To hear the politicians explain it, the recent changes to the patent laws are going to spur job growth.
One may argue whether the changes will spur private sector job growth, but one thing is sure: the Patent Office is hiring!
According to Director Kappos, between 1,500 and 2,000 new examiners will be hired to reduce application backlog.
And in my opinion, this will do more than anything in the entire law to improve things.
1) The House of Representatives passed H.R. 1249 (aka the Leahy-Smith America Invents Act) by a voice vote of 304 to 117. The House bill will now have to be reconciled with the Senate version. The bill would do away with the current first-to-invent regime and replace it with a first-to-file system.
2) In the case of Microsoft v. i4i (SCOTUS 10-290), the U.S. Supreme Court rejected Mircrosoft’s argument that the clear and convincing evidentiary standard in patent cases should be replaced by a preponderance of the evidence rule. Scalia, Kennedy, Ginsburg, Breyer, Alioto, and Kagan joined the opinion, and Thomas wrote a concurring opinion. Roberts recused himself since he owns stock in Microsoft. This is a victory for patent owners.
3) Apple Computer’s trademark “App Store” is “probably” not infringed by Amazon’s “Amazon Appstore for Android”, according to U.S. District Judge Phyllis Hamilton, who stated after a hearing that she is “probably” going to deny the motion because Apple hasn’t demonstrated confusion among consumers. (Source: Bloomberg News).
4) The trademarks for the Palin’s names (Sarah Palin and Bristol Palin have now been issued. Strange that this was not reported in the media, though the iniitial rejection by the Trademark Office was widely noted.
A few items of interest to the IP community.
1. As everyone knows by now… the federal government (and the US Patent and Trademark Office) did not shut down. Everyone is breathing a sigh of relief. And the cherry blossom festival went on as planned.
2. As reported in today’s Patently-O blog, appropriation for the Patent Office until the end of the fiscal year (September 30,2011) will be cut by $100 million. According to an internal memo from Director Kappos, overtime will not be allowed for examiners and a hiring freeze will be put in place. Moreover, the Detroit Patent Office satellite office is indefinitely postponed.
3. There is some interesting commentary (from the examiner point of view) over on the Just-n-Examiner blog about the Clearing the Oldest Patent Applications (COPA) program which has as its goal that all applications filed before June 7, 2009 be given a first action before end of the fiscal year. The main concern voiced is in regard to some of the applications being examined by examiners in unrelated art groups to reduce the backlog.
There’s a new website that that will likely become one of the primary resources for inventors. It is called, simply, Inventor Notes (the URL is www.inventornotes.com). I urge everyone to check it out.
Created by veteran inventor and licensing expert, Stephen Key, the web site bills itself as “the one-stop website for all things inventing”. It is particularly strong on providing information and advice on every aspect of the invention process. For instance, under the “expert” tab, there is a long list of experts in the field of patent law, product design, marketing, licensing, and even public relations. Another particularly strong feature of Inventor Notes is the “Inventions Wanted” tab which lists more than a hundred companies that may be looking for new inventions, particularly from individual inventors.
Note: I spoke with Mr. Key on the phone a few days ago, and learned that he will be speaking in the Phoenix area in April at the Inventors Association of Arizona. This will certainly be an interesting and informative presentation.
We end the year with a few random nuggets…..
1) As reported by the Seattle Times, more than 100 companies are opposing Microsoft’s position in a case pending before the U.S. Supreme Court that challenges the “clear and convincing” burden of evidnece standard used in patent infringement cases. Briefly, in a patent infringement case, a party challenging the validity of the patent must present clear and convincing evidence that it is invalid. This standard of proof is above that required in most litigation (which uses the preponderance of evidence standard). If Microsoft prevails, patents will be less valuable…so, this is an important case to watch. The companies opposing Microsoft’s position include Amgen, Eli Lilly, Genentech, DuPont and Monsanto. Those agreeing with Microsoft include Google, Apple, and Wal-Mart.
2) Many clients have wondered if there is anything that can be done when a competitor rips off an idea after a patent application has been filed but before issuance. While it is certainly correct that the competitor cannot be sued for patent infringement (because the patent has not yet issued), the Patent Office does allow for a filing a special petition to accellerate examination of the case. So, if you have evidence that a competitor may be copying your invention, please bring it to your patent attorney’s attention, and ask that he or file a petition to accelerate examination of the case . (It does require a small fee ($130), a search, and attorney time to draft and file the petition).
3) On the subject of accellerated examination, remember that if any one of the inventors is age 65 or over or seriously ill, the case can be accellerated with the filing of proper petition.
For your amusement, here are a few Halloween-related patents:
A few items of interest that have passed by my radar screen in the last week or so.
1. IHOP v. IHOP.
International House of Pancakes announced that it is suing a different IHOP, the International House of Prayer, claiming the church is taking advantage of the company’s famous trademark. According to the law suit, IHOP (the restaurant) is concerned that IHOP (the church) would dilute its trademark. The amended complaint is available here.
2. Looks like the US Patent and Trademark Office is starting to hire new examiners again. This is good news for inventors frustrated with the long wait times because of the lack of available examiners.
3. Want a free textbook on the subject of intellectual property law? Well, as strange as it may seem, Prof.Tom Field, a leading expert on the subject, is giving away a PDF version of his 470-page textbook, Fundamentals of Intellectual Property, fo FREE!