Archive for March, 2013

International IP Exhaustion Reprised

March 27, 2013

As an update to my earlier post on the case, the Supreme Court recently issued its decision on international copyright exhaustion.

Kirtsaeng v. John Wiley & Sons

The Supreme Court reversed the decision of the Second Circuit and held that John Wiley’s copyright was exhausted by the authorized sale of the textbooks in Thailand.  Kirtsaeng was free to do whatever he wanted with the books once he lawfully acquired them, including importing them into the United States and reselling them.

Professor Kristen Osenga of the University of Richmond Law School (my wife) provided a podcast for the Federalist Society about the Supreme Court’s decision.

The question of what, if any, impact this decision will have on patent law remains unanswered.  The Supreme Court refused to consider an appeal in a patent case on this same issue and left the Federal Circuit’s patent exhaustion opinion in place, even though the decision is contrary to the decision in Kirtsaeng.  Ninestar v. ITC.


Patenting Your Invention Outside the US

March 27, 2013

A patent permits its owner to exclude others from making, using, selling, offering for sale, or importing the patented invention without his permission.  A patent is, however, unique to the country where it is granted.  Thus, if a patent owner does business in more than one country, it would be necessary to obtain a patent in each country to protect the invention.

Some countries have restrictions on what can be patented.  For example, some countries do not permit patenting software, business methods, drugs, or methods of treatment for humans.

PCT Applications

One way to obtain patent protection in multiple countries is to file an application under the Patent Cooperation Treaty (PCT).  A PCT application is an international application that is filed through the World Intellectual Property Office (WIPO), where an applicant can designate a large number of countries in which he desires to file his patent application.  Currently, 146 countries are members of the PCT.

A PCT application does not give the applicant an “international patent”, as all patents are national in nature (although certain organizations like the European Patent Office (EPO) issue a “European Patent” that must be registered in each member country where the applicant desires the patent to be in effect).  Instead, the PCT provides a mechanism that gives the applicant 30 or 31 months from the earliest filing date (the first filed patent application) to determine whether to file the patent application in various individual countries.  A PCT application can either be the first filed application for an invention or it must be filed within 12 months of the first filed application.

The PCT also provides an International Search Report and an examination, if desired, so that the applicant can get an early search performed to see if the invention is patentable.  The delay also permits the applicant to determine whether the invention is commercially valuable and whether it is worth spending the money to obtain a patent in each country.  While applicants may designate all 144 countries at the time of the PCT filing, they can decide later in which individual countries they would like to pursue patent protection.

A PCT application can also save money on translation costs early in the process.  While most individual countries require patent applications to be filed in the native language of that country, PCT applications permit applicants to delay the cost of translating the application into the various languages.

Once the 30 or 31 month period from the first filing date elapses, a PCT applicant must “enter the national stage” in each country where a patent is desired.  Otherwise, the application is abandoned and patent protection cannot be obtained.  It is at this stage where translations must be obtained and filing costs for the various countries must be paid.

Each country usually requires that the applicant work through an attorney or patent agent who is registered to practice before that country’s patent office.  Thus, to obtain a patent in Brazil, the applicant must work with a Brazilian patent attorney or agent.  These attorneys and agents charge fees for their services, further adding to the costs of obtaining patent protection in various countries.

If the PCT procedure is not utilized, applicants must file in each individual country within a year of the filing date of the first filed application.  The translation, filing, and agent costs are due at that time.  A primary advantage of the PCT is the 18 to 19 month delay for these costs.

While 146 countries are currently members of the PCT, there are several significant countries that are not members; these include Argentina, Paraguay, Uruguay, Venezuela, Taiwan, and the Middle East.  To obtain patents in these countries, a patent application must be filed in each within 12 months of the first filed application.

Patent Prosecution Highway

The United States PTO has entered into an agreement with 21 other patent offices called the Patent Prosecution Highway.  Under this program, once a patent claim is found to be allowable by the patent office where the application was first filed, the applicant may request that other patent offices fast track examination of the application.  This is a type of work-sharing program intended to cut reduce redundancy in examination.

Beware of Public Disclosure

March 18, 2013

The United States patent system is now officially First-to-File.

A new website was brought to my attention of the weekend:  First to Disclose.  The website indicates that it is a “community-powered” site that was created by members of the Brooklyn Law Incubator & Policy Clinic at Brooklyn Law School.  The purpose of the website is stated as follows:

[to] provide[] inventors of all kinds an easy-to-use, fast and effective method by which to publicly disclose their inventions. Under certain circumstances, such disclosures can help secure the inventor’s patent rights.

The site suggests that such disclosure will keep larger inventors or companies from winning the race to the Patent Office by permitting smaller inventors to disclose their inventions on the site.  This disclosure will even start the one year grace period permitted under US law.

As I have previously warned, DO NOT RELY ON THE PUBLIC DISCLOSURE PROVISIONS OF THE AIA.  If you are merely trying to keep another party from getting a patent, then by all means disclose your invention.  If you want to get your own patent, there are simply too many risks associated with public disclosure prior to filing a patent application.

Foreign rights may be irrevocably lost.  This is not a change under the AIA, but should continue to be a significant consideration.  Public disclosure does NOT protect obvious variants of the invention.  If a third party files or discloses an obvious variant of your invention before you file your application, you will not be able to get a patent on the invention.  This point can hardly be stressed enough.

The best advice I can give for the new regime is:  file early and file often.

Federal Circuit to Reconsider Claim Construction Deference

March 15, 2013

The Federal Circuit issued as order today that it will reconsider whether to grant any deference to a district court’s claim construction ruling.  Lightning Ballast Control LLC v. Philips Electronics North America Corp.

Since the late 1990’s, the Federal Circuit has treated claim construction–the determination of what the various words and phrases in a patent claim mean–as a matter of law.  This means that the court had reviewed lower court determinations de novo.  This means that the Federal Circuit would determine the meaning of the claim terms with no consideration of how the district court construed the terms.  Needless to say, the reversal rate of such determinations is very high.

When an appellate court reviews a lower tribunals factual findings, by contrast, the reviewing court grants deference to the lower court’s determination.  They will instead review factual findings for clear error.  After all, the lower court actually reviewed the evidence and listened to the witness testimony.  The appellate court is merely reviewing the written record of what happened.  The lower court is a better judge as to the credibility of the testimony or evidence.

Claim construction often includes a determination of underlying facts such as prosecution history statements and how one of ordinary skill in the art would actually understand a claim term.

While there has been a call to revisit the de novo review standard for years, the court has generally resisted these advocates for change.  The time has finally come to readdress the issue.  The court’s order requests the parties to address three questions:

a. Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?

b. Should this court afford deference to any aspect of a district court’s claim construction?

c. If so, which aspects should be afforded deference?

Senate Finally Confirms Richard Taranto

March 12, 2013

TarantoYesterday, the full Senate finally confirmed Richard Taranto to a seat on the Federal Circuit.  Taranto was nominated November 10, 2011, giving his nomination a 16 month pendency before the Senate.  This nomination was not at all contentious, the final vote being 91-0.

Taranto becomes the 10th active judge on the court, joining Chief Judge Randall Rader and Judges Pauline Newman, Alan Lourie, Timothy Dyk, Sharon Prost, Kimberly Moore, Kathleen O’Malley, Jimmie Reyna, and Evan Wallach.  Six additional judges remain on the court in senior status:  H. Robert Mayer, S. Jay Plager, Raymond Clevenger, Alvin Schall, William Bryson, and Richard Linn.  Judges Newman, Lourie, and Dyk are eligible for senior status should they so choose.

Two seats on the court remain vacant.  In February, President Obama nominated Raymond Chen and Todd Hughes to fill those seats.  Will we have to wait until June 2014 before their confirmation?

America Invents Act – Secret Prior Art

March 11, 2013

When the America Invents Act is fully implemented on Saturday, the scope of prior art will be greatly expanded, even beyond prior art in the rest of the world.

In Europe and the majority of the rest of the world, the universe of “prior art” that may be used to show that an invention is obvious or does not possess inventive step is closed as of the filing date of the application.  This means that anything that has published or any public activity or disclosure that would render the invention obvious is known as of the filing date.  And the EPO only uses European applications in this regard.  The America Invents Act, by contrast, will use applications filed anywhere in the world.

Patent applications are generally published 18 months after their earliest priority date.  This means that there is an 18 month delay between the time that an application is filed and the time its contents become available and known to the public.  During this intervening time, the application is held by the patent office in secrecy.

Once a patent application is published or issues, it becomes prior art as of its filing date.  Thus, an application that was secret for 18 months suddenly becomes prior art as of 18 months ago.  This can be a problem for patent applications filed during the 18 month interval when the application is kept secret.

In most countries, the application is only prior art for novelty or anticipation purposes.  It is only prior art if the published application contains disclosure that it identical and anticipates the later-filed application.  In the US, by contrast, the published application can also be prior art for obviousness purposes, such as when combined with another reference.  This is the problem of “secret prior art.”

Under the America Invents Act, the secret prior art may only be disqualified if it is the inventor’s own disclosure or a disclosure from someone who obtained the subject matter from the inventor.  This is the reduction of the grace period which currently applies to any inventor and third party activity, but will be reduced by the America Invents Act to only inventor activity during the year prior to patent application filing.  Thus, the America Invents Act expands secret prior art beyond current US law which is already more extensive than other countries.

If one of the avowed reasons for the change in law is to harmonize US law with other countries, this amendment actually moves US law farther away rather than closer to them.

Call for Nominations for the Creative Achievement Award

March 7, 2013

The Intellectual Property Law Association of Chicago (IPLAC) is accepting nominations for its annual Creator of the Year Award honoring creative achievements in the Chicago metropolitan area. The Award recognizes the people or companies behind the creative works in areas protected by intellectual property law, including (1) patented inventions; (2) marketing and branding activities protected by trademark law, and (3) creative works of art, music and literature protected by copyright law. There is no time limit for the nominee’s creative work underlying the nomination. Nominees may include individuals as well as groups of individuals and corporations, and need not be the current owner of the corresponding intellectual property right. Most or all of the creative activity must have occurred in the Chicago metropolitan area.

Nomination deadline: March 15, 2013

Nomination forms are available on the IPLAC website ( ) or from Paul Korniczky ( or Tel: (312) 616-5662), Chair, Creative Achievement Award Committee

Examiner Interviews

March 7, 2013

Oral communication is often more effective than written communication.

Once I’ve been through a round of written responses with a patent examiner, if I feel that the examiner is not being receptive to my position, I will conduct an interview with the examiner.  Often, the examiner will indicate that he or she had not fully grasped the position before and now better understands the distinctions between the claimed invention and the prior art.  Even in cases where I don’t get the examiner to agree with me, we usually understand each other’s position better which enables me to better advise my client on how to proceed with the case.

It is often easy for an examiner to cut-and-paste language from previous office actions when responding to an applicant’s amendment.  Sometimes this is because the examiner doesn’t fully appreciate the applicant’s position, sometimes this is because the applicant and examiner are talking past each other.  An interview can often resolve these issues as the examiner must listen and consider the applicant’s position without resorting to cut-and-paste.

This isn’t to say that all interviews are successful.  Many examiners are not used to oral communication and will be non-committal.  This is especially true for junior examiners.  Junior examiners do not have authority to allow claims without review by a senior examiner or supervisor.  Thus, examiner interviews with junior examiners require a senior examiner with such authority to also be present.  The problem is that the senior examiner has his or her own docket and often is not familiar with the application and issues or is not prepared for the interview.  Such interviews can be frustrating and maybe even unhelpful.  And, many junior examiners are very reluctant to allow patents.

In any event, even if the interview does not result in allowance of the claims, I have more information about the application and the examiner’s position than I did prior to the interview.  I can advise my client that the examiner will not be persuaded.  Perhaps we are more likely to get a positive result through appeal rather than another round of responses.

Interviews are not a way to avoid making comments on the record that become part of the prosecution file.  If there is an outstanding office action, most examiners will require the applicant to send in a proposed amendment or set of arguments that will become a part of the record.  This can sometimes be avoided if the interview is conducted after a response has been filed.  After the interview, a written summary is prepared by both the examiner and the applicant that becomes part of the file.

Nonetheless, if I determine during an interview that a particular argument is clearly not going to persuade the examiner, and I don’t think the argument is vital to the case, I may omit it from my next response, thereby keeping it out of the record.