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Commissioner Jon Dudas Says USPTO Is All About Staying “Technology Neutral”.

Posted in General Commentary by Jake Ward on March 30, 2008


Excerpts below from a recent interview with Commissioner Jon Dudas, via C|NET

Patent Commissioner Jon Dudas says his office is all about staying “technology neutral,” so long as the invention meets certain standards.

“The system we’ve had has worked to promote technology for 200 years, and it can do that in the software industry, so long as you follow the principles that (a technology) is useful, new, and nonobvious.”

On particular topics, Commissioner Dudas was quoted as saying: 

On software patents: “Software, biotechnology, business methods–In the United States, the Supreme Court has consistently held that those are areas where there should be patents, and those industries have flourished.

“Specifically with open source, I think the two should coexist very well. If someone gets a patent, then that intellectual property has to be respected, but so long as that patent isn’t used, open source can be as open as it needs to be. You can license some (patents) and not license others. There are some who feel by definition you should only have open source or only have a patented model. The administration’s position has always been that…both open source and patents help innovation thrive.”

On business method patents: “We essentially said, we shouldn’t base whether or not something is patentable on what type of technology it is or even what kind of method it is…so long as it’s new, useful, and nonobvious.

“Probably in the last three years, of all the (business method patent) applications that have come in the door, the office has said 85 percent of these are not allowable. The patent system, I believe, is working very well… We’re starting to get a higher percentage of business method patents being approved, probably in the 20 percent range.”

On “so-called” patent trolls and whether they’re overhyped: “It depends on how someone defines a patent troll. ‘Patent troll’ is meant to be a pejorative term. Some have defined it as someone who doesn’t develop a project commercially. Certainly, someone who comes up with a great idea and licenses it, that’s a very efficient way to do it.

“I think the concern there is more a concern with the judicial system as a whole than it is with the patent system.”

On gripes by large technology companies that patent infringement fines are too high: “The administration has said we do think judges could give better guidance to juries. We definitely feel that in the case of damages, it would be good if judges could give very specific guidance to juries. With the provisions in the existing bills right now, the administration has said, ‘We oppose the entire bill based on that because they favor one type of damage model over another.’

“There are a variety of different factors you can apply to determine what the right compensation is, and you, as best as possible, want to mimic the market. But the bills direct you to a certain couple of factors that may or may not mimic the market. We’re saying the judge should tell the jury; don’t just say, ‘Here’s 15 factors; figure it out for yourself.’ The judge should tell jury, ‘Here are a number of factors. These 3 seem critical; look at factors 2, 5, and 6.”

“When they talk about damages awards and things like that, people say there’s a lot of bad patents. When you get to the point of a damages award, there’s a judge and jury that already determined this is a valid patent… By the time you look at damages awards, you’re talking about good patents and you’re talking about actual infringement of intellectual property.”

On weeding out “bad” patents from the get-go: “Making sure applicants can give good information up front…will lead to a much better patent system–more than anything else. (The Patent Office is proposing that applicants) do a basic search (for “prior art,” which is previously published technology that relates to an invention) and short report about why their invention should be patented.

“In 27 percent of cases, nothing is submitted in terms of prior art. In another 17 or 18 percent of cases, people just give us a long list of references. There really is a responsibility for people to come in and say, ‘Here’s why I think I deserve a patent; here’s some of the areas to look at.’ The decision will always rest with the patent examiner. The patent examiner will always do the full search and review and analysis.”

On reducing in-court patent litigation: “The administration proposed post-grant review (a process within the Patent Office where people would be able to challenge patents just after they’re issued). It has to be a true alternative to litigation. We don’t think the idea is to have another way to question a patent, and then you can go to court and you can go to post-grant. The standard we’ve held is that there should be a threshold in order to get a post-grant review, an actual threat of litigation.

“The second thing–this is the critical point–if you choose to go to post-grant review, any issue you raise or could’ve raised, you have to raise there, or you can’t raise it again. You don’t want an innovator to have hurdle after hurdle after hurdle after they’ve gotten a patent.”

On whether Congress and the Bush administration can reach an accord on new patent system rules: “We feel like senators and members are cognizant and care about concerns of the administration. Ideally we’ll have a bill with a letter from the administration saying we support this bill as it is. That’s our goal.”

On handling a flood of patent applications: “We’ve hired more examiners in terms of raw numbers and percentages in the history of the office. We’ve said very clearly, hiring more examiners in and of itself won’t be the solution. Even hiring 1,200 examiners, even increasing a lot of different flexibility initiatives that increase productivity…we still get more applications in the door than we’re able to examine.

“What we really need to do is get higher quality applications. The allowance rate, those applications that are approved, used to hover between 62 and 72 percent, back 35 to 40 years ago. In the last 6 years, it went up to 72 percent in 2000, then dropped steadily down to a 43 percent allowance rate. So what we see is 57 percent of what comes in the door doesn’t lead to a patent. ”

On the long line to get a patent–and how some may game the system: “Most of the time when people say it takes me 33 months to get a patent, people think, “What’s taking so long?” The examiner only takes a few weeks. That time is all waiting in line. That line is getting longer and longer and longer–filled with applications that never get approved. What’s, in lots of ways, more disturbing is in over half the cases where we say this isn’t patentable, people just file again and get back in line.

“We put out a rule (that was supposed to take effect last November) saying that you can only do that three times. But we were sued. (A judge issued a temporary injunction against the rule.) Right now, the way the law has been interpreted is people have unlimited opportunities to refile their application. You have more opportunities to have us look at your patent application than you do to appeal your death sentence.

“We want to make certain that people can’t apply with a very broad patent application, which they know will get rejected. And then they get back in line, and meanwhile, they’re looking out and seeing what’s happening in the market. Sometimes they see that if they focused that broad claim, it could cover an existing technology… Then, (going by) the date of first filing, they can then say, ‘I own that technology’… That’s a very real concern. That gets more in line with concerns of troll behavior–someone who is literally watching the technology…so they can rise up out of the bridge and sue people.”

JW Note:  Insightful interview.  PLI Blog – Quinn thinks the views espoused by Dudas reasonable.  Thoughts from our readers?

They Invented What? (No. 92)

Posted in They Invented What? by Jake Ward on March 26, 2008

U.S. Pat. No. 5,255,452:  Method and means for creating anti-gravity illusion.


JW Note:  Michael Jackson, yes that Michael Jackson, is listed as a co-inventor on this patent.

I claim:

1. A system for engaging shoes with a hitch mans to permit a person standing on a stage surface to lean forwardly beyond his or her center of gravity, comprising:

          at least one shoe having a heel with a first engagement means, said first engagement means comprising a recess formed in a heel of said shoe covered with a heel slot plane located at a bottom region of said heel, said heel slot plate having a slot formed therein with a relatively wide opening at a leading edge of said heel and a narrower terminal end rearward of said leading edge, said recess being larger in size above said terminal end of said slot than is said terminal end of said slot; and

          a second engagement means, detachably engageable with said first engagement means, comprising a hitch member having an enlarged head portion connected by a narrower shank portion to a means for raising and lowering said head of said hitch member above and substantially level with or below said stage surface, said head portion being larger in size than said terminal end of said slot and said shank portion being narrower than said terminal end of said slot, wherein said hitch member can be moved through apertures in said stage surface between a projecting position raised above said stage surface and a retracted position at or below the stage surface, and when said head portion of said hitch member is raised above said stage surface, said first engagement means can be detachably engaged with said projecting hitch member, thereby allowing a person wearing the shoes to lean forwardly with his or her normal center of gravity beyond a front region of said shoes, and maintain said forward lean.


The Official Cisco Blog on Blogging.

Posted in General Commentary by Jake Ward on March 25, 2008


In light of the recent self-unmasking of the Patent Troll Tracker as Cisco employee Rick Frenkel (and particularly in view of the recent litigation surrounding his anonymous blogging), Cisco has implemented a new corporate blogging policy, which notably states: 

If you comment on any aspect of the company’s business or any policy issue in which the company is involved and in which you have responsibility, you must clearly identify yourself as a Cisco employee in your postings or blog site(s) and include a disclaimer that the views are your own and not those of Cisco. In addition, Cisco employees should not circulate postings they know are written by other Cisco employees without informing the recipient that the author of the posting is a Cisco employee.

See the Cisco post unveiling the new policy here.  Probably not a bad policy to emulate, if your company or its employees operates or posts to blogs or like websites.

They Invented What? (No. 91)

Posted in They Invented What? by Jake Ward on March 21, 2008

U.S. Pat. No. 2,160,756:  Slipper.



Futurist and Author Arthur C. Clarke Dead at 90.

Posted in Science and Technology by Jake Ward on March 18, 2008


Arthur C. Clarke, celebrated science fiction writer with more than 100 books on space, science and the future, died this past week at the age of 90. Clarke had been a spot-on visionary on a number of technologies, including the principles of satellite communication with satellites in geostationary orbits and the development of a “global library” (sound familiar, anyone?). On the entertainment front, Clarke is probably best known for writing the short story later developed into the Stanley Kubrick-directed 2001: A Space Odyssey.

On a personal note, I hold a special place for Arthur C. Clarke as one of the sci-fi authors instrumental in seeding my interest in science and technology . . . arguably leading directly to my present career as a patent attorney. I know a number of scientists and engineers who were similarly drawn to the sciences at an early age by reading works of science fiction by acclaimed authors Clarke, Asimov, Heinlein, and the like. 

If you are interested in any of Clarke’s fictional works, the following are highly recommended:

Change in Procedure for Requests to Withdraw from Representation In a Patent Application.

Posted in Practice Commentary by Jake Ward on March 18, 2008

The USPTO is revising its procedures for handling requests to withdraw from representation by a practitioner of record in a patent application.  See the official notice here.

Under the revised procedure, the Office will no longer require that there be at least 30 days between a) approval of the request to withdraw as a practitioner of record in a patent application, and b) the later of the expiration date of a time period for reply or the expiration date of the period which can be obtained by a petition and fee for extension of time.  Instead, the Patent Office will require the practitioner to certify that he/she/they have:

(1) given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment;

(2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and

(3) notified the client of any replies that may be due, and the time frame within which the client must respond.

The failure to do so may subject the practitioner to discipline. See, for example, In re Hierl where a practitioner was suspended from the practice before the USPTO for three months for performing work without approval of the client, not handing over files to a new firm as requested, and improperly continuing to represent the client following termination thereby.

The Patent Office will also no longer accept address changes to a new practitioner filed with a Request, absent the filing of a power of attorney to the new representative.  Form PTO/SB/83 will be modified to indicate that only changes to the address information provided for the assignee of the entire interest, or the address information provided for the first named inventor, will be accepted. The Patent Office hopes that this will avoid subsequent correspondence being directed to an incorrect address ,or to a practitioner who has not been appointed as practitioner of record by the applicant.

The change in practice becomes effective May 12, 2008.  Appropriate sections of the Manual of Patent Examining Procedure (MPEP) will be revised in due course.

March Madness Trademark?

Posted in Practice Commentary by Jake Ward on March 17, 2008


Per the Miller Small Business IP blog

Is “March Madness” considered a trademark?  The short answer is yes, as decided by the United States District Court for the Northern District of Texas, Dallas Division in 2003.  There is actually a class of registered trademarks owned by the March Madness Athletic Association.  Who is that you ask?  The MMAA is actually a holding company formed by the NCAA and the Illinois High School Association.  Sound like an odd combination?  Apparently, the IHSA has used the term “March Madness” since 1939 for a state high school basketball tournamnent.  For a full history of the term as used by the IHSA, visit the History of March Madness page of the IHSA web site.  The NCAA has been using the mark for nearly 25 years.

Also see Wikipedia.

See also the Trademark Blog for further details.

Amendments to S.1145 Prior to Floor Debate.

Posted in Statute Commentary by Jake Ward on March 14, 2008

Per Zura’s 271 blog today, regarding recently release amendments to the Patent Reform Act of 2007: 

The Senate has released the latest amendments to the Patent Reform Act in advance of Senate Floor Debate:

Interlocutory appeals: limits interlocutory appeals of claim construction orders to those which the district court determines have a reasonable basis for disagreement, and the appeal may advance the ultimate termination of the litigation;

Best Mode amendment: best mode would be considered for obtaining a patent, but not for invalidating;

Reexamination amendment: restores third-party reexamination;

The “CAFC Telework” amendment: ensures that CAFC judges that do not reside within a 50-mile radius of Washington DC use chambers of an existing courthouse in the district where they reside.

Derivation proceedings amendment: clarifying procedures relating to derivation proceedings (which will “replace” interference practice when it is gone);

Interference appeals amendment
: allow CAFC to hear BPAI interference decisions commenced prior to the effective date of the act;

Marking provision amendment: deletes marking provision and maintains current law;

In re Seagate amendment
: codifies the “objective recklessness” standard;

Post-grant review amendment #1
: corrects inconsistency between section 337 (1) and (2) by disqualifying post-grant reviews where issues were raised (or could have been raised) in the litigation;

Post-grant review amendment #2: defines “final decision” for estoppel purposes.

More amendments are expected to follow in the coming weeks.

A budget report is also now available for the patent reform bill from the Congressional Budget Office, which serves Congress.

CBO estimates that enacting the bill would increase direct spending by $26.9 billion and revenues by $25.5 billion over the 2009-2018 period. Much of the change would result from making permanent USPTO’s authority to collect and spend certain fees, thus shifting the collections and spending out of PTO’s appropriation account. 

See GovTrack for more information on the budget report.

See the previous AT! coverage on patent reform here.