Maryland Intellectual Property Law Blog

Number of Patents Issued to Marylanders Inches Up

higgins@blankrome.com (Brian Wm. Higgins) — Thu, 09 Jul 2009 22:36:06 -0500

U.S. Patent & Trademark Office (PTO) records show that for the year ending June 30, 2008, the PTO granted 1,983 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO). That represents a 1% increase in the number of patents issued to Maryland inventors for the previous year ending June 30, 2008 (1,956), but a 4% decline over the year ending June 30, 2007 (2,071).

The number of published patent applications naming at least one Maryland inventor during the year ending June 30, 2009, was up 3% compared to the previous two years. According to the PTO, 3,172 patent applications naming at least one Maryland inventor were published during the year ending June 30, 2009, compared to 3,076 patent applications published in the year ending June 30, 2008, and 3,066 applications published in the year ending June 30, 2007.

Looking for a Few Good Patent Attorneys?

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 10 Jun 2009 08:06:03 -0500

If you're looking for a registered patent attorney (or patent agent) in Maryland near you, visit this website, which provides a map showing the location of registered patent attorneys and agents in Maryland based on address information supplied to the U.S. Patent & Trademark Office's Office of Enrollment, and their names and addresses. Rolling over the pointing tabs on the map brings up the practitioner's name and contact information. A snapshot of the map is shown below. Hat tip to Ryan Durham for providing the app and the link.

Law Article: Assertion of Military and State Secrets Privilege by Government in Patent Cases on the Rise

higgins@blankrome.com (Brian Wm. Higgins) — Mon, 01 Jun 2009 08:20:56 -0500

In their forthcoming Berkeley Technology Law Journal article (alternative link), visiting University of Maryland Associate Professor of Law Davida Isaacs and University of Kentucky Assistant Professor of National Security Robert Farley discuss the Military and State Secret Privilege and its negative impact on innovation, the discovery process, and government procurement. As previously noted on this blog, the counties surrounding Washington, D.C., are home to many government contractors, possibly triggering use of the privilege.

In the article, Isaacs and Farley review the Federal Circuit's Crater Corp. v. Lucent Techs., 423 F.3d 1260 (Fed. Cir. 2005), cert. denied, 547 U.S. 1218 (2006), case in some depth, suggesting that there are some troubling constitutional issues regarding the assertion of the privilege, and arguing that widespread use of the privilege could have a significant negative effect on military innovation and procurement. On the former point, where the information involved constitutes “trade secrets”, the authors point out that effective quashing of litigation through invocation of the privilege arguably amounts to an unconstitutional taking. On the latter, the authors note that loose use of privilege endangers the intellectual property rights of companies interested in doing business with the military, and in particular of small companies that cannot depend either on their connections with the Pentagon or on an expectation of repeat business for protection. (This is particularly problematic given the stated interest of the Pentagon in pursuing non-traditional defense contractors for innovative technologies.)

The Military and State Secrets Privilege has been receiving an enormous amount of attention lately, write Isaacs and Farley. As the article also notes, just a few months ago Congress proposed legislation that is meant to rein in the Government’s use of the privilege, or at least encourage independent judicial consideration of the privilege’s application. But, the authors argue, particularly with regard to the use of intellectual property, this legislation still does not go far enough in ameliorating the negative effects described above.

Cite: D. Isaacs and R. Farley, Privilege-Wise and Patent (and Trade Secret)-Foolish?: How the Courts’ Misapplication of the Military and State Secrets Privilege Violates the Constitution and Endangers National Security; 23 Berkeley Tech. L.J. __ (2009) (forthcoming).

Judgment Against American Mensa in Trademark Dispute

higgins@blankrome.com (Brian Wm. Higgins) — Fri, 22 May 2009 15:05:11 -0500

UPDATE: American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

As previously reported on this website, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment in the case of American Mensa v. Inpharmatica. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous. Now, after trial, a jury has returned its verdict form, finding in favor of the Defendants including, among other things, a finding that “Defendant’s use of the 'Admensa' and 'ADMEnsa' [marks] was not likely to cause confusion, or cause mistake, or to deceive about the affiliation, connection, or association of the Defendants with American Mensa as to the origin, sponsorship, or approval of their goods or services by American Mensa.” Judgment was entered by Judge Quarles on May 5, 2009.

Cigarette Patent Case Resumes With Jury Trial

higgins@blankrome.com (Brian Wm. Higgins) — Fri, 15 May 2009 08:44:31 -0500

UPDATE: Star Scientific vs. R.J. Reynolds Tobacco Co.

Next Monday, Petersburg, Virginia-based Star Scientific, Inc. and R.J. Reynolds Tobacco Co. will resume their battle over allegations of RJR's infringement of Star's U.S. Patent Nos. 6,202,649 and 6,425,401, as the parties open the first of five days of their jury trial in the courtroom of the Honorable Marvin Garbis of the U.S. District Court for the District of Maryland. Star's lawsuit has a long history, including a bench trial on the issue of the enforceability of the asserted patents in 2005. On June 25, 2007, Judge Garbis found Star’s patents to be unenforceable on the basis of inequitable conduct by Star’s attorneys during prosecution of the patents before the U.S. Patent & Trademark Office. On appeal, the U.S. Court of Appeals for the Federal Circuit (Judges Michel, Dyk, and Schall) reversed, and now the case is back before the trial court. Start time: 10:00 am, May 18.

Related posts: Inequitable Conduct, Conspiracy Theory

Fourth Circuit: Turnitin's Anti-Plagiarism Service a Fair Use

higgins@blankrome.com (Brian Wm. Higgins) — Thu, 14 May 2009 23:00:00 -0500

A.V. (Minors) v. iParadigms, LLC, No. 08-1424 and 08-1480 (4th Cir. Apr. 16, 2009)

Plaintiffs, four minors (who at the time of their complaint attended high schools in McLean, VA, and Tucson, AZ), brought a copyright infringement suit against iParadigms, LLC, based on the company's use of essays and other papers written by plaintiffs for submission to their high school teachers through an online service operated by iParadigms called "Turnitin Plagiarism Detection Service."

According to iParadigms, Turnitin offers high school and college educators an automated means of verifying whether works submitted by students are originals and not the products of plagiarism. When a school subscribes to iParadigms’ service, it typically requires its students to submit their written assignments "via a web-based system available at www.turnitin.com or via an integration between Turnitin and a school’s course management system." The website uses a "click-wrap" agreement (outlining terms and conditions) for site use. Turnitin then compares the submitted paper and produces a report for teachers suggesting a percentage of the work, if any, that appears not to be original.

Three of the students submitted papers with a disclaimer objecting to the archiving of their works. Plaintiffs alleged that iParadigms infringed their copyright interests in their works by archiving them in the Turnitin database without their permission.

The issue for the Fourth Circuit was whether the archiving of the students' works was a "fair use," one of the statutory exceptions to a copyright owner’s bundle of rights (17 U.S.C. § 107). In reaching its decision, the Fourth Circuit considered the four nonexclusive factors in making a "fair use" determination:

Analyzing each factor, the Fourth Circuit found iParadigms' use of the students works a "fair use" and, therefore, Paradigms was entitled to summary judgment on the copyright claim.

(1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. In this case, the Fourth Circuit found that the archiving of Plaintiffs' papers was transformative and favored a finding of "fair use."

(2) The nature of the copyrighted work. Here, the Fourth Circuit found that the second factor did not favor either party. In doing so, the Court concluded that iParadigms' use of the papers did not undermine the Plaintiffs' right to first publication, and iParadigms' use was unrelated to any creative component.

(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole. Here, the Fourth circuit found that the third factor also did not favor either party.

(4) The effect of the use upon the potential market for or value of the copyrighted work. In this case, the Fourth Circuit, noting that the transformative nature of a use is relevant to the market effect factor, also found that the market for selling the papers to other students was disavowed by Plaintiffs.

Hanna-Barbera Productions Opposes Registration of Yogiberry Trademark

higgins@blankrome.com (Brian Wm. Higgins) — Sun, 08 Mar 2009 05:00:00 -0500

Rockville, MD-based Yogiberry, Inc., filed an application for registration of the mark YOGIBERRY in the U.S. Trademark Office on March 11, 2008, which was approved for publication and subsequently published for opposition on September 2, 2008. On November 21, 2008, Hanna-Barbera Productions, Inc., owner of several marks related to the Yogi Bear franchise of cartoons that first appeared on television in 1958, filed an opposition. In its answer to the opposition, Yogiberry stated that its mark is related to retail frozen yogurt stores, and does not overlap with any goods and services associated with Hanna-Barbera's YOGI BEAR MARKS. Yogiberry further stated that the parties' respective marks are not confusingly similar or likely to cause confusion amongst consumers or the trade.

Yogiberry, Inc., is the owner of Registration No. 3498624 for the mark shown below, which was registered on September 9, 2008, based on an application filed February 4, 2008:

In view of the above opposition, Yogiberry, Inc., and Pinkberry, Inc., filed in the U.S. District Court for the District of Maryland a stipulated motion to a stay their pending trademark litigation. The parties' motion was granted.

Settlement News and MD Bar Association Events

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 07 Mar 2009 20:25:43 -0500

Many of you have inquired about the status of the Nacre v. Silynx Communications matter, which was filed in the U.S. District Court for the District of Maryland on October 2, 2007. I am not surprised by the interest, since this case has garnered more attention by visitors to the Maryland Intellectual Property Law blog than any other reported case. What is known about the settlement, which is not much, is that the parties settled their dispute (see Nacre press release). As is often the case with such matters, the terms of the settlement are confidential. Nacre's website states that the settlement provides for the dismissal with prejudice of all claims and counterclaims filed by the parties, and without any finding or admission of liability or wrongdoing by any party, and it grants to Rockville, MD-based Silynx a license to certain Nacre intellectual property, including the two Nacre patents-at-issue (link, link).

The Intellectual Property Section of the Maryland Bar Association posted the following events on its on-line calendar:
- Monday March 23, 2009 12:00 AM: LES Licensing Seminars
- Wednesday March 25, 2009 8:30 AM: Could the In re Bilski decision eliminate business method patents?

Please support the IP Section and attend one of these or other upcoming events. If you missed an event, the IP Section website contains links to audio files of previous events that are free to download.

Number of Copyright Lawsuits in Maryland Increases

higgins@blankrome.com (Brian Wm. Higgins) — Tue, 03 Feb 2009 08:34:30 -0500

Data available from Justia.com shows that the number of copyright lawsuits filed in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008 (40; see table below comparing Districts) was higher than the number initiated in 2007 (30). The number of defendants named in those lawsuits was also higher year over year (about 120 defendants in 2008 compared to about 60 in 2007).

Tech Council Urges IP Legislation for Clean Technology

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 21 Jan 2009 22:34:49 -0500

In its 2009 Policy Platform for Technology and Biotechnology published earlier this month, the Technology Council of Maryland (TCM) called for funding and targeted legislation for the state's technology and biotechnology industries, but also urged incentives, financing, tax credits and intellectual property legislation "that will spur the potential for making Maryland a leader in clean and green technology." The TCM is Maryland's largest technology trade association (500+ members).

Does Maryland need incentives to encourage the development of clean and green technologies? If the number of clean energy patents issued to Marylanders is any indication, the answer is yes. According to U.S. Patent Office data, there were only 11 patents issued in 2008 naming at least one Maryland resident as an inventor that disclosed "fuel cell" (down from 17 in 2007), 11 patents to Maryland inventors that disclosed "hybrid", "electric," and "vehicle" in 2008 (up from 7 in 2007), and only one patent to Maryland inventors that disclosed "wind power" in 2008 (half as many as the 2 patents issued in 2007). Although that snapshot view is far from a scientific and robust analysis, it seems that Maryland trails other states in clean technology innovation (Michigan, for example, received a total of 29 clean energy patents in the 3Q 2008 alone, and New York received 21 in 3Q 2008, according to data published by the Clean Energy Patent Growth Index).

Number of Trademark Lawsuits Initiated in Maryland Increases

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 14 Jan 2009 21:12:31 -0500

Data available from Justia.com shows that the number of trademark lawsuits filed in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008 (36; see table below comparing Districts) was slightly higher than the number initiated in 2007 (33). The number of parties named in those lawsuits was also higher year over year (about 160 parties in 2008 compared to about 100 parties in 2007).

No Fame In Mensa's Trademark, Court Finds

higgins@blankrome.com (Brian Wm. Higgins) — Tue, 13 Jan 2009 20:22:03 -0500

American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

In American Mensa v. Inpharmatic, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous.

In June 2004, Inpharmatica applied for use of the ADMENSA mark for a variety of services. After the application was published for opposition, Mensa asked Inpharmatica to withdraw its application because the mark would damage Mensa; Inpharmatica refused. On November 22, 2006, Mensa filed an opposition to Inpharmatica’s application with the PTO’s Trademark Trial and Appeal Board. During discovery in the PTO proceeding, Mensa learned that Inpharmatica had begun using the ADMENSA mark in the U.S. On December 6, 2007, Mensa filed the present suit seeking an injunction and damages. On August 25, 2008, the Defendants moved for summary judgment on Mensa’s claims.

Trademark infringement and unfair competition

Section 32(1) of the Lanham Act prohibits the use in commerce of a "reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale. . .or advertising of any goods or services . . . [that] is likely to cause confusion, or . . . mistake." § 1114(1).

To prove trademark infringement or unfair competition, Mensa must show that (1) it owns a valid trademark; (2) the Defendants use a colorable imitation of the mark in commerce without Mensa’s consent; and (3) such use is likely to cause confusion. As to the issue of confusion, the court examined how the parties use their marks to determine the likelihood of confusion.

Whether a mark is likely to cause confusion depends on several factors: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the marks; (3) the similarity of the goods or services the marks represent; (4) the similarity of the facilities the parties use in their business; (5) the similarity of the parties’ advertising; (6) the defendant’s intent; and (7) actual confusion. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259-60 (4th Cir. 2007).

After analyzing each factor, the court found that the Mensa Mark is strong. However, the court also found that the parties’ services are not related (Mensa is an organization for intelligent individuals, and the Defendants are in pharmaceutical research). Mensa’s support of scientific colloquia and some research does not make it sufficiently similar to the Defendants research. The court found that Mensa had provided no evidence of actual confusion. And, the relevant consumers are generally highly sophisticated.

The court also found that there existed a genuine dispute about the aesthetic similarity of the marks, as well as the Defendants’ intent in creating the ADMENSA mark. Although Mensa’s inability to show actual confusion weighed strongly against infringement (the court found that the evidence of record "falls woefully short of showing actual confusion among consumers, and at best, it shows that some of Inpharmatica’s consumers draw a similarity between the names but fails to show any actual confusion as to whether Mensa and Inpharmatica are linked"), confusion is not required. Viewing the facts in Mensa’s favor, summary judgment was denied on the Lanham Act infringement and unfair competition claims and the Maryland common law infringement claim.

Dilution of Trademark

Under 15 U.S.C. § 1125(c)(1), "the owner of a famous mark that is distinctive . . .shall be entitled to an injunction against another person who . . . [uses] a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of . . . actual or likely confusion, of competition, or of actual economic injury."

To be famous for dilution purposes, the court said that a mark must be more distinctive and stronger than that required in an infringement claim. To prove a dilution claim, Mensa had to show that (1) the Mensa mark is famous and distinctive; (2) the Defendants use a mark in commerce that is diluting the Mensa mark; (3) similarity between the ADMENSA mark and the Mensa mark gives rise to an association between them; and (4) the association is likely to impair the distinctiveness of the Mensa mark or likely to harm its reputation. Louis Vuitton, 507 F.3d at 264-65.

In this case, the court noted that the Trademark Dilution Revision Act (TDRA) significantly increased the difficulty of proving a dilution claim by requiring a mark to be famous to the general public. Unless a mark is a "household name" whose fame is not at all in doubt, it cannot support a dilution claim, the court wrote. Although Mensa has been mentioned in the media, it has spent little money on advertising and receives little revenue. The court said it is not a household name like those marks that have earned dilution protection, such as Hershey’s, Nike, Visa, and American Express. Judgment was granted to the Defendants on Mensa’s dilution claim.

This case is set for an April 2009 trial.

Number of Patent Lawsuits Initiated in Maryland Increases

higgins@blankrome.com (Brian Wm. Higgins) — Sun, 11 Jan 2009 20:37:37 -0500

The table below shows how Maryland ranked among other U.S. District Courts in terms of the number of lawsuits that were filed raising patent issues in 2008 (source Justia.com). Table values are based on the number of complaints filed in 2008. As shown, 31 patent lawsuits were initiated in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008, which is nearly a 30% increase over the number of patent lawsuits initiated in Maryland in 2007. In terms of the number of parties involved in those lawsuits, there were more parties named in patent lawsuits in 2007 compared to 2008, due to one patent infringement lawsuit initiated in 2007 that involved over a hundred defendants.

Patent Secrecy Act Activity Drops in FY08

higgins@blankrome.com (Brian Wm. Higgins) — Thu, 08 Jan 2009 08:00:00 -0500

Ever wonder what the "LR" or "L&R" code means in the electronic file history of a pending patent application? It refers to the Patent Office's Licensing and Review function, which is an early screening function applicable to all provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), and international applications filed under the Patent Cooperation Treaty (PCT). During L&R screening, applications are reviewed for the purposes of issuance of a foreign filing license and to identify subject matter that, if disclosed, might impact national security. If warranted, applications may be referred to an appropriate governmental agency for consideration of restrictions on disclosure of the subject matter, which may ultimately lead to a Secrecy Order being issued (see MPEP).

The number of Secrecy Orders issued in FY '08 are shown (parenthetical values reflect change relative to FY '07 data) (source: FAS):

Total Secrecy Orders in Effect FY08: 5,023 (-21)

New Secrecy Orders Imposed: 68 (-60)

ARMY: 8 (-14)

NAVY: 8 (-20)

AF: 20 (-25)

NSA: 20 (-1)

Secrecy Orders Rescinded: 47 (-21)

"John Doe" Secrecy Orders: 22 (-31)

As was noted previously on this website, patent secrecy activity is relevant to Maryland because the counties surrounding Washington, D.C., are home to many government agencies and government contractors that may be involved in patent activity possibly triggering secrecy review. According to Patent Office statistics, many of the agencies/contractors in this area are high on the list of the number of patents issued each year to Maryland organizations, including Johns Hopkins University, which operates the Applied Physics Laboratory (Howard County), a major government defense contractor; the Navy, which operates the Naval Research Lab (Prince George's County); the Army, which operates the Army Research Lab and biodefense research agencies in Frederick, MD; Northrop Grumman (Anne Arundel County); the National Security Agency (NSA) (Anne Arundel County); and a few of the over 300 biotechnology companies in Maryland (mostly located in Montgomery County).

Number of Patents Issued to Marylanders Continues Downward Trend

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 03 Jan 2009 05:00:00 -0500

U.S. Patent & Trademark Office (PTO) records show that for 2008, the PTO granted 1,942 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO). That is a 1% decline in the number of patents issued to Maryland inventors for the same period in 2007 (1,963), and an 8% decline over 2006 numbers (2,116).

The number of published patent applications naming at least one Maryland inventor in 2008 was up compared to last year. According to the PTO, 3,187 patent applications naming at least one Maryland inventor were published during 2008, which is a 7% increase in the number of patent applications published in 2007 (2,992 patent applications), and a 3% increase over 2006 numbers (3,082).

Maryland's Silynx and Norway's Nacre Forge Ahead on Patent Case

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 03 Jan 2009 05:00:00 -0500

Nacre AS v. Silynx Communications, Inc., matter, No. 07-cv-02676, filed Oct. 2, 2007; assigned to J. Williams

For those of you following the Nacre AS v. Silynx Communications, Inc., matter (and many of you are, based on traffic on this website), the parties jointly filed a stipulated schedule with the court, which was granted by U.S. District Court for the District of Maryland Judge Williams in September 2008. According to the schedule, the parties are exchanging claim construction briefs in January and February 2009, and trial is expected in August 2009.

The patents at issue, as indicated in the complaint, are U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 (“Noise Protection Verification Device”).

Both parties engage in the development and manufacturing of noise protection/cancelling communications headsets used by military forces (and others).

Please search "quietpro" on this website for more information about the lawsuit.

Federal Trademark Trends in Maryland: 2008 Summary

higgins@blankrome.com (Brian Wm. Higgins) — Fri, 02 Jan 2009 05:00:00 -0500

U.S. Patent & Trademark Office (PTO) records show that in 2008, the PTO received 68 trademark applications from Maryland resident or entities (based on a search of "owner address" records using Trademark Electronic Search System, TESS, database). That number is a 20% decline in the number of applications received in 2007 (85), and a 22% decline over 2006 numbers (87).

The number of registrations to Maryland individuals or entities in 2008 was also down compared to last year. According to the PTO, 53 registrations were effective in 2008 (as of December 31, 2008), which is a 36% decline in the number of registrations in 2007 (83 registrations), but is one more than the number of registrations in 2006 (52).

Upcoming Conference Targets Bio/Pharma Industry

higgins@blankrome.com (Brian Wm. Higgins) — Fri, 19 Dec 2008 22:03:47 -0500

Hat tip to Philip Brooks for noting the upcoming Bio/Pharmaceutical Summit on Intellectual Asset Management Strategies to be held in Baltimore, MD, on January 20-21, 2009. The Summit's organizer, The Center for Business Intelligence (CBI), plans a two-day, CLE-available conference that includes workshops covering the Hatch-Waxman Act, the MMA, the USPTO and expectations for patent reform, and conference presentations covering antitrust law and LCM, the expected implications of the EC Pharma Inquiry on Industry, tips for assessing your patent portfolio to assign value and identify risks and opportunities, and many others.

Copyright Reform?, House IP Committee Nixed, Patent Terms Extended

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 15 Nov 2008 17:00:00 -0500

Calling for Copyright Reform

"Given where we are on the patent reform debate, is it time to move patent reform off the table and work on copyright reform?" That is the question posed by Kristie Prinz at the Silicon Valley IP Licensing Law Blog.

No More Committee on Intellectual Property

"House Judiciary Committee Chairman John Conyers (D-MI) will abolish the Subcommittee on Courts, the Internet, and Intellectual Property in the new Congress and instead keep intellectual property issues at the full committee level, a Judiciary aide told Congress Daily today." (source: Congressional Daily)

District Court Clarifies How PTO Should Compute Patent Terms

Wyeth v. Dudas, No. 07-1492 (D.D.C. 2008): on September 30, 2008, the U.S. District Court for the District of Columbia issued a decision concerning 35 U.S.C. § 154, the procedure the U.S. Patent and Trademark Office (PTO) uses to calculates a patent's term. Sec. 154 states that a patent grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains certain specific references to an earlier filed application or applications, from the date on which the earliest such application was filed. The 20-year term may be adjusted by the PTO to account for certain delays during prosecution. The Wyeth decision means that the PTO must alter its methods for adjusting patent terms, especially where prosecution lasts longer than three years as measured from the filing date. For a detailed analysis of Wyeth, see Down a Rabbit Hole: Court Slaps Down Patent Office’s ‘Explanation’ of PTA Rules (Patent Baristas).

Patent Reform Act of 2008: News, Commentary, and Analysis

higgins@blankrome.com (Brian Wm. Higgins) — Thu, 13 Nov 2008 20:39:14 -0500

Seven weeks after Senator Jon Kyl (R-AZ) introduced S.3600, the Patent Reform Act of 2008, on September 25, 2008 (source: GovTracks), the reaction has been predictable, with stakeholders on the pro- and anti-reform sides making their views known. The Advanced Medical Technology Association (AdvaMed) said “improving and modernizing the patent system is clearly important to all sectors of the U.S. economy and we applaud Sen. Kyl and his staff for their leadership and inclusive approach to developing this legislation.” The Biotechnology Industry Organization’s (BIO) President and CEO Jim Greenwood immediately praised Kyl’s legislation, stating that "BIO appreciates the efforts of Senator Kyl and his staff to address the concerns of many stakeholders with the patent reform legislation currently pending in the Senate, and commends him for introducing the Patent Reform Act of 2008 (source: IPWatchdog).

How will other stakeholders react? If past efforts are any indication, technology companies like Blackberry-maker RIM, which reportedly spent hundreds of thousands of dollars lobbying Congress on legislation including patent reform in 2007, may take the same stance with the 2008 legislation, as will Microsoft, Google, and other tech companies, which formed the Coalition for Patent Fairness and fought big pharmaceutical companies to keep portions of the existing patent system in tact during the battle over the 2007 patent reform effort.

Bloggers have weighed in on the new legislation, too. “There is practically zero chance that this bill will pass in the current [110^th Congress] session” (source: Peter Zura at the 271blog). Ex-AIPLA executive director Michael Kirk agrees. "Even if the Democrats get to 60 seats in the Senate, I would not count on the legislation being passed,” Kirk said in an exclusive interview with IAM (source: IAM Blog).