Past Week’s Daily News™
Wednesday, November 25, 2015 12:33 pm
2016 IPO STANDING IP COMMITTEES ANNOUNCED
IPO is pleased to announce the list of 2016 Standing IP Committees! The list is similar to the 2015 list, with a few changes. Stay tuned to the Daily News for more information on how to sign up for the 2016-2017 committee term.
IPO QUESTIONS USPTO’S PROPOSED PATENT FEE INCREASES
Yesterday IPO President PHILIP JOHNSON (Johnson & Johnson) sent a letter to the USPTO in response to a request for public comments on the Office’s Proposed Patent Fee Schedule. IPO expressed appreciation that the USPTO did not propose any increase in the maintenance fees for patent owners. The letter questioned, however, the proposed 25% fee increase for exceeding 3 independent claims and 20 overall claims, which IPO argued does not comport with actual patent prosecution practices. Among others, the letter also questioned the proposed fee increases related to appeals, information disclosure statements, and requests for continued examination (RCE) and recommended changes to after final practice to ameliorate the need for RCEs. The letter argued that the drastic increase in design patent filing (48.4%) and issue (79%) fees related was unwarranted and could decrease the incentive to develop and protect new designs.
A subcommittee including members from IPO’s U.S. Patent Office Practice, Industrial Designs, and U.S. Post-Grant Practice Committees, and particularly COURTENAY BRINKERHOFF (Foley & Lardner), BRENT DOUGAL (Knobbe), ELIZABETH FERRILL (Finnegan), KEVIN GREENLEAF (Dentons), MELISSA HANSEL (Nelson Mullins Riley Scarborough), QUIN HOELLWARTH (Apple), KAVEH RASHIDI-YAZD (Siemens), SUNJEEV SIKAND (RatnerPrestia), and SEAN SULLIVAN led the efforts in preparing the comments.
U.S. SENATE TO DISCUSS TRADE SECRET THEFT
On Wednesday, December 2, the Senate Judiciary Committee will hold a hearing titled “Protecting Trade Secrets: the Impact of Trade Secret Theft on American Competitiveness and Potential Solutions to Remedy This Harm.” The hearing will be held at 10:00a.m. ET in Room 226 Dirksen Senate Office Building. It will likely be webcast.
INTRODUCING IPO’S WOMEN IN IP LAW COMMITTEE
IPO is pleased to offer a new committee for the coming term, the Women in IP Law Committee. This committee will focus on issues affecting women in the workplace, how to engage more women in IP, and other special projects. This is the first committee of its kind for IPO and you can be a part of shaping it! Sign up for this committee beginning December 1!
PUBLIC ADVISORY COMMITTEES ISSUE 2015 ANNUAL REPORTS
This week the Patent Public Advisory Committee and Trademark Public Advisory Committee issued their annual reports for fiscal year 2015. Created by the American Inventors Protection Act of 1999, the committees advise the USPTO Director on the management of patent and trademark operations as representatives of USPTO users’ interests. The committees review the policies, goals, performance, budget, and user fees and report annually on these matters to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives.
IP IN THE MASS MEDIA
Edie Parker Sues Rival for Infringement of Handbag Design
Yesterday Vogue UK reported that handbag company Edie Parker sued Bag Box for trade dress and copyright infringement, claiming its bags copy various elements of Parker’s signature square handbags. Edie Parker also sued for trademark infringement, claiming Bag Box used Edie Parker logos on its website to confuse consumers.
Megaupload Founder’s Extradition Trial Ends in New Zealand
The trial to determine whether to extradite file-sharing site Megaupload’s founder KIM DOTCOM and three others to the U.S. to stand trial on criminal copyright infringement charges ended yesterday in New Zealand. The judge’s verdict is not expected for several weeks. (AP)
NEXT IPO DAILY NEWS ON MONDAY
The IPO office in Washington, DC will be closed on Thursday and Friday for the Thanksgiving holiday.
Tuesday, November 24, 2015 12:50 pm
USPTO ANNOUNCES LAUNCH OF DOSSIER ACCESS AS PART OF GLOBAL DOSSIER
Yesterday, the USPTO announced that it has launched “Dossier Access,” the first service associated with the Global Dossier project. The Office described this service as “a user-friendly online interface, which will make it easier for patent applicants to quickly and easily view, monitor, and manage intellectual property (IP) protection around the world by providing access to the dossiers of related applications filed at participating offices.” Dossier Access will enable the public to obtain timely, reliable, understandable, standardized, and high quality data. The USPTO intends to seek public input throughout the entire Global Dossier development process. In addition to the USPTO, the European Patent Office, Korean Intellectual Property Office, and China’s State Intellectual Property Office currently provide a Global Dossier portal to the public. The Japan Patent Office plans to introduce its portal in 2016.
KNOW SOMEONE WHO NEEDS TO LEARN IP BASICS?
Buy them a copy of Intellectual Property Law for Dummies! This handy resource is the result of a collaboration between IPO Education Foundation and attorney/author NEIL MILTON. It covers everything from basic definitions of utility and design patents, trademarks, and copyrights to enforcing IP rights and incorporating IP into business strategy—all in a quick 117 pages! IP Law for Dummies is a quick read for students, independent inventors, and paralegals and administrators who might not have a background in U.S. IP law. Don’t wait! Order your copy today!
NEW IPO MEMBER
ALAN DATRI of Memphis, Tenn. has become an individual member of IPO.
IP IN THE MASS MEDIA
Apple Did Not Infringe ContentGuard Patents
On Friday a Texas jury found that Apple did not infringe five patents on digital rights management technology owned by ContentGuard Holdings. The jury also found that Apple did not prove the patents were invalid. (Reuters)
Samsung and Huawei Infringed LTE Standards-Essential Patent
Yesterday Unwired Planet, Inc. announced that the UK High Court found that Samsung and Huawei infringed one of its patents essential to LTE wireless telecommunication networks standards.
IPO ADVOCATES FOR YOU
On behalf of its members, IPO advocates reforms to provide cost-effective and reliable intellectual property programs. IPO positions are communicated to Congress, the U.S. Patent and Trademark Office, the U.S. Copyright Office, the U.S. Trade Representative and other administrative agencies. IPO also files amicus briefs in select cases of interest to a broad cross-section of IPO membership in order to influence government IP policy for the benefit of members. For more information about all of these activities, explore the Advocacy section of the IPO website. For more information about IPO’s government relations programs, email Samantha Aguayo at firstname.lastname@example.org.
Monday, November 23, 2015 12:56 pm
JOIN IPO EDUCATION FOUNDATION ON DEC. 8 TO HONOR 2015 AWARD WINNERS
IPO Education Foundation is hosting its annual Awards Dinner on Dec. 8 at the Smithsonian American Art Museum and National Portrait Gallery in Washington, DC. The black-tie optional event is a time for the IP community to come together to recognize stars in the field as well as upcoming young inventors and filmmakers. The Foundation will recognize our 2015 Inventor of the Year, JAY WALKER; Distinguished IP Professional, HERB WAMSLEY; IP Video Contest winners; and the Spirit of Innovation Challenge Grant winners.
ATTORNEY FEE SHIFTING IN PATENT SUITS IN U.S. DISTRICT COURTS: WEEKLY REPORT
On November 17, Judge TRENGA in the Eastern District of Virginia denied the accused infringer’s motion for attorney fees. Intellectual Ventures, LLC v. Capital One Financial Corp.
IPO COMMITTEE CALLS THIS WEEK
Wednesday, November 25
Latin American Practice – 10:00a.m. ET
UHTHOFF GOMEZ JOINS IPO
Uhthoff Gomez Vega & Uhthoff of Mexico City, Mexico (primary contact ESTHER GAMBOA DE MENDOZA) has become a law firm member of IPO.
IP IN THE MASS MEDIA
Huckabee Campaign Sued for Playing “Eye of the Tiger” Without Permission
Last week Reuters reported that FRANK SULLIVAN, guitarist and founding member of rock band Survivor, sued presidential candidate MIKE HUCKABEE’s campaign for playing “Eye of the Tiger” without permission during a rally.
Washington Post Patent Series Addresses Venue
On Friday the Washington Post continued its series of opinion pieces on the U.S. patent system with an article titled “A patent form we can all agree on” by Professors COLLEEN CHIEN of Santa Clara University School of Law and MICHAEL RISCH of Villanova University School of Law. The professors write that “the staggering concentration of patent cases in just a few federal district courts is bad for the patent system” and suggest limiting where patent lawsuits can be filed.
USPTO Director Lee to Speak at SXSW
On Friday the 2016 South By Southwest Interactive Festival announced that USPTO Director MICHELLE LEE will moderate a featured session titled “Changing the Pace and Face of Innovation.”
REACH THOUSANDS WITH YOUR BRAND
Through IPO, you can get your brand in front of thousands of practicing IP professionals in 2015. Various advertising packages are available on the popular IPO.ORG website or in the IPO Daily News™. For details, availabilities, or to reserve your space, contact Nicholas Evans at 202-507-4505 or email email@example.com.
Friday, November 20, 2015 1:02 pm
HOW PATENTS MADE ALL THE DIFFERENCE FOR ONE ENTREPRENEUR
GWEN JIMMERE’S road to creating a business about which she felt passionate was not easy. But once she could see the way forward, she knew that getting a patent on her core product was a necessity. As the first black woman to own a patent for a natural hair care product, Ms. Jimmere says that the prospect of applying for a patent seemed daunting. “I had no problem getting trademarks and I had copyrights, but patenting is a whole other beast,” she says. At her mother’s urging, she spent months researching the patent laws and was granted a patent on her Moroccan Rhassoul 5-1 Clay Treatment, ultimately putting her company, NATURALICIOUS, “in a whole new league.”
In this latest Innovator Insights interview, learn more about Ms. Jimmere’s road to patenting and why she believes that minority and women entrepreneurs in particular should invest in IP protection.
USPTO COMMITTEE DISCUSSES PROPOSED PATENT FEES
Yesterday the Patent Public Advisory Committee (PPAC) held a hearing on proposed patent fee adjustments announced by USPTO Director MICHELLE LEE last month. Under section 10 of the America Invents Act, the USPTO may set or adjust patent fees subject to a public hearing by the Patent Public Advisory Committee. Director Lee said the agency’s goals in proposing fee adjustments were to cover the aggregated estimated cost of patent and trademark operations and to ensure a sustainable funding model including an adequate operating reserve fund.
Chief Financial Officer TONY SCARDINO said the revised fee structure would better align fees with cost and would enable the USPTO to maintain minimum patent operating reserves of $300 million to fund the agency for about one month in a financial emergency. Scardino commented specifically on a few proposed fees, including Patent Trial and Appeal fees—the current fees cover only about 50% of cost because initial fee setting required estimating potential cost. Actual, historical cost is now available and was used for the proposed fee.
Scardino said the proposal was not final. PPAC will issue its report and the USPTO will publish a notice of proposed rulemaking in the Federal Register in the spring of 2016. The final rule will be published in fall of 2016 and implementation of the final rule is expected by January 2017.
Written comments on the preliminary proposal are due to PPAC by November 25. Several IPO committees are assisting with preparing IPO’s comments.
USPTO CHIEF FINANCIAL OFFICER REPORTS FEE COLLECTIONS, SPENDING FOR FY2015
During yesterday’s regular quarterly Patent Public Advisory Committee meeting, Chief Financial Officer TONY SCARDINO reported that the USPTO collected a total of $3 billion in fiscal year 2015. This was $458 million less than the $3.458 billion appropriated for FY2015 and $142 billion less than the $3.142 billion estimate reported in the fiscal year 2016 President’s Budget. Spending for 2015 totaled $3.18 billion. The end of year operating reserve totaled $504 million.
For fiscal year 2016, the current continuing resolution expires on December 11. It funds the USPTO at a seasonally adjusted rate of $3.5 billion. The Office is working on its fiscal 2017 President’s Budget submission to the Office of Management and Budget.
NEW IP RESOURCE FOR THE NON-IP COMMUNITY
IPO Education Foundation is pleased to announce a new publication: Intellectual Property Law for Dummies! This brief (117 page) primer that explains the types of IP and how to obtain and use IP rights is an ideal reference guide for independent inventors, students, and anyone wanting to get a basic understanding of U.S. IP law. Copies of the book may be purchased in bulk and make great gifts for clients and new associates. Order your copy today!
IP IN THE MASS MEDIA
YouTube to Pay Users’ Legal Fees to Protect Fair Use
Yesterday YouTube announced that it would pay legal fees for a small number of users it says were accused of copyright infringement for using content in a manner that constituted fair use. (New York Times)
Washington Post Patent Series Addresses Pro-Reform Perspective
Yesterday the Washington Post continued its series of opinion pieces on the U.S. patent system with an article titled “Patents are supposed to encourage innovation. Without reform, they’ll do the opposite” by Engine Executive Director JULIE SAMUELS.
Thursday, November 19, 2015 1:20 pm
SMITHSONIAN SECRETARY SKORTON TO PRESENT INVENTOR OF THE YEAR AWARD
IPO Education Foundation is pleased to announce that the Secretary of the Smithsonian Institution DAVID J. SKORTON will present the Inventor of the Year Award to JAY WALKER at the Foundation Awards Dinner on December 8.
Dr. Skorton assumed leadership of the Smithsonian in July of this year after serving as the president of Cornell University, Mr. Walker’s alma mater. Dr. Skorton is a cardiologist whose research focus is congenital heart disease and cardiac imaging and image processing. He is a strong proponent of business-university partnerships and has worked to bring government, business and universities together toward diversifying regional economies.
You are invited to attend the Awards Dinner, which will be held at the Smithsonian American Art Museum and National Portrait Gallery in Washington, D.C.
USPTO COMMITTEE MEETS TODAY FOR REGULAR BUSINESS AND SPECIAL HEARING ON PROPOSED PATENT FEE ADJUSTMENTS
The Patent Public Advisory Committee (PPAC) holds its regular quarterly meeting today from 9:00a.m. – 1:45p.m. ET in the Global Intellectual Property Academy at the USPTO’s Alexandria campus. Topics for discussion include updates on the quality initiative, section 101 examination guidance, and the global dossier. IPO members can attend the public session or watch online. The agenda and a link to the webcast are available on the USPTO website.
Following the regular meeting, from 2:00p.m. – 4:00p.m. PPAC will hold a public hearing on the proposed patent fee adjustments announced by USPTO Director MICHELLE LEE last month. The hearing agenda and a link to the webcast are available on the USPTO website.
TODAY ON IPO’S IP CHAT CHANNEL: USPTO’S AFTER FINAL CONSIDERATION PILOT: TIPS TO REACH ALLOWANCE
Tune in to the IP Chat Channel today at 2:00p.m. ET to discuss USPTO’s After Final Consideration Pilot: Tips to Reach Allowance. Panelists include TARIQ HAFIZ, USPTO; DAVID LONGO, Oblon; and ELI LOOTS, Knobbe, Martens, Olson & Bear, LLP. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.
TERGAU & WALKENHORST JOINS IPO
Tergau & Walkenhorst of Farmington, Germany (primary contact ULRICH HARBACH) has become a law firm member of IPO.
IP IN THE MASS MEDIA
Korea Fair Trade Commission Says Qualcomm Patent Licensing Practices Violate Country’s Antitrust Law
This week the Korea Fair Trade Commission alleged that Qualcomm, Inc.’s patent licensing practices violate South Korea’s antitrust law. A KTFC report recommends imposing fines and requiring the chipmaker to modify its business practices. (Wall Street Journal)
Washington Post Patent Series Addresses Economists’ Perspective
Yesterday the Washington Post continued its series of opinion pieces on the U.S. patent system with an article titled “A third of the economy is at stake – and patent trolls are to blame” by Professors JAMES BESSEN and MICHAEL MEURER, economists at the Boston University School of Law.