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Prosecution Lunch

Prosecution Lunch. October 2010. Bits and Pieces from the Patent Side. Crowing about reduction in pending cases From 750K a year ago to about 708K now As of Oct. 5, 168K utility patents issued in 2010 Calendar 2009: 167,350 Record: 173,772 in calendar 2006

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Prosecution Lunch

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  1. Prosecution Lunch October 2010

  2. Bits and Pieces from the Patent Side • Crowing about reduction in pending cases • From 750K a year ago to about 708K now • As of Oct. 5, 168K utility patents issued in 2010 • Calendar 2009: 167,350 • Record: 173,772 in calendar 2006 • Current pace: 1/3 more utilities in 2010 than in 2009; surpass record number in a few weeks

  3. Bits and Pieces from the Patent Side • New System of “Quality Metrics” • For reviewing “overall patent quality” • Derived from 7 separate metrics, including propriety of final and in-process actions, degree to which search and FAOM comport with “best practices,” and internal/external quality surveys • Extension of First Action Interview Program • Available for applications filed as of given dates, in given art groups • Possibility of facilitating early allowance • Request for FAI must be filed by April 1, 2011

  4. Patent Term Adjustments • Wyeth v. Kappos (FC 2010): undercalculated PTA • New PTA challenge may be brewing re: appeals • Many appeals return to Ex’r during briefing period, never reach BPAI • Examiner maintains control over the case during that period • 35 U.S.C. 154(b)(1): three parts for term guarantee • For delayed PTO responses (e.g. delay over 4 mos. in appeal) • For total pendency over 3 years (not incl. BPAI review) • For delays due to appeals if patent issued after decision • PTO has rejected PTA where notice and brief filed, then rejection withdrawn, if withdrawal is within 4 months of filing the brief

  5. Business Methods in Canada • Amazon.com v. Canada (Canada Fed. Ct. 2010). • CIPO rejected one-click appn. as “business method” • Not within definition of “invention” in the Patent Act • Notably, relevant statute closely follows 35 U.S.C. 101 • Federal Court of Canada reversed • Business methods patentable in appropriate cases • Mere “business scheme” or “disembodied idea” not patentable because they have no “practical embodiment” • Eligible because (1) system claims require machine as essential element and (2) method claims use “cookies, computers, the internet and the customer’s own action” with physical effect on those elements • Remanded for “expedited re-examination”

  6. Prior-Inventor Rights, NOT Prior-User Rights Solvay v. Honeywell (Fed. Cir. 2010) • Honeywell had invention in US before Solvay’s invention date • Copied from Russian agency under contract • No commercial use/publication before Solvay application   • 102(a): several in US knew invention prior to Solvay’s invention date • Honeywell kept confidential—no “public” knowledge, no invalidation • No prior-user defense here—only for business methods • 102(g)(2): invention by another was in US, not abandoned, suppressed, or concealed • But: Russians were original inventor; not an invention in the US • Honeywell not a prior inventor because it copied another’s work • FC: “inventor” under 102(g)(2) means “original inventor” • originality “inherent to the notion of conception,” ergo “invention in this country” means original invention in US

  7. World Intellectual Property Indicators, 2010 • Report based on 2008, some 2009 data • Trademark applications down 0.9% in 2008; Madrid registrations down 12.3% in 2009 • Patent applications up 2.6% in 2008, but 8 “large patent offices” show 2.7% decrease in 2009; 4.5% decline in PCTs in 2009 • Entire report available through WIPO

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