Patent Baristas

I recently received a note form an in-house counsel asking for feedback on a proposed standard for invention disclosures.  This is an offshoot of LEDES (www.ledes.org) by representatives from universities, law firms, companies, and software vendors. The intent is to provide an open standard for transferring invention data, typically from inventors to their patent attorneys.

Last chance to register for a free webinar is available on the new US Patent & Trademark Office Guidelines.

When:                 This Wednesday, May 21st from 1pm – 2pm EDT. 

Presented by:   Dr. Anthony Sabatelli, Partner at Dilworth IP. 

On March 4th the US Patent and Trademark Office issued guidelines to its examining corps for assessing patent eligible subject matter under 35 USC §101. The guidelines were issued in light of the Supreme Court’s decisions in Myriad, Prometheus, and related cases. See, “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products.” The Guidance is intended to help examiners determine whether the subject matter of a patent claim is significantly different from what exists in nature. 

– So, what does this Guidance mean for the Biotech and Pharmaceutical Industry? 
– What strategies should patent attorneys employ to help their clients understand and navigate this recent development? 
– What do scientists and industry executives need to know? 

This Webinar will address the impact of this Guidance on current patent practices, with particular emphasis on the Biotech and Pharmaceutical Industries. It will also: 

– Review the history that lead to the issuance of this Guidance. 
– Explain the three question inquiry and the multi-factor analysis set forth for determining whether a patent claim meets the criteria for patent eligibility under §101. 
– Discuss some of the specific examples of patent claims provided by the Guidance. 
– Propose practical strategies for drafting claims in view of the Guidance. 
– Provide an update from the US Patent and Trademark Office’s Public Forum being held on May 9th to solicit comment on the Guidance at which Dr. Sabatelli will have participated.

You can register via the following link.

https://attendee.gotowebinar.com/register/6600698513007085826

In January 2014, the USPTO published proposed rules to increase the transparency of patent ownership information for patent applications and issued patents, which the USPTO termed “attributable ownership proposed rules” as a shorthand title. You can review our attributable ownership proposed rules here.

The proposed changes to the rules of practice will require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent, and seeking written comments on the proposed changes.

It is clear that the White House wants smack down so-called patent trolls. The penalty for those who fail to comply with the rules would be abandonment of the patent.

The USPTO contends that most of the burden for additional reporting will need to be done by companies that have complicated corporate structures and licenses.

The new rules will, according to the PTO filing, “reduce risk of abusive patent litigation by helping the public defend itself against risk of abusive assertions by providing more information about the parties that have an interest in patents or patent applications.”

You may submit written comments by April 24th in one of three ways: (i) email; (ii) postal mail; or (iii) through the government eRulemaking portal. The addresses for each are provided below.

Thank you kindly for your attention to our attributable ownership rulemaking; we look forward your comments.

The Licensing Executives Society International will hold its 2014 annual conference in Moscow, Russia.

Session

The main program will be 18-21 May 2014.

Conference Program

The conference program will include 6 General sessions and 23 workshops with many outstanding speakers including WIPO director general Gurry and Chief Judge Rader of the U.S. Court of Appeal for the Federal Circuit.

Both Russian and International experts will cover various IP and related issues like:

• BRICS & CIS countries as Emerging Markets
• International Access to Technologies
• Business & Legal Aspects of IP
• IP in healthcare/biotechnology, aerospace, car industry, green nature, power engineering, sport, information technologies

Conference Venue

The World Trade Centre (WTC) Moscow has been chosen as the Conference venue and is the largest business complex of Moscow.  WTC Congress Centre is located on the bank of Moskva river in one of the most prestigious districts of Moscow, in close vicinity of Government House of Russian Federation.

Congress Centre of WTC Moscow, Moscow, Russian Federation

Registration

If you have not yet registered to LES International Conference please follow the link below and click: LES International Conference New Registration

If you experience problems with online registration please click here to download the form for offline registration

The Consequences of Pending Legislation and Proposed Alternatives

The Patent Act of 1790 granted patents to “he, she, or they” at a cost that even a pauper could afford.  At a time when women and blacks could not own property, both could own patents… and both did.  In 1809, Mary Kies became the first woman patentee for her invention related to weaving straw hats.  In 1821, Thomas L. Jennings became the first black patentee by inventing a method of dry scouring clothes.  During the 1800’s, some 3,300 women invented and patented 4,196 inventions and many made their full living by licensing their inventions.  The U.S. patent system leveled the field for all regardless of race, gender or economic status.

Largely because of broad-based participation and strong patent rights, iv the U.S. patent system has fueled the greatest economic expansion in the history of man, propelling America to lead the world in virtually every technology revolution, including the one we are in right now.  Great inventors like Eli Whitney, Thomas Edison, Alexander Graham Bell, and others like Mary Kies and Thomas L. Jennings, inspired generations of inventors.  The rich history of the U.S. patent system, the value to our economy, and its promise to each of us is the heart and soul of America.

Today, the U.S. patent system is under a lethal legislative attack v encouraged by the lobbying and public relations efforts of large corporations. This attack is ostensibly directed at the problem of so-called “patent trolls” for the benefit of small businesses. Incredibly, data supporting this legislation are fabricated and secret, and then false conclusions based on that data are repeated so often that it appears true.  It is, however, not true.

Nonetheless, the anti-troll legislation currently rocketing through Congress will levy its damage on the patent system in general – disabling it for independent inventors and small businesses for the benefit of large corporations.   The legislation will damage the investment qualities of patents, which will make it impossible for the large majority of independent inventors and small businesses to recover any value of a patent.  If passed, current legislation will kill the patent system for most Americans.

To understand how this round of anti-troll legislation will cause such widespread damage, it is necessary to understand the economy of the U.S. patent system.

This paper is directed toward that understanding, along with understanding the so-called “patent troll” situation, and proposes legislation to fix the root of the problem.

See the entire paper here:  Proposed Legislation V2_DC_Final (pdf)

Paper submitted by:

• Paul Morinville, Independent Inventor and Entrepreneur
• Randy Landreneau, Founder of Independent Inventors of America
• J. Scott Bechtel, CLP, MSIA, Managing Partner and CEO, AmiCOUR IP Group, LLC

The Chisum Patent Academy announced that the next Advanced Patent Law Seminar will be held March 5-7, 2014 at the spectacular 21C Museum Hotel in easily-accessible Cincinnati, Ohio (more venue details below).

Seminar Coverage

On January 10, 2014, the U.S. Supreme Court granted certiorari in two important patent cases: Limelight Networks v. Akamai Technologies and Nautilus Inc. v. Biosig Instruments.Akamai concerns the problem of multi-actor infringement of method claims. Must the predicate of direct infringement by a single entity be established before inducing or contributory liability can be found? How should claims be drafted to avoid the multi-actor problem? Nautilus explores the viability of the Federal Circuit’s liberal “insolubly ambigous” standard for claim indefiniteness. We will examine Supreme Court precedent that sets forth a surprisingly different standard for claim definiteness. What is the interplay between the definiteness standard and patent claim interpretation? The Supreme Court’s interest in the Akamai and Nautilus cases signals important changes for patent litigation and drafting; we will explore them in detail at our Cincinnati seminar.

The Cincinnati seminar is  expected to include the following topics (and more):

• Supreme Court and Federal Circuit En Banc Review: On Dec. 6, 2013, the Supreme Court granted certiorari in yet another section 101 case, Alice Corp. Pty. Ltd. v. CLS Bank Int’l. Will the murky “abstract idea” exception finally be clarified?
• Active Inducement, Method and System Claims, and Joint Infringement: Cases including the Federal Circuit’s DSU (2006) en banc decision and the Supreme Court’s Global-Tech(2011) decision focus on the requirement of scienter (knowledge and/or intent) for indirect infringement, a requirement not applicable to direct infringement.
• Injunctive Relief: The Apple v. Samsung Smartphone Wars. In 2012, the Federal Circuit rendered two important decisions on preliminary injunctions in the context of alleged infringement of Apple’s design and utility patents on smartphones and tablets.
• Patent Practice Gone Wrong: Lessons from Patent Malpractice, Exceptional Case and Rule 11 Sanctions, and Inequitable Conduct Cases: In Gunn v. Minton, 133 S. Ct. 1059 (2013), the Supreme Court held that state courts have subject matter jurisdiction over patent malpractice actions.

Syllabi from all past seminars are available here.

Venue

Located in the center of downtown Cincinnati at 609 Walnut Street, the 21C is a 156-room boutique hotel, contemporary art museum and cultural civic center.

Schedule

The three-day Advanced Patent Law Seminars run from 9 am to 12 noon and 1 pm to 4 pm each day, for a total of 18 seminar hours.

The seminars are limited to ten (10) attendees. To maximize opportunities for discussion and questioning, we conduct the seminars in interactive, round-table style. All sessions are co-taught by Donald Chisum and Janice Mueller.

Credit

This seminar has been approved by the Supreme Court of Ohio Commission on Continuing Legal Education for 18.00 total CLE hours instruction.

Seminar Registration

The registration fee for the three-day Cincinnati 2014 seminar is $2,000 per person.

To register, click here.

The 2013-2014 JETLaw Symposium, Patents 101: Eligibility from Computer Code to Genetic Codes, examines the interaction of Section 101 and patent eligibility of software and DNA, as well as the implication of current jurisprudence on patent eligible subject matter. With the recent Supreme Court decision in Myriad and the number of cases in recent years addressing the patent eligibility of software, Section 101 has once again moved to the forefront of patent litigation.

Chief Judge Randall Rader of the US Court of Appeals for the Federal Circuit will deliver the keynote address and will be joined at the Symposium by Judge Kent Jordan of the US Court of Appeals for the Third Circuit, former USPTO Solicitor John Whealan, and leading scholars from across the country.

• Date: Friday, January 24, 2014
• Location: Vanderbilt Law School, 131 21st Ave. South, Nashville, TN 37203
• Schedule of Events: The symposium schedule is available here. (Download )
• Webcast: The symposium will be streamed here.
• Submit Questions: Submit questions here, by 11:59 PM CST on Tuesday, Jan. 21st.