Patent Baristas

Substantial Cost Reductions for Validating European Patents

The cost of obtaining patent protection in Europe is set to reduce significantly early next year thanks to the imminent implementation of the London Agreement.

At present a European patent application must be prosecuted before the European Patent Office in any one of the three official languages, English, French or German and, on grant, translations of the claims of the other two languages must be filed to be published with the specification as granted.

This procedure will remain as before. In order to validate the European patent in the designated states, it is necessary to file a translation of the entire specification in an official language of the national patent office.

With the implementation of the London Agreement, this will no longer be necessary in a number of countries. Instead, assuming that the application is in English, only the following translations will be required for the countries indicated which have signed the Agreement:

(a) United Kingdom, France, Germany, Switzerland, Liechtenstein and Monaco:  No further translations required.

(b) Iceland, Latvia, Netherlands and Slovenia: These countries may require:

(i) a translation of the claims only into their national languages;

(ii) the entire specification to be available in one of English, French or German (most countries have opted for English).

Note:   Sweden and Denmark are expected to join the Agreement in the foreseeable future. Other countries may later.

Since the validation stage represents a large proportion of the total cost of obtaining a European patent, the implementation of the Agreement will result in major savings.

patent troll (PAT.unt trohl) n. A company that purchases a patent, often from a bankrupt firm, and then sues another company by claiming that one of its products infringes on the purchased patent.. —adj. 

In a follow-up to our previous story about lawyer Raymond Niro, from the plaintiffs’ IP firm Niro, Scavone, Haller & Niro, and his offer of $5,000 “to anyone that can provide information that leads me to the identity of Troll Tracker,” Niro has responded with what he felt were some misconceptions in the story.

Niro, described as the Original Patent Troll, is interested in learning the identity of the anonymous author of the blog Patent Troll Tracker, a blog written for the stated purpose “to bring to light the extreme problems our US patent system is having with patent trolls: corporations that make no products, but do nothing but acquire patents to sue and make revenue.”

Troll Tracker insists that he (or she) is “Just a lawyer, interested in patent cases, but not interested in publicity.”

A patent troll is the term coined in 2001 by Intel Corporation assistant general counsel Peter Detkin to characterize Niro and his client TechSearch LLC when Intel was defending a patent suit against them.  Ironically, Detkin is now considered by some to have become a troll himself.

Niro responds:

Please let me correct a couple of misconceptions in your blog.

1. I do not want to find out the name of the Troll Tracker in order to sue for patent infringement; rather, I want to know his name to expose him, so that he can’t hide behind anonymity and may ultimately be held accountable for what he says.

2. Acacia does not own the patent in question. It is owned by Global Patent Holdings who has no connection to Acacia.

3. Anyone that operates a website runs the risk of infringing Global’s patent if (as we believe) that patent covers the manner in which JPEG images are displayed on a website. Troll Tracker is no exception.

4. As for silencing critics, I doubt that is possible. But anyone should be held responsible for what they say and have the courage to express their views by putting their names on whatever it is they publish.

In addition, Niro mentioned that he has raised the reward to $10,000 for information leading to the identity of the Troll Tracker.  “It seems to me if you really have anything truthful to say, you are not afraid of identifying yourself,” Niro stated.  

While Niro frames this as a reward, not a bounty, the meat of the issue is that patent infringement is a high-stakes game.  Global Patent Holdings has now filed three patent lawsuits against 16 companies for infringment of claim 17 of the ‘341 patent by downloading responsive data, including audio/visual and graphical presentations, such as JPEG images and/or other compressed data, on their web sites.

According to IP Law 360, Global Patent Holdings has proposed, for companies that sell products through their websites, a fully paid-up royalty of up to $250,000 for companies with annual revenue of between 0 and $50 million (are they asking for 0.5% of the company’s present annual revenue?). For companies of (annual?) revenue more than $51.2 billion, the proposed royalty is $15 million (closer to 0.03%).

For companies that do not sell products through their websites but have compressed images on those sites, Global Patent Holdings is seeking half the amount – $125,000 and $7.5 million.

Many people consider a patent troll to be anyone that doesn’t produce a product or service themselves but instead makes money from licensing the rights to companies already making products. Under that definition, I suppose Thomas Edison would be a troll.

See the earlier story here.

Rep. Henry Waxman (D-Cal) introduced the Non-Prescription Drug Modernization Act of 2007 (H.R. 4083) legislation in the House. The bill was co-sponsored by Rep. Tom Allen (D-ME) and was referred to the House Energy and Commerce Committee.

The bill will “amend the Federal Food, Drug, and Cosmetic Act to provide for the amendment or repeal of monographs, to expand the Food and Drug Administration’s (FDA) authority to regulate drug advertising.”

The Act is a reaction to a recent FDA advisory panel recommendation that the FDA should ban OTC cough and cold medications for children under the age of six. Under current law, if the FDA wants to follow its committee’s recommendations, the Agency would have to go through a lengthy rulemaking process that could take years to complete.

The Non-Prescription Drug Modernization Act would give the FDA the authority to act quickly to remove unsafe or ineffective OTC drugs, by allowing the Agency to revoke authorization to market such drugs without a lengthy rulemaking process.

The Act would allow FDA to bypass these procedures and amend or repeal a monograph in a more timely fashion in two circumstances:

1)  When FDA, on its own initiative, finds that a monograph must be amended or repealed because a drug under the monograph may pose a significant risk; or

2)  After a meeting of one of the Agency’s Advisory Committees, when FDA finds that a drug under the monograph lacks evidence of effectiveness.

The Modernization Act would also give the FDA the authority to regulate OTC drug advertisements. Currently, the FDA regulates advertisements for prescription drugs, while the Federal Trade Commission (FTC) regulates advertisements for OTC drugs. It would also provide for civil monetary penalties for direct-to-consumer OTC drug advertisement violations.

The bill would also require the FDA to report to Congress on whether any of the current OTC drug monographs are in need of review, amendment, or repeal.

(Side Note:  Join a Fantasy Congress League and you can follow the progress of this bill here.)

A law blog on intellectual property worth noting is the IP Thinktank Blog by Duncan Bucknell, an independent IP consultant.  Hailing from Victoria, Australia, IP Thinktank provides one of the best round-ups of IP law from across the globe. 

This is a very thorough, well-laid out blog that provides good insight into strategic lifecycle management for both innovator (brandname) pharmaceutical companies as well as generic companies.

One recent post lists the Top 5 reasons not to settle IP Litigation from the IP owner’s perspective:

1. The other side are not even close to offering a reasonable deal.
2. A state sanctioned monopoly is worth a lot more to you, even after the costs of litigation.
3. This is one of many similar actions currently ongoing and you need a precedent and to send a signal to (a) the market, and (b) the other infringers.
4. Settling this one will create a cascade of difficulties across many jurisdictions.
5. Your CEO just doesn’t get along with the person in charge of that other company (NOT).

You can also learn the word Champerty — a doctrine of law which forbids certain situations in which a third party pays litigation expenses in return for a share in any proceeds. 

We recommend adding IP Thinktank to your list.

Blawg Review #138 is up at de novo for Human Rights Day. In a serious vein, this week brought the oral arguments in the Boumediene case in which Guantanamo inmates challenge their detention.

The Petitioners in these cases have all have been confined at Guantanamo for almost six years, yet (apparently) not one has ever had meaningful notice of the factual grounds of detention or a fair opportunity to dispute those grounds before a neutral decision-maker.

At issue is whether or not the Constitutional and Geneva Conventions‘ protections should be afforded to “enemy combatants” and even whether a detainee can be so classified without a hearing. Should due process of law be required for suspected terrorists?

Prisoners of war (lawful combatants) are entitled to the protections set forth in the 1949 Geneva Convention. In contrast, an unlawful combatant does not qualify for the Convention’s protections. In today’s world, can we know the difference?

We are left to answer questions that cannot easily be answered.

The U.S. District Court for the District of Columbia dismissed a suit against the Secretary of Commerce for hiring an allegedly incompetent person to office. See Gregory Aharonian, et al. v. Carlos Gutierrez, Secretary of Commerce (07-1224) .

Patent antagonist Greg Aharonian complained that the appointment of Margaret Peterlin to the position of Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office was unlawful because she does not have “a professional background and experience in patent or trademark law” as is apparently required under 35 U.S.C. § 3(b). The Secretary of Commerce basically responded nuh-huh.

35 U.S.C. 3(b) Officers and employees, calls for:

(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR.- The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.

The office of the Deputy Director is currently held by Ms. Peterlin.

The Secretary of Commerce argued that there is no private cause of action under this statute and Aharonian conceded this argument by failing to respond to a motion to dismiss addressing only certain arguments raised by the defendant and, hence, a court may treat those arguments that the plaintiff failed to address as conceded.

The U.S. District Judge held:

One of the three claims invokes Administrative Procedure Act (APA), which unlike 35 U.S.C. § 3(b), does provide a cause of action for persons aggrieved by final agency decisions that are arbitrary, capricious, or contrary to law. A claim alleging violation of the standard in 35 U.S.C. § 3(b) is unreviewable under the APA, however, because 35 U.S.C. § 3(b) lacks standards that a court could meaningfully use in evaluating this type of high-level personnel decision. Because the only statutory standard is vague and highly subjective, the decision whom to appoint Deputy Director must be considered “committed to agency discretion by law.”

The presumption must be that decisions involving high- level policymaking personnel are left primarily to the executive. Cf. Myers v. United States, 272 U.S. 52 (1926). In such a situation, one would expect Congress to speak in precise terms if it intended the courts to monitor the minimal qualifications for agency officers. Here, Congress has given only the broadest of instructions – that the Deputy Director should have “a professional background and experience in patent or trademark law.” 35 U.S.C. § 3(b). The statute is silent as to the content of those terms. Were the decision subjected to APA review, the Court – not Congress – would be the ultimate source of the standards by which the qualifications of Ms. Peterlin would be judged: Is a law degree necessary? Is it sufficient? Are law school courses in intellectual property a requirement? Is certification to practice before the USPTO? Is law firm experience? How many years? If Congress had intended the extraordinary situation in which judicial review would reach to the very qualifications of agency officers for their policymaking positions, its statute would not be drawn “in such broad terms that . . . there is no law to apply.” See Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402, 410 (1971) (citation omitted).

Dismissed.

See more: Can You Sue to Remove a Political Appointee Who Doesn’t Meet the Job Description?

Robert J. Ambrogi at Legal Blog Watch reports on the strange unfolding of a spat between lawyer Raymond Niro, co-founder of Chicago plaintiffs’ IP firm Niro, Scavone, Haller & Niro, and the anonymous author of the blog Patent Troll Tracker. In an article in IP Law & Business, Niro offered $5,000 “to anyone that can provide information that leads me to the identity of Troll Tracker.”

Niro says he wants to find out the name of the Troll Tracker in order to sue for patent infringement. Niro noted that “I view these people [anonymous bloggers] as know-nothings, afraid to reveal their identity.” Troll Tracker thinks this is just a publicity stunt, to get him attention.

The Mises Institute has a review of the events but it seems that the Troll Tracker described Niro in an unflattering way and now Niro wants to get Troll Tracker for patent infringement. So, just how can blogging be considered patent infringement? Apparently, the patent in question, owned by Acacia Global Patent Holdings, can cover the display of .jpg images on web sites.

IP Law & Business explains:

“[I]t is the same patent Niro used to try and silence another vocal critic nearly a decade before. In 2000 Niro filed suit to enforce the patent against the Green Bay Packers, a now-defunct porn site, and others. Greg Aharonian, the unabashedly outspoken author of the Internet Patent News Service, derided Niro’s patent as ‘crap,’ and Niro added him to the suit. A third party filed for a reexamination of the ‘341 patent, and this September, seven years later, it emerged with one claim left intact.”

The patent in question is U.S. Pat. No. 5,253,341, entitled “Remote query communication system.”

See more here and here. See the Troll Tracker response here.

Who knew that the law could be so interesting?

Update:  See Niro’s Response here.

IdeaTango is a social networking site that is set up to allow inventors a place to post, request and exchange ideas, inventions, intellectual property and patents — the MySpace of inventions. Companies can search the database of ideas for possible products for their company.

The founder, Bryan Daigle, contacted me and asked if I would take a look at the site. The web site describes Bryan as:

Like many of our members, our founder is an inventor. Because he was disappointed with all the invention companies that rarely had the inventor’s best interest in mind, he created this website to help inventors publicize their ideas, connect inventors with others who could help take the ideas to market, and hopefully make some money in the process.

The site is designed for small inventors looking to exploit their ideas. The listed benefits for inventors are:

• Learn about inventing from Successful Inventors & share your experiences
• Market & Develop Your Inventions
• Find Reputable Service Providers
• Enter Invention Contests and Submit Inventions to Companies

In looking around the site, you find that while easy to navigate, there is little content yet. The number of inventions per category range from one (Pets: the Sidewalker) to 19 (Tools & Automotive). Under Health & Beauty, I found this gem: the Multi-Function Personal Grooming Apparatus, a MacGyver-like brush with built-in comb and scissors.

The site offers the ability to search for inventions, meet up with service providers and businesses, and provides education through articles and newsletters. It even offers Lisa Lloyd’s 5-hour “How to Invent” Course.

On the other hand, it does offer a listing of intriguing contests for inventors. I especially like this one:

Sports Evolution Challenge

Description: Put your passion for the game to work! Open your Idea Locker and invent a new sport or conceptualize an innovative piece of sports gear or equipment. You could win $10,000 and a chance to shadow an ESPN broadcaster for a game, courtesy of Newell Rubbermaid! For kids under 19 only.

Prizes: $10,000 + shadow an ESPN reporter
Deadline: 12/31/2007
Company Name / Industry: By Kids for Kids
How & Where to Submit Inventions: You may participate at the web site here.
Judging Criteria: For detailed rules, visit here.
Website: http://www.bkfk.com

Only time will tell if this becomes a hit.