Technology + Law®

There is an interesting opinion piece in today’s Silicon Valley Mercury News arguing that the Patent Office ought to create a regional office in Silicon Valley. At present all patent examiners are located in the Washington DC area (the headquarters of the Patent Offce is in Alexandria, Virginia). A previous attempt at starting a Detroit office was put on hold.

The article notes that

With Silicon Valley accounting for 12.5 percent of the nation’s patents last year, this region’s claim for one of the two other offices is unsurpassed. Plus, this area has ample experts who would bring critical knowledge to the patent office. And being closer to a place constantly minting new companies and technologies would keep the patent office on top of the latest innovations.

The main problem with a Silicon Valley is the higher cost of living.. which would mean that it would be difficult to recruit and retain qualified examiners without a pay differential. And what type of pay would be required? The average home in Palo Alto is $1.63 million and in Mountain View is $957.500, for example.

Furthermore, the author  seems to think that the central issue with the patent system is that examiners have insufficient knowledge of current technology. However, as almost all patent pracitioners can attest, the main problems stem from fee diversion (in which Congress takes fees away from the Patent Office) and the irrational “count” system which rewards quantity over quality… neither of which is addressed in the article.

As we mentioned in an earlier post, the US Patent and Trademark Office (USPTO) launched its Patent Dashboard showing vital statisitcs for the Patent Office, such as patent pendency (currently 25.9 months) and number of cases waiting a first action (currently 178,392).  Now the USPTO has launched a Trademark Dashboard, similar in concept, but covering trademarks.

Compared with patents, trademarks are processed much faster.  Trademark pendancy has reached historically low levels as measured by the time from filing to first action (within 2.5 and 3.5 months).  Total disposals are about 12.5 months.

Of course,  patent examination is far more difficult, and requires more resources, so it would  be inappropriate to compare the two.

According to an article in the Washington Post, rock legend Paul Simon was giving a concert at Constitution Hall (Washington DC) and was having difficulty remembering the words to the song “Gomboots”. When a fan in the front row shouted out the lines to the song, Simon invited him on stage.

As the below video shows, the man gave an inspired performance. It turns out that the fan was patent attorney Paul Fournier, and has long been a fan of Simon’s music. That the person was an attorney is hardly surprising, though, given that the Washington DC area has the largest concentration of lawyers in the country.

Voltage Picture, the producers of the film Hurt Locker, have retained the law firm of Dunlap, Grubb and Weaver to target 24,583 BitTorrent users who allegedly downloaded pirated copes of the film. BitTorrent offers software that allowws for peer-to-peer transfer of files, particularly videos and audio. However, users of this software who violate copyright laws may be liable. The way it usually works, in practice, is that the copyright owner asks / subpoenas the user’s ISP for the user’s IP address, then sends a “settlement offer” to the user. If the person does not “settle”, then the company may file a lawsuit in federal court. Many of these cases wind up being thrown out  for various reasons including lack of personal jurisdiction over the defendant. A list of the IP addresses cited in the law suit is shown below.

ipaddresses

The biggest complaint that patent attorneys hear from clients regarding the patent process is the long time it takes to get a patent.  Well… the flip side to this is that occassionally it is the applicant which causes most of the delay.  And under the doctrine of prosecution laches a defendant can assert that a patent is unenforceable if the delay is deemed unreasonable.  However, there’s more to it than that.

In the case of Cancer Research Technology Ltd. v. Barr Laboratories, Inc., decided last week, the patent applicant filed 11 continuation applications and abandoned 10 applications, taking over a decade to finally obtain the patent on a new drug.  Later, when Cancer Research Technology sued Barr Labs for patent infringement, the defense of laches was raised, and the case was dismissed on the ground that the applicant unreasonably delayed the prosecution of the patent.

On appeal, however, the Federal Circuit made clear that laches requires also a finding of prejudice.  This would usually mean that the accused infringer invested in the technology or used the claimed technology while the plaintiff was still prosecuting the patent application.  Since Barr did not show this to be the case, the Federal Circuit reversed the decision of the lower court.  (The Court also reversed on the lower court’s finding of inequitable conduct).

An interesting case… and one to note when prosecuting a patent or later asserting patent rights.

Several developments at the Patent Office are worth noting:

1)  Effective October 1st, the Patent Office has revised its operating structure.  Two new “offices” reporting to Director Kappos have been created:  Office of Chief Communications (which will be involved with public affairs) and Office of Equal Employment Opportunity and Diversity.  Most importantly, the reorganization now places the Board of Appeals and Interferences (BPAI) directly under Kappos (rather than the Office of General Council).  It appears also that changes will be made to ensure that the backlog at the BPAI is reduced.  The revised operating structure at the Patent Office is shown here.

2) As mentioned in an earlier post, the stated goal of the Patent Office was to reduce backlog of new patent applications to below 700,000 by the end of the 2010 Fiscal Year (which ended on September 30th).   According to a source at the Patent Office, it appears that this goal was not quite reached.  Meanwhile, the “Patent Dashboard” still has stats for August…..

3) It has been reported that the Chief Judge of the BPAI has left that position to assume another in top management at the Patent Office.  Accordingly, the position of Chief Judge is vacant…. and needs to be filled.