This is a guest post from Dr. Stefan Danner
Patentanwalt/German Patent Attorney, European Patent Attorney

In its previous decision G1/07, the EPO Enlarged Board of Appeal (EBA) shed new light on the patentability of surgical methods, particularly those forming part of diagnostic methods. Based on this ruling the range of patentable subject matter is now limited in that methods that are surgical by nature but not necessarily by purpose are not deemed eligible for patent protection according to Article 53(c) EPC^[1]

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Please join Schwegman, Lundberg & Woessner, P.A. for an hour-long discussion on how combining litigation, reexamination, and interference results in the USPTO’s new adversarial proceedings: inter partes review and post-grant review. The AIA offers these proceedings to provide efficient patentability decisions designed to reduce the costs of litigation. Accused infringers must weigh potential estoppels against the benefits of the new proceedings, which provide for a settlement period and limited opportunities for discovery, depositions, claim amendments, and other motions.

The webinar will be on May 23, 2012 12:00 PM (CDT)

To register visit: www.slwip.com/whatnow/ or send an email to events@slwip.com and we’ll register on your behalf

About the Presenters

Lissi Mojica is an officer of SLW and considered to be among the world’s foremost experts in reexamination procedures. Prior to joining the firm, Ms. Mojica was a senior advisor at a Washington D.C. patent law firm, and served as an Associate Chair for the firm’s Post-Grant Law/Patent Reexamination Practice Group.

Kevin Greenleaf is a registered patent attorney and an associate at SLW. His practice includes patent procurement and post-grant review, portfolio analysis, technical analysis, and strategic counseling, with emphasis on computer architecture, software, circuit design, semiconductors, and microelectronic fabrication.

Last Thursday (May 10, 2012), a roundtable of intellectual property experts convened at the George Washington University Law School. It was co-sponsored by the USPTO and the U.S. Copyright Office. The purpose of this roundtable meeting was to consider the possible introduction of small claims proceedings for patent and/or copyright claims.

The day began with framing of the challenge: offering access to IP justice to creators least resourced but often most in need, in an age in which creative works (both in the copyright and patent domain) are more subject to disputes, of all magnitude, than ever before. Presentations followed on the small claims system in the UK, and the U.S. Constitutional limitations on the nature of such procedures, including the Seventh Amendment right to a jury, Article III judicial power, and due process.

In breakout sessions on patents and copyrights, attendees discussed the need for and ways to structure a small claims system in both areas.

This productive session was a first step in determining whether and how it makes sense for the government to help set new parameters for the resolution of small claims in the patent and copyright areas. USPTO will continue to work with the Copyright Office on taking these ideas forward, so stay tuned. And of course, as always, if you have thoughts on this topic please let us know.

Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea

Currently, the USPTO has two principal ways of challenging granted patents - inter partes reexamination and ex parte reexamination. Both of these are an examination performed in the Patent Examining Corps, specifically in the Central Reexamination Unit (CRU). Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals. To best serve the applicant community, Congress directed the Agency in the America Invents Act (AIA) to implement more efficient and timely alternatives to litigation.

On September 16, 2011, President Obama signed the AIA into law. It establishes three post grant proceedings conducted by the Board of Patent Appeals and Interferences (Board). These proceedings include post grant review, inter partes review and the transitional program for covered business method patents. The AIA also renames the Board as the Patent Trial and Appeal Board. 

The size and experience level of the Board is being significantly expanded to handle the new proceedings. The Board now has more than 120 judges, with many of the new members coming from outside the USPTO. Many of the new judges have considerable litigation and patent prosecution experience, augmenting the considerable examination experience of other judges. This Board is well positioned to handle the new contested cases. We at the USPTO are pleased to have fresh viewpoints and diverse experiences as we take on the challenges of the AIA. 

We are hard at work on the final rules concerning post grant procedures as we implement and fulfill Congress’ intent with the AIA. The need to provide an efficient way for the Board to reconsider granted patents is an important feature of the new law. The process desired by Congress is one that is efficient and cost-effective, and relies on expertise within the Agency to provide high-quality decisions. Congress also specifically limited the length of these new proceedings to 12 months, with an additional six months in exceptional cases. 

Our rulemaking is taking into consideration a wide variety of information, input, and experience. The experience and procedures used in Federal District Court litigation were considered as well as the experience and procedures in the CRU. We studied procedures used by other administrative agencies, such as the Board of Veterans’ Appeals, and the International Trade Commission. We actively engaged the user community in the rulemaking process. We discussed a wide range of procedures and recommendations from a variety of sources including associations, corporations, law firms and individuals.

The Board also has some direct experience in handling contested cases. Interference practice has a long history within the Agency, and the Agency evaluated those procedures in order to identify best practices. I have practiced in the interference area for many years, and watched the development of efficient trial proceedings take root at the Board. About 15 to 20 years ago, interferences took approximately four to seven years, costing stakeholders time while adding uncertainty. They allowed for dilatory practices, wasteful motions, and procedural traps. The process eventually was modified—much to its benefit—and is now a trial-like proceeding, streamlined by careful involvement of judges. The average interference today is completed in less than a year, approximately 11 months. We in the practice learned to trust the involvement of the judges in shepherding proceedings to a quick and efficient conclusion.

The team working on the rules consists of individuals with a balanced set of viewpoints. The Director, myself, and the Chief and Vice Chief of the Board have all practiced in firm and corporate settings, and are well aware of the needs and concerns of external stakeholders. We do not wish to retain any of the elements of an overly complex interference practice. We have started from scratch and take a fresh look in our rulemaking.

Post-AIA proceedings will be very different from reexamination proceedings or interferences. First, they must be completed within a year, which means streamlining. There will be no examination, no counts, no determination of priority, no complex procedures of inter partes reexamination, and no establishing priority of invention. Complex inter partes reexamination and interference practices will not return. We envision reaping the benefits of a straightforward trial proceeding, implemented by experienced judges, resulting in a fair and efficient proceeding.

The user community has provided diverse and, at times, contradictory recommendations on aspects of the rule implementation. We are diligently taking this information into consideration as we draft procedures that will provide high quality decisions that are clear and predictable. We aspire to present final rules which will accomplish Congress’ intent of efficiency and cost-effectiveness within a 12-month window. I appreciate the interest and helpful input of the entire user community.

As USPTO continues to work toward improving effectiveness, a key to maintaining progress will be financial stability, predictability, and sustainability.

Towards this end, the Leahy-Smith America Invents Act (AIA) authorized a 15 percent surcharge on most patent fees, which went into effect on September 26, 2011.  The AIA also entrusted the USPTO with the responsibility to set fees through regulation— a new authority that the Office, in collaboration with our stakeholders, is working to put in place in the coming months.  Our target is to have a new fee schedule operational by the middle of FY 2013.

In addition to these in-process AIA fee adjustments, the USPTO recently published a Notice of Proposed Rulemaking (NPRM) that proposes an increase to statutory fees based on inflation as of October 1, 2012, using the Consumer Price Index.  CPI adjustments have routinely been implemented in the past—generally on an annual basis—to help the Office adjust to the higher costs of doing business resulting from increases in the price of products and services. Given this mix, it is quite understandable that I am sometimes asked why we need the additional fee increase, given the 15 percent surcharge already in place and plans to implement a revised fee schedule by the first quarter of next year.

The answer is: leveling, cash flow, continuity -- much like with any large enterprise.   Think of the CPI adjustment as ensuring “bridge funds.”  This planned CPI adjustment will provide a small but needed increase in funding, allowing the USPTO to continue reducing the backlog and pendency until our new fee schedule--which will provide long-term financial resources--is in place.

An adequately funded USPTO will optimize the administration of the U.S. intellectual property system, moving your innovative ideas to the marketplace more quickly, while creating and sustaining U.S. jobs and enhancing the health and living standards of Americans and indeed people everywhere around the globe.

The USPTO has announced the implementation of a pilot program, effective from May 16^th until September 30^th, to permit applicants to file IDS statements after payment of the issue fee in utility and reissue applications, without the need to continue prosecution by filing a “working” RCE with the IDS. The goal of the program is clearly to reduce the number of pending RCE’s, which now make up the majority of the docket of many Examiners. A link to the USPTO’s press release can be found at the end of this post.

The program is not without “catches.” Applicant must electronically file a request form (no new fee), the IDS, and still file an RCE and the Petition to Withdraw, with the usual fees. If the Examiner finds no reason to reopen prosecution, he/she will issue a supplemental notice of allowability and amended notice of allowance, and will not activate the RCE. Applicant will receive a refund of the RCE fees.  Otherwise the RCE will be activated, and prosecution will be reopened.

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The USPTO has announced the implementation of a pilot program, effective from May 16^th until September 30^th, to permit applicants to file IDS statements after payment of the issue fee in utility and reissue applications, without the need to continue prosecution by filing a “working” RCE with the IDS. The goal of the program is clearly to reduce the number of pending RCE’s, which now make up the majority of the docket of many Examiners. A link to the USPTO’s press release can be found at the end of this post.

The program is not without “catches.” Applicant must electronically file a request form (no new fee), the IDS, and still file an RCE and the Petition to Withdraw, with the usual fees. If the Examiner finds no reason to reopen prosecution, he/she will issue a supplemental notice of allowability and amended notice of allowance, and will not activate the RCE. Applicant will receive a refund of the RCE fees.  Otherwise the RCE will be activated, and prosecution will be reopened.

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In re Montgomery, App no. 2011-1376 (Fed. Cir. May 8, 2012) (a copy is available at the end of this post), a divided panel affirmed the Board’s decision that a claim to a “new use for an old compound” was inherently anticipated by a reference disclosed in a proposed clinical trial that had not been carried out as of the effective filing date of the application. The claim in question was:

“A method for the treatment or prevention of stroke or its recurrence, wherein said method comprises administering, to a patient diagnosed as in need of such treatment or prevention, an inhibitor of the rennin-angiotensin system, said inhibitor having a Clog P greater than about 1.”

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USPTO is making it a major focus to actively engage and have regular conversations with our stakeholders on a host of issues. Look no further than how we have managed the rulemaking process to implement the Leahy-Smith America Invents Act (AIA), including – for the first time in the Agency’s history – proposing and setting a new fee schedule.

Recently, the Government Accountability Office (GAO) released a report that looked at USPTO’s user fee design. GAO’s report is quite positive. The report found that the USPTO has a robust fee review process in place, and applauded our efforts to manage funding uncertainty by creating an operating reserve, borrowing from a practice widely used in industry. The report also notes that the USPTO has a strong stakeholder communication base on which to build, assisting us in our ongoing pursuit of transparency and two-way communication.

The report did, however, note opportunities to ensure superior implementation going forward, opportunities we have already begun pursuing. Because the Office has not yet issued a notice of proposed rulemaking for setting fees under section 10 of the AIA, the findings are based largely upon past practices going back several years. Since we are just now reaching the mid-point for our fee-setting process, and the “new” information available to GAO was gathered very early in the process, the report comes at a great time for us to gain value going forward. As such, the report serves as a guide to help the Office successfully carry out the authorities entrusted to it, and not as a comprehensive review of the entire fee setting process.

The report recommends that the USPTO continue to build upon the communication successes we have already achieved, by enhancing transparency through providing detailed accounting of program costs as well as communicating clearly our policy choices. This is a fair recommendation, especially considering the GAO’s review and conclusions were based on the high-level informational materials provided in advance of the fee setting hearings held in Alexandria and Sunnyvale in February. Enhancing transparency remains critical to our business model.

Finally, GAO encouraged us to continue building on current successes by establishing guidance and protocols for communication with the PPAC and other stakeholders regarding our fee setting process. This will help ensure consistency far into the future. We have taken this recommendation to heart, and plan to incorporate specific protocols for communication into our fee-setting process.

We welcome the guidance and assistance that GAO has provided to us in their report, and look forward to continuing this strong relationship. We’ll be looking for additional ways to engage and seek help from our stakeholder community to ensure the best possible implementation of AIA, as well as numerous other initiatives underway at PTO.

One of our stars here at the USPTO was honored this morning for her excellent work as a public servant. Senior Telework Advisor Danette Campbell is one of 33 Samuel J. Heyman Service to America Medal finalists in the category of Management Excellence. Under Danette’s guidance, the USPTO has created a teleworking program that is a model not just for the federal government but for any employer. A full two-thirds of USPTO employees telework in some manner, which saves millions of dollars, increases productivity, and boosts employee job satisfaction and retention.

The “Sammies,” as the awards are known, is a project of the nonprofit Partnership for Public Service, which honored the finalists at a breakfast today at the Ronald Reagan Building here in DC. Danette and her fellow finalists were profiled Monday in The Washington Post, and we’ve already been contacted by TV and radio outlets looking to hear Danette’s story. Of course, her story is really the story of the thousands of USPTO employees who have embraced teleworking to everyone’s benefit. We all will be pulling for Danette when they announce the winners on September 13th.

The recent decision of the Fed. Cir. in Otsuka v. Sandoz, App. No. 2011-1126, -1127 (Fed. Cir. May 7, 2012) continues the courts admirable work in defining obviousness post-KSR. This case revisits the standards involved in making out a prima-facie case of structural obviousness. What is particularly interesting in this decision is the weight – or lack thereof – that the court gave to evidence of therapeutic utility of the closest prior art compound. In fact, the court applied the fairly obscure maxim of patent law articulated forty years ago In re Steminski, 444 F.2d 581 (CCPA 1971). John L. White, in Chemical Patent Practice, summarized the holding of Steminski as part of his discussion of the “Hass-Henze Doctrine”:

“The [CCPA] concluded that because the characteristics normally possessed by members of a homologous series [e.g., differing by only one methylene group] are principally the same, varying gradually from member to member [e.g., methyl, ethyl, propyl, butyl, etc], chemists knowing the properties of one member of a series would in general know what to expect in adjacent members so that a mere difference in degree is not the marked superiority which will ordinarily remove the unpatentability of adjacent homologs of old substances. Contra, where no use for the prior art compound is known [citing Steminski].”

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The recent decision of the Fed. Cir. in Otsuka v. Sandoz, App. No. 2011-1126, -1127 (Fed. Cir. May 7, 2012) continues the courts admirable work in defining obviousness post-KSR. This case revisits the standards involved in making out a prima-facie case of structural obviousness. What is particularly interesting in this decision is the weight – or lack thereof – that the court gave to evidence of therapeutic utility of the closest prior art compound. In fact, the court applied the fairly obscure maxim of patent law articulated forty years ago In re Steminski, 444 F.2d 581 (CCPA 1971). John L. White, in Chemical Patent Practice, summarized the holding of Steminski as part of his discussion of the “Hass-Henze Doctrine”:

“The [CCPA] concluded that because the characteristics normally possessed by members of a homologous series [e.g., differing by only one methylene group] are principally the same, varying gradually from member to member [e.g., methyl, ethyl, propyl, butyl, etc], chemists knowing the properties of one member of a series would in general know what to expect in adjacent members so that a mere difference in degree is not the marked superiority which will ordinarily remove the unpatentability of adjacent homologs of old substances. Contra, where no use for the prior art compound is known [citing Steminski].”

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A guest post from shareholder Robin Chadwick of SLW.

A quick survey of folks who read this blog indicates that funding for 50% of respondents’ R&D is affected by whether or not a project was patentable. Similarly, 50% of respondents report that aspects of R&D are modified by whether their R&D is patentable.

Most of those who responded were involved in the business of diagnostic methods (95%), recombinant technology (81%) and/or nucleic acids or proteins (90%).

Sixty-four (64%) of respondents stated that diagnostic method claims should be eligible for patenting when drawn to an in vivo relationship between an administered drug and its metabolite concentration.

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Guest blog by Acting Administrator for Policy and External Affairs Shira Perlmutter

As fiscal year 2012 moves forward, the Office of Policy and External Affairs (OPEA) continues to make great strides toward improving the global intellectual property system. Our dedicated staff promotes the protection of U.S. intellectual property interests around the world—from the World Intellectual Property Organization, to our work with the Office of the United States Trade Representative on trade agreements, to our collaboration with other offices via the Trilateral and IP5 processes. We are engaged in initiatives across the entire spectrum of intellectual property rights focused on enhancing the contribution the intellectual property system makes to global economic and social prosperity. I wanted to take this opportunity to give you an update on some of these initiatives and point you to details and statistics found on our updated Policy and External Affairs dashboard.

One of our most important projects is the Patent Prosecution Highway (PPH). The PPH is a worksharing framework designed to promote more efficient and higher quality examination, while enabling innovators to obtain patent protection more quickly and with greater certainty in multiple jurisdictions. The basic concept is that when one office determines claims to be allowable in an application, the applicant can fast-track examination in another office on a related application (filed via the Paris Convention or the Patent Cooperation Treaty (PCT)) containing the same or similar claims.

The USPTO has PPH arrangements with 22 patent offices around the world and the PPH network continues to expand. Furthermore, improvements made to the program were launched in January of this year as PPH 2.0, which are expected to encourage increased use of the program. As of the end of the second quarter, the USPTO had received a cumulative total of 10,322 PPH requests from applicants worldwide since the program’s inception.

Another of our key activities is providing educational and training programs for foreign government officials through our Global Intellectual Property Academy (GIPA) to improve intellectual property protection and enforcement worldwide. As of the end of the second quarter of this fiscal year, GIPA had conducted 68 training programs for 3,949 participants from 79 countries. 

I am proud of the work OPEA is doing to advance these important initiatives, and I look forward to reporting continued progress in the future.

The Board of Appeals and Interferences (BPAI), like other areas within the USPTO, have experienced increased growth, leading to a large backlog of ex parte appeals. With the new Post-Grant Review processes set forth in the America Invents Act (AIA) fast approaching and BPAI resources being diverted to prepare for those new proceedings, there are concerns this backlog may continue to grow. As a result of the AIA, on September 16, 2012, the BPAI will become known as the Patent Trial and Appeal Board (PTAB) as it adds Post-Grant Review and inter partes review proceedings, to its current workload of ex parte appeal cases.

In recognition of this additional workload and in anticipation of the new processes beginning at the end of fiscal year 2012, we continue to look at how the USPTO can reduce this backlog. Chief Administrative Judge James Donald Smith blogged about the topic in December 2011 and he discussed streamlining the appeals process for applicants and examiners. This effort, and the new regulations resulting from it, was prompted by comments received at a USPTO public roundtable in January 2010 and a notice of proposed rulemaking in November 2010.

This is just one avenue which we are pursuing as we are continually looking for ways to improve the patents appeals process. In fact, public perception has suggested a high number of pending applications were sent to the BPAI from the Patent Technology Centers (TCs) unnecessarily. In response to this perception and because of our desire to decrease the backlog of ex parte cases, the Patent TC Directors working on a BPAI task force enlisted the help of the Office of Patent Quality Assurance (OPQA). OPQA reviewed a sample of 1,300 pending applications at the BPAI. This review was intended to determine if some of the cases most recently sent to the BPAI from the patent corps were truly ripe for appeal.

Results of this review found a low number of reviewed applications containing deficiencies that would result in them not being ready for review by the BPAI. More importantly, this information gave the patent corps the opportunity to take an in-depth look at these sample cases to identify issues where further training could be provided. Examiners recently completed mandatory training on the above new rules for the BPAI, but there is more opportunity for improvement.

As we continue to work diligently to decrease the backlog, special attention has been given to design programs to help prevent applications from being sent to the BPAI when appeal is unnecessary. Our emphasis on interviews is designed to help examiners and attorneys resolve as many issues as possible—if not allow the application—before appeal. Our Ombudsman Program is designed to assist applicants and their representatives to bring the examination back on track when the process is not working as intended, thus avoiding appeal where possible. One of our latest efforts encourages examiners to hold interviews after final and, if possible, move those applications to allowance rather than appeal.

While we work toward preventing unnecessary appeals, the BPAI is working to reduce the current ex parte backlog and to prepare for the new post-grant review and inter partes review proceedings resulting from AIA.

Our goal is two-fold, 1) to serve you as quickly as possible when you need to appeal and 2) make sure that we do everything possible to resolve issues before the appeal route is chosen.

Your Company’s Most Valuable Asset
Trademarks are often the most valuable asset of a company. They are what consumers use to associate your product with your company. Trademarks embody the goodwill of your company. Everyone talks about what makes a good trademark, but what makes a bad trademark? Knowing what makes a bad trademark can be just as important as what makes a good trademark. You do not want to pin the goodwill of your company on a bad trademark.

Good vs. Bad Trademarks
What makes a good or bad trademark to a trademark lawyer is quite different than what makes a good or bad trademark to a marketing consultant. Trademarks do not exist in a vacuum. Trademarks only exist in their association with a particular good or service. Merely descriptive terms like “Yellow Delicious” for bananas, or generic terms like “Bananas” are not registrable trademarks for bananas. Basically, any terms your competition would normally use in its identification or description of the product or service is something you are not allowed to take out of the public domain and slap a trademark on. “Yellow Delicious” or “Bananas” may be a perfectly registrable trademark for a record company, just not for bananas themselves.

Forbidden Trademarks
Other types of “bad” trademarks, that are not allowed to be federally registered, include immoral, deceptive or scandalous trademarks. What constitutes an immoral or scandalous trademark today, is quite a bit different than what might have been considered immoral or scandalous in the 1950′s. Trademarks depicting a name, portrait, or signature of a living person who has not given their consent to the trademark are also not available for federal registration. You also cannot register the name, portrait, or signature of a deceased united States President without the written consent of his widow. You cannot register trademarks that disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. Trademarks that include a true representation of the flag of the United States, any state, municipality or foreign nation, or is a simulation thereof, are also out.

Test the Waters
Before you invest thousands of dollars behind a marketing campaign for your new trademark, contact a trademark attorney to make sure you are not running afoul of any obvious trademark no-nos. While no trademark attorney is going to thoroughly vet your trademark against all existing registrations for free, you might be able to find a trademark attorney who will give you a little free advice over the phone regarding whether your trademark runs afoul of any obvious prohibitions. You might even find one willing to run a free trademark search through the Patent and Trademark Office while you are on the phone to see if anyone has already registered your proposed trademark.For more information on trademarks, check out our FAQ.

Brett Trout

On April 30^th, in response to the Supreme Court’s GVR of the Myriad appeal (AMP et al. are still trying to get the claims to isolated DNA molecules and the use of a transgenic cell comprising the BRCA1 gene to screen potential anti-cancer drugs—claim 20– declared patent-ineligible as natural products or natural phenomena), the Fed. Cir. vacated its original decision (rendered twice) and requested the parties and amici to brief the question: “What is the applicability of the Supreme Court’s decision in Mayo to Myriad’s isolated DNA claims and to method claim 20 of the ‘282 patent?”

Although many trees will die to make the paper for the tower of briefs that will undoubtedly be filed, I present the answers for your convenience:

Question part 1: None whatsoever. The Supreme Court considered method claims and the DNA claims are compound (composition of matter) claims.

Question part 2: None whatsoever. The Supreme Court did not purport to reverse Chakrabarty, which claimed the use of transgenic cells containing plasmids that enabled them to degrade oil. In fact, the Court purported to rely upon it extensively. See slip. op. 1-2. Myraid’s claim 20 is no more than a claim to the use of novel transgenic cells of the same “class.” If a composition of matter is novel, so are any and all of its uses. I still have a file folder labeled “The Death of Durden.” See In re Ochiai. The end.

Myriad Court Order

What Just Happened?
Yesterday, the House of Representatives passed a bill entitled Cyber Intelligence Sharing and Protection Act (H.R.3523), or CISPA for short. CISPA is a bill that allows the government to obtain your private information from companies without a warrant. Oddly, under the guise of making CISPA less abusive, the House actually slipped in some language at the last minute that made CISPA even worse. What SOPA was to online censorship, CISPA is to online privacy. Whereas SOPA was about stripping away your First Amendment rights (free speech); CISPA is about stripping away your Fourth Amendment rights (freedom from unreasonable search and siezure).

The House ostensibly passed CISPA to “provide for the sharing of certain cyber threat intelligence and cyber threat information between the intelligence community and cybersecurity entities.” Privacy advocates fear that the government will use CISPA to exploit your private and personal information in unconstitutional ways, far beyond those outlined in CISPA.

What Does CISPA Do?
The language of CISPA is pretty difficult to understand. CISPA states that any business that provides goods or services for cybersecurity purposes to itself may use its cybersecurity systems to identify and obtain cyber threat information to protect the rights and property of such self-protected entity and share such cyber threat information with any other entity, including the Federal Government. But what does that mean? Based upon my reading of the definitions contained within CISPA, it means any business that does anything online can share your private information with the government. It also means no state can enact a law preventing the business from sharing your personal information in this manner. As long as the company handed over your private information in “good faith,” CISPA also prohibits you from suing a company for handing over the wrong information.

What Does That Mean for Me?
CISPA contains no effective oversight of what private information the government is requesting and receiving. This opens the door to companies handing over all of your private information to the government and the government misusing that information once received. According to Rep. Jared Polis, a Colorado Democrat and onetime Web entrepreneur, CISPA will “waive every single privacy law ever enacted in the name of cybersecurity.” Rep. Polis went on to state that “[a]llowing the military and NSA to spy on Americans on American soil goes against every principle this country was founded on.” While addressing online security concerns is a laudable goal, there is absolutely no proof CISPA would result in a net increase in online security. Even if CISPA were to increase online security, it is not worth trampling over the Constitution to reach such a speculative goal.

CISPA guts the Fourth Amendment to the United States Constitution, eliminating the need for the government to show probable cause, or get a warrant to obtain your personal information. The FBI, BATF, Secret Service or any federal agency would simply ask the company holding your private information and the company could hand it over. As long as the exchange has some tangential relationship to the intentionally inscrutable phrase “cyber threat,” the CISPA insulates both the government agencies and the companies from liability as they exchange your private information. Not surprisingly, CISPA does very little in the way of protecting you or your constitutional rights from mistakes, overreaching and lack of oversight in the transaction.

Can I Find Out What Information of Mine the Government Obtains Under CISPA?
No. Cyber threat information shared in under CISPA is exempt from disclosure under section 552 of title 5 of the United States Code. This means that not only will the government not tell you what information of yours they request or receive, but you cannot even get this information pursuant to a Freedom of Information Act (FOIA) request.

Who is Behind CISPA?
The U.S. government, mainly. The government argues that it needs access to your personal and private information to stop online security threats. The government has also brought many large companies on board, companies, not surprisingly, who hold massive amounts of your personal information. Companies like AT&T, Boeing, Facebook, IBM, Intel, Microsoft, Symantec and Verizon are just a few of the 800+ companies supporting CISPA.

Who is Against CISPA?
Dozens of privacy groups, including: The Electronic Frontier Foundation; The American Civil Liberties Union; The American Library Association; The American Association of University Professors, Consumer Watchdog, Demand Progress, Government Accountability Project, Patient Privacy Rights, and the U.S. Bill of Rights Foundation are all strongly opposed to CISPA. Their main concern is that CISPA will allow companies holding our most sensitive and personal information to share that information with the government, and that lack of oversight will lead the government to use this information for purposes completely unrelated to cybersecurity.

What Can I Do?
Time is running short. Once the Senate passes CISPA and President Obama signs it it will be too late. President Obama said he would not sign CISPA, but he said the same thing about NDAA (indefinite detention of U.S. citizens) right before he signed it. Contact your state senators. You can find out their contact information here. Introduce yourself to the person who answers the phone as a constituent of the senator. Ask them about their office’s stance on CISPA. They will ask for yours and report those number to the senator. If you know enough about CISPA to address the particulars, ask to speak with a legislative assistant. If one is not available, leave your number and have them call you back. Ask them about the status of CISPA and the parts of CISPA about which you have a particular concern. If you do not feel up to speaking with a legislative assistant, follow up your phone call with an email and/or letter outlining your objections to CISPA. Most importantly, make your senators aware of your objections to the unconstitutional privacy invasions inherent in CISPA. Do it today.

Brett Trout

This entry in our series on implementation of the America Invents Act (AIA) focuses on the proposed rules for supplemental examination.

The supplemental examination procedure was designed to provide patentees with a quick and decisive examination of items that were overlooked during the patent’s original prosecution. So quick in fact, that the AIA set a three-month period for us to conduct and conclude a supplemental examination after a request is filed. That’s just three months to determine if any of the items of information raise a substantial new question of patentability.

In order to meet this timeframe, we have proposed a limit of 10 items of information that a patent owner can submit to the USPTO for consideration in each request. The purpose of this limit is to strike a balance between the needs of the patent owner and the ability of the Office to timely conclude the proceeding. That said, we did not limit the number of issues that these 10 items of information can raise, nor did we limit the number of separate supplemental reexamination requests that a patentee can file.

Following publication of the proposed rules, the Office received a number of suggestions requesting us to accept more than 10 items of information in a single supplemental examination request. While we're still considering this and all of the other input we have received, I wanted to share with you the factors the Office took into consideration in proposing a limit of 10 submissions.

First, far fewer than 10 prior art documents form the basis for most inequitable conduct allegations. In fact, we are unaware of any publicly reported inequitable conduct dispute involving more than 10 items of information – if you know of one, please let us know. Second, in over 85 percent of the requests for ex parte reexamination, the requester cites 10 or fewer items for consideration by the Office. Third, the Office was very mindful of the time necessary for examiners to analyze the items of information submitted, particularly since the items are not limited to patents and printed publications, and each item may raise multiple issues.

Accordingly, limiting the number of items of information to 10 will help the USPTO establish a procedure that is not only practical, but also one enabling an examiner to fully, comprehensively, and timely analyze all submitted items of information and issues to accurately determine whether there is a substantial new question of patentability.

So, as is always the case with matters of balance, there is no definitive answer. But one thing is for sure: Congress mandated very fast action on supplemental examination. And that in turn calls for limits on what we all take on within the scope of a single proceeding.

When a three judge panel of the US Court of Appeals for the D.C. Cir. dismissed a preliminary injunction obtained by plaintiffs in April 2011, and the lower court judge then  dismissed plaintiffs’ suit to block the Administration’s guidelines permitting funding for embryonic stem cell research as violative of the Dickey-Wicker amendment banning funding that might destroy or harm a human embryo, I thought the issue had been laid to rest. However, plaintiffs – not the Government – have now appealed to the appeals court, arguing that the prior ruling overturning the injunction banning hESC research is not binding on the present panel.

The earlier panel had ruled that the  Dickey-Wicker amendment, that is tacked onto some bill sure to pass Congress each year, is ambiguous in view of the more precise policies urged by the Administration and the NIH, regulating hESC research. The plaintiffs argued that the earlier panel ruling simply involved injunctive relief and should not be “the law of the case” regarding the merits of their suit. Defendants and amici argued that the panel effectively analyzed the merits of the suit: the conflict or congruence between Dickey-Wicker and the NIH policy resuming funding for stem cell research.

If the current panel does not agree that it is bound by the earlier panel’s analysis and sides with the (anti-hESC research) plaintiffs, this case will wend its way to the Supreme Court. However, if the Administration changes in November, and a new Administration reinstates the “Bush ban,” the appeal will be moot. Those who support hESC research should hope that the stem cell researchers can get some grants funded and new cell lines approved  in the next six months or so. A pro-science door that has been open for about three years may be about to close.

Read the article from Regenerative Medicine Forum

Prior posts on this subject can be found here:

July 28, 2011

May 2, 2011

When I read the April 16^th decision (App. No. 2011-1399, -1409 (Fed. Cir. April 16, 2012)) (a copy is available at the end of this post) in which a Fed. Cir. panel of Newman, O’Malley and Reyna reversed a district court’s finding that two Aptalis patents on a controlled-release form of a muscle relaxant were obvious, I expected a routine recitation of the KSR “standards” and not much more. Therefore, I was pleasantly surprised to find that Judge O’Malley had authored one of the clearest and most thorough explications of the obviousness inquiry that I have ever read in an opinion. Every patent attorney should read this decision and so should every examiner.

The claims in question are thick with “pharmacokinetic values” and the question confronted by the court was whether or not it would have been obvious to “ascertain the correct pharmacokinetic/ pharmacodynamic (‘PK/PD’) profile” wherein the “determination of a PK profile is a quantitative exercise. The determination of PD, or therapeutic effectiveness, however is a qualitative exercise.” Of course the holding was ultimately “no,” and the panel may have been a bit snowed by the technical arguments, but the explanation of the s. 103 standards mandating reversal are what gives this opinion its force.

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Guest blog by Commissioner for Trademarks Debbie Cohn

This month marks a record for performance by our Trademarks team. It has now been five consecutive years that first action pendency has stayed in the range of our goal to issue a first action between 2.5 and 3.5 months from filing. This record is the result of a number of factors including greater use of the systems, tools, and resources necessary to manage new application filings electronically and to manage them well. It demonstrates how electronic filing and systems have led to more consistent results in our ability to deliver top quality service. A look at our performance dashboard for the second quarter of fiscal year 2012 shows quality and timeliness to first action or disposal either meets or exceeds target goals.

Meanwhile, despite a 7 percent increase in new application filings, trademark pendency to registration continues to remain at historically low levels. Disposal pendency – the time from when an application is filed until a trademark is registered or abandoned – has been under 11 months for the past eight quarters in a row – a record due in part to the increase in electronic processing, which now comprises 75 percent of all trademark applications filed, processed and disposed.

Trademark quality shows improvement – all three indicators are better than their respective targets. Our newest indicator for evaluating quality, introduced last year, as the ‘excellent office action’ standard has been renamed ‘exceptional office action’. The name change is a better reflection of the criteria that set exceptionally high standards for evaluating an examiner’s writing, evidence, and search strategy in preparing the office action. Our evaluation of quality is an ongoing process, and we regularly use the results for improving how we work—from developing policy and training guides and manuals to reinforcing and ensuring the quality of the trademark register.

We welcome any feedback you have on how we can improve this dashboard. Simply email a comment to our dedicated mailbox for Trademarks feedback. We look forward to hearing from you.

This guest post by Tom Gumley, PhD, a partner in the well-known Freehills Patent and Trademark firm provides a lengthy guide to the changes wrought by Australia’s new patent law, that was enacted on April 15, 2012. The law brings Australia closer to the US in many of its legal standards and, like the AIA, goes into effect at various times in the future.

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We are pleased to provide Freehills’ guide to Australia’s new patent law [available at the end of this post] that was signed into law on April 15, 2012.

This new law will have far-reaching consequences for those seeking and enforcing patent rights in Australia, and ultimately will establish a class of new Act patents to which higher validity standards required by the new law will apply, and old Act patents to which relatively lower validity standards established by the old law will apply.

There will also be important consequences regarding exemption from infringement for patentees and alleged infringers with the codification of experimental use provisions, and a broadening of old law exemptions to cover acts done for seeking regulatory approval of any product for which approval is required for marketing.

If you or your clients have business interests in Australia, it is very important that you come to an understanding of the new law sooner rather than later, as in many instances, the opportunities to be had and the risks to be mitigated under the new law will require you to take relevant action now.

Given the complexity of the new law, our commentary is necessarily of a general nature and we strongly advise you to contact us should you require professional advice on any particular issue.

Regards,

Tom Gumley PhD
Partner
Freehills Patent and Trade Mark Attorneys

Guide to Australia’s new patent law

Today, in Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk, in an opinion authored by Justice Kagan (a copy can be found at the end of this post), the Court reversed the Fed. Cir.’s divided 2010 decision that an ANDA filer (a “generic drug company”) sued in para. IV litigation cannot assert a counterclaim that the NDA holder (“the innovator”) listed a use code in the FDA Orange Book that is overly broad. This question is important because during litigation, Novo had broadened its use code to cover uses Caraco alleged were not within the claims of the listed patents, but which Caraco wanted to be able to include in its labeling. So the question presented was:

“Whether an ANDA applicant may assert a counterclaim under Section 355(j)(5)(C)(ii)(I) by alleging that the brand name manufacturer’s patent information [the use code] does not accurately and precisely describe the method of use claimed by its patent.”

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