Tafas v. Dudas: USPTO Exceded Its Rulemaking Authority with Proposed Limitations on Continuations

All of my email lists are abuzz over the ruling in Tafas v. Dudas, which Patently-O covers much better than I ever could:

Patent Law Blog Patently-O: Tafas v. Dudas: PTOs Proposed Limitations on Continuations and Claims are Invalid

In a twenty-six page opinion, District Court Judge Cacheris has granted GSK’s and Tafas’s Motions for Summary Judgment — finding the PTO’s proposed limitations to the number of continuation applications and claims per patent to be improper extensions of PTO authority:

“Because the USPTO’s rulemaking authority under 35 U.S.C. § 2b2 does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as ‘otherwise not in accordance with law’ and ‘in excess of statutory jurisdiction [and] authority.’ 5 U.S.C. § 7062.”

The documents:

USPTO Issues Post-KSR Examination Guidelines for Determining Obviousness

Today, the USPTO published new guidelines (pdf) for obviousness in the Federal Register. The guidelines are in response to the Supreme Court’s opinion in KSR v. Teleflex from last term. To reject an application on obviousness, examiners may now cite to one of the following:

III. Rationales To Support Rejections Under 35 U.S.C. 103: 

. . .

    (A) Combining prior art elements according to known methods to yield predictable results;
    (B) Simple substitution of one known element for another to obtain predictable results;
    (C) Use of known technique to improve similar devices (methods, or products) in the same way;
    (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
    (E) ”Obvious to try”–choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
    (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;
    (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Complete text of the new guidelines follow below the fold:

Continue reading

The Patent Reform Act Of 2007 introduced – H.R.1908 Berman-Smith House version

H.R.1908
Patent Reform Act of 2007 (Introduced in House)

——————————————————————————–

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

(a) Short Title- This Act may be cited as the `Patent Reform Act of 2007′.

(b) Table of Contents- The table of contents of this Act is as follows:

Sec. 1. Short title; table of contents.

Sec. 2. Reference to title 35, United States Code.

Sec. 3. Right of the first inventor to file.

Sec. 4. Inventor’s oath or declaration.

Sec. 5. Right of the inventor to obtain damages.

Sec. 6. Post-grant procedures and other quality enhancements.

Sec. 7. Definitions; patent trial and appeal board.

Sec. 8. Study and report on reexamination proceedings.

Sec. 9. Submissions by third parties and other quality enhancements.

Sec. 10. Venue and jurisdiction.

Sec. 11. Regulatory authority.

Sec. 12. Technical amendments.

Sec. 13. Effective date; rule of construction.

SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE.

Whenever in this Act a section or other provision is amended or repealed, that amendment or repeal shall be considered to be made to that section or other provision of title 35, United States Code.

SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE.

(a) Definitions- Section 100 is amended by adding at the end the following:

`(f) The term `inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

`(g) The terms `joint inventor’ and `coinventor’ mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

`(h) The `effective filing date of a claimed invention’ is–

`(1) the filing date of the patent or the application for patent containing the claim to the invention; or

`(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.

`(i) The term `claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent .

`(j) The term `joint invention’ means an invention resulting from the collaboration of inventive endeavors of 2 or more persons working toward the same end and producing an invention by their collective efforts.’.

(b) Conditions for Patentability-

(1) IN GENERAL- Section 102 is amended to read as follows:

`Sec. 102. Conditions for patentability; novelty

`(a) Novelty; Prior Art- A patent for a claimed invention may not be obtained if–

`(1) the claimed invention was patented, described in a printed publication, or in public use or on sale–

`(A) more than one year before the effective filing date of the claimed invention; or

`(B) one year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

`(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

`(b) Exceptions-

`(1) PRIOR INVENTOR DISCLOSURE EXCEPTION- Subject matter that would otherwise qualify as prior art under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before the applicable date under such subparagraph (B), been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor, joint inventor, or applicant.

`(2) DERIVATION AND COMMON ASSIGNMENT EXCEPTIONS- Subject matter that would otherwise qualify as prior art only under subsection (a)(2), after taking into account the exception under paragraph (1), shall not be prior art to a claimed invention if–

`(A) the subject matter was obtained directly or indirectly from the inventor or a joint inventor; or

`(B) the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

`(3) JOINT RESEARCH AGREEMENT EXCEPTION-

`(A) IN GENERAL- Subject matter and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of paragraph (2) if–

`(i) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

`(ii) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

`(iii) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

`(B) For purposes of subparagraph (A), the term `joint research agreement’ means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

`(4) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVELY FILED- A patent or application for patent is effectively filed under subsection (a)(2) with respect to any subject matter described in the patent or application–

`(A) as of the filing date of the patent or the application for patent ; or

`(B) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon one or more prior filed applications for patent , as of the filing date of the earliest such application that describes the subject matter.’.

(2) CONFORMING AMENDMENT- The item relating to section 102 in the table of sections for chapter 10 is amended to read as follows:

`102. Conditions for patentability; novelty.’.

(c) Conditions for Patentability; Non-Obvious Subject Matter- Section 103 is amended to read as follows:

`Sec. 103. Conditions for patentability; nonobvious subject matter

`A patent for a claimed invention may not be obtained though the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.’.

(d) Repeal of Requirements for Inventions Made Abroad- Section 104, and the item relating to that section in the table of sections for chapter 10, are repealed.

(e) Repeal of Statutory Invention Registration-

(1) IN GENERAL- Section 157, and the item relating to that section in the table of sections for chapter 14, are repealed.

(2) REMOVAL OF CROSS REFERENCES- Section 111(b)(8) is amended by striking `sections 115, 131, 135, and 157′ and inserting `sections 131 and 135′.

(f) Earlier Filing Date for Inventor and Joint Inventor- Section 120 is amended by striking `which is filed by an inventor or inventors named’ and inserting `which names an inventor or joint inventor’.

(g) Conforming Amendments-

(1) RIGHT OF PRIORITY- Section 172 is amended by striking `and the time specified in section 102(d)’.

(2) LIMITATION ON REMEDIES- Section 287(c)(4) is amended by striking `the earliest effective filing date of which is prior to’ and inserting `which has an effective filing date before’.

(3) INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES: EFFECT- Section 363 is amended by striking `except as otherwise provided in section 102(e) of this title’.

(4) PUBLICATION OF INTERNATIONAL APPLICATION: EFFECT- Section 374 is amended by striking `sections 102(e) and 154(d)’ and inserting `section 154(d)’.

(5) PATENT ISSUED ON INTERNATIONAL APPLICATION: EFFECT- The second sentence of section 375(a) is amended by striking `Subject to section 102(e) of this title, such’ and inserting `Such’.

(6) LIMIT ON RIGHT OF PRIORITY- Section 119(a) is amended by striking `; but no patent shall be granted’ and all that follows through `one year prior to such filing’.

(7) INVENTIONS MADE WITH FEDERAL ASSISTANCE- Section 202(c) is amended–

(A) in paragraph (2)–

(i) by striking `publication, on sale, or public use,’ and all that follows through `obtained in the United States’ and inserting `the 1-year period referred to in section 102(a) would end before the end of that 2-year period'; and

(ii) by striking `the statutory’ and inserting `that 1-year'; and

(B) in paragraph (3), by striking `any statutory bar date that may occur under this title due to publication, on sale, or public use’ and inserting `the expiration of the 1-year period referred to in section 102(a)’.

(h) Repeal of Interfering Patent Remedies- Section 291, and the item relating to that section in the table of sections for chapter 29, are repealed.

(i) Action for Claim to Patent on Derived Invention- Section 135(a) is amended to read as follows:

`(a) Dispute Over Right to Patent -

`(1) INSTITUTION OF DERIVATION PROCEEDING- An applicant may request initiation of a derivation proceeding to determine the right of the applicant to a patent by filing a request which sets forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. Any such request may only be made within 12 months after the date of first publication of an application containing a claim that is the same or is substantially the same as the claimed invention, must be made under oath, and must be supported by substantial evidence. Whenever the Director determines that patents or applications for patent naming different individuals as the inventor interfere with one another because of a dispute over the right to patent under section 101, the Director shall institute a derivation proceeding for the purpose of determining which applicant is entitled to a patent .

`(2) REQUIREMENTS- A proceeding under this subsection may not be commenced unless the party requesting the proceeding has filed an application that was filed not later than 18 months after the effective filing date of the application or patent deemed to interfere with the subsequent application or patent .

`(3) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD- In any proceeding under this subsection, the Patent Trial and Appeal Board–

`(A) shall determine the question of the right to patent ;

`(B) in appropriate circumstances, may correct the naming of the inventor in any application or patent at issue; and

`(C) shall issue a final decision on the right to patent .

`(4) DERIVATION PROCEEDING- The Board may defer action on a request to initiate a derivation proceeding until 3 months after the date on which the Director issues a patent to the applicant that filed the earlier application.

`(5) EFFECT OF FINAL DECISION- The final decision of the Patent Trial and Appeal Board, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office on the claims involved. The Director may issue a patent to an applicant who is determined by the Patent Trial and Appeal Board to have the right to patent . The final decision of the Board, if adverse to a patentee, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of the claims involved in the patent , and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.’.

(j) Elimination of References to Interferences- (1) Sections 6, 41, 134, 141, 145, 146, 154, 305, and 314 are each amended by striking `Board of Patent Appeals and Interferences’ each place it appears and inserting `Patent Trial and Appeal Board’.

(2) Sections 141, 146, and 154 are each amended–

(A) by striking `an interference’ each place it appears and inserting `a derivation proceeding'; and

(B) by striking `interference’ each additional place it appears and inserting `derivation proceeding’.

(3) The section heading for section 134 is amended to read as follows:

`Sec. 134. Appeal to the Patent Trial and Appeal Board’.

(4) The section heading for section 135 is amended to read as follows:

`Sec. 135. Derivation proceedings’.

(5) The section heading for section 146 is amended to read as follows:

`Sec. 146. Civil action in case of derivation proceeding’.

(6) Section 154(b)(1)(C) is amended by striking `INTERFERENCES’ and inserting `DERIVATION PROCEEDINGS’.

(7) The item relating to section 6 in the table of sections for chapter 1 is amended to read as follows:

`6. Patent Trial and Appeal Board.’.

(8) The items relating to sections 134 and 135 in the table of sections for chapter 12 are amended to read as follows:

`134. Appeal to the Patent Trial and Appeal Board.

`135. Derivation proceedings.’.

(9) The item relating to section 146 in the table of sections for chapter 13 is amended to read as follows:

`146. Civil action in case of derivation proceeding.’.

(10) Certain Appeals- Subsection 1295(a)(4)(A) of title 28, United States Code, is amended to read as follows:

`(A) the Patent Trial and Appeal Board of the United States Patent and Trademark Office with respect to patent applications, derivation proceedings, and post-grant review proceedings, at the instance of an applicant for a patent or any party to a patent interference (commenced before the effective date of the Patent Reform Act of 2007), derivation proceeding, or post-grant review proceeding, and any such appeal shall waive any right of such applicant or party to proceed under section 145 or 146 of title 35;’.

SEC. 4. INVENTOR’S OATH OR DECLARATION.

(a) Inventor’s Oath or Declaration-

(1) IN GENERAL- Section 115 is amended to read as follows:

`Sec. 115. Inventor’s oath or declaration

`(a) Naming the Inventor; Inventor’s Oath or Declaration- An application for patent that is filed under section 111(a), that commences the national stage under section 363, or that is filed by an inventor for an invention for which an application has previously been filed under this title by that inventor shall include, or be amended to include, the name of the inventor of any claimed invention in the application. Except as otherwise provided in this section, an individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.

`(b) Required Statements- An oath or declaration under subsection (a) shall contain statements that–

`(1) the application was made or was authorized to be made by the affiant or declarant; and

`(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

`(c) Additional Requirements- The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).

`(d) Substitute Statement-

`(1) IN GENERAL- In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.

`(2) PERMITTED CIRCUMSTANCES- A substitute statement under paragraph (1) is permitted with respect to any individual who–

`(A) is unable to file the oath or declaration under subsection (a) because the individual–

`(i) is deceased;

`(ii) is under legal incapacity; or

`(iii) cannot be found or reached after diligent effort; or

`(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).

`(3) CONTENTS- A substitute statement under this subsection shall–

`(A) identify the individual with respect to whom the statement applies;

`(B) set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and

`(C) contain any additional information, including any showing, required by the Director.

`(e) Making Required Statements in Assignment of Record- An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.

`(f) Time for Filing- A notice of allowance under section 151 may be provided to an applicant for patent only if the applicant for patent has filed each required oath or declaration under subsection (a) or has filed a substitute statement under subsection (d) or recorded an assignment meeting the requirements of subsection (e).

`(g) Earlier-Filed Application Containing Required Statements or Substitute Statement- The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120 or 365(c) of the filing of an earlier-filed application, if–

`(1) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;

`(2) a substitute statement meeting the requirements of subsection (d) was filed in the earlier filed application with respect to the individual; or

`(3) an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.

`(h) Supplemental and Corrected Statements; Filing Additional Statements-

`(1) IN GENERAL- Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time.

Corp. Director’s and the need to understand IP

I have been arguing a need to make IP a larger part of the board discussions, but here is an decent article from Sterne Kessler Goldstein Fox I can hand out. http://www.skgf.com/media/news/news.228.pdf Well worth the read.

Cleveland and TaylorMade victorious in patent infringement suit

Press Release pretty much tells it all.

 via Hooked On Golf Blog

12/14/06

Huntington Beach, CA…The U.S. Court of Appeals for the Federal Circuit recently entered a final judgment of non-infringement in favor of The Roger Cleveland Golf Company (”Cleveland Golf”) and Taylor Made Golf Company (”Taylor Made”), ending a patent infringement suit filed by Henry-Griffitts, Inc. (”Henry-Griffitts”) in 2004. In this lawsuit, Henry-Griffitts alleged that club fitting systems used by Cleveland Golf and Taylor Made infringed U.S. Patent No. 4,932,662 (the ‘662 Patent”).
Cleveland Golf and Taylor Made chose to vigorously defend this lawsuit, and the United States District Court for the Southern District of California entered a judgment finding no infringement of the ‘662 Patent by either Cleveland Golf or Taylor Made on January 23, 2006. Henry Griffitts appealed the District Court decision, and oral arguments were held at the U.S. Court of Appeals for the Federal Circuit in Washington D.C. on November 6, 2006. The Federal Circuit ruling affirmed the judgment of the District Court, defeating the claims of Henry Griffitts in their entirety, and awarded costs of the appeal to Cleveland Golf and Taylor Made.

Huntington Beach, CA…The U.S. Court of Appeals for the Federal Circuit recently entered a final judgment of non-infringement in favor of The Roger Cleveland Golf Company (”Cleveland Golf”) and Taylor Made Golf Company (”Taylor Made”), ending a patent infringement suit filed by Henry-Griffitts, Inc. (”Henry-Griffitts”) in 2004. In this lawsuit, Henry-Griffitts alleged that club fitting systems used by Cleveland Golf and Taylor Made infringed U.S. Patent No. 4,932,662 (the ‘662 Patent”).
Cleveland Golf and Taylor Made chose to vigorously defend this lawsuit, and the United States District Court for the Southern District of California entered a judgment finding no infringement of the ‘662 Patent by either Cleveland Golf or Taylor Made on January 23, 2006. Henry Griffitts appealed the District Court decision, and oral arguments were held at the U.S. Court of Appeals for the Federal Circuit in Washington D.C. on November 6, 2006. The Federal Circuit ruling affirmed the judgment of the District Court, defeating the claims of Henry Griffitts in their entirety, and awarded costs of the appeal to Cleveland Golf and Taylor Made.

Don Reino, general counsel for Cleveland Golf, stated that “While Cleveland Golf respects the intellectual property rights of others, our company will defend against what we believe are frivolous claims with the same passion that we use in making our
golf equipment.”

Based in Huntington Beach, CA, Cleveland Golf is a company that enjoys a strong presence on the PGA TOUR and competitive tours worldwide. Cleveland’s staff includes players such as Vijay Singh, Joe Durant, David Howell, and many others. The company was founded in 1979 to produce high quality replicas of classic golf clubs from the 1940’s and 1950’s but soon became regarded as an innovative producer of original equipment in it’s own right. It was acquired by QUIKSILVER, Inc. in 2005 and has remained steadfastly committed to providing “Tour proven, premium golf equipment to passionate golfers at prices that ensure value to consumers.” Other Cleveland Golf brands include Never Compromise Putters and FIDRA Performance Golf Apparel.

Google Patents launched

In case you missed it, because they never really publicize anything, Google’s patent search is online at http://google.com/patent. Here is a link to mine as an example (7050989 – Electronic commerce personalized content delivery system and method of operation).

Tiny Review: Tons easier than the USPTO.gov site, but not as clean as the one IBM used to make available for free (it was at http://www.ibm.com/patent in the late 1990s). And, unlike Google’s terms of service, IBM’s did state plainly “”IBM does not maintain records of the search entries submitted by, or results obtained by, individual, identifiable users of the IBM Patent Server.” See The IBM Patent Server. I quickly found this patent which Google Patents could potentially violate, based on a quick read of inventors description).

Drug kills most cancers

Way off my normal map, but I have always assumed I would die of cancer. Now, perhaps not. New Scientist is reporting that “a cheap and simple drug that kills almost all cancers by switching off their “immortality”. The drug, dichloroacetate (DCA), has already been used for years to treat rare metabolic disorders and so is known to be relatively safe.” Best of all, no patent. Many are saying that this is a problem as it will keep drug companies from investing in R & D and trials. I say, to be known as the drug company that not only cured cancer but also made it so cheap that any person could afford it is worth many, many multiples of the $600-$700 million it would cost to bring this to market. Hey, marketing guy, how does “THE CURE” by GlaxoSmithKline sound.

Peer to Patent Project greenlighted

Leveraging the network, the peer to patent projectFortune magazine is reporting that New York Law School professor Beth Noveck’s idea posted on her blog to use a public wiki (factually incorrect) to review patent apps and get public input is going to go into a pilot project, backed by IBM, among others. See also Wired article.

Altnet v. StreamCast, filed for infringement of patents on file hash

LinkAltnet sues Streamcast for patent infringement on its file hash patents. Altnet and other plaintiffs allege that StreamCast and its CEO, Michael Weiss, intentionally infringe Altnet’s “TrueNames” patents as part of its music and movie file distribution business. The patents infringed are 5,978,791 - 6,415,2806,928,442. These guys go back to the days when Kazaa/Sharmon Nerworks, Streamcast split and only acrimony remains.

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