Patent Baristas

Growth opportunity available!  We are currently looking to add a Patent Agent/Technical Specialist to work closely with our legal staff. Working as part of the team, you can use your current scientific expertise to help with the legal issues that our firm is handling for our clients. 

The position involves defining new inventions, providing scientific advice and oversight in patent prosecution matters, preparing patent applications for filing, prosecuting patents, reviewing and researching patent applications and third party intellectual property rights, and assisting with other legal matters. Candidates should have an advanced degree in a biological or chemical field (Ph.D. preferred), with a concentration in analytical chemistry, biochemistry, biotechnology, organic, medicinal or pharmaceutical chemistry, or a closely related field.

For the right candidate, we are willing to hire a specialist without any previous patent experience.   We are dedicated to helping an individual succeed both professionally and personally and we can be quite flexible in our arrangements.  This can be a tremendous opportunity for someone who would like to make a switch from laboratory research to a growing patent career.  We can work with the candidate to provide an alternative/flexible work arrangement and schedule. 

All that is required is an ability to effectively communicate complex technical issues and a demonstrated ability to work in a team environment and with others at all levels of the organization. We are looking for dynamic individuals who are flexible and enjoy being challenged (and having some fun). In return, the successful candidate will receive intensive training in patent prosecution and will work closely with patent attorneys.

Please feel free to call or email me directly in confidence to talk about your particular situation. 

The Fine Print: 

To learn more about us and the communities we serve, visit our home page at www.frostbrowntodd.com.  Send resume, transcripts and writing samples to me or to Karen Laymance, Frost Brown Todd LLC, 2200 PNC Center; 201 East Fifth Street, Cincinnati, Ohio 45202 or by email to klaymance@fbtlaw.com. Frost Brown Todd LLC is an equal opportunity employer.

The public comment letters on the proposed Markush Rules by the Patent Office are up on the USPTO website. The Patent Office is moving ever onward with its proposed revision to the rules of practice pertaining to any claim using alternative language to claim one or more species. That is, if the claims use Markush or other forms of alternative language.

Markush claims, officially sanctioned since 1924, is a claim drafting technique using the phrase ‘‘selected from the group consisting of’’ followed by a closed listing of specific members of the group. These types of claims allow an applicant to describe an invention where there is no available wording for the group.

According to the USPTO, the search and examination of such claims consume a disproportionate amount of Office resources as compared to other types of claims. I guess as opposed to claims that don’t use big words.

Specifically, the USPTO is complaining about applications claiming compounds by their chemical structure (read: they hate the Chemical and biotech arts). The proposed rules would allow the Office to require new application for each listed item.

The Office proposes to encourage applicants who use alternative language to provide an explanation as to why the claim is directed to a single invention. Under the proposed rules, an applicant is may explain, for example, that the species share a substantial feature for a common utility. Alternatively, applicants may explain that the species are prima facie obvious over each other. It’s a poor choice either way.

As to the suggested alternative, it is hard to imagine that Applicants would ever want to admit that species are prima facie obvious over each other. If applicants were to admit that their species are prima facie obvious over each other, they could not overcome a reference that anticipated one of the species by simply excising that offending species from the claim.

37 C.F.R. § 1.75(a) provides that “[t]he specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention or discovery. A claim must be limited to a single invention.” In the commentary related to this proposed section, it is stated that the “Office proposes that if a single claim defines multiple independent and distinct inventions, the examiner may apply a restriction requirement before examination.” (72 Fed. Reg. at 44995). Furthermore, it is stated that “[p]roposed §1.75(a) would provide the basis for objecting to the format of a claim that is directed to two or more independent and distinct inventions” (72 Fed. Reg. at 44997).

This is crazy. The language is confusing and unclear and would make mandatory a restriction requirement where more than a single invention was covered by a claim. 35 U.S.C. § 121 says that restriction is made permissive by the statute, and not mandatory. An examiner should be free not to require restriction within a single claim, and that claim should not be subject to attack even if it arguably is directed to more than a single invention.

The proposed language is confusing and unclear in suggesting that a claim must be limited to a “single invention.”

Among the many still smoldering hate mails, David Boundy of Cantor Fitzgerald fired off angry comments about proposed Markush Rules and the PTO’s Initial Regulatory Flexibility Analysis (IRFA) and Paperwork Reduction Act Information Collection Request.

His comments on the Markush rule changes came down to the markush rule coins a sui generis non-statutory definition for the word “invention,” which either renders the rules unintelligible or leads to unintended consequences:

The proposed rule text and preamble in the Notice of Proposed Rulemaking (NPRM) use the word “invention” to mean something other than “the scope of one claim.” Rather than use the long-established definition of the term “invention,” the NPRM uses the term in some loose sense, with no stated or inferable definition. This usage renders most of the NPRM simply unintelligible.

Since the late 19th Century, the term “invention” has been coextensive with the word “claim.” 35 U.S.C. § 112 ¶ 2 (claims “particularly point out and distinctly [claim] the subject matter which the applicant regards as his invention”) Throughout the patent law, the word “the invention” is constantly and consistently held to be coextensive with the scope of one claim, by definition.

By trying to split the two, and relying on some unstated informal definition for “invention,” the entire NPRM is unintelligible, and the text of the rules set no meaningful standards. For example, the NPRM proposes to amend 37 C.F.R. § 1.75(a) by adding the words “A claim must be limited to a single invention,” and to add § 1.140, “Two or more independent and distinct inventions may not be claimed in a single claim.” What can this sentence possibly mean? It represents such a departure from and is in such conflict with established meanings of words as to be meaningless, and can only serve to invite abuse by examiners. Is the sentence intended to be a meaningless tautology? Does “A claim must be limited to a single invention” mean that no claim may have more than one dependent claim? That no claim may cover two disclosed embodiments?

See also:

Patent Office: Application Costs Could Increase by $100,000 or More

USPTO to Limit Markush (Alternative) Claims: Serious Cost Increase in the Forecast

The National Law Journal is reporting that the U.S. Patent and Trademark Office may have unconstitutional appointments of nearly two-thirds of its patent appeals judges and nearly half of the trademark appeals judges. This could call into question the validity of hundreds of decisions over the last eight years.

The flaw, brought to light by highly Prof. John Duffy of George Washington University Law School, was raised in a petition filed in the U.S. Supreme Court by a company whose patent was rejected by a three-judge Board of Patent Appeals and Interferences panel. That panel decision was subsequently affirmed by the U.S. Court of Appeals for the Federal Circuit, which set aside an $86.5 million infringement verdict won by the company. The petition contends that one of the three panel judges in its case was named to the board in violation of the Constitution’s appointments clause.

The petition relies on a Patently-O Patent Law Journal article Prof. Duffy wrote challenging the constitutionality of the current system. The dust-up was precipitated by Intellectual Property and Communications Reform Act of 1999, which transferred the power to appoint BPAI judges from the secretary of Commerce to the PTO director.

But, BPAI judges qualify as inferior officers under the appointments clause and the clause requires that inferior officers be appointed either by the president, the courts of law or heads of departments. The PTO director is not a head of a department.

Bummer.

Pending patent reform legislation, which appears stalled if not dead, would return the appointment power to the Commerce secretary not only for the BPAI but also for the Trademark Trial and Appeal Board.

The PTO had no comment.

See also:

CAFC Judge Linn Expresses Disappointment over Failures by the BPAI and Patent Bar

Challenge to BPAI Appointments Moves to Supreme Court

The 8th Annual World Intellectual Property Day is April 26, 2008, and focuses on celebrating innovation and promoting respect for intellectual property.  Dr. Kamil Idris, Director General of the World Intellectual Property Organization (WIPO), highlighted the intrinsic link between creativity, innovation and IP. 

Let us know what you think is the best way to celebrate World IP Day.  Out-Law.com is running a photography competition for pupils at two London schools as an event to mark the date.  No word yet if the Public Patent Foundation (PUBPAT) will be having any festivities.  You can see a whole round-up of activities here.

Think this is all much ado about nothing? Consider this:

1. Economists estimate that two-thirds of the value of large businesses in the US is due to intangible or intellectual property assets.
2. The World Bank estimates that, on average, 40% of company valuations are from intellectual property.
3. PriceWatershouseCoopers estimated that as much as 90% of the value of the world’s top 2000 enterprises would consist of intellectual property.

And so, on World Intellectual Property Day, here’s to you o’ inventors and artists, great and small, who enrich our existence with the fruits of their innovative thoughts and creative vision.  Cheer!

See more on World IP Day here. You can even download and print your own Innovation postcards.

The San Francisco Business Journal ran a feature suggesting that biotech companies are running into hurdles in doing deals with universities, specifically the University of California System in this case. The article writes that the problem is that it simply takes too long to get the deal done — that agreements took months rather than weeks to complete. From the Journal:

“Most of us would prefer not to work with” the UC System, [Don] Francis [chairman and executive director of the South San Francisco nonprofit Global Solutions for Infectious Diseases and co-founder of Vaxgen, Inc. of South San Francisco] said at a recent UCSF forum on product development partnerships.

Another issue is (at least the perception) that the University is too risk-adverse:

Deals must pass “the Chronicle test,” said Jack Newman, a UC Berkeley graduate and now senior vice president of research at Amyris Biotechnologies Inc. in Emeryville. In other words, UC system lawyers want to be sure no one — those pesky media types, in particular — can accuse them of giving away too much value.

As with most axioms, there is some truth to these assertions. But, as they say, there are always two sides to every story. Since I used to direct patents and licensing at a major university technology transfer office and now work in private practice helping biotech companies deal with universities, I have the unique distinction of having been on both sides of the fence. And, like many things in life, it’s always easy to criticize the other side.

So, what is true?

1. Universities are risk-adverse. True. Now get over it.

Trying to get a nonprofit research institution — especially a public funded university subject to state laws and regulations, union agreements, freedom of information act requests, and general, all-around status as public punching bag — to strive to take business risks in the hopes of a big payoff is just not going to happen.

Take a look at the UC System Mission Statement:

The distinctive mission of the University is to serve society as a center of higher learning, providing long-term societal benefits through transmitting advanced knowledge, discovering new knowledge, and functioning as an active working repository of organized knowledge.

Note that nowhere does it say anything about its mission being “making money for commercial ventures.”

Although, neither does Google’s but most mission statements are not terribly useful. As Guy Kawasaki noted:

The ultimate test for a mantra (or mission statement) is if your telephone operators (Trixie and Biff) can tell you what it is. If they can, then you’re onto something meaningful and memorable. If they can’t, then, well, it sucks.

In a university, there is very much an environment where no one gets fired if the deal doesn’t happen. You get fired when the deal causes a loss. In some public universities, there are even state laws that prevent the university from taking on any unfunded liabilities. All this aside, there is, in fact, always a fear of being at the center of an i-Team investigation for having given valuable university assets to a for-profit company — a loss at taxpayers expense. There are some newspapers that take particular pride in the sport of skewering public officials and employees be they in government or universities.

2. Universities take too long to get deals done. Half-true. Now get over that, too.

There are generally two causes of this effect: procedures and staff.

First, universities are risk adverse (see point 1) and hence, agreements have to be signed-off on by all the various stakeholders. This is where universities’ and private companies’ interest and expectations diverge the most. At a company, you have one stakeholder, the company (shareholders). At a university, there are many. For starters, any royalty received in a licensing deal is split between the inventor(s) and the university. In terms of the university’s portion, that revenue is generally split among the university, the college, and the department (or some sort of fee split). Hence, all of those parties are (usually) asked to initial their acceptance of the terms. Mostly, this is done because no one wants one of the parties involved to come back later to contest the deal.

Second, but perhaps more importantly, universities are typically not over-staffed. This has to do with mission priorities (see No. 1 above) and with budget restraints. University budget surpluses, like unicorns, sound nice but I haven’t seen one yet. This means that the personnel that must draft, review, negotiate and manage university licenses and contracts have an overflowing in-box. That’s just the way it is. Many universities are certainly improving and putting more resources into licensing and technology transfer but I would expect hiring to lag need.

However, there are ways to speed this up on both sides. Mainly, it helps to recognize university restraints and not try to negotiate points they won’t (or, more likely, can’t) negotiate like indemnification, disclaimer of warranties, retention of ownership, governing law, waiver of liability, and oh, did I mention indemnifications? Trying to argue over these types of provisions is, like cursing the darkness, a futile exercise (see No. 1 above).

3. The parties often have unrealistic expectations. True. Now let’s fix it.

Keeping the above points in mind, it is critical that companies and universities come into the process knowing the limitations of a university and work with the system, not against it. If you know it takes longer to get the deal done, start earlier. The number one offense? Waiting until the last minute to get a deal done. Don’t stop in on Friday afternoon saying you need this done before the weekend.

Also, as above, don’t come in expecting to get everything and give nothing. Too often, complaints about tech transfer offices come down to “They won’t give me everything I want! That’s so unfair!” Taking too long is often the result of too many back and forth negotiations as the parties try to get their way.

Of course, unrealistic expectations are a perennial problem with universities, too. There are still some universities that think that every invention is worth a fortune (“Why else would you be interested in it?“). Furthermore, tech transfer personnel are notoriously bad at understanding the realities of product research and development and the fact that a mere lead on an eventual product is not the total value of the end product.

University inventions are often early stage, undercooked ideas that more often than not fail to deliver and, even when things work out, need lots of development and still fail to deliver a big hit. Universities often fail to fully appreciate the tremendous costs and risks involved with taking on a raw, undeveloped idea and trying to turn it into a viable product on the marketplace.

There is a lot of money to be made so I think it’s in everyone’s best interest to work well together. My number one tip for those working with universities is to be pleasant and treat the other side with the respect and dignity you would want to receive in return.  People are human and — while it may not be right — will often respond to a demanding jerk by acting the same.

If others have ideas on how to deal with universities and the length of time to get deals signed, please let me know.

See also:

Biotech Companies Running into Roadblocks in Entering into Deals with the UC System

Trouble With Tech Transfer…Or Expectations?

This month’s issue of WIPO Magazine features an article about the daily blogging life of IPKat blogger Jeremy Phillips, named by Managing Intellectual Property Magazine in 2005 as one of the 50 most influential “people” in the IP world. Jeremy shares some thoughts on the rise of the IP blog.

In offering insights into IP blogging, Jeremy raises an interesting: “But can you trust them?” To this, he responds:

Critics of blogs complain that, while law journals are refereed and books carefully checked before publication, blogs undergo no equivalent quality control process. That’s true, but most blogs enable readers to post their own comments, so that a blogger’s mistakes can be pointed out, his questions answered and his position on issues of the day endorsed or rejected. Most IP bloggers also cite their sources or hyperlink directly to the source of their information.

Other critics object that bloggers are too selective: they may write up the Da Vinci Code dispute if they like the outcome, but ignore the spat over plagiarism of Harry Potter if they don’t. This criticism misses the point: a blog records what the blogger wants to get across. It is not an encyclopaedia – and what for example Patent Baristas chooses to leaves out, Patently-O may wish to feast on – or vice versa.

So, what does it take to be an IP blogger? Jeremy sums it up nicely in stating “Asking what it is like being an IP blogger is a bit like asking what it’s like to be a human being.” Although, he mentions that it helps to have patient and understanding family and colleagues.

So, what does Jeremy think is in it for the bloggers?

Some of us do it out of a missionary zeal to convert readers to IP in general, or to our personal views concerning it. Others seek to build up recognition, and hence business, in their fields of expertise. Some just do it for the fun. But there’s one thing you can be sure of: for as long as blogs are free, none of us does it for the money!

We concur. 

If you know of a new IP blog that should be noticed, let us know.

Greg Aharonian at Internet Patent News Service posted a note about a possible increase in double-patenting rejections as the U.S. Patent Office. In a complaint he received, a reader questions whether this is an orchestrated implementation of “directives to frustrate patent applicants to achieve their misguided purpose.”

As an example, the reader noted that the Patent Office seems to be (undeservedly) dishing out more statutory double patenting rejections. Although the example dealt with claims directed to computer readable storage media and accompanying systems and methods, this can also be a problem in the bio/pharma where drug companies are constantly trying to file patent applications on continued changes and improvements in order to capture or retain market share.

Basically, the law provides that an applicant may only obtain a single patent for an invention. 35 USC 101 provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Thus, a statutory double patenting rejection comes up when the applicant tries to claim the exact same invention. The purpose, of course, is to prevent a patentee from receiving multiple patents for the same invention and thus gaining an illegal extension of patent term. Therefore, a pharmaceutical company can only be able to prevent generic entry for a period of 20 years from the filing date of the application (albeit with certain extensions available).

One quick test of whether or not there’s a problem is to ask:

1. Is there an embodiment that falls within the scope of one claim, but not the other?
2. Could one claim be literally infringed without literally infringing the other claim?

Since bio & pharma patents seem to be under seige, I’m curious if others have experienced an uptick in statutory-type double patenting rejections?

Let us know.

more at twiigs.com…

The United States Patent and Trademark Office (USPTO) has published updated patent examiner training materials regarding the examination of patent applications under the written description requirement (35 U.S.C. § 112, first paragraph).  That is, in order to obtain a valid patent, an applicant must include in a description adequately disclosing the invention and how to make and use it. 

USPTO Commissioner for Patents John Doll said, “These training materials will improve the quality and consistency of patent examination, as well as provide guidance to practitioners for the drafting of patent applications and responses to examiners.”  We’ll see.

As discussed earlier, the examination of patent claims for compliance with the Written Description Requirement should include:

1. A determination as to what the claim as a whole covers. In making this determination, the examiner should consider and discuss the full scope of the claim.

2. A full review of the application to understand how the applicant provides support for the claimed invention including each element and/or step. This review includes comparing the claim scope with the scope of the description.

3. A determination as to whether one skilled in the art would recognize that the applicant was in possession of the claimed invention as a whole at the time of filing. This determination should include the following considerations:

a. Actual reduction to practice,

b. Disclosure of drawings or structural chemical formulas,

c. Sufficient relevant identifying characteristics, such as: i. Complete structure, ii. Partial structure, iii. Physical and/or chemical properties, iv. Functional characteristics when coupled with a known or disclosed correlation between function and structure

d. Method of making the claimed invention,

e. Level of skill and knowledge in the art and

f. Predictability in the art.

4. For each claim drawn to a single embodiment or species, consider the above factors in regard to that embodiment or species to determine whether one of ordinary skill in the art would recognize that the applicant was in possession of the species or embodiment at the time of filing.

5. For each claim drawn to a genus, consider each of the above factors to determine whether there is disclosure of a representative number of species which would lead one skilled in the art to conclude that the applicant was in possession of the claimed invention. The number of species required to represent a genus will vary, depending on the level of skill and knowledge in the art and the variability among the claimed genus. For instance, fewer species will be required where the skill and knowledge in the art is high, and more species will be required where the claimed genus is highly variable.

More to come.

Download the training materials here.