Design Day 2009 to Be Held at the USPTO Conference [United States/International]

The United States Patent and Trademark Office (USPTO) announced in a press release that it will host its third annual Design Day at the agency’s headquarters in Alexandria, Virginia next month.

The event will be co-sponsored by the American Intellectual Property Law Association, the Intellectual Property Owners Association and the American Bar Association Section of Intellectual Property Law.

The Design Day is being organized by Technology Center 2900 and is open to design patent practitioners and USPTO examiners.

This program will provide an opportunity for design managers, examiners, independent inventors and the design patent bar to exchange ideas and to educate each other on important topics affecting design patent practice.
Program topics will include:
- Adequately Disclosing Multiple Embodiments - Application Processing: Allowance to Issue- A presentation and discussion of the recent CAFC en banc decision in Egyptian Goddess v. Swisa Inc.- A keynote address by Randall Rader, United States Court of Appeals for the Federal Circuit on the future of design patent law.

Infosys expands patent portfolio in the United States

Infosys Technologies has announced that it has been granted two patents by the United States Patent and Trademark Office (USPTO). These patents are in the area of holography and mobile communications. This is the first time that Infosys has bagged patents from the US Patent and Trademark Office work done by its Software Engineering and Technology Labs (SETLabs), a 500-people center comprising researchers, engineers and consultants.

The Lab, set up in 2000 with the aim of bolstering research practices, has filed over 100 patent applications in the last 18 months. The two patents have come at a time when the company is looking at non-linear growth model, breaking the link between revenue and employee growth.

Subu Goparaju, head of Software Engineering & Technology Labs (SETLabs), the research arm of Infosys said, "the patent titled 'displaying holographic three dimensional (3-D) images' describes the realization of actual 3-D communication using computer-generated holography to send/receive information and the associated optical elements required to make a lightweight handset.

Existing technologies use high resolution LCD to give the illusion of 3-D while actually displaying a 2-D image. Actual 3 dimensional imaging which includes a representation of depth information along with amplitude information is not being used in these cases. This patent addresses the issue of 3-D in mobile communication.

The patent titled "method and system for providing reliable and fast communications with mobile entities" proposes a mobile Internet Protocol-based solution to support generic mobility over heterogeneous networks.

There are a number of problems to be overcome to support generic mobility over heterogeneous networks today. This solution leverages a split-TCP type approach where the TCP connection between the communication entities is split at a suitable gateway.

The solution does not require any extension at the mobile host and provides improved performance even for mobility across heterogeneous networks due to an inherent ability to adapt to changing network characteristics. It supports communication between two mobile hosts or between a fixed and a mobile host, where mobile host(s) can roam over heterogeneous networks and also supports a layer 3 handoff.

Across Indian IT services companies, the $5.7-billion TCS has filed over 200 patent applications in the last five years. Says Avinash Vashishta, CEO, Tholons (an advisory firm), "India IT majors have been running a software factory and R&D is one area where they have to do a lot. The focus being services, barring a few small exceptions they have not been able to create a business around R&D — that is, develop IP products and market them." Now, to get to the higher billing tasks and delink revenue growth from manpower growth, a focus on R&D is a must. The top IT majors could show the way.

Apple Patents Touchscreen Sensor Design -- A Sign of iTimes to Come? [International]

An Apple touchscreen patent from 2006 has recently come to light and it illustrates the path that the iPhone could take in the next few years.

The patent, submitted for approval to the US. Patent Office in late 2006, details a capacitive touchscreen sensor on a clamshell design. There's a transparent touch panel that covers the top of the shell, and when it's opened, the inside of the panel is touch as well. Basically, it appears that Apple is enabling as many parts of the physically exposed material to be touch sensitive. This would then allow the company to expand its UI and OS capabilities to come up with interesting features we didn't know we needed.
As long as the clamshell, double-paneled displays aren’t much smaller than the current model’s screens, people will likely see the second screen as a big plus. It also shouldn't be any thicker than the current model when the clamshell is closed.

Among the patent's main features is the ability to write-in numbers or letters with your finger. (We already saw part of this technology in a private demo many months ago, and Apple’s application to the tech could be impressive.) Something else we could see is a digital representation of the old rotary phone, by dragging a number down, as if spinning the old dialer.

By having touch displays on both sides of a panel, there's also the possibility of ‘enabling 3-D gestures’ through touch and of watching two different videos at the same time. So why do we care about little drawings of gadgets that may be completely different when released? Because most patents are both specific and oddly open-ended, allowing a small glimpse at true innovation while leaving you scratching your head a little bit.

Patented intellectual property rights provide the inventor, be it a multinational company or a single desperate man, with the opportunity to plant a flag in a space of innovation that is unique. But they also allow for a hell of a lot of mind-bending interpretation. This is especially true when the end product keeps a good amount of the patented technology but looks completely different.

USPTO Proposes Biological Material Deposits Be Made Available Before Patent Application Publication [USPTO]

Thanks to Christopher P. Singer at Patent Docs for describing the Federal Register notice on February 20, 2008 where the U.S. Patent and Trademark Office announced proposed changes to the rules regarding submission of biological deposits pertaning to patent applications:
In particular, the revised rules would require that any deposit of biological material be made before the application publishes, and that all restrictions on access to the deposited material imposed by the depositor be removed upon publication.

. . . For purposes of enablement, the Federal Circuit has held that even "the availability of a sample to the public after the patent has issued will meet the enablement requirement." In re Lundak, 773 F.2d 1216, 1223 (Fed. Cir. 1985). Since the American Inventors Protection Act went into effect, certain commentators have argued that because the publication of a U.S. application can create provisional rights for the applicant, the published application must be in compliance with the enablement and written description requirements of § 112. This means that, if needed for § 112 purposes, a deposit of biological material would need to be made prior to publication (i.e., that the AIPA supersedes the rule stated in Lundak). To be ensured of consideration, comments must be received by the USPTO on or before April 21, 2008.

Advantages of a registered trademark

Is there any advantage to owning a trademark registration? What steps and costs are involved?
The U.S. Patent and Trademark Office defines a trademark as “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”
One obvious item to trademark is a logo. Once used in connection with a product, a logo can be registered as a trademark. The patent office reviews trademark applications for federal registration. Trademark registration is not required to use a mark to identify the source of goods and/or services. The TM (trademark) designation may be used to alert the public to your claim, regardless of whether you have filed a trademark application. However, the federal registration symbol ® may be used only after the patent office registers a trademark.
While business owners historically retained attorneys to register trademarks, it is not uncommon today to navigate the process without attorney assistance through the Internet. Filing fees vary. More information is at www.uspto.gov.
Federal registration affords additional rights once the trademark is used in commerce. Such rights include:
•Constructive notice to the public of the registrant’s claim of trademark ownership.
•Legal presumption of the registrant’s ownership of the mark and exclusive right to use the mark in connection with the listed goods and/or services.
•The ability to bring a legal action concerning the mark.
•Use of the U.S. registration as a basis to obtain registration in foreign countries and to prevent importation of infringing foreign goods.
Once a registration issues, it is up to the trademark owner to enforce its rights. Enforcement of intellectual property rights is a complex area of the law, and pursuing trademark infringement can be costly.
So why go to the effort and expense of registering a trademark? Many people believe that the registration itself serves as a deterrent and consequently helps to secure use for the rightful owner. Additionally, registered trademarks are often referred to as hidden assets, which can add value to a business.

PatentScrounger Visual Patent Searching

The PatentScrounger visual patent searching website is available here at no charge.

Patent Prosecution Highway Extends to United Kingdom [International - Patents]

The U.S. Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UK IPO) announced on September 4, 2007 that they are now accepting applications for participation in a pilot Patent Prosecution Highway project established between the two offices.

Under the Patent Prosecution Highway, an applicant receiving a ruling from either the UK IPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. Full requirements for participation in the trial program at the USPTO can be found at www.uspto.gov/web/patents/pph/pph_index.html. According to the press release from the UK Patent Office, patent applicants will be required to submit search and examination reports prepared by the other patent office in order qualify for accelerated treatment.

The purpose of the trial program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO and the UK IPO. The trial period is set to expire September 4, 2008, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. Both offices will provide notice of any adjustment in the trial period.

Ordinarily Seperable Stereoisomer Obvious for Lack of Increased Potency Over Mixture [International - Patents]

In Aventis Pharma Deutschland GMBH, et al. v. Lupin, LTD., et al. (September 11, 2007), the Federal Circuit held that claims covering a 5(S) stereoisomer of ramipril in a composition substantially free of other isomers were obvious where the stereoisomer was ordinarily separable from the prior art mixture with inactive ingredients and did not offer increased potency.

According to the opinion by Circuit Judge Linn,

The record suggests that when Dr. Smith synthesized SCH 31925, she understood that the 5(S) form of ramipril was the mixture’s therapeutically active ingredient. Even if she did not, however, the prior art provides a sufficient reason to look to the 5(S) configuration. . . . Moreover, the ’944 patent specifically taught that stereoisomers of ramipril “can be separated by conventional chromatographic or fractional crystallization methods.” ’944 patent, col. 10, ll. 28–31. Aventis’s protestations notwithstanding, there is no evidence that separating 5(S) and SSSSR ramipril was outside the capability of an ordinarily skilled artisan.

Aventis attempts to rebut this prima facie case of obviousness by arguing that purified 5(S) ramipril exhibited unexpected results in the form of increased potency. . . . The prior art supporting prima facie obviousness included the SCH 31925 mixture, and so Aventis must show that 5(S) ramipril had unexpected results not over all of its stereoisomers, but over that mixture, which did not contain the [higher potency] RRSSS form. And the potency of pure 5(S) ramipril is precisely what one would expect, as compared to a mixture containing other, inert or near-inert stereoisomers.

All evidence suggests, and the district court found, that potency varies with the absolute amount of the 5(S) isomer in a mixture. Invalidity Opinion at 37. That is, a 30 milligram dose of a mixture that is 1/3 5(S) ramipril has the same effectiveness as a 10 milligram dose of pure 5(S) ramipril. Id. Aventis has thus failed to show unexpected results that would tend to rebut a prima facie case of obviousness. See Pfizer v. Apotex, 480 F.3d 1348, 1368–69 (Fed. Cir. 2007) (holding obvious a patent claim to amlodipine besylate over prior art disclosing the small genus of pharmaceutically acceptable amlodipine salts, where there was an insufficient showing that the properties of amlodipine besylate, purportedly superior for the purpose of mass-manufacturing tablets, were unexpectedly superior to other obvious-to-try salts); cf. Forest Labs., Inc. v. Ivax Pharms., Inc., No. 07-1059, slip op. at 10–11 (Fed. Cir. Sept. 5, 2007) (holding that prima facie obviousness of a claim to a particular stereoisomer over a racemic mixture was rebutted where the particular stereoisomer showed unexpected benefits and evidence indicated that the isomers would have been difficult for a person of ordinary skill in the art to separate).

In sum, we hold that claims 1 and 2 of the ’722 patent, which cover the 5(S) stereoisomer of ramipril in a composition substantially free of other isomers, are invalid under 35 U.S.C. § 103 over the SCH 31925 mixture, the ’944 patent, and the enalapril references in the prior art.

Apple Files Movable-Interface Patent for iPhone [International Patents]

Even if you're not currently blown away with the iPhone, there's more to come.

According to MacNN, Apple has reportedly filed a patent with the World Intellectual Property Organization covering a user interface on portable devices with touchscreen interface that would allow for quick, tactile reconfiguration of on-screen elements such as icons.

In this case, a user could drag an icon to a desired location, such as with a widget under Dashboard. The method would allow for easy reconfiguration of icons as well as allow them to be automatically displaced by other icons.

The patent is currently filed under application number 60,755,368, was filed on December 30th of 2005 and credits Marcel Van Os, Freddy A. Anzures, Scott, Forstall, Greg Christie, Bas Ording, Imran Chaudhri and Stephen Lemay as inventors of the patent.

USPTO Proposes New Rules for Alternative Claim Language [International Patent Law]

As part of its ongoing efforts to enhance patent quality and reduce pendency in accordance with its "21st Century Strategic Plan," the U.S Patent and Trademark Office published a Notice of Proposed Rulemaking on August 10, 2007 to revise its treatment of claims that recite alternatives, including claims use Markush groups and/or other forms of alternative language. To be ensured of consideration, written comments must be received on or before October 9, 2007. No public hearing will be held. For further official information, contact Kathleen Kahler Fonda, Legal Advisor, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–7754; by mail addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450; or by facsimile to (571) 273–7754.

Current Office policy requires examination of all species of a claim that recites a Markush group when the alternatives are sufficiently few in number or so closely related that search and examination can be made without serious burden. Even where the search and examination of a claim that has "unity of invention" would require serious burden, the examiner must determine the patentability of the claim. In such case, however, the examiner may require applicant to elect a single species under 37 CFR 1.146 for initial search and examination to facilitate examination on the merits. If the elected species is not allowable, examination of the Markush claim will be limited to the elected species and any species not patentably distinct therefrom, and any separate claims to the elected species and any species not patentably distinct therefrom. Claims that drawn to species patentably distinct from the elected species are held withdrawn from further consideration. If the elected species is allowable, then the search and examination of the Markush claim will be extended to non-elected species to the extent necessary to determine patentability of the claim. See MPEP 803.02.

According to the Notice, Markush and other alternative formats are being used to claim multiple inventions and/or to recite hundreds, if not thousands, of alternative embodiments of a single invention in one claim. Proper search of such complex claims often consume a disproportionate amount of Office resources as compared to other types of claims. The prosecution of these complex claims likewise requires separate examination and patentability determinations for each of the alternatives within the claim, e.g., if the alternatives raise separate prior art, enablement, or utility issues. Furthermore, the variety and frequency of alternatives recited in claims filed in applications pending before the Office, driven in part by trends in emerging technologies, have exacerbated problems with pendency.

Under the proposed rules, claims that recite alternatives will have to meet two new requirements:

1. Each Claim Must Be Limited to a Single Invention

In addition to proposing a requirement limiting a claim to a single invention, the Office is proposing to specify that when subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other. The Office proposes to encourage applicants, when filing a claim that employs alternative language, to provide an explanation as to why the claim is directed to a single invention.

The Office also proposes that applicants using alternative formats in continuation-in-part applications must identify which claim or claims in the application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application. This proposal would reduce examination complexities and identify situations wherein a prior art reference that anticipates or renders prima facie obvious at least one species within the scope of a claim would not be available as prior art against another species if that species was set forth in a separate claim.

2. New Format Requirements for a Claim With Species Presented as a Set of Alternatives

A simplified format for the presentation of such claims must be met by any claim that uses alternative language. The Office proposes to adopt language similar to that in the PCT Guidelines, specifically requiring that the number and presentation of alternatives in the claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another. (PCT Guidelines (paragraph 5.18) specifies that a claim can contain alternatives ‘‘provided those alternatives are of a similar nature and can fairly be substituted one for another, and provided also that the number and presentation of alternatives is a single claim does not make the claim obscure or difficult to construe.’’)

In addition, to reduce the complexity of determining whether a claim is directed to a single invention, the Office proposes to specify that no alternative may itself be defined as a set of further alternatives. Finally, the Office proposes to specify that no alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention. In other words, applicants should file a series of individual claims from the broadest scope that they feel they are entitled to the narrowest scope they are willing to accept. Put differently, applicant should narrow the scope of protection sought via separate claims, and not via nested sets of overlapping alternatives.

Replacement of Parts that Must Be Broken Not Impermissible Reconstruction [US]

In Fuji Photo Film Co., LTD. v. International Trade Commission (January 11, 2007) the Federal Circuit provided further guidance on the repair/reconstruction Doctine. On appeal in this case, the parties agreed that the eight step refurbishment discussed in an earlier decision involving the same facts, and a nineteen step refurbishment described in the Commission's exclusion order involved permissible repair. The narrow question on appeal was whether one additional action by Jazz, the addition of a new plastic back cover (to replace the existing covered that had to be broken in order to access the film), converted its activities from permissible repair into impermissible reconstruction.

The latest in this serires of opinions arose out of an enforcement proceeding instituted by the Commission to investigate Fuji’s allegation that Jazz, Benun, and Jazz’s then-president and Chief Executive Officer Anthony Cossentino violated the cease and desist order by importing and selling infringing LFFPs during the period after the Jazz I decision. The Commission had imposed a civil penalty of $13,675,000 on Jazz. It also imposed a $154,000 penalty on Cossentino and held Benun, as the more culpable of the two, jointly and severally liable for the entire $13 million penalty imposed on Jazz. Needless to say, the penalized parties were anxious to reduce their fines.

According to the opinion by Circuit Judge Dyk:

In Husky Injection Molding Systems Ltd. v. R & D Tool & Engineering Co., 291 F.3d 780 (Fed. Cir. 2002), we concluded that the replacement of a spent part was a fundamental example of a permissible repair. Id. at 785-86. Benun
contends that the back covers were spent parts and their replacement was permissible repair. This is so, he argues, because as a practical matter the backs had to be broken to remove the film, and once new film was inserted the
back covers could no longer serve their function of enclosing the camera and keeping light out. The backs therefore were spent and could properly be replaced. Although Fuji did not intend the LFFP to be refurbished, "the patentee’s unilateral intent, without more, does not bar reuse of the patented
article, or convert repair into reconstruction." Jazz I, 264 F.3d at 1106; Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445, 1453 (Fed. Cir. 1997).

Benun’s factual premise that the backs had to be broken to repair the film is not contested by the Commission on appeal. This court and other tribunals have repeatedly concluded that, in view of the continued utility of the shutter mechanism, lens, viewfinder, film advance mechanism, and other significant parts in the original camera, replacing the film is a permissible
repair and reattaching or replacing a part that must be removed or broken to replace the film also constitutes permissible repair. See Jazz I, 264 F.3d at 1106 (reattachment of the back cover); Fuji II, 249 F. Supp. 2d. 434, 446 (D. N.J. 2003), aff’d 394 F.3d 1368 (Fed. Cir. 2005) (removal of the film door that
was broken in removing the film); J.A. at 95 (refurbishment of the half backs). Significantly, there is no contention here that the extent of the refurbishment is disproportionate to the overall value of the parts that were not replaced. See Husky, 291 F.3d at 786-87; Jazz I, 264 F.3d at 1106.

In a variety of other contexts we have also held that replacement of a part that must be broken or removed to repair the device does not convert permissible repair into impermissible reconstruction. For example, in Bottom
Line Management, Inc. v. Pan Man, Inc., 228 F.3d 1352 (Fed. Cir. 2000), we found that "incidental repairs to minor damages" necessary to replace a spent part did not justify a finding of reconstruction. Id. at 1356 (internal quotation marks
omitted). In that case studs that held a spent part in place had to be broken in order to remove that part for replacement, and we concluded that replacement of these studs did not justify a finding of reconstruction. Id. at 1355. Similarly, in Everpure, Inc. v. Cuno, Inc., 875 F.2d 300, 303 (Fed. Cir. 1989), we held
that a patentee who designed a product so that the neck which connects a filtering cartridge to the base of the device had to be replaced in order to replace the worn-out cartridge itself could not claim impermissible reconstruction from the replacement of the neck. We concluded that "Everpure and Everpure alone made the business decision to sell disposable cartridges and to
render its filter irreplaceable without replacement of the entire cartridge." Id. Likewise, in this case, it would appear that Jazz’s actions in replacing the back covers, which must be broken in order to replace the spent film and film cartridge, does not justify a finding of impermissible reconstruction.

The Commission’s sole basis for reaching a contrary conclusion was its reliance on an erroneous repair-reconstruction test. The Commission found that by replacing the back cover, Jazz was completely replacing two horizontal ribs that satisfied the "means for exerting force" element of claim 5 of the ‘495
patent,16 as well as completely replacing two other elements of claim 5 (the film and the film cartridge) and partially replacing the fourth element (the light-tight film case). The Commission said, "if a component is integral to a specific patent claim, and it is replaced with a new part, such replacement could weigh heavily towards a finding of reconstruction."

The Supreme Court in Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) rejected a test for repair/reconstruction that would look to whether an "essential" or "distinguishing" part of the patented combination had been replaced. Id. at 345. In doing so, the Court concluded "that the combination patent covers only the totality of the elements
in the claim and that no element, separately viewed, is within the grant" and "that there is no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent." Id. at 344-45. We see no material difference between the Commission’s test that focused on whether an "integral" component has been replaced, and the tests previously rejected by the Supreme Court that focus on whether an "essential" or "distinguishing" part, or part that is at the "gist" or "heart" of the invention, has been replaced. , 448Publish
U.S. 176, 217 (1980))).

. . . Thus, we conclude that the Commission erred in holding that the cameras in which full backs were replaced were impermissibly reconstructed; we hold that the replacement of the full backs was part of a permissible repair. We accordingly remand to the Commission for the limited purpose of considering an appropriate adjustment in the amount of civil penalties in light of our holding that the 998,250 [of the 27 million] LFFPs refurbished by replacing the full backs were permissibly repaired.