THURSDAY, OCTOBER, 11, 2007, 9:30 a.m.

USPTO EASES CERTAIN RETROACTIVE AND OTHER REQUIREMENTS IN NEW PATENT RULES ON CONTINUATIONS AND CLAIMS -- Yesterday the USPTO posted a notice relaxing certain requirements for implementing the new patent rules on continuing applications and claims.  The notice is entitled “Clarification of the Transitional Provisions Relating to Continuing Applications and Applications Containing Patentably Indistinct Claims.”  The USPTO has withdrawn the requirement for patent applicants who filed an application before November 1, 2007 to identify other pending applications that were filed within two months of the application and are owned by the same person and name a common inventor, except for applications that have precisely the same filing date.  The notice also delays the requirement to identify claims in a continuation-in-part application filed before November 1 that are supported by the parent application, clarifies the “one more” continuing application provision, and states that the meaning of “examined” does not include PCT examination for purposes of one rule.  See the text of the notice for details.  The USPTO website states that the notice was signed on October 10.

IPO’S FEDERAL CIRCUIT SUMMARIES™:

*   *   *   State University Waived Sovereign Immunity Defense Against Suit by Inventor by Agreeing to Contract Language -- Baum Research and Development Co. v. University of Massachusetts at Lowell 2006-1330 -- On October 10 in an opinion by Judge Newman, the Federal Circuit upheld a district court ruling that the university, an arm of the State of Massachusetts, waived its 11th amendment immunity from suit in a contract dispute arising out of a patent license.  Baum was an inventor of a device for testing baseball bats who executed a license agreement with the university containing a clause stating that “all parties agree to submit to jurisdiction in the appropriate . . . Federal Courts . . . in the State of Michigan.”  The Federal Circuit agreed the contract met the standard of the College Savings Bank case for an unequivocal waiver. 
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP SUITS -- Compiled from newswire reports and other sources:

Vonage Holdings, an Internet phone service provider, settled a suit by agreeing to license more than 100 Internet telephone patents from Sprint Nextel for $80 million.  On Monday the price of Vonage stock more than doubled.  (Washington Post)

PATENTS AND STANDARDS CONFERENCE -- IPO’s November 5 conference on Patents and Standards: Managing Your IP in the Digital Age in Washington, DC will include a panel on Key Issues for Standards Licensing.  This panel, moderated by Marc J. Braner, Intel Corp., will explore the pros and cons and the business and legal issues associated with the RAND licensing model, as well as explore differences in how ex ante licensing is viewed by government, geographic region and business model.  Panelists include Larry M. Goldstein, Sedna Patent Services, LLC, Amy A. Marasco, Microsoft Corp., Robert A. Skitol, Drinker Biddle & Reath LLP, Richard S. Taffet, Bingham McCutchen LLP, and Hill B. Wellford, U.S. Department of Justice.  For more information and to register, please click here.