Archive for the ‘Uncategorized’ Category

Myriad article

September 10, 2013

I recently published an article on Primerus Paradigm related to the Supreme Court’s Myriad opinion.

Update: Pritzker Confirmed at Secretary of Commerce

July 1, 2013

Penny Pritzker has been confirmed as Secretary of Commerce by a vote of 97-1.  Sen. Bernard Sanders (I-VT) cast the lone dissenting vote.

Now we await Pres. Obama’s pick for the new Undersecretary and Director of the PTO.

Penny Pritzker Nominated as Commerce Secretary; PTO Director Next?

May 7, 2013

PritzkerPresident Obama has nominated Penny Pritzker to replace John Bryson who resigned as Secretary of Commerce last June.  Pritzker is a billionaire business executive, entrepreneur, civic leader, and philanthropist.

Pritzker has served in numerous roles in the Obama Administration, including as a member of the President’s Council on Jobs and Competitiveness and on the President’s Economic Recovery Advisory Board.  More importantly, she was involved extensively in each of the president’s campaigns serving as finance chair in 2008 and as co-chair of Obama for America in 2012.

This nomination may not easily pass the Senate.  Pritzker was also considered for the Commerce position in 2008, but withdrew her name amid controversies surrounding her and her families finances.

It is likely that President Obama will not nominate a new PTO director until the Commerce Secretary position is solidified.  David Kappos left the PTO in January.  Teresa Stanek Rea has been Acting Director since that time.

Call for Nominations for the Creative Achievement Award

March 7, 2013

The Intellectual Property Law Association of Chicago (IPLAC) is accepting nominations for its annual Creator of the Year Award honoring creative achievements in the Chicago metropolitan area. The Award recognizes the people or companies behind the creative works in areas protected by intellectual property law, including (1) patented inventions; (2) marketing and branding activities protected by trademark law, and (3) creative works of art, music and literature protected by copyright law. There is no time limit for the nominee’s creative work underlying the nomination. Nominees may include individuals as well as groups of individuals and corporations, and need not be the current owner of the corresponding intellectual property right. Most or all of the creative activity must have occurred in the Chicago metropolitan area.

Nomination deadline: March 15, 2013

Nomination forms are available on the IPLAC website ( ) or from Paul Korniczky ( or Tel: (312) 616-5662), Chair, Creative Achievement Award Committee

Virginia State Bar IP Section

January 15, 2013

2013 Student Writing Competition.  The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law.  The winner receives a cash prize of $4,000.  The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit.  The deadline for submissions is Friday, May 24, 2013 at 4:00 EDT.

A complete set of rules and a flyer for use in advertising the competition are attached.  Additional information is available at the section’s website:

Design Patents

August 2, 2012

Utility patents get all of the publicity in when discussing innovation.  Another option that an inventor may want to consider is a design patent.  Utility patents cover structural and functional aspects of an invention, while design patents cover the asthetic features.

Design patents differ from utility patents in a number of basic ways.  A design patent is granted to cover the ornamental design of an object that has practical utility.  For example, a design patent may be obtained for a new shape of a beverage container, the particular shape and features of the tread of a shoe, computer icons, and other items that have practical utility. 

A design patent is not permitted for something that exists for purely aesthetic reasons, such as a work of art.  A painting, sculpture, or other work of fine art would be protectable by copyright and possibly other intellectual property rights, but would not be eligible for design patent protection.

An invention may be entitled to both a utility patent and a design patent since a utility patent protects the structure of an article and the way it is used and works; a design patent protects the way an article looks.  If the design–the way the article looks–is dictated primarily by the article’s function, it would not properly be the subject of a design patent.  An example may be the shape of a gear that is designed primarily to fit with other gears and not for aesthetic purposes.

The requirements for obtaining a design patent are similar to that for utility patents.  The design must be novel and non-obvious; the examiner will perform a search of the prior art to be certain that the design meets these requirements.  Furthermore, the drawings must clearly show the features sought to be protected by patent.  The drawings will typically be more detailed than in a utility application as they will often show more views of the invention.  The drawings contitute the claims of the design patent.  Because they don’t require a detailed specification like a utility patent, design patents are also less costly to prepare and file.

Design patent protection lasts for 14 years from the date the patent issues compared to 20 years from the earliest filing date for a utility patent.  No maintenance fees are required for design patents.

Another advantage of design patents over utility patents is that they seem to be much easier to obtain.  In recent years, design patents have had an allowance rate of about 90% over the last few years, compared to utility patent allowance rates of under 50%.  Over 80% of design patent applications are allowed without rejection; only 1.2% are rejected based on prior art with a larger number rejected on formality grounds.

In an era of increasing backlog and pendency of utility applications, more than half of design patents are pending for less than a year, with the average pendency being about 16 months.  Applicants should keep in mind, however, that foreign design applications based on US applications (and vice versa) must be filed within 6 months of the first application filing.  This is a shorter time period than the 12 months for utility patent applications.

For an invention where design and utility patent protection are both appropriate, I would not skip the utility patent.  An inventor should at least file a utility application for its broader scope of coverage and should also consider a design patent.  A design patent would provide some protection while waiting for a utility patent to issue.  They are also cheaper since they don’t involve a great deal of preparation and prosecution.  Inventors should always consider whether their inventions are eligible for design and utility patent protection.

New Website for Patent Inventor Data

July 12, 2012

Attention Inventor Addicts, New Online Database

By Lauren Gurley, writing intern at FindTheBest

Here is a new, user-friendly index for those who are interested in the history of inventors and intellectual property or who are personally involved in the creation of patents you can find it all at:

More than just your average patent database, this side-by-side comparison tool has great facts about inventors and the various aspects of their inventions. Users have the option to search by a number of criteria such as the date that an inventor’s most important patent was issued, the number of U.S. patents, their field of study, and their home country.

Also, each inventor has a profile that includes their biographical information, and descriptions of significant inventions and their impact.

Whether you wish to research specific inventor or just want to browse the database for your next piece of trivia, is the perfect resource for inventor enthusiasts of all sorts.

Book Review: Fun IP

April 24, 2012

Fundamentals of Intellectual Property

By Dr. Kalyan C. Kankanala

Dr. Kankanala is an author and contributor to the SiNApSE blog that covers intellectual property news with a particular emphasis on developments in India.

Fun IP is a concise, albeit rather comprehensive, book that provides an introduction to the various aspects of intellectual property law.  It covers the basics of patents, copyrights, trademarks, geographical indications, industrial designs, trade secrets, and traditional knowledge.  For each regime of protection, the book lays out the requirements for obtaining the protection, what would constitute infringement, and various defenses and remedies available.

While the book is applicable to intellectual property generally, its specific focus is on intellectual property in India.  It is interesting to note the differences between the relatively young system of IP in India compared to more mature systems in the US and Europe.  For example, he notes how much more restrictive India is with respect to patentable subject matter and how brand name pharmaceutical companies are not winning infringement suits in India very often.

Trade secrets would seem to provide a particular problem to companies in India.  Dr. Kankanala notes that non-compete agreements that extend beyond the term of employment are invalid and cannot be enforced.  Further, the doctrine of inevitable disclosure permits the former employee to take his knowledge and skill to work for a competitor.  Thus, it would seem to be very difficult to protect trade secrets in India.

There are several aspects of Indian IP law for which there is no counterpart in the US or the counterpart is not of significance.  India includes a type of patent called a petty patent.  Such a patent protects incremental changes or improvements in a product or process that would otherwise be deemed obvious over the existing art.  The improvement need only meet the novelty requirement for approval.

The book includes a chapter on “Traditional Knowlege.”  Traditional knowledge is knowledge or information that is in the possession of indigenous communities and has been passed down from ancestors.  It is understood that this information is often not well documented.  The purpose of protecting the knowledge is to prevent its misuse by other parties, but also to keep others from obtaining IP protection for this information.  The book includes examples where the submission of traditional knowledge was used to oppose patent protection.

The book also includes a brief overview of the business value of IP and how businesses can educate and provide incentives to employees to protect and value IP.  It notes that Indian companies do not yet understand how to value and monetize their IP.  They also need to understand the risks associated with potential infringement of the IP of third parties.

Finally, the book concludes with a look at open source and the creative commons.  It covers various theories and licensing arrangements associated with the free use of intellectual property.

Overall, the book is a good introduction to the various aspects of intellectual property for the uninformed.  It is also a good resource for some of the nuances and variations that are specific to Indian IP law and practice.  Dr. Kankanala is a native of India and there are some awkward and non-traditional phrases in the book.  It could also use a bit more editing for spelling and grammar.  Overall, however, the book is a very good value and is priced very reasonably.  I would recommend the book.

Book Review: Patent Professional’s Handbook

February 13, 2012

A Training Tool for Administrative Staff

By Susan Stiles

Patent Professional’s Handbook is a training and reference guide for administrative support staff that work for a patent attorney or agent.  The book provides an overview of the patenting process, including summaries of the various documents that may be filed during prosecution.  The summaries provide a decent understanding of why various documents are filed without getting into the legal arguments or theory that is more appropriate for the patent attorney or agent.

The book details the various types of patent applications and other filings that need to be made during patent prosecution, such as IDS’s, amendments, assignments, priority documents, and others.  There are details on how to deal with applications after allowance, including payment of maintenance fees and the like.

The book covers how to conduct business with the PTO including how to file various papers.  There are details on hand delivery, fax submissions, mail submissions, and electronic filing.  The book does get a bit redundant in detailing the same procedures over and over for filing many different types of documents.

The book includes a number of checklists and charts that can be used by an administrative professional at various points in the process, such as when filing an application, an IDS, or an amendment, or when reviewing a notice of allowance.  There is a glossary of terms that can be helpful to newer professionals.

The handbook clearly took a lot of time to prepare.  It includes a large number of addresses, phone numbers, and web page links associated with the PTO.  I am worried that if the material is not updated regularly that much of the material will quickly fall out of date.  The risk of that happening is especially great at this time as the PTO is changing many rules and procedures to comply with the America Invents Act.

AIPLA offers a legal secretaries and administrators course, but I am not aware of any other reference book like this that is directed specifically to non-attorney administrative support personnel.  The book is quite detailed and can be used both as a training tool and a reference guide.  It does a good job in both respects and for those purposes, I would recommend it.


The author has informed me that she is currently working on a 2012 edition that should alleviate my concerns about the material becoming dated.  This edition should be available in the coming weeks or months.

Patent Mass Aggregators

January 31, 2012

There has been a great deal of news recently about large patent portfolio acquisitions, such as Google’s $12.5 billion acquisition of Motorola Mobility that includes a portfolio of more than 17,000 patents and patent applications, or Apple, Microsoft, and RIM pooling resources to acquire Nortel’s 6,000 patent portfolio for $4.5 billion.

In a new study with results recently published in the Stanford Technology Law Review, Tom Ewing and Robin Feldman, law professor at the University of California-Hastings, discuss specifically the case of Intellectual Ventures and patent mass aggregators.  Intellectual Ventures has become one of the top 5 owners of U.S. patents.  The authors estimate that their portfolio includes 30,000-60,000 patents worldwide.  Their study recites potential positive and negative effects of such large numbers patents being owned by a single entity.

An Abstract of their article is below.  The complete article is available at:

The Giants Among Us

Tom Ewing & Robin Feldman

2012 Stanford Technology Law Journal 1


The patent world is undergoing a change of seismic proportions. A small number of entities have been quietly amassing vast treasuries of patents. These are not the typical patent trolls that we have come to expect. Rather, these entities have investors such Apple, Google, Microsoft, Sony, the World Bank, and non-profit institutions. The largest and most secretive of these has accumulated a staggering 30,000-60,000 patents.

Investing thousands of hours of research and using publicly available sources, we have pieced together a detailed picture of these giants and their activities. We consider first the potential positive effects, including facilitating appropriate rewards for forgotten inventors, creating a market to connect innovators with those who can manufacture their inventions, and most important, operating as a form of insurance – something akin to an Anti-Troll defense fund.

We turn next to the potential harmful economic effects, including operating as a tax on current production and facilitating horizontal collusion as well as single firm anticompetitive gamesmanship that can raise a rival’s costs. Most important, we note that mass aggregation may not be an activity that society wants to encourage, given that the successful aggregator is likely to be the one that frightens the greatest number of companies in the most terrifying way.

We argue that mass aggregators have created a new market for monetization of patents. It is vast, rapidly growing, and largely unregulated. We conclude with some normative recommendations, including that proper monitoring and regulation will require a shift in the definition of markets as well as a different view of corporations and their agents.


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