Supreme Court Sanctions Patent Attorney

Previously, I have described how not to write a claim in a patent application. Now, the Supreme Court has let us all know how not to write a Petition for Writ of Certiorari. Such a petition is a necessary part of having a case argued before the Supreme Court of the United States. Unlike the first level of appellate courts, to which any party can appeal, only some appeals are accepted by the Supreme Court to be heard. This is a necessary mechanism: thousands of trial courts funnel appellate work to a handful of appeals courts, and many of those cases are requested to be reviewed by the Supreme Court. However, the Court has only nine justices and can hear only so many cases a year. Thus, the Court picks and chooses which arguments it will hear, and refuses to hear other cases by denying their petitions for writ of certiorari. It would thus seem obvious, then, that a petition would be written clearly to convey the depth and importance of the question presented in the case.

Well, apparently not always. The Court recently denied a petition in a patent case because the petition was so lacking. The question presented in the petition “focused” on a developing line of precedent in the Supreme Court on subject matter eligibility (what types of inventions can be patented). The Court was not impressed with the question, nor should you be. The petition was long, oddly formatted, asked at the outset:Patent Supreme CourtI can’t make too much sense of it, and neither could the Court. It is now requiring that the attorney explain why he shouldn’t be sanctioned for submitting a petition in this fashion.

 

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Public Use of an Invention

The public use of an invention can invalidate patent office 2your ability to obtain a patent in that invention. There are many nuances to the law on public use, and this will explore only one of the nuances. A patent cannot be obtained for an invention if the patent application was filed more than one year after the first date of public use. Thus, whenever a public use has occurred, there is a “critical date” one year later by which a patent application must be filed if patent protection is to be sought.

What is “public use,” though? There is a lot of case law defining this, but unfortunately it is, at the time of this writing, all old case law under the old patent rules.  It is fairly likely, though, that much of the analysis of most aspects of “public use” will be the same under the new patent rules.

The public use bar arises where the invention is in public use before the critical date and is ready for patenting. The test for public use includes consideration of many factors, such as evidence relevant to experimentation, the nature of the activity that occurred in public, whether and to what extent there was public access to the use, the existence of confidentiality obligations with members of the public who witnessed the use, and any commercial exploitation of the invention. Importantly, wide, public knowledge is not necessary for “public use” to have occurred. In some cases, hidden use of a device can be public us; if a new type of suspension is used in a truck that is driven around town for an afternoon, this may be public use even if no one sees the suspension. On the other hand, an inventor’s private use of the invention, for his or her own enjoyment is not a public use.

“Public use” of a claimed invention occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor. The existence of such controls can indicate that a use was not public, but is not necessarily dispositive of the issue.

It is important to understand that the above description is not at all a complete treatment of public use law or patentability requirements.  Every situation is a little bit different, and may be analyzed under these or other areas of patent law.  For that reason, each situation must be addressed on its own facts with the advice of competent counsel.

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Acronyms as Trademarks

Guest author Jordon Trapnell, currently a second-year law student at Gonzaga, writes this nugget about trademarks embodied in acronyms:

Acronyms are very commonly used in the commercial world, but present a number of complications when it comes to trademark law. First, there would seem to be an increased likelihood of confusion (which inhibits the chances of registration) since the letters comprising an acronym could have any number of different meanings. Still, there is no law that completely prohibits registering an acronym as a trademark.

The USPTO does have a specific rule that affects how it decides if an acronym can qualify as a trademark. The rule states that “an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents” (TMEP 1209.03(h)). The key to understanding how acronyms can be trademarked therefore actually lies in understanding descriptiveness.

Potential trademarks are categorized along a continuum that ranges from distinctive to descriptive. Arbitrary or fanciful marks that are inherently distinctive are generally easiest to register; marks that are only descriptive are very difficult to register. A merely descriptive mark is one that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services it is used in connection with. An example could be a window company trying to trademark the name “Clear Glass Windows.” These marks are refused registration in order to prevent the owner of a mark from suppressing competition and to make sure the public is free to use the language involved. So in the context of the acronym rule, “considered descriptive” means the application would be denied.

Determining whether the wording is merely descriptive is relatively simple compared to determining if relevant purchasers usually perceive the acronym to be synonymous with that wording. In the 2003 case Capital Project Mgmt. Inc. v. IMDISI Inc., the Trademark Trial and Appeals Board upheld the objection and denied registration of the mark “TIA.” It was determined to be synonymous with the descriptive term “time impact analysis.” Time impact analysis is not a term that would be readily recognized by the general public, which shows how the wording “relative purchasers” refers to people in the field being discussed. An acronym “CPL” standing for computerized potential log – a term that appears comparable in descriptiveness to time impact analysis – was allowed registration by the TTAB because there was not enough evidence to suggest that relevant people would perceive it to be only an abbreviation for computerized potential log.

To summarize, there are a few questions that should be asked before filing a trademark application for an acronym. What does the acronym stand for, and does the term(s) directly describe the product or service with which the mark is used in connection? Do those who work in the same field have any familiarity with the term and its acronym? If the answer to both of these questions is yes, trademark registration may not be possible.

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Patent Searching and the Duty of Disclosure

I frequently get asked about the necessity of patent searching.  Some clients question why they should run a search before filing an application when the Patent Office will always perform one in your application.

A patent search is never required before an application (well, almost never – there are some very rare situations).  But there are a lot of reasons why a patent search should be conducted beforehand.  First of all, the USPTO does not perform a search “for you.”  If anything, they are performing a search for the American public against you.  The USPTO Examiner’s job is to review an application and ensure that the applicant is awarded a patent only on that which he or she has invented and which has not already been disclosed, so that the applicant is not able to claim something which the public has properly come to believe is available for all.

A patent search is helpful to determine: 1) whether the invention is patentable at all, and 2) what aspects of the invention are patentable.  Regardless of your method of filing, you are going to spend considerable time and money chasing a patent, and if the idea is patentable at all, it is better to know that from the outset – you’ll have saved yourself considerable aggravation.  If the invention is patentable, you still want to make sure that the work that is required in preparing and prosecuting an application through to issuance is justified by the potential scope of the patent.  If the only protection that the patent may ever yield is far too narrow or specific to have any value, you may choose to drop the idea or, perhaps, change it to make it broader.

When a patent search is performed, it also helps the attorney immensely in drafting the application.  Without knowing the prior art, an attorney can’t draft claims which are precisely tailored to the patentable subject matter.  The attorney will be forced to either write claims that are overbroad (and likely far overbroad) or write claims that too narrow, and thus leave missed protection on the floor.

Whenever a patent search is performed, the results should always be disclosed to the Patent Office.  An applicant has a duty to disclose material relevant to patentability.  Failure to disclose such information can eventually become the basis for the patent being invalidated.

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Specimens Showing Use of Service Marks

As part of the trademark application process, trademarkalmost all marks must be used to eventually be registered. The Trademark Office requires that a trademark applicant submit evidence in the application showing acceptable use of the mark. This evidence is called a specimen, and there are many requirements for what it must show.

The Trademark Office yesterday released examination guidelines for Service Mark Specimens, which attempts to describe the elements of an acceptable specimen for services, discusses specific issues and potential refusals, addresses commonly submitted specimens for modern technology-related services, and provides examples of acceptable and unacceptable specimens. The examination guidelines are manuals for trademark examiners to use when evaluating a trademark application, and together, with the TMEP and other trademark laws and rules, inform how an application is received and analyzed. You can read the new guidelines here.

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Patent Office Announces First Bi-Coastal Biotechnology, Chemical and Pharmaceutical Partnership Meeting

Are you excited yet?  The Patent Office announced last week that it will hold its first bi-coastal partnership meeting in the areas of biotech, chemical, and pharma practice.

The official announcement reads:

This inaugural BCBCP expands USPTO’s long-standing partnership in the biotechnology industry sector to customers across the country. The next BCBCP Meeting will be held on September 17th and will be simultaneously available at locations on both the EAST (Alexandria, VA) and West (San Jose, CA) coasts. During the BCBCP, participants will be able to interact with Office personnel in person on both coasts, or alternatively, via webcast. The Biotechnology, and Chemical and Pharmaceutical Customer Partnership was developed to create a collaborative forum for USPTO customers in this industry sector to share ideas, experiences, and insights with USPTO staff. The BCBCP is intended to be informal in nature and will include participants from across the industry. Some of the topics to be discussed by USPTO staff and industry customers will include:

• Markush claim practice

• Patent application filing best practices

• RCE practice

• Overview of patent application initiatives

• Panel discussion on U.S. Supreme Court decisions

(e.g. Alice Corp., v. Cls Bank International. 134 S. Ct. 1537 (Supreme Court March 21, 2014); and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 186 L.Ed. 2d 124 (2013))

This will be an important meeting because it will be the first since a number of recent Supreme Court cases which have somewhat muddled the water.  Explanation and education from the Patent Office is generally a good thing in working toward clarity and transparency.

 

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Patent Derivation Proceedings FAQ

Derivation proceedings are administrative patent officeproceedings conducted at the Patent Office to determine who should be able to pursue a patent application. The patent reform that was enacted over several years and concluded on March 16, 2013, instituted derivations proceedings, which are most similar – though certainly not identical – to the old inteference proceedings which attempted to ferret which inventor had invented an idea first. Derivation proceedings can be brought by an inventor who believes that an earlier-filed application may have been derived from his own inventive activity. Here are a few basic questions and answers about the proceedings:

Q: What are the requirements for seeking a derivation proceeding?

A: A patent applicant must file a petition to being the proceeding. The petition must establish the basis for finding that an inventor named in an earlier application actually derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within one year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Q: What statutory requirements must a petitioner meet in a petition for a derivation proceeding?

A: In a petition for a derivation proceeding, the petitioner must both: (1) identify which application or patent is disputed; and (2) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

Q: What is the standard for instituting a derivation proceeding, and who decides whether that standard is met?

A: A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Patent Trial and Appeal Board decides petitions for derivation and conducts any proceeding arising therefrom.

Q: How will the Board conclude a derivation proceeding?

A: The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization.

Q: Are there possibilities for appeal from an unfavorable decision by the Board?

A: Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

Q: In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?

A: Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

Q: What about settlement?

A: Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.

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Arizona State Library Patent Presentation

It is a bit late notice, but tomorrow I will be speaking at the Arizona State Library at noon.  The topic will be patent basics, and the audience will be entrepreneurs, business service providers, and librarians.  More information is in this flyer.

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Chisum on Supreme Court’s Recent Alice Patent Decision

I’ve just gotten around to reading Professor supreme courtChisum’s  take on the Supreme Court’s recent Alice v. CLS Bank decision on patent subject matter eligibility, and I heartily recommend it for those interested in looking for some small clarity in an area of law that the Supreme Court has muddied well over the past several years.

Of course, the easiest conclusion to reach from the decision is that yes, software is still patentable.  However, many have largely given a shrug to the decision – as we have become accustomed to doing when the Supreme Court weighs in on patent law.  Robert Merges likens the decision to the Hitchhiker’s Guide computer’s answer of “42” to the ultimate question of life, the universe, and everything.  One of my old professors John Duffy finds another media analogy:  “Towards the end of the [classic 1965 movie The Battle of the Bulge], the German panzer colonel believes he has succeeded in breaking through the Allied lines, and he exalts: ‘We have done it!’  His attendant asks whether ‘we have won the war.’  The colonel’s answer: ‘no.’  The attendant then whether ‘you mean we have lost.’  Again, the colonel replies, ‘no.’  The confused attendant asks, ‘What is happening?’ The happy answer from the militaristic colonel:  ‘The best thing possible is happening – the war will go on.’”

Patent practitioners are still left with more questions than answers after decision, but Professor Chisum does pull some portions of the decision that may let us better advise clients and converse with the Patent Office. Read Professor Chisum’s post here.

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Section 15 Trademark Declarations

A §15 Declaration is an optional trademarktrademark filing that can be made in a trademark registration. If chosen to be made, it can only be filed after 5 continuous years of use of the registered mark. This means that the mark has to have been used for 5 consecutive years, all of which fall after the date of registration, and that the mark is still in use. A §15 Declaration asserts that the mark is incontestable. For a mark which is found to be incontestable (which is a determination made in court), the registration becomes conclusive evidence of the validity of the mark, the registration, the ownership of the mark, and the owner’s exclusive right to use the mark in commerce. This means that these issues cannot be attacked, subject to some limited exceptions.

The §15 Declaration is made with a filing at the USPTO. When a §15 Declaration complies with statutory and rule-based requirements, the USPTO will update its records to acknowledge receipt of the declaration, and will also send a notice of acknowledgment to the owner of the trademark registration. The notice is recorded in the registration’s files, which are open and provide notice to the public that the declaration has been made. This notice is somewhat limited, though: acknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration of incontestability has been filed, but it is not actually a determination by the USPTO that the registration is in fact incontestable. The question of whether the registration is incontestable is one that is made by a court should a proceeding involving the mark arise.

The §15 Declaration requires affirming that, not only has the mark been in use for 5 consecutive years, all of which fall after the registration, but that the mark is still in use. Further, the declarant must aver that there has been no final decision adverse to the owner’s claim of ownership, or to the owner’s right to register the mark or to keep the mark on the register. Finally, the declarant must state that there is no pending proceeding involving the mark, either before the USPTO or a court.

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