IP News

Staas and Halsey LLP Newsletter   

USPTO Seeks Ability to Spend Higher Fee Income from Congress

The U.S. Patent and Trademark Office is urging Congress for assistance in its funding for fiscal 2010, based on projections of this year's budget. A letter was sent to Congress on Monday, January 5, 2010, from USPTO director, David Kappos, urging Congress to assist the USPTO in this financial matter. No decision has been made as of now on Congress' behalf.

Oral Arguments Held in Bilski Case

On November 9, 2009, the U.S. Supreme Court heard oral arguments in Bilski v. Kappos. The outcome of this decision is likely to affect the patentability of software and business method patents.  

Businesses "Go Green" With Patents

A number of large businesses have decided to "Go Green" by sharing their ecological patents with the public for a common good. The Eco-Patent Commons, which was launched in January of 2008, allows companies to submit ecological patents to the public in order to help the environment. The Eco-Patent Commons is free for any company to join and currently has helped over 100 patents become available to the public.  

Five Universities Will Shift Patent Policy to Assist the Poor  

Harvard University, Yale University, Brown University, The University of Pennsylvania, and Boston University have pledged to alter their patent policies to aid the world's poor population. The new patent policies will encourage distribution of medicines at lower cost to poorer countries. The policy will commit the universities to make extreme efforts to promote global access to drugs through licensing strategies.  

Michael Jackson Patented an "Anti-Gravity Illusion" 

One of Michael's signature dance moves was made possible by a device the entertainer invented. As shown in the "Smooth Criminal" video, the novel shoe design allowed the wearer to lean forward at an extreme angle without falling. Jackson and two others were awarded U.S. Patent 5,255,452 on 10-26-93, titled "Method and Means for Creating an Anti-Gravity Illusion".

Bill Gates Ventures into the Patent World for Hurricane Prevention 

Bill Gates, founder of Microsoft, has filed five patent applications for a system that the inventor hopes will prevent future devastating hurricanes. Along with ex-Microsoft CTO Nathan Myhrvold, Gates has applied for five patents that call for a fleet of specially equipped vessels to be deployed in a hurricane's path. The vessels that are capable of reducing the surface temperature of the ocean by mixing in colder water from greater depths. This would reduce the heat-driven condensation that fuels hurricanes.

Nick Godici, former Commisioner for Patents, appointed "Special Advisor" to the USPTO

The U.S. Patent and Trademark Office announced that Secretary of Commerce Gary Locke (at right) has appointed Nicholas Godici "to look at ways to strengthen the management structure of the USPTO and provide an up-to-date assessment of the challenges the office faces." The USPTO release notes that Mr. Godici will serve as a consultant for 180 days, working with USPTO officials "to identify areas of concern and to assist in the transition to a new director."   

Creators of "Pirate Bay" sentenced in copyright infringement trials

The originators and financers of the website "Pirate Bay" which is used primarily as a file sharing service were sentenced by a 10,000 Swedish court to pay a fine of $3.6 million each and spend a year in jail for copyright infringement. Entertainment companies such as Warner Bros., Sony Music Entertainment, and Columbia Pictures were demanding retribution for Pirate Bay's alleged assistance in allowing users to infringe on copyrighted material.

Expert Committee pushes for Patenting Micro-organisms

A group lead by former director general of the Council of Scientific and Industrial Research (CSIR), R.A. Mashelkar, has suggested allowing patents to be issued in India for micro-organisms. Currently, patents are allowed to be issued for new chemicals or medical entities. The expert group has written an in-depth report for submission and is hoping to change the current rules of India's patent system.

Discovery sues Amazon over the Kindle

Discovery Communications Inc has sued Amazon, stating the online retailer's "Kindle" product infringes its patent on electronic book technology. Filed in December of 2007, the patent was received originally by founder of Discovery Communications, John Hendricks.    

Tafas v. Doll, Case Decision

On March 20, 2009, the Federal Circuit reversed a District Court's summary judgment decision which had invalidated the United States Patent & Trademark Office's ("USPTO") Final Rules. Specifically, the Federal Circuit found that the Final Rules were procedural rather than substantive in nature, and were therefore promulgated within the USPTO's rulemaking authority.

However, the Federal Circuit held that Final Rule 78, which limited the number of continuation applications an applicant could file, conflicted with 35 U.S.C. § 120 and was therefore invalid. Final Rule 114, which limited the number of Requests for Continued Examinations (RCEs) and Final Rules 75 and 265, pertaining to an examination support document ("ESD") requirement in applications with more than 5 independent claims or 25 total claims, were upheld.

In remanding the case to the District Court, the Federal Circuit stated that its holding did not address whether the Final Rules were arbitrary and capricious, impermissibly vague or conflicted with the Patent Act in ways not specifically mentioned. Judge Rader, in a vigorous dissent, would have affirmed District Court's decision and found the Final Rules to be substantive in nature and outside the authority of the USPTO.

Larson Man. Co. v. Aluminart Prods. Ltd., Case Decision

On March 18, 2009, the Federal Circuit vacated a District Court's finding of inequitable conduct in the case of Larson Man. Co. v. Aluminart Prods. Ltd. Specifically, the Federal Circuit found that three references Larson failed to disclose during a reexamination proceeding were cumulative and not material. However, the Federal Circuit agreed with the District Court that two Office Actions from a related continuation application that were also not disclosed were material. The Federal Circuit stated: "the adverse decision of the examiner in the '039 Continuation, based on a different explanation and interpretation of the Kemp patent and other prior art, was 'clearly information that an examiner could consider important.'"

However, because the District Court had based its inequitable conduct finding on Larson's failure to disclose the references and Office Actions, the Federal Circuit remanded the case to the District Court for a determination as to whether Larson intended to deceive the USPTO based only on Larson's failure to disclose the two Office Actions.

Client News - Gracenote Inc. releases a MusicID Application for the iPhone

Gracenote Inc, a global media management technology corporation, has released a music recognition identification system for the iPhone. This application allows the user of the iPhone to hold up their iPhone to music, and with a database of 100 million songs, identifies the music for the user. The application itself will be released by Gravity Mobile, which was acquired by Gracenote in 2008.

Client News - ChaCha Featured on NBC's Nightly News Television Program

Cha Cha, the search engine that employs "human guides" to answer the questions of its patrons, was recently featured on NBC's Nightly News as a successful startup company in the segment, "Search Engine Wars Spawn Startups". Cha Cha was originally created by Scott Jones and was introduced on September 1, 2006.

Recognition - STAAS AND HALSEY LLP Ranks in Top 15 Patent Firms for 2009

STAAS AND HALSEY LLP is pleased to announce that it has been ranked in the top 15 patent firms in the United States among more than 350 law firms, according to the magazine, "Intellectual Property Today". With over 1,130 U.S. utility patents and over 310 U.S. design patents issued for its clients, Staas and Halsey LLP continues its proven, outstanding track record specializing exclusively in the field of patents and other intellectual property services for over 38 years.