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 »

Yesterday, Thursday September 8,  the Senate passed the House version of the Patent Reform Act. The Patent Reform Bill moves the US from a first to invent  to a first to file system. The Bill also creates an opposition procedure, changes the nature of the one-year safe harbor, changes the requirement for obtaining a patent (section 102 of the Patent Act), does away with false marking trolls, emasculates  the best mode requirement and sets up an “I invented it first” defense against patent infringement. September 8, 2011 marks a significant change in the patent law (a day of celebration or a day that will live in infamy, depending on who you speak with). Once signed by the President, (which, according to the speech that same day, the President will do) the Bill has a time period it goes into effect. That time period will allow all of us to adjust to the new regime. Whether or not the Bill is challenged as being unconstitutional, only time will tell. In the meantime, we are moving to a cleaner patent practice (no more swearing back-my mother would have liked that change), more pressures on the inventors since the safe harbor now covers  less territory and definitely a faster pace for the scribes (the patent attorneys), since now we have a race to the patent office to see who files first.