Technology + Law®

I have mentioned in the past that it is possible, in certain cases, to have examination of a patent application accelerated by filing an appropriate petition. The most common reason for accelerating an application is that at least one of the inventors is over age 65 or in poor health. However, there are ways to have an application made special based on subject matter which the Patent Office has decided is especially important to the nation. In this post, I will discuss the Patent Office’s Green Technology Pilot Program. Under the Green Technology Pilot Program,an application can be advanced out of turn (accorded special status) for examination, if it is directed to green technologies including greenhouse gas reduction (applications pertaining to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction).

To have the Patent Office consider an application for the Green Technology Pilot Program, it is necessary to file a petition including a statement as to the basis for making the application special under the program.  As an example, an application directed to a more fuel efficient motor might be allowed under the category of “energy conservation”.  At present, no petition fee is required. According to the Patent Office, in several cases, patent applications under the program were allowed within one year of the filing date. The program is set to expire at the end of 2011 (unless renewed) or when the first 3,000 petitions under the program have been granted.

As of February 21, 2,553 petitions have been filed under the program.  1,332 petitions have been granted, 825 were dismissed and 172 were denied. There are currently 224 petitions currently waiting decision. 195 patents have issued under the program.  This means that time is running out.. and it is advisable to review any pending patent application that might be eligible under the program, and file that petition as soon as possible.

The above conversation took place in 1994, before most people had heard of the Internet…

From time to time, the Patent Office is criticized for allowing patents on inventions that are supposedly obvious. But it is important to understand that what seems obvious today, may not have yesterday.

Case in point is Amazon’s One Click Patent.  That patent was filed in 1997.  What was the state of e commerce in 1997?

That is one of the key questions to be answered.. and is, in fact, required of an examiner to make in considering whether to apply an obviousness rejection.

Many things look obvious in hindsight… but were highly inventive when first conceived of.

In 1911, IBM was granted its first patent and it took 50 years for it receive its 5,000th.  But things have certainly picked up.  According to an analysis by ifi Claims Services, IBM was granted more than 5,000 in 2010, ranking the company as No. 1 in patents.  This was the first time that any company has received more than 5,000 patents in a year.  The following is a list of the top 30 companies on the list:

Rank       Company                                                                                         Number of patents

[Read more…]

The Congress is slowly filling the three vacancies on the Federal Circuit.  On Wednesday, the Senate confirmed Kathleen McDonald O’Malley to fill one of the vacancies.  Two more to go.

Judge O’Malley is presently a district court judge, and will be the only judge on the Federal Circuit with district court experience.

However, it is rather disappointing that she does not have a technical background.  Her undergraduate major was in history and economics.

On the plus side, Judge O’Malley has a reputation for fairness and has taught a course in patent litigation. Also, she is a faculty member at the Intellectual Property Seminar for Federal Judges co-sponsored by the Federal Judicial Center and the Berkeley Center for Law and Technology.

Interval Licensing is back in the game with yesterday’s filing of an amended complaint (see below).

As noted in previous posts, Interval Licensing–formed in 1992 by Microsoft co-founder Paul Allen and computer scientist David Liddle–initially filed a patent infringement lawsuit naming 11 defendant companies (AOL, Apple, eBay, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!,YouTube, and Facebook).  However, the law suit was later dismissed because it was deemed to not be specific enough as to the allegations of infringement.  The amended complaint appears to remedy this.

Of particular interest in this 35-page document are the specifics as to how each of the defendant companies allegedly infringes on patents 6,263,507 and 6,757,682.

In essence, Interval  Licencsing argues that the claims broadly cover the notiion of discovering related content and displaying it.  So, for example, when an eBay user selects an item of interest, a related item that may be of interest to the user is displayed. Amazon does this famously as well when the user puts an item in their online shopping cart (“Customers who bought this item also bought….”).

Interestingly, the allegation against Facebook is that it displays a related photo when the user selects a photo. This is somewhat different, and shows the length that Interval intends to go toward enforcement.  However, it appears to be a bit of a stretch because there is little support in the written description of the allegedly infringed patents for displaying related photos.  The complaint also notes that when a Facebook profile is displayed, a similar profile is  displayed.  But this also seems to be a stretch.

Finally, it is noteworthy that the amended complaint  formally requests a jury trial.

Would a jury trial be beneficial to the plaintiff?

Maybe not if the plaintiff was seen as a troll… but perhaps it would if  the plaintiff was viewed as an underdog… a billionaire underdog at that.

2010-12-28 Interval First Amended Complaint for Patent Infringement

As reported in today’s Detroit Free Press, the Patent Office has chosen Detroit for its first satellite office.

Unlike many federal government agencies, the Patent Office has its entire operation in a central location — Alexandria, Virginia.

The impact from opening satellite offices is to make it easier for applicants who reside nearby to have an in-person interview more easily (without having to travel to Alexandria).  It also can be easier to deal with an examiner if both the examiner and the applicant reside in the same time zone.

For the Patent Office, having satellite offices will make it easier to recruit examiners from all across the country.  At present, the Patent Office has had considerable difficulty recruiting from the West Coast.  Most examiners are originally from the East Coast, most heavily from the Northeast Corridor.  According to reports, the Patent Office will be opening two more satellite offices in the next few years… Hopefully, they will choose Phoenix … which is quite attractive for a number of reasons, including low cost of living and nice weather (except when it is 110 degrees, of course).

About 100 new examiners will be located to the new Detroit office, and the technology examined will focus on automotive and other industries concentrated in the area.

We have devoted numerous blog posts to the law suit between Paul Allen’s Interval Licensing LLC and numerous technology companies, including AOL, eBay, Apple, Google, Netfix, Yahoo and YouTube.  Unlike many other commentators (such as IP Watchdog), I do not consider Mr. Allen to be a “troll” because the intent of Interval Licensing was not to go around suing, but rather to develop useful inventions in the early years of the Web.  It appears that Mr. Allen’s multi-million dollar investment in the company was not recouped by licensing opportunities, so he instead went the legal route …. that is a reasonable option, in my opinion….

Be that as it may, trollish or not, as has been widely reported, U.S. District Judge Marsha J. Pechman issued an order last Friday dismissing the complaint for lack of specificity.  Hardly surprising.

She will allow the plaintiff to amend the complaint, and it should be interesting to see the specifics.

When the amended complain is filed we are sure to follow up.   We will keep you posted.

Many inventors have asked about obtaining patent protection in Europe, and I have had to explain to them that, presently, there is no such thing as a true ‘European Patent’ but that it is possible to file a single application in the European Patent Office (EPO) and obtain protection in selected member states.  The downside is that once the patent is issued by the EPO, the patent has to be translated into each language used in the member countries and that the patent would have to be defended in in each of the selected countries.  In essence, although the EPO centralizes the examination process, once an EPO patent issues, it is treated separately in each member country.

Now for some breaking news.  As reported in the EU Observer, A bloc of 11 European countries — including France, Germany, and the UK — have agreed to go ahead with a plan for issuing a single patent covering these eleven jurisdictions, a ‘mini EU patent’, if you will.

This is good news and should result in considerably reduced cost for applicants.

Things are certainly improving for General Motors. With the most successful IPO in US history behind it and the company about to unveil the “all-electric” GM Volt, the company has also been quietly amassing a patent portfolio for electric car and battery technology.

Among the most interesting of the applications that have been published (first noted by GM-Volt.com) is US Patent Application No. 2010/0124691 (Figure 3 reproduced above) entitled Method and Apparatus for Rejuvination of Degraded Pouch-Type Lithium Ion Battery Cells.

Essentially, what this patent application calls for is the ability to refurbish worn-out lithium battery packs.  In other words, the car owner would be able to take the car in and have the electrolyte material in the batteries replaced.  If done right, the process could be much cheaper than replcaing the battery… all the more reason, perhaps, for investors to be excited about GM again.

In the next few days, I will be getting a list of all of GM’s published patent applications and patents relating to electric car / battery technology… which I will post here.