Dispatch from Bizarro World: USPTO to open Detroit Office

By J. DeVoy

From the “putting a band-aid over a gaping wound” file, the U.S. Patent and Trademark Office (USPTO) is bringing more than 100 positions to Detroit, Michigan.  The same Detroit seen on the television show Detroit 187, a timely show about the city’s absurdly high murder rate, and the very same Michigan that has been in a one-state recession since at least 2004.

For patent attorneys and would-be patent attorneys affected by the economy, this is welcome news.  Over the last 5-10 years the boutique patent firm model has been folded into larger general-service firms, consolidating many clients and much of the talent within a comparatively small number of hands.  For those willing to brave USAJobs.com, this may be an excellent opportunity.  Moreover, because it is federal employment, mobility is less of an issue — have any bar license, will travel.

There’s just the minor issue that… oh yeah, it’s in Detroit.  On that basis alone, I, someone who was in the 3L job search, would completely understand passing on the opportunity altogether.  Put the bootstraps rhetoric aside for a moment: This is creating 100 professional-level jobs in a city where the employees are more likely to be killed than anywhere else in the country.  Why not just put it in Mogadishu?  There’s the option of living in the suburbs, but not the truly nice ones if you have any student debt.  Your neighbors will be laid-off autoworker types who will resent the fancy-pants education you received like the people who took ‘der jerbs did, though you have a completely different degree and skill set.  I won’t even address the area’s schools.  The USPTO should have dropped all pretense and just said it was offering examiner jobs in Hell.

In fairness to a federal commitment to Southeast Michigan, this is not a bad idea.  It would have been more attractive and better executed, though, if done in an area entering decline in an effort to stave it off, rather than as a means to resuscitate the dead and rotten corpse of what used to be a city.  Google, for example, has capitalized on the University of Michigan’s intellectual capital by opening an office in Ann Arbor.  Given the level of research and innovation produced by the university, as well as the indisputable quality of its law school, Ann Arbor would have been an ideal choice for the USPTO’s branch office.

I have no desire to see Detroit or Michigan further deteriorate, but a USPTO branch office is not going to be a cure for what ails the city.  As a measure to stop any one area’s economic bleeding, Minneapolis, with its good law firms and four law schools, would have been an ideal choice.  More to the point, it is exciting to see the USPTO taking an expansive view of its role.  The opening of branch offices creates opportunities for those who would add value to the Office, but due to family or other commitments, cannot relocate to D.C.  From the USPTO’s own press release:

The office represents the first phase of the USPTO’s Nationwide Workforce Program, an effort to hire more patent examiners and seek out additional resources and technical expertise in locations across the country

Depending on how the branch offices work and where they are located, there will be interesting district-by-district distinctions in patent litigation.  Districts that had not seen many patent cases may end up with de novo challenges to registration disputes.  A new era of administrative gamesmanship may begin, as the stakes for jurisdictional posturing could be higher than ever.

Paris Hilton continues her IP education… from the defendant’s chair

by Jason Fischer

After getting the go-ahead from the Ninth Circuit earlier this year on her “That’s Hot!” trademark infringement case against Hallmark, hotel heiress Paris Hilton has apparently signed up (although unwillingly) for another intellectual property lesson.  This time, she’s going to be studying design patents.  Her professor, a footwear designer called Gwyneth Shoes, claims that its design patent has been infringed by Ms. Hilton’s kicks.  (Source.)

If you look closely, you can see the heart.

Design patent protection is similar to copyright protection, in that the alleged infringer is in trouble if they’ve produced something that is substantially similar to the protected design.  However, while the government simply gives out copyright registrations, upon request, design patents are only awarded after an examination is done and it has been determined that the proposed design is novel (i.e., no one else has previously designed a product like this).

Gwyneth’s design

The prize for successfully prosecuting a design patent application?  Complete national monopoly for 14 years.  Since copyright protection lasts for a minimum of 70 years, some people would argue that a design patent is hardly worth the effort and cost.  The problem with that logic is that copyrights come with a whole boatload of limitations, leaving room for potential defendants to get away free.  As a key example, fair use and independent creation are no defense to a charge of design patent infringement.  Just ask Paris Hilton, who undoubtedly has just learned about this little wrinkle from her attorney.

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This article was originally posted on The Tactical IP Blog

USPTO Jumps in Line to Provide “Green” Initiatives, Ignores Climate Gate

by Jason Fischer

“Awe!  Come ON!  I made a movie about it.  That proves it’s true.”

Director Kappos, of the United States Patent & Trademark Office (USPTO), writes on his blog this week about how the Office intends to fast-track the examination of patent applications that deal with so-called “green” technologies.  Great headline for a month ago, when the popularized position was that anthropogenic climate change (formerly known as “global warming”) was a *proven* phenomenon.  However, recent developments have put those findings in serious doubt.

In case you haven’t been keeping up, as Director Kappos clearly hasn’t, emails were leaked last month from the University of East Anglia’s Climatic Research Unit – a world-renowned climate change research center – which reveal a “trick” being employed by researchers to massage temperature statistics (source).  Seems that a decline in temperature didn’t fit into the doomsday scenario that’s being thrown about to justify new grant money, new cap-and-trade legislation, and new taxes.  The emails openly discuss the deletion of historic source data and ways to discredit scientific journals that have published skeptic papers, as a couple of examples (source).

Moving back to the IP tie-in, the USPTO is continuing to drink the climate change kool aid by proposing that so-called “green” patent applications should be given priority treatment in examination.  Kappos’s announcement of the policy was timed to coincide with the start of the United Nations Climate Change Conference in Copenhagen, Denmark.  In that announcement, the Director explains the impetus for such an initiative:

As I have often said, the USPTO is committed to dramatically reducing the backlog and average patent pendency time across the board.  As we work toward this goal, we are going to pilot a program that will give priority to applications that combat climate change and foster job creation in the green tech sector.  The Green Tech patent pilot program will decrease the time it takes to obtain patent protection for green tech innovations by an average of 12 months.  (source)

One has to wonder what other types of applications will be “de-prioritized,” in order to let climate-change-fighting inventors skip the line.  It seems clear that this initiative would do absolutely nothing to improve the average pendency time across all patent applications.  It is truly odd that, at the Patent Office, where a science degree is required to prosecute or examine applications, they’re not letting a silly thing like the absence of a scientific foundation stop them from disparaging the majority of the inventing community.  It certainly isn’t stopping the charlatan proponents of climate change theory from generating a city-sized carbon belch to gather and talk about how to reduce carbon emissions.

Once again, the Director concludes his blog post, claiming that he welcomes comments and feedback, but somehow my comments thereto on this subject failed to clear moderation.

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This article was originally posted on GaneshaFish.com

The USPTO Embraces the Blogosphere, Lobbies for First-to-File

Kappos: “Hey Ted, can you show me how these here tubes work?”

The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.

In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog.  In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.

The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention.  The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in.  The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention.  The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.

Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.

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This post was originally published on The Tactical IP Blog.

Slick Glass Dildos are an “Obvious” Improvement!

The slicker the better

Ah, a dildo patent case. Just what the doctor ordered. A dildo patent case written by Posner? Now there’s something that makes a great capstone to a blogging week.

In Ritchie v. Vast Resources, __ F.3d __ (Fed. Cir. 2009) Judge Richard Posner was sitting by designation at the Federal Circuit. And Posner being Posner writes:

The plaintiffs’ patent (U.S. Patent No. Re 38,924, the 2005 reissue of No. 6,132,366, filed on April 1, 1999) claims a “sexual aid…fabricated of a generally lubricious glass-based material containing an appreciable amount of an oxide of boron to render it lubricious and resistant to heat, chemicals, electricity and bacterial absorptions.” Glass that contains boron oxide is called “borosilicate glass.” The “silicate” is a reference to the fact that like most glass, the predominant component of borosilicate glass is silica. By “lubricious”—a word whose primary meaning, appropriate for a sexual device, is “lecherous”—the patent means only “slippery,” which is the secondary meaning of the word. The patent’s use of the word in that sense is confusing, because glass is smooth rather than slippery. But what is meant is that the glass, because it contains oxide of boron, is smoother than soda-lime glass and therefore becomes slippery with less lubricant than a device made out of soda-lime glass. The patent’s use of the term “appreciable amount” of oxide of boron is also troublesome, because it is vague. But apparently all that is meant is that the plaintiffs are claiming that their invention uses glass that has the amount of boron oxide usually found in borosilicate glass. (Op. at 2-3)

The fact that nobody made a dildo out of borosilicate glass before does provide some support for the fact that this was a patentable and non-obvious invention. However, it isn’t enough. Posner makes a few fun analogies, but his best is when he reaches back into the nineteenth century:

And if more is required to make our point, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int’l Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle). (Op. at 6)

Heh heh… “wood”… heh heh… heh… “knob”.

Can McDonald’s really sue you for how you make your sandwich?

by Jason Fischer

Short Answer: No. Probably not.

I call this one "the McBaby." Should I try to patent it before McDonald's does?

McDonald’s Corp. is getting some recent attention in the blogosphere for a patent application, originally filed in late 2004, which describes its “Method and Apparatus for Making a Sandwich.” What’s interesting to me about this news item is the array of different reactions that various people have to this kind of story. Personally, it makes me laugh that McDonald’s paid a patent attorney an ASS-ton of money to write and prosecute a fifty-four page app, comprising twenty-three pages of drawings and flow charts and describing, in painful detail, how one might go about simultaneously preparing sandwich garnishes while “heating a pre-assembled meat and/or cheese filling”. Clearly, my reaction is the same as the folks’ over at PatentlySilly.com.

The other response that I quite frequently see is one of outrage or consternation. “How can they claim a patent for that?” “Will they be able to sue me for how I make my sandwich?” “This is what’s wrong with the U.S. patent system.” “Yadda, yadda, yadda.” “I love lamp.” You get the idea. This was Marc’s reaction when we had a conversation on the subject a few days ago. Now I don’t mean to criticize or belittle anyone who has this initial reaction (obviously, Marc is no IP n00b), but it exposes the reactor as someone who doesn’t have a firm grasp on the intricacies of patent law. This is nothing to be ashamed of, because the majority of the world doesn’t either. Without digging into the details of each individual case, it’s easy to go off half cocked.

So, rather than writing a blistering piece about how arrogant corporations abuse intellectual property (the story that Randazza might have written), I was inspired to use this particular example as a teaching vehicle to hopefully clear up some commonly held misconceptions about patents. It is also a useful exercise for me to try explaining this material to a general audience that does not have a background in hard-core intellectual property law.

By way of disclaimer, I am not a practicing patent attorney (yet). However, I do have the benefit of sitting through several courses on U.S. and international patent law, as well as a five-week summer associate gig working with the electrical engineering patent group of a large law firm (special thanks to the Atlanta office of Ballard Spahr Andrews & Ingersoll, LLP – formerly known as Needle & Rosenberg, PC). If anyone reading this post happens to be an expert in patent law, I encourage you to sound off in the comments if I get anything wrong or you don’t agree with my analysis.

The Sandwich App – U.S. Filing

click to enlarge

McDonald’s filed their initial application for patent with the United States Patent and Trademark Office (USPTO) on December 21, 2004. As stated above, the app described an “Method and Apparatus for Making a Sandwich.” Clearly, much care and effort were put into preparing the voluminous document, which more than reasonably describes an important business practice of any fast food restaurant – making burgers (or sandwiches, or burritos, or gyros) as quickly and efficiently as possible – and a “tool” for making that happen. Both the tool and the method are proper subject matter for patent protection in the U.S., provided that they work as expected and are novel and non-obvious. If they really had something, McDonald’s is far from crazy for seeking the competitive advantage that patent protection would provide by allowing them to prevent other fast food chains from making their sandwiches the same way. No one should doubt their credentials as experts in the field of sandwich making, given their commercial success and significant global presence. If anyone was gonna innovate in this area, McDonald’s is on the top of the short list, much like Intel would be for microprocessors.

The United States government, way back when they were trying to figure out how everything should work here (circa late 1700s), decided that the best way to facilitate advances in knowledge and technology was to provide a mechanism that encourages smart people to share their ideas with the world in exchange for the right to control, for a limited time (currently, twenty years), who could practice the devices and methods embodying those ideas. This “exchange” is symbolized by a patent. Think of it like a contract between the inventor and the government.

The inventor agrees to write a document (the application) that teaches his colleges all about his or her invention, and in consideration, the government recognizes the inventor’s right to profit from his or her invention. This quid pro quo ensures that brilliant ideas are not kept secret for competitive advantage and that the collective knowledge about useful things continues to grow. This way, another smart person may read about an idea and say, “I can do it better/cheaper/faster.” Thus the progress of science and the useful arts marches forward.

Turning back to our “Sandwich” application, in order to qualify for patent protection, the app must disclose something that is useful, new, and non-obvious. To make that determination, the USPTO assigns the application to an examiner, who presumably has some expertise in this field of endeavor (in this case, Art Unit 1794, Class 426 – “Food or Edible Material: Processes, Compositions, and Products“). The examiner’s job is to research the technology and find out if McDonald’s has truly added something new to the art of sandwich making.

click to enlarge

In this particular case, the examiner’s first response was to tell McDonald’s that their application disclosed multiple “inventions.” Multiple inventions mean multiple patents, so McDonald’s was forced to pick which one they wanted to pursue first (commonly called a “restriction requirement”). They opted (or “elected” – in patent-ese) to go after the method claims first, leaving the sandwich-making tool for a later “divisional” application, and the examination process continued.

Now that the examiner knew which invention to work on, he got down to it, researching the relevant field to find out if McDonald’s had really discovered a new way to make sandwiches. After doing so, he concluded that they had not and sent a letter to their attorney (typically called an “Office Action”) that described his reasons for coming to that conclusion, providing citations to materials that support it. In order to proceed, McDonald’s will have to respond to the Office Action, arguing why the examiner was wrong or changing their “claimed” invention to something that actually is new and non-obvious. They never did so, and the application went abandoned earlier this year.

Quick, honey, call our attorney. I've invented the McPizza!

McDonald’s may have decided for any number of strategic reasons not to continue prosecuting the application. My guess is that they realized they were facing an uphill battle and preferred to cut their losses (which were probably significant at that point – between filing fees and attorneys’ fees).

The Sandwich App – International Filing

By nature, patent protection is a territorial animal. The foregoing discussion described the events that took place when McDonald’s attempted to obtain patent protection for the United States only. If an inventor wants protection in other countries, he or she has to go through a similar process for each country where the inventor wants to enforce his or her rights. This can be an extremely tedious and expensive process, which is made marginally less so through something called the Patent Cooperation Treaty (PCT).

The PCT represents a collection of over one-hundred countries around the world that have somewhat similar requirements for patentability. By filing a special application in an appropriate member country, an inventor can obtain an initial clearance for his invention in the form of a preliminary search for materials that would make the invention unpatentable. There is no guarantee that a clearance from the PCT search authority means you will be able obtain patent protection in each and every designated country, because each country has its own unique requirements. The local PCT office just acts as a single point for filing your initial application and as an initial search provider for things that will present clear barriers to patentability.

click to enlarge

On the PCT application, the inventor chooses which countries he will pursue patent protection in, once the initial clearance is done. After it is completed, the preliminary search report is transmitted to each of those designated countries, and the applicant must continue the prosecution of the application with each of the local patent offices – commonly called “entering the national phase” for a particular country.

Although the PCT filing fees are capped after the inventor has chosen more than a few countries, the local prosecution fees for entering the national phase of each designated country can pile up pretty quickly. As a result, it is rare that anyone would chose to pursue protection in more than a few member countries. In the case of the Sandwich App, McDonald’s chose the U.S., Canada, Australia, and the European Union.

I know what you’re thinking. You’re thinking that the European Union is more than one country. That’s true, but they have their own special procedure that is available for applicants who want to secure protection in multiple European countries. It is similar to the PCT process, except that, where the PCT search authority is only able to do a preliminary search for materials that could potentially prevent the issue of a patent, the European Patent Office (EPO) is able to prosecute the application all the way through to “allowance.” However, there is no such thing as a “European Patent.” So once the EPO gives its go ahead, the applicant must take his or her clearance from the EPO to each of the European countries in which the inventor wants to assert his or her rights, file a translation of the application (if required), and pay the local issue fee. Here again, the more countries you pick, the more expensive the process gets.

The McWTF Sandwich (available for a limited time, only at paticipating locations, patent pending)

Finally, returning one last time to our Sandwich App, a preliminary search was done by the USPTO (as the local PCT search authority) and sent out to the various national patent offices on April 9, 2009. Not surprisingly, the report listed the same documents found by the original U.S. examiner, which indicated that the invention was not new or non-obvious.

The Canadian application had fees due in December, 2008, which were not paid by McDonald’s. Presumably, this means that, like the U.S. patent application, they have decided to abandon the Canadian one. With the U.S. and Canada off the table, I’m guessing that McDonald’s has foregone patent protection for their method of sandwich making in the largest portion of their market. While they still may pursue protection of their sandwich-making tool in the U.S., one might question the business decision-making ability of the McDonald’s exec who finds it prudent to throw good money after bad.

click to enlarge

The Australian application is awaiting a final determination, but it seems unlikely that the Australian Patent Office will come to a different conclusion than the USPTO.

Interestingly enough, McDonald’s paid a fee to the EPO in January, 2009, keeping the European application alive for the moment. Again, however, I have a hard time believing that the EPO will come to any different conclusion than the USPTO. Additionally, Europe does not give patent protection for method claims, which means that the only patent protection available to McDonald’s there would be for the sandwich making tool.

Conclusion

So, long story short (too late, I know), McDonald’s isn’t likely to sue anyone for infringement of this “invention.” Because they haven’t really demonstrated that their “discovery” adds anything to the field of endeavor, they haven’t held up their end of the “contract” that would entitle them to patent protection. The system worked as expected, and patent protection was not extended to what amounts to no “invention” at all.

Short Url: http://bit.ly/18G5u

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The USPTO is Going Soft on Patent Applications

by Jason Fischer (follow me on )

Kerry Gorgone reports on the touching story of a pint-sized “inventor” who “came up” with the idea for attaching an IV bag pole to a kiddie car, so that hospitalized children can play while getting their meds. It seems the kid filed a patent application for the device and is charging a licensing fee for toy manufacturers to build the thing.

As heartwarming as this particular story may be, it provides a textbook example of an obvious device, which means that it should not be entitled to patent protection. When an “inventor” merely “‘arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” K.S.R Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007) (quoting Sakraida v. Ag Pro, Inc., 96 S. Ct. 1532 (1976)). Providing patent protection for obvious devices does not further the constitutional mandate of our patent system — to promote the progress of science and the useful arts. K.S.R. Int’l Co., 127 S. Ct. at 1746. In fact, it weakens that system and provides plenty of ammunition for those who would criticize it and demand reform.

The fact that this device is used by sick children should not provide a “free pass” to patentability. I was shocked to read the examiner, Kevin Hurley’s office actions, finding not even a mention, let alone some analysis, of 35 U.S.C. § 103 as it applies to this device. See Image File Wrapper for U.S. Patent No. 7,374,228.

@Lawminatrix: Good luck with your office chair/beer keg thingy, but you might have a better chance, apparently, if you can describe your device as useful for baby kittens, butterflies, and/or bunny rabbits.