your portfolio.

Put simply, the changes limit the options of patent applicants, requiring a new strategy to maximize protection or even to get any protection at all. Specifically:

Patent applicants must file documents identifying related applications, or they may lose their filing date.
There is now a limit on how many related and continuation applications can be filed, and this limit is retroactively applied. In some cases, action needs to be taken by 31 October 2007.
The number and type of patent claims has been retroactively restricted. Your portfolio may require some claim redrafting to avoid an expensive search and disclosure requirement.

It is critical that your patent counsel review your current filings and recommend the necessary compliance steps and proactive steps (such as filing a Suggested Restriction Requirement) to minimize the negative impact of the rules.

eBay Inc. v. MercExchange: Has the Supreme Court Undermined the Value of your Patents?

The US Supreme Court has weighed in on an issue of enormous significance to the development and enforcement of your company's patent portfolio. The issue concerns the permanent injunction remedy, which is the right of a patentee to shut down infringing activity. The permanent injunction is the most potent deterrent to infringement provided by the patent laws.

The issue is whether injunctive relief is available to a victorious patentee as a matter of right or within the discretion of the court. In eBay, Inc. v. MercExchange, a unanimous Supreme Court held that the grant of injunctive relief is within the discretion of the court. The court's discretion is constrained by equitable consideration of four factors: (1) proof of irreparable harm; (2) inadequate legal relief; (3) balance of the hardships of relief; and (4) the public interest. In rendering its decision, the Supreme Court rejected the position that injunctive relief generally should be granted in patent cases, except under unusual circumstances.

WHAT THIS MEANS TO YOU... As far reaching as this decision is, it does not diminish the value of a sound patent portfolio that has been strategically developed to protect an ongoing business. A well-developed patent portfolio includes patents of varying scope that cover not only the particular goods and services offered by the company, but also protect against design-arounds and alternative approaches to the market. Strengths and vulnerabilities are identified using patent landscape studies, and proactive patenting and product strategy adjustments are done to reduce the vulnerabilities. When your product strategy and patent portfolio are strongly linked, the four equitable factors should weigh in your favor, thereby preserving the effectiveness of the infringement remedy to deter your competitors.

U.S. Patent Office Adopts New (Secret) Policy

Although not an official policy, the U.S. Patent Office has made it more difficult for examiners to issue patents. The old production standard, whereby examiners get production points for each "examiner's action" they make, is still in place. However, the new policy requires every examiner, no matter how senior, to pass patent applications over to division supervisors for a complete review before final approval. The objective is to lower the allowance rate for patents and presumably raise the "quality" of the patent examination by catching potential errors.

The problem is that the division supervisors, who now have to review hundreds more cases, are overworked, don't know the case history, and don't have the time to learn it. The result is that supervisors are simply rejecting more patent applications which are otherwise ready for allowance.

WHAT THIS MEANS TO YOU... We have found that many rejections are not well grounded and can be successfully overcome by presenting sound arguments. If that does not work, appealing the case may have a high prospect of success. Finally, it may be useful to manage the date on which you respond to an examiner's action. Examiners are now reluctant to allow too many cases in any fiscal quarter, lest they be seen as lax. It may be possible to time an examiner's review of your case to the beginning of a fiscal quarter instead of the end, thereby increasing its chances for early issuance. Such a maneuver requires very sophisticated planning. In any case, one should expect the patent examination process to be lengthened somewhat.

Minnesota Federal District Court Adopts New Local Rules For Patent Infringement Cases

Effective yesterday, there are new rules to follow in patent infringement cases being tried in Minnesota Federal District Court. The new rules apply to pre-trial procedures in patent cases, including discovery planning submissions, protective orders and jury instructions. Click here to see the Minnesota District Court's press release with a link to the complete Local Rules as amended.

WHAT THIS MEANS FOR YOU... In addition to the complicated Electronic Case Filing (ECF) procedures and detailed Local Rules already in place in Minnesota District Court, there are now very specific forms and procedures required for patent infringement cases. More than ever, it is critical to retain an attorney well-versed in the particularities of litigation in Minnesota to avoid making procedural mistakes that could adversely affect your case.

United States and Korean Patent Offices Enter Into Agreement on International Search and Examination Services.

The U.S. Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) have just entered into an agreement in which KIPO will act as an available international searching and examining authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). The agreement will allow applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications. The agreement goes into effect January 1, 2006. Additionally, this action will benefit the ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.

WHAT THIS MEANS FOR YOU... With this new agreement, you now have a choice of international filing authorities, based on your technology and effecting the speed and cost of examination. This is good news, as it can speed the process and lower your filing costs, but it will require some investigation to choose the right filing authority.

About Copyrights

We are often asked about copyrights, the elements of a proper copyright notice and when notice should be used. Here are the basics:

A copyright offers protection for "original works of authorship." This includes books, plays, musicals, artistic expression, and certain other intellectual creations, such as software. Once pen is set to paper, brush to canvas, notes to sheet music, etc., a copyright is born.

A copyright notice is an identifier placed on copies of your work to let the world know of your ownership. Although there are times when using a copyright notice may be inappropriate, they are few and far between. The general rule is it is almost always a good idea to apply a copyright notice, even when in doubt. A proper notice includes all of the following elements:

The year the document was first published; and
The owner of the copyright.

With all three elements put together, a proper notice may look like this:

U.S. Patent Board Cuts the Umbilical Cord Tying Business Method Patents to a Computer or Electronic Device

In Ex parte Lundgren (Oct. 2005), the U.S. Patent Board recently rejected an examination requirement that a business method must be within the "technological arts" to be a patentable invention. This decision appears to free business method patents from being tied to a computer or other device by the "technological arts" umbilical cord.

WHAT THIS MEANS FOR YOU... By eliminating a common hurdle to registration, the Lundgren opinion may make it easier to obtain business method patents and may continue to expand the role these inventions play in the marketplace.