Posts Tagged ‘patent prosecution’

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 0 Comments

By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 4 Comments

By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

Lodsys v. iOS Developers: Apple Tries to Intervene (Again)

Wednesday, 10 August, 2011 08:54 Written by Aaron Thalwitzer 0 Comments

Aaron Thalwitzer

More Lodsys v. Little Guy news!

As you may remember, back in May 2011, Lodsys, a patent troll, sued lots of iOS developers for patent infringement. Lodsys wants licensing fees from the developers. The iOS developers lobbied despereately for help, and, as predicted here, Apple tried to come to the rescue. However, Apple lost its first bid to intervene. More recently, on August 8, 2011, August filed a brief strenuously asserting  – BTW, I love the strenuous objection, it’s granted way more than the blasé objection – that it should be allowed to intervene. Apple didn’t want to risk its prize pig, so it really wants these developers to keep pumping out apps without threat of legal action.

Apple’s brief argues that it should be allowed to intervene since the developers are its business partners, Apple has a material interest in protecting the developers interest over it’s previously-licensed technology. The crux of the argument is that:

[N]one of the [current] defendants have the technical information, expertise, and knowledge regarding how Apple’s technology works or the negotiation and intent of the License itself to fully articulate and develop Apple’s exhaustion defense.

Pursuant to the exhaustion doctrine, the first unrestricted sale of a patented item exhausts the patentee’s control over that item. Apple wants to use exhaustion as an affirmative defense; the developers are asserting it as a plea for a Declaratory Judgment. Apple has told Lodsys that because the developers use licensed Apple products they are not infringing on any Lodsys patent. As applied, Apple’s argument is that the developers are using a patent that Apple licensed and which covers Lodsys’ claims; therefore, the developers have every right to use the allegedly infringing products and services.

The terms of Apple’s license agreement are unknown, so  it’s too early to comment on Apple’s success on the merits. There may be merit in the “business partners” claim. Again, too little information for conclusions, yet.

However, Apple is still using the White Knight defense – let us in because we’re coming to the rescue of the poor, innocent developers, who can’t defend themselves. This, in my view, should absolutely not be allowed. Apple can give money to the developers to fund their legal defense, or indemnify them against losses, if they are so concerned about their “partners” well-being, all without being a party to the lawsuit. Apple is seeking to protect its own interests, and no one else’s, by intervening. If Apple can score some public relations brownie points, so much the better, but that is a purely collateral issue – and should not be legal grounds for intervention.

 

Angry Birds Developer Latest Invitee to the Lodsys Patent Infringement Party

Wednesday, 27 July, 2011 09:34 Written by Mark Malek 0 Comments

By: Mark R. Malek

This story hits a little close to home because of my love for the Angry Birds game.  I don’t think it is the game that gets me so much as it is the noises that the birds make as they are rocketed from a sling shot to perform all manner of acrobats while destroying a structure in hopes of making a green blob explode.  It doesn’t hurt that the games are generally free through the Android Marketplace or the App Store.

We are so confused by this Patent Troll

Going past the free levels, however, is where the problem allegedly lies.  Although many of the levels are free, there are some additional levels that are available for purchase by users.  According to this story on Benzinga, which sites another story on The Telegraph, the Lodsys patent allegedly includes claims that cover a method for allowing players to purchase new levels inside its mobile application.  (See also this story on CBR)

Of course, the common theme that I have been seeing in many of these stories is that there is a problem with allowing patents on software – let the comments begin.  I, of course, do not see any problem with patents on software.  Many software developers disagree, but I do not believe that they are applying U.S. patent law when making their arguments.  In short, a U.S. patent, and patents in general, are meant to provide protection on the functionality of an invention.  So what is wrong with protecting the functionality of a piece of software?  The software field is so crowded, that any allowable software patent application is generally focused on a very specific function, and the manner in which that function is carried out.  We got a bit (a very little bit) of direction from the United States Supreme Court in their Bilski decision a little over a year ago (see my story on Bilski here), and with that, we were presented with the “machine or transformation” test, but were also told that this test was not the only test out there.  I guess we will have to wait and see what other tests there are, but we know that “machine or transformation” does not stand alone.

I was pleased to read the article regarding this matter by my good friend Gene Quinn, founder of IPWatchDog.com, and one of the teachers of the patent bar review course presented by PLI.  Gene points out what I believe is the bigger issue – the patent troll.  Gene notes that a patent troll generally gets the process started by finding an attorney willing to take a patent infringement case on contingency, and filing a complaint riddled with broad allegations.  That is part of the reason why the story’s regarding this Angry Birds infringement matter are a bit vague.  We are not too sure what aspect of the Angry Birds game is allegedly infringing.

We will have to wait and see how this, and the other Lodsys suits, turns out.  It will be interesting to see if Apple keeps out of this somehow.

USPTO and Partner Offices Agree to Test New Framework for Patent Prosecution Highway

Wednesday, 06 July, 2011 07:10 Written by Mark Malek 0 Comments

By: Mark R. Malek

In a press release issued last week, the USPTO announced its participation in a pilot program to test an enhanced framework for the Patent Prosecution Highway.  Under the provisions of the Patent Prosecution Highway, an Applicant that receives a notice from an Office of First Filing that at least one of the claims they filed is allowable can request that an application pending before an Office of Second Filing be “fast tracked.”  This is odd in that it is a form of government efficiency (picking up the sarcasm yet?).

If that impresses you, the new framework for the Patent Prosecution Highway will blow your mind.  Under the current plan, eligibility to participate is limited to reuse of search and examination results from partner offices of the first filed application in the patent family.  The new framework allows for applicants to request participation on the basis of results available on any patent family member from any office participating in the pilot program.

Ready for the translation?  Essentially, Applicants that file foreign applications are likely to have applications pending in many jurisdictions.  Sometimes, these applications may all be pending at the same time without any response from the Office of First Filing.  For example, an Applicant may have filed an application in the United States as the Office of First Filing.  Let’s say that the no action has been taken on the application, but that the Applicant has also filed similar applications in Australia, Canada and Denmark, in that order (all offices that participate in the Patent Prosecution Highway).  Let’s then assume that a response is received from Denmark indicating that at least one of the claims is patentable.  Since the Denmark application represents the Office of Fourth Filing, under the current plan, the Patent Prosecution Highway provisions would not apply.  This new pilot program removes that restriction, and allows an Applicant to request that their application be “fast tracked” based on the results from the Denmark Patent Office.

I am happy to see that the Patent Offices around the world are coordinating with one another in an effort to speed things along.  I guess that everyone realizes that protecting innovation, in a somewhat expedient manner, does help the economy.

 

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