Jan 282011

In an article explaining the interplay between patents and trade secrets, John L. Dupre and James M. Smith from Hamilton Brook Smith & Reynolds break down the two systems.The article called When to Choose Trade Secret Protection over a Patent published a few weeks ago in I Am Magazine.

Three take-homes that an inventor should consider when determining which approach is best for him.

1) How easy would it be to reverse-engineer. Mechanical inventions, for instance, can be disassembled and put back together. If easy reverse-engineering, patent protection is a great avenue providing 20 years of protection as the exact implementation is publicly available. If hard to reverse-engineer, a trade secret could be a better approach as it has less application costs, could protect you longer than a patent, and is enforceable outside the U.S.

2) The difficulty in determining whether your invention is being infringed. If it would be difficult to reverse engineer a competitor’s version of your invention to see that they infringe, patent protection might not be the best option. FTA: “If the patent holder cannot reverse engineer an infringing product to determine whether the rights in the patent have actually been used, the patent may be difficult to enforce.”

A good, basic read for someone who has a basic understanding of intellectual property.

 Posted by at 10:29 am
Jan 262011

A few years ago, I took a class at the Harvard Extension school entitled Internet and Society: Technologies and Politics of Control. We covered a lot of emerging Internet concepts including the power of the masses and net neutrality. A lot of the concepts we covered were very much in their infancy  including Wikileaks, Amazon’s mechanical Turk, Wikipedia and crowdsourcing. I recently came full-circle with crowdsurfing on my blog. According to Wikipedia, crowdsourcing is the act of outsourcing tasks, traditionally performed by an employee or contractor, to an undefined, large group of people or community (a crowd), through an open call. While doing price checks for patent translation services, I came across a free translation WordPress plugin by GTS Translation. The plugin provides a widget (utilizing crowdsourcing) that allows you (or your readers) to convert your blog (or whatever other text you have) into Spanish, French, or German. It also caches the results so that search engines can mine your content in other languages.

I have used computer-generated translation services before. Google’s translate service, for instance, used to be awful, but has made a lot of improvements lately. I was expecting this plugin to be awful as well because most of my posts are very specific and it would take someone that knows what I’m talking about in English to make a good translation into another language. But I don’t know French, Spanish, or German to really evaluate each translation. That is why I was pleasantly surprised when my good friend Spencer looked at it for me and informed me that a reader could get the gist of what I was talking about. To me, that is the most important. I am sure the technology will only get better as more people participate in crowdsourcing. My next hope is that they offer additional languages, like Russian.  After all, the world is obviously becoming increasingly interconnected. You may as well get your message to this increasingly interconnected audience.

The plugin can be found here.

 Posted by at 6:33 am
Jan 212011

In Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., the defendant failed to disclose that a 2-hour data point was not part of a test protocol and that a correction factor had not been applied to that p-value. This data point was the only one to produce a p-value of less than .05. The invention, however, went on to say that there was statistical support for synergy. In fact, Sturis said in a declaration to the examiner that the evidence “strongly suggests” synergy. However, he did not disclose statements that by his own standards, neither the rat study nor the Moses study established synergy in humans.

The court held that there was clear and convincing evidence that the opinions Sturis offered regarding synergy was material to the patentability of the claim at issue. This, because they refuted or were inconsistent with the opinions expressed in his Declaration in support of patentability. 37 C.F.R. §1.56(b)(2). The examiner would have wanted to know about this negative view on synergism, as this view was inconsistent with a later “strongly suggests synergy” declaration which the examiner most likely relied on to overcome obviousness.

The take-home message here is that you need to disclose what a reasonable examiner would have wanted to consider, be it qualifications or reservations held by the scientists concerning the conclusions he expressed in his Declaration.

Additionally, the Bork statement was also an example of inequitable conduct. After Sturis’ declaration, Bork represented this to the examiner:

Applicant therefore submits that the data presented in the application, in combination with the data presented in the Declaration of Dr. Sturis, provides clear evidence of synergy for the use of the claimed combination of repaglinide and metformin in the treatment of type II diabetes.

The court held that Bork’s representations to the examiners, to get around the final rejection, went beyond aggressive advocacy, in light of what he knew. Sturis’ “strongly suggests” was much more than Bork’s “clear evidence” of synergy.

Bork then got an email from Sturis containing explicit contrary information. The court noted that the duty to disclose to the examiner lasts until the issuance of the patent. 37 C.F.R. §1.56(a).

The take-home message from Bork is a message I learned while in the class Professional Responsibility: you have to stay within the reasonable limit of aggressive advocacy. Even though you may want something very badly for your client, it should never take precedence over the code of ethics that you have agreed to abide by.

In conclusion, Sturis and Bork both had an intent to deceive the Patent Office. Sturis, by withholding his opinions; Bork, by misstating key conclusions by his exaggerations. This inequitable conduct made the patent at issue unenforceable. Basically, this patent was invalidated on two fronts today. Rest in peace ‘358 patent, rest in peace.

 Posted by at 7:22 am
Jan 202011

PLI has put out a very good piece explaining inter-partes reexamination. http://patentlawcenter.pli.edu/wp-content/uploads/2011/01/INTER-PARTES-REEXAMINATION-MECHANICS-AND-RESULTS1.pdf. Here are some key take-homes:

The two types of reexaminations differ in cost and the role the party has after filing the request for reexamination. Ex parte reexaminations cost $2520 while inter-partes are $8800. Once a member of the public files a request for an ex parte reexamination, his role is over while in an inter-partes proceeding, he continues on as a party.

Inter partes requests must be based on patents or publications, not related to other questions of invalidity such as prior use or sale. 35 U.S.C. § 301.

Not all patents qualify for these proceedings. If the patent’s original application was filed before November 29, 1999, the patent is not eligible for inter-partes reexamination. The patent would only be available for ex parte reexamination.

Eight things are required for inter partes reexamination, other than the fee:

(1) An identification of the patent by patent number and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of thissection, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.
(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.

A substantial new question of patentability must be raised.

Special dispatch is the categorization of these types of proceedings in terms of their priority at the USPTO. I don’t know exactly if this has a definite meaning, however, other than more special than not.

 Posted by at 12:27 pm
Jan 182011

My last semester in law school will actually be at a small bio-tech startup. I feel pretty good about getting practical experience in an area I am interested while avoiding the midterms, the papers, and finals of law school.

On my first day, I have realized that there is a lot of work to do. So far I have sat through a conference discussing a receptor in great detail, I have started reading a biology book, I have read an agreement with a company’s licensee, and I have started reading Robert C. Kahrl’s Patent Claim Construction.

Here are some of my goals that I want to get out of my new experience:

I would like to work on patentability studies of technology relevant to the company. If I get the chance of using Innography, I will become more familiar with the program. Otherwise,  I look forward to using other prior art search programs. If the chance presents itself, I would like to draft patent applications and office actions–further expanding my patent experience. In addition to drafting patent applications and researching the patentability of technologies, which I have already done to some extent previously, this experience will allow me to work with licenses and agreements. I would like to learn how to modify or draft agreements. I also look forward to the opportunity of conducting training on recent changes in the patent law to the scientists who may not have much experience in that area. I would like to be mentored with a decent level of supervision, but allowing me space to figure some things out on my own. This I feel is the appropriate balance for me, preparing me to enter the job market running. But I am excited to interact with a broad range of attorneys.

 Posted by at 12:55 pm
Jan 132011

Some of you may recall my fascination last year with the distinction in software between a license and a sale. I argued that it makes more sense to consider computer program transactions as sales rather than licenses. Well since my post, a lot has changed in the patent-eligibility landscape. The Supreme Court in Bilski went deep into analyzing process patents. Even though the Court sidestepped software, opening it up for a future time, some of the issues it raised with regards to general process claims were quite interesting.

Just the other day I was reading about particular exercises used to optimize the human body in certain ways. True to my patent-law geek form, I immediately thought about the patentability of such exercises as novel techniques. As the dissent in Bilski pointed out, a couple hundred years ago, processes people would not have thought about patenting, are today at least being considered for patentability. Without saying whether this is a good or a bad thing, it is interesting that process patents are finding their own niche in the realm of inventions. This refinement has a long ways to go in terms of defining what a non-patentable process is, such as an abstract idea.

I’d like to take you back to my post about the difference between sales and licenses. If I teach someone else how to do a process in exchange for something in return, is this a sale or a license? It may depend on how the arrangement is set up. According to the MPEP, however, it is per se a license. You see, I’m currently studying for the USPTO registration examination and I just read a section in the patentability section of the MPEP, discussing the 102(b) sale requirement.

A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. “‘Know-how’ describing what the process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction. However, such a transaction is not a ‘sale’ of the invention within the meaning of §102(b) because the process has not been carried out or performed as a result of the transaction.” In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002). MPEP 2133.03(c) (8th Ed. 4th Rev.)

This simplifies process patents for now, applying a broad brush stroke to all process patents not being sales, but I am predicting that the delineation will soon need to be more precise. Some process patents are gray in their conceptualization and I sometimes like the challenge of exploring gray areas. More to come.

 Posted by at 10:37 pm