Issues like the presidential campaign, healthcare,
and the wars in Iraq and Afghanistan may dominate
the headlines. But Congress also has been
working on the Patent Reform Act of 2007,
with the House of Representatives passing HR
1908 and the Senate introducing S 1145. (For a
table detailing the legislation, go to www.electronicdesign.com, Drill Deeper 17457.)
Despite the law’s lack of publicity, the legal
community has taken notice. In fact, many patent
and IP lawyers, representatives from the Licensing
Executives Society (LES), judges, and the
Department of Commerce are leading the charge
against this new act.
These experts also think the new law comes too
quickly on the heels of several recent court rulings
and changes at the U.S. Patent and Trademark
Office (USPTO) that already have lawyers scrambling
and will require at least a couple of years to
digest. Even worse, they say, the new law could
seriously damage the nation’s ability to compete
worldwide in the high-tech sector.
The new claims rules
On August 21, the
USPTO finalized a new rule on claims and continuations
practice that went into effect on November
1. This rule was created “to cut down on the
backlog of the examiners and shift the burden to
the attorneys and filers,” said Randy J. Pritzker,
chair of the Electrical and Computer Technologies
Patent Practice Group of Wolf, Greenfield &
Sacks PC.
“Right now, there is a huge backlog with too
few examiners, several of which are quite inexperienced,”
Pritzker said. The increasing number of
patents being granted for software and business
methods, along with the increase in patent litigation,
prompted the new rule. This new rule is complex,
but there are three points to keep in mind:
- You may, without a petition, file two continuation
or continuation-in-part (CIP) applications
and only one request for continued examination
(RCE) in an application family. The CIP
may be filed regardless of whether the RCE
has been filed.
- You may present, without an examination support
document (ESD), up to five independent
claims and 25 total claims. You may file more
than the five or 25 claims if you file an ESD
before the first office action on the merits
(FAOM) has taken place.
- You must identify any other patents or applications
that you or any listed co-inventor have
submitted recently. If more than one application
is submitted, when compared to other patents of
the same inventor(s), the patent office will now
assume that the application and the other application(s) or patent(s) contain at least one
patentably indistinct claim. In this case, the USPTO
will combine all claims to determine if the
5/25 threshold has been violated. Also, the office
may require the elimination of patentably indistinct
claims from all but one of the applications
According to Pritzker, there are ways to overcome the new
limitations. But they require jumping through some significant
hoops, and the burden of the research for adding claims
beyond the 5/25 will be on the applicant. It will be most
important to reach a resolution with the patent examiner as
early in the process as possible. Also keep in mind that this
new rule will require new patenting strategies so you don’t
get caught with your patents down.
New test for obviousness
Several companies
and their technologies have gained notoriety since the popularization
of the Internet. These include Amazon and its
“one-click shopping” patent and Priceline and its “reverse
auction” patent.
Like Amazon and Priceline, many other companies have
received patents that combine physical concepts with Internet
services. And these companies have gone after other businesses
with large pocketbooks, suing them when similar concepts
appeared on competing Web sites.
Enter KSR v. Teleflex. In this case, Teleflex sued KSR International,
claiming that KSR had developed a product that
infringed on one of its patents. The patent protected the idea of
connecting an adjustable vehicle control pedal to an electronic
throttle control. According to KSR, the combination of these
two elements (much like combining shopping and a Web site
to form an electronic shopping cart) was obvious.
According to the law, technologies can’t be patented if they
are obvious without the benefit of hindsight. KSR ultimately
was victorious in a case that went all the way to the U.S.
Supreme Court on April 30, 2007.
The Supreme Court rarely hears patent disputes. But this
is a landmark decision because it will make it harder to get
new patents as well as defend existing patents that fall in
the obvious category. Many large high-tech organizations
(and the counsel representing them) are hailing the decision,
saying it will lower the cost and uncertainty of patent litigation
and inject some common sense into the patent world.
However, the pharmaceutical industry feels it was incorrect.
Some experts have even called it a disappointment and
semantic nonsense.
No system works across industries and for both David and
Goliath. Perhaps what is really needed are laws based on the
industry to which they apply. So if you come up with a technology
that lets your laptop work in the shower, you may get a
patent. But if you file a patent that will entitle you to royalties
from people who sing while playing songs downloaded to their
laptops, you might want to rethink your retirement strategy.
Patent trolls vs. eBay
A “patent troll” is an
individual or company that purchases a patent or patent
portfolio specifically to extract maximum licensing fees
from one or more companies that allegedly infringe on the
purchased patent or portfolio by using the looming threat
of an injunction to force the company to stop using the
supposedly infringing technology.
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