Anticipate This!™ | Patent and Trademark Law Blog

Bilski Decision Issued by SCOTUS Today – June 28, 2010.

Posted in Opinion Commentary by Jake Ward on June 28, 2010

JMW Note: Currently delayed at Reagan National, on the way back to Ohio after a long day of examiner interviews. Analysis and thoughts on Bilski to follow this week!

They Invented What? (No. 173)

Posted in They Invented What? by Jake Ward on June 24, 2010

U.S. Pat. No. 4,320,756:  Fresh-air breathing device and method.

I claim:

1. A method for breathing fresh air in a room filled with toxic smoke comprising the steps of 
          inserting a breathing tube through a water trap of a toilet to expose an open end thereof to fresh air from a vent pipe connected to a sewer line of said toilet, and 
          breathing said fresh air through said breathing tube. 


Bilski Decision Tomorrow (Thursday, June 17th)? Maybe?

Posted in Practice Commentary by Jake Ward on June 16, 2010

JW Update 06/24/10 @ 10:31AM:  No Bilski for you!  At least, not today.  Looking forward to Monday, 6/28, where the last four decisions of the term (including Bilski) are likely to be published.  On another note, be sure to check out on the morning of the opinion.  My favorite comment from their live blog this morning:  “10:21 Tom: The Court has voted unanimously to drive patent lawyers crazy.”

JW Update 06/21/10 @ 10:28AM:  Nothing again today!  Maybe this Thursday (06/24) or next Monday (06/28)!  A tip for other Bilski-watchers out there . . . check out on the mornings that SCOTUS decisions are released.  They have an awesome “Live Blog window” that provides live updates as the decisions are released, without the need for refereshing the browser.  Pretty cool.

JW Update 06/17/10 @ 10:20AM:  Or maybe NOT.  No Bilski decision today, folks.  Maybe next week! 

In mid-May until the end of June, the Supreme Court of the United States (SCOTUS) releases orders and opinions.  SCOTUS has yet to issue a number of decisions this term, however, and it is rapidly moving toward summer recess.  Most notable from a patent law perspective is that the decision in Bilski v. Kappos, which was argued in November 2009, has yet to be decided. 

As a reminder for those who have been out-of-the-loop for the past several months, the questions presented in the petition for U.S. Supreme Court review in Bilski, and which have the patent law community on pins and needles, were as follows:

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Notably, and as reported by the Scotus Blog here, the Supreme Court has announced that it may have some opinions ready to be released tomorrow, June 17th, at 10:00AM.  Maybe we’ll finally have the Bilski decision tomorrow? Any bets?

They Invented What? (No. 172)

Posted in They Invented What? by Jake Ward on June 16, 2010

U.S. Pat. No. 5,966,743:  Substance dispensing headgear.

What is claimed is:

1. A transportable dispensing receptacle for a substance comprising 

          a container enclosing a chamber to carry the substance, the container including a bottom wall defining a generally flat surface to maintain the container in an upright, freestanding condition when placed on a horizontal surface, 

          a spigot spaced above the bottom wall and secured to the container in communication with the chamber, the spigot carrying a valve including an external handle to manually move the valve between an opened position, opening communication with the chamber to dispense the substance by gravity, suction, pressure or levity flow when the container is in the freestanding, upright condition, and a closed position, closing communication with the chamber to retain the substance in the chamber, and 

          a hat-like recess formed within the bottom wall sized for wearing on an individual’s head and for maintaining the container in the upright, freestanding condition during hands-free ambulation of the individual. 


Why You Shouldn’t Wait Until the Deadline to Respond to an Office Action.

Posted in Practice Commentary by Jake Ward on June 14, 2010

Professor Crouch at Patently-O has provided some insightful analysis on patent grant rates as a function of the timing of the responses to the last office actions.  Below is a bar chart (reproduced with the permission of the author) clearly illustrating that earlier responses are more likely to result in an allowance.

In relation to the chart, Professor Crouch comments as follows:

Compact Prosecution: One problem with long delays is that information regarding the invention, the business needs, and the prior art, and the attorney-examiner relationship all become stale in the course of three months.  Although this staleness is difficult to quantify, I did look at patent grant rate as a function of the timing of responses. In my study, I found a clear and significant negative correlation between grant rate and delay in responding to the non-final office action.  I.e., longer delays are associated with a lower grant rate. (Here, grant rate is calculated as the number of patents issued divided by sum of the number of patents issued and applications abandoned).  The chart below groups applications according to the earliest deadline met in their first OA response and reports the grant rate for each group.

Some excellent analysis, per usual, from Patently-O.

JW Note:  This analysis generally conforms to our experience as patent practitioners.  However, it is always nice to see supporting data for one’s experience.   One wonders whether this trend is mere coincidence.  Is the trend just the result of more “complex” cases taking longer to respond to, and therefore being less likely to grant due to their complexity?  On the other hand, are there internal policies at the USPTO that tend to favor Applicants that respond more quickly to Office Actions?  Additionally, one wonders whether responding before the three-month deadline impacts grant rates in a similar manner?  Comments are open and welcomed.

They Invented What? (No. 171)

Posted in They Invented What? by Jake Ward on June 10, 2010

U.S. Pat. No. 6,699,094:  Toy figurine flashlight.


Having thus described the invention, what is claimed as new and desired to be secured by Letters Patent is as follows:

1. A toy figurine flashlight for use as a children’s nighttime security aid, comprising: a figurine body defining a representation of a cartoon figure having a torso member with a helmet defining a front opening, said figurine body having first and second arms coupled to said torso member and legs depending from said torso member; a power source positioned in said torso member; a first light source electrically connected to said power source and positioned in said helmet so as to project light through said front opening when energized; and a first switch for selectively permitting current from said power source to energize said first light source. 


USPTO Proposal to Establish Three Patent Processing Tracks.

Posted in Practice Commentary by Jake Ward on June 7, 2010

Per this press release at the USPTO last week.

USPTO Proposes to Establish Three Patent Processing Tracks

Initiative would provide applicants greater control over the speed of patent examination, reduce pendency and enhance work sharing between intellectual property offices

Public meeting to be held on July 20; comments welcome