Archive for November, 2012

Director Kappos to Leave USPTO

November 26, 2012

Patently-O is reporting that Director Kappos will leave the PTO in late January 2013, capping off 4 years as Undersecretary of Commerce for Intellectual Property and Director of the PTO.

He has led a great transition from the prior regimes of antagonism to patent applicants to the current system of working together to promote openness and problem-solving.  Director Kappos has worked hard on his goal of reducing the patent application backlog and pendency of patent application.  He has promoted openness with the introduction of the Director’s Blog and the Patent Dashboard on current PTO statistics.

Director Kappos was also a strong advocate of patent reform, culminating with his lobbying for passage of the America Invents Act last year.

His leadership will be missed.

Patently-O is also reporting that current PTO Deputy Director Teresa Stanek Rea will assume the role of Acting Director.  She will also likely be nominated for the permanent position.  Rea joined the PTO in 2011 with more than 25 years of legal experience.  She was previously a partner at Crowell & Moring and held at a number of other prominent IP positions including as a past president of the American Intellectual Property Law Association (AIPLA).  She should bring a great industry and bar perspective to the position.

Costs for Preparing Patent Applications

November 20, 2012

There are a large number of inventors and companies out there now that want patent work done as cheaply as possible.  Especially since the economy has tanked, many inventors and companies are attempting to low-ball fees for preparing patent applications.  I have seen ads for $1,400 patent applications.  There is simply no way to have a quality patent application prepared for this price.

Another case is where an inventor has prepared his own patent application and has asked me to simply review it to make sure that there are no obvious mistakes.  The reason for preparing the application himself is that the inventor believes that this will save money on preparation costs.  Unfortunately, this is usually not the case, and I tell these clients this fact up front.  Unless the inventor has significant experience with preparing and prosecuting patent applications, the application will undoubtedly need a lot of work on my part.

First, the application may be very brief, perhaps 8-10 pages with a drawing or two.  The invention will often be described in very general terms because the inventor is afraid that specific descriptions will unduly limit the invention.  In this case, I generally have to start over.  One cannot get a patent on a general idea.  One must describe specific implementations of the invention.  This does not mean that the invention must be very specifically claimed.

Otherwise, the inventor may have an application of adequate length for the complexity of the invention, say 30 or so pages, with 10 or so pages of drawings.  In fact, sometimes these inventors don’t understand the difference between a patent application and a research paper, so they will include large amounts of extraneous details ont the background or theory of the invention.  In this situation, it will probably take me just as long or longer to adequately review the entire application, discuss the details with the inventor to fully appreciate and understand the invention, and then make corrections and changes based on my experience in patent law and my adequate understanding of the invention.  This does not save the inventor money.

Another typical situation that I encounter is where an inventor or company sends me a pending patent application and asks me to take over the prosecution because they are dissatisfied with their current counsel.  They believed that the invention would be patentable and that the examiner should be able to be persuaded of this fact quickly.  They have also had commercial success with the invention, but are afraid that if they don’t get a patent, knock-offs will appear that will undercut their prices and knock them out of the market.

Often, I find out that they are correct–certain aspects of the invention are patentable.  When I review the specification, however, I realized that it is only 8 or 10 pages long.  They didn’t want to spend much money when they had their application prepared and filed (often a couple years earlier), so they went with the low-ball price for its preparation.  Now, many of the features that seem to make the invention patentable are not sufficiently described in the specification; I cannot add them to the claims because they would constitute new matter.  I do the best that I can to salvage something from the application for them, but there is a lesson here.  If the description contained more details and was say 15 or even 20 pages long, these aspects of the invention could be added to the claims.  This is not to say that longer applications are always better, but in general this is the case.

What to Do

The best practice is for each invention should be treated as a million dollar invention when the application is being prepared.  At that time, who knows which ones will be?  I always tell clients that patents are speculative investments.  You can’t tell from the start which inventions will be successful and worth the investment; you can’t be certain which will be granted broad patent protection; and, perhaps most importantly, getting a patent doesn’t mean the product will be successful in the marketplace.  If you don’t spend the time and money to prepare an adequate patent application, it doesn’t matter.  The resulting patent, if any, will only be worth what you paid for it.

With a down economy many or most patent attorneys either didn’t raise their rates or even lowered them slightly the past few years, and rightfully so.  The market dictated this event.  When comparing the services of an attorney who charges $800 per hour with one who charges $50 per hour, however, one must realize that the attorney with the low-ball rate would undoubtedly charge a higher rate if the market demanded it.  If he can be just as busy charging $200 or $300 per hour, why would he continue to charge $50 and make less money?

This isn’t to say that a higher rate always gives you a better product.  One should also take referrals and other factors into account when comparison shopping for patent services.  Sometimes a better patent attorney may choose to work for a smaller firm or in a smaller market where rates are lower than those in the big city at the big firm.  His or her work may be just as good or better than the big-firm attorney in New York or DC.  When a price is too good to be true, however, it probably is.

On the point of whether to begin a patent application by preparing the claims or the specification, I have done it both ways.  I generally find, however, that preparing the claims first is advantageous.  In this way, I can confirm with the inventor his or her understanding of what the invention actually is.  I then prepare the written description.  I try to make it as detailed as possible and get the inventor to provide me with as many different implemenations, embodiments, and optional features as I can.  It is indeed an iterative process:  when preparing the description, it is inevitable that I will discover features that that should be claimed, and vice versa.  And yes, all of this takes time; more than $1,400 worth of time.

I will often discover during prosecution that there are features of the invention that I need to add to the claims or that are patentable that were not included in the original claims.  By having an adequate disclosure from the beginning, adding such claims is easy.  If the description is too terse, however, this can’t be done.  New matter cannot be added to a pending application during prosecution.

When a client comes to me with a new idea for a patent application, I try to get all of the details of the invention from them and then provide what I believe to be a fair and realistic estimate of the cost to them based on the time it should take to adequately describe and claim the invention.  Sometimes my estimate is too high and the actual cost is lower; sometimes things happen that raise the costs.  I previously provided some tips and strategies to keep costs down and get better patents.

The bottom line is that in patent preparation and prosecution, like most everything else, you get what you pay for.

Judge Bryson to Take Senior Status

November 12, 2012

Federal Circuit Judge William Bryson will take senior status effective January 7, 2013.  Judge Bryson was nominated to the court by President Clinton and began his service in September 1994.

While Judge Linn will continue to hear cases in the capacity of senior status, this announcement gives the court yet another vacancy.  Unfortunately, politics is holding up confirmation of circuit court judges by the Senate.  It does not appear that the Senate has confirmed a circuit court judge since May.

Richard Taranto was nominated last November to the seat vacated by Chief Judge Paul Michel in May 2010.  This was after the Judiciary Committee refused to take action on the nomination of Edward DuMont.  Taranto was confirmed by the Committee on March 29, 2012.  Since then . . . nothing.  He is awaiting debate and a vote by the entire Senate.

Perhaps in the lame duck session?

Current Federal Circuit Judges

The senior active judge on the court is Pauline Newman.  Judge Newman, 85, was appointed to the court by President Reagan in 1984.  She hasn’t given any indication that she may retire.

Judge Alan Lourie, 77, has been on the court since 1990.  He is also eligible for senior status.

Chief Judge Randall Rader, 63, would be eligible for senior status in 2014.

Judge Timothy Dyk, 75, has also been on the court since 2000.  He is eligible for senior status.

Judge Sharon Prost, 61, has been on the court since 2001.  She will be eligible for senior status in 2016.

Judges Kimberly Moore, 44, Kathleen O’Malley, 56, and Jimmie Reyna, 59, each have a number of years before they will be eligible for senior status.

Judge Evan Wallach, 63, has been on the court since 2011.  By virtue of his service on the Court of International Trade, he will be eligible for senior status in 2014.

Judges Mayer, Plager, Clevenger, Schall, and Linn continue to serve the court as judges with senior status.  Judge Bryson will soon join their ranks.

Unless Taranto is confirmed, the court will be operating with 3 empty seats in January.

HT:  Hal Wegner.

International IP Exhaustion

November 8, 2012

In the US, once a patented product has been lawfully sold, the patent rights are “exhausted.” This means that subsequent purchasers can obtain the product free of patent rights. The theory behind exhaustion is that a patent owner should be able to recover or obtain royalties only once for a given product.

A product covered by a US patent that is lawfully sold outside the US (by virtue of not being patented in the country of sale or by permission of the patent owner in the country of sale) and then imported into the US may still be liable for infringement. A foreign sale would not exhaust US patent rights. Other countries may take a different approach to this issue.

Kirtsaeng v. John Wiley & Sons

The Supreme Court recently heard arguments in a copyright exhaustion case from the Second Circuit.  Although the case involves copyrighted works, it will have implications for patent law.

Kirtsaeng lawfully acquired copyrighted textbooks in Thailand.  He imported them into the US and resold them.  The publisher sued him for copyright infringement.  He argued that the first sale or exhaustion defense shielded him from liability.  The Second Circuit held that the defense does not apply to works that were acquired outside the US.

Professor Kristen Osenga of the University of Richmond Law School (my wife) provided a podcast for the Federalist Society about the argument of the case at the Supreme Court.

Patent Pending

November 1, 2012

I’m sure you’ve seen the words “patent pending” or “patent applied for” on a product or package before.  What exactly do these phrases mean?  What legal rights are attached to them?


Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement.  The patent marking statute permits patentees to provide notice to the public by marking a product or product package that is covered by a patent with the patent number.  This is why it is strongly recommended that patent owners mark their patented products or product packages with the number.

Patent applicants will often mark products or product packages with the phrase “patent pending” or “patent applied for”.  These phrases do not have a legal meaning under US patent law, as they do not indicate that the product is covered by a patent or that someone who copies the product is guilty of patent infringement.  The purpose of these phrases is to inform the public that the product is the subject of a patent application that has been filed and is pending in the Patent Office.  Although in general a patent application cannot be infringed, the public is informed that a patent may issue in the future that covers that product.  In this way, the phrases provide some deterrent effect against infringement.  Even if a patent does not issue for the product, it is believed that the patent applicant may deter some parties from copying the product while a patent application is pending, thus providing the applicant with a competitive advantage.

Patent marking is also used as a marketing technique.  Many consumers believe that a patented product is a cutting edge product–it must be better or an improvement over previous products.  “Patent pending” or “patent applied for” may provide this marketing advantage as well.