In one of the four notices that the USPTO issued in the Federal Register from November 22 through December 16, 2011, requests for comments were issued for proposed changes to the rules on patent assignments.  In this post, we continue providing comments in response to those requests.

The group of requests, including the second request through the fourth request reproduced below, relate to the requirement of information to be provided by the applicants:

2)      Would it be in the public interest for the USPTO to obtain from applicants, updated identification of the assignee at the time of allowance, e.g. in response to the Notice of Allowance?  Are there limitations on the USPTO’s rights and powers to require the reporting of such information?

3)      Would it be in the public interest for the USPTO to obtain from applicants, updated identification of the assignee during prosecution of the application?

4)      Would it be in the public interest for the USPTO to obtain from applicants, updated identification of the assignee after issue of the patent?   What are the appropriate consequences of non-compliance? Read the rest of this entry »

The period from late November until the beginning of the new year presents challenges to those trying to keep up with his or her work and with the outside world while we  celebrate the holidays.  While we were eating turkey and drinking wassail from November 22 through December 16, 2011,  the USPTO issued four notices in the Federal Register.  These notices either notify of changes in the practice or ask for comments on proposed new rules.  In this post, we present the request for comments on proposed rules for assignments and we comment on the first request for comments.  We will also present our comments in response to the other request and then comment on the new rules for BPAI practice in later posts.

The Federal Register notice issued on November 23, 2011, which details the proposed rules for assignments, documents requests comments in the following areas (provided as listed in the Federal Register): Read the rest of this entry »

There are many studies and colloquial expressions that relate patents to innovation.  For example, it has been considered by some that patents spur research and development (see, for example, the discussion on this topic in the Berkeley 2008 patent survey).  However, some other anecdotal evidence (hopefully my litigation counterparts would not cringe at my use of the term “evidence” in a colloquial way) indicates that innovation is a result of the human desire to create, and it is not fueled or hampered by patenting.  An example of such a situation that I’ve personally witnessed, was in the mid-1970’s.  A senior physicist, who we will call Vern, and a young physicist were studying alternate fusion concepts.  In studying one of the concepts, Vern proposed from basic energy arguments an amazing result.  At first look, one would consider that it violated the second law of thermodynamics (the law that prevents perpetual motion machines).  The young physicist went off and performed computer simulations verifying the amazing result.  They both looked at each other and said, “We should patent this.” Read the rest of this entry »

When the CAFC denied en banc rehearing of Retractable Technologies v. Becton Dickinson,
the Court missed both the opportunity to make claim construction (claim interpretation) more certain and also whether to consider if some deference should be given to the claim interpretation provided by the trial judge.  The batting average of trial judges when it comes to claim construction, in terms of the number of claim constructions reversed by the CAFC, is about .500, which is good for baseball players, but causes consternation to trial judges (even though it generates work for trial attorneys).  The first question that was raised by the decision in Retractable Technologies is whether a claim interpretation based on the clear language of the claim where there are no ambiguities, that does not meet  the written description requirement or is not enabled, should be allowed.   Read the rest of this entry »