Anticipate This!™ | Patent and Trademark Law Blog

Electronic Copyright Office (eCO) Going Live July 1st.

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

There is a new online registration system named electronic Copyright Office (eCO), which the Copyright Office plans to release through a portal on its Web site on July 1. Filing an eService claim via eCO offers several advantages:

• lower filing fee of $35 for a basic claim;
• fastest processing time;
• earlier effective date of registration;
• online status tracking;
• secure payment by credit or debit card, electronic check or Copyright Office deposit account;
• and ability to upload certain categories of deposits directly into eCO as electronic files.

Beginning July 1 eCO may be used to register basic claims to copyright for literary works, visual arts works, performing arts works including motion pictures, sound recordings and single serials. Basic claims include (1) a single work, (2) multiple unpublished works if they are by the same author(s) and owned by the same claimant, and (3) multiple published works if they are all first published together in the same publication on the same date and owned by the same claimant.

See this press release for further information.

Independent Inventors Conference Set for August 8-9.

Posted in General Commentary by Jake Ward on June 28, 2008

Per this USPTO press release, registration is now open for the USPTO’s 13th annual Independent Inventors Conference, co-sponsored by the USPTO and the National Inventors Hall of Fame Foundation.

The Conference will be held on the USPTO campus in Alexandria, Virginia August 8-9. A pre-conference workshop, for anyone interested in learning about the basics of patents and the importance of intellectual property protection, will be held on August 7 from 5 to 7 p.m. The workshop is for beginners and is a good foundation for the conference.  The workshop is included in the $100 registration fee.

Top officials of the USPTO, including  Deputy Under Secretary of Commerce Margaret Peterlin and Commissioner for Patents John Doll will be presenters at the conference.  Also appearing this year will be Louis Foreman, creator and executive producer of the Emmy award winning PBS series, Everyday Edisons.

The registration fee includes all sessions and presentations, morning and afternoon refreshments, lunch both days and a networking reception on Friday night.

Click here for 13th Annual Independent Inventors Registration.  For additional information about the Conference call 571-272-8850. 

$65,000,000 for a PTE Application? That’s Living the High Life.

Posted in General Commentary, Statute Commentary by Mike Dockins on June 25, 2008

On June 23, 2008, Representative William Delahunt (D-MA) introduced, and the U.S. House of Representatives passed by voice vote, H.R. 6344. The 12-page bill includes several provisions, including legislation that gives the USPTO discretion accept late-filed Patent Term Extension (“PTE”) applications.  A similar provision was included with the Patent Reform Act of 2007 (S.1145) by Senator Edward Kennedy (D-MA) in August 2007, but efforts to pass S.1145 have stalled.

The motivation behind H.R. 6344 is the PTO’s denial of an application submitted by Massachusetts-based “The Medicines Company” for a PTE for U.S. Patent No. 5,196,404 (“the ‘404 patent”) for ANGIOMAX (bivalirudin). ANGIOMAX is an anticoagulant drug product FDA (first approved on December 15, 2000) for use with aspirin in patients with unstable angina undergoing percutaneous transluminal coronary angioplasty.  The Medicines Company submitted a PTE application to the PTO 62 days after FDA approved the company’s ANGIOMAX New Drug Application (“NDA”).

35 U.S.C. § 156(d)(1), the patent term extension law, requires the submission of a PTE application “within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use”. That is, within 60 days of the date of NDA approval.

Section 4 of H.R. 6344 would amend 35 U.S.C. § 156 to add new subsection (i), which states that the PTO Director “may accept an application under this section that is filed not later than three business days after the expiration of the 60-day period provided in subsection (d)(1) if the applicant files a petition, not later than five business days after the expiration of that 60-day period, showing, to the satisfaction of the Director, that the delay in filing the application was unintentional.”  (The 5-day petition period for a PTE application pending before the PTO would begin on the date of enactment of the Responsive Government Act.) 

However, there is a cost for unintentional delay.  “In order to effect a [PTE] under section 156(i) of title 35, United States Code, the patent holder shall pay a fee to the United States Treasury… .”  “What is the fee?”, you ask: $65,000,000.  For other patent owners, the fee is determined based on a complex calculation.  Specifically, the bill states that a patent holder shall pay a fee equal to:
                 (i) $65,000,000 with respect to any original application for a [PTE] . . . for a drug intended for use in humans that is in the anticoagulant class of drugs (e.g., ANGIOMAX), or
                 (ii) the amount estimated under subparagraph (B) with respect to any other original application for a [PTE].

Under proposed subparagraph (B), the PTO and the Under Secretary of Commerce for Intellectual Property must consider ahost of factors to calculate a late-filing fee, including “any net increase in direct spending arising from the extension of the patent term,” “any net decrease in revenues arising from such [PTE],” and “any indirect reduction in revenues associated with payment of the fee under this subsection.” 

If enacted, proposed § 156(i) would apply to any application:
                 (A) that is made on or after the date of the enactment of this Act; or
                 (B) that, on such date of enactment, is pending before the Director or as to which a decision of the Director is eligible for judicial review.

In discussing the PTE provisions in H.R. 6344, co-sponsor Rep. Donna Christensen (D-VI) stated that the provisions “will make a minor but important amendment to the landmark Hatch-Waxman Act patent act of 1984.  The act of 1984 has done much to make medicine available and more affordable for countless people in this country. Inadvertently though, in patent term restoration, there is an inflexible deadline provision which has the potential to limit the good that the act can do.” 

A copy of the floor discussion of H.R. 6344 is available via the FDALawBlog here.

After passage in the House, H.R. 6344 was referred to the Senate Judiciary Committee for consideration. 

We are pleased that the House is looking out for us and our well-being for the bargain basement price of $65,000,000.

Hat tip to the FDALawBlog for breaking this story.

They Invented What? (No. 102)

Posted in They Invented What? by Jake Ward on June 25, 2008

U.S. Pat. No. 6,557,994: Frameless glasses attaching to body piercing studs.


What is claimed is:

1. In combination with a body piercing eyebrow studs, a left stud fastened outbound on a left eyebrow, and a right stud fastened outbound on a right eyebrow, an improvement comprising:
          a left eyeglass member having a C shaped clamp fastened to an outbound section of the eyeglass member;
          a right eyeglass member having a C shaped clamp fastened to an outbound section of the eyeglass member;
          a connecting bridge joining the left to the right eyeglass member; and;
          wherein each C shaped clamp snaps onto the respective left or right stud.


Quanta v. LG Electronics.

Posted in Opinion Commentary by Jake Ward on June 23, 2008

The authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and prevents the patent holder from invoking patent law to control postsale use of the article.

(553 U. S. ____ (2008))

Per JUSTICE THOMAS, who delivered the opinion of the Supreme Court:

For over 150 years this Court has applied the doctrine of patent exhaustion to limit the patent rights that survive the initial authorized sale of a patented item. In this case, we decide whether patent exhaustion applies to the sale of components of a patented system that must be combinedwith additional components in order to practice the patented methods. The Court of Appeals for the Federal Circuit held that the doctrine does not apply to method patents at all and, in the alternative, that it does not apply here because the sales were not authorized by thelicense agreement.  We disagree on both scores. Because the exhaustion doctrine applies to method patents, and because the license authorizes the sale of components that substantially embody the patents in suit, the sale exhausted the patents.  (Emphasis ours)

The facts of the case were nicely boiled down to the following paragraph.

Here, LGE licensed Intel to practice any of its patents and to sell products practicing those patents. Intel’s microprocessors and chipsets substantially embodied the LGE Patents because they had no reasonable noninfringing use and included all the inventive aspects of the patented methods. Nothing in the License Agreement limited Intel’s ability to sell itsproducts practicing the LGE Patents. Intel’s authorized sale to Quanta thus took its products outside the scope of the patent monopoly, and as a result, LGE can no longer assert its patent rights against Quanta.  Accordingly, the judgment of the Court of Appeals is REVERSED.  (Emphasis ours).

See background posts from AT! here, here, and here.

New Rules Regarding Ex Parte Appeals Before the BPAI.

Posted in General Commentary by Jake Ward on June 12, 2008

Per a USPTO press release earlier this week:

The Department of Commerce’s United States Patent and Trademark Office (USPTO) will publish tomorrow in the Federal Register new rules that will improve the process of ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI). The final rule provides new requirements and clarifications that will help to streamline the appeal process and lead to more timely Board decisions.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas said, “These new rules will benefit both the patent community and the USPTO by fostering an ex parte appeals process with improved efficiency and clarity. By exchanging information and crystallizing the issues of the dispute earlier in the process, the result will be more streamlined appeal process and more efficient decision-making.”

The final rule requires examiners to put forward their reasons for the rejection earlier in the appeal process. Examiners will no longer provide a response to the reply brief, and new grounds of rejection are no longer permitted in examiners’ answers. In addition, supplemental examiners’ answers are no longer permitted in response to a reply brief. These changes will result in increased efficiency in the appeals process.

Under the new rules, requirements for a complete brief are clearly set forth, making it easier for applicants to ensure compliance. Briefing requirements that were not necessary for the appeal—such as the “summary of the claimed subject matter”—are no longer required. The facts and arguments required in the brief are focused on distilling the issues of the dispute and establishing where the examiner erred in the rejection. Finally, page limit requirements ensure concise and clear arguments. These new requirements will result in some appeals being resolved before they reach the Board and will help foster timely decisions for the others.

In response to comments submitted by the public, the final rule reflects changes made to the notice of proposed rulemaking that was published in the Federal Register on July 30, 2007. For example, initial page limits set for the appeal brief and reply brief were increased by five pages to 30 and 20 pages, respectively. In addition, the evidence appendix no longer requires the submission of duplicative records beyond that required by the current rules.

The final rule will go into effect six months from the date the rule is published in the Federal Register, and will apply to all appeals in which an appeal brief is filed on or after the effective date.

The full text of the new rules will be available beginning tomorrow, June 10, via the USPTO Web site

The new rules have now been published and may be viewed at the USPTO website here.

Professor Crouch has nicely summarized the rules changes, as follows:

– The most substantive change may be the requirement that non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI. “Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered.”

– Instead of filing a summary of the invention, the applicant must file “a claims analysis.” This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed.”

– 30 page limit for the Grounds of Rejection, Statement of Facts, and Arguments. (14 point font).

– A complete appeal brief will include each of the following (in the correct order):
1) Statement of the real party in interest,
2) statement of related cases,
3) jurisdictional statement,
4) table of contents,
5) table of authorities,
6) [reserved],
7) status of amendments,
8) grounds of rejection to be reviewed,
9) statement of facts,
10) argument, and
11) an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section.

– new grounds of rejection are no longer permitted in an examiner’s answer,
the examiner’s response to a reply brief is eliminated,

– petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,

– petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and

– a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

They Invented What? (No. 101)

Posted in General Commentary by Jake Ward on June 11, 2008

U.S. Pat. No. 7,090,268:   Dog waste catcher and holder.


What is claimed is:

1. A dog waste catcher and holder comprising:
          a loop shaped device;
          a carrying rod;
          means of securing the loop shaped device to an end of the carrying rod in parallel fashion; and
          a plastic bag placed inside the loop shaped device, wherein an upper portion of the bag is folded over the loop shaped device and bag ends are tied to the end of the rod.


ITC Rescinds Order Against Sinorgchem.

Posted in General Commentary by Jake Ward on June 5, 2008

Brought to our attention this morning by this article at RubberNews (subscription required):

WASHINGTON (June 4, 2008) — The U.S. International Trade Commission has rescinded the limited exclusion order barring the U.S. sale of rubber antidegradants made by Chinese firm Sinorgchem Co. Shandong and sold by Sovereign Chemical Co.

The ITC order follows a denial by the Federal Circuit in relation to a rehearing en banc of a decision finding that Sinorgchem did not infringe Flexsys’ patent.  Specifically, the ITC order states:

Sinorgchem appealed the Commission’s final determination to the U.S. Court of Appeals
for the Federal Circuit (“Federal Circuit”). On December 21, 2007, the Federal Circuit issued its judgment vacating and remanding the Commission’s final determination for further proceedings consistent with the Court’s opinion. Sinorgchem Co., Shandong v. International Trade Commission, 511 F.3d 1132 (Fed. Cir. 2007). Intervenor Flexsys America L.P. (“Flexsys”) petitioned the Federal Circuit for rehearing and rehearing en banc. The Commission supported rehearing. On April 7, 2008, the Federal Circuit denied the petition for rehearing and rehearing en banc. The mandate of the Court issued on April 14, 2008.

Upon consideration of this matter, the Commission has determined to rescind the limited
exclusion order relating to the importation of rubber antidegradants made by Sinorgchem and Sovereign. The Commission has also determined to remand the investigation to the presiding ALJ for proceedings consistent with Sinorgchem Co., Shandong v. International Trade Commission, 511 F.3d 1132 (Fed. Cir. 2007), including issuance of a final initial determination on violation and a recommended determination on remedy and bonding.

A copy of the ITC order may be found here.

See the previous AT! posts on the Flexsys v. Sinorgchem et al. litigation here