Month: August 2009

USPTO Issues Interim Guidelines for 35 U.S.C. 101

Admitting that the law surrounding 35 U.S.C. 101 relating to what is patentable subject matter is in “flux,” the USPTO has provided to its Examiners some interim guidelines to assist in the examination of patent applications.  While the guidelines do not provide any substantive law changes, they do provide some valuable insight into how USPTO Examiners will be examining patent applications.  See the Interim Guidelines.

New USPTO Director: “Patent quality does not equal rejection.”

It appears that the new USPTO Director (Kappos) is taking little time to change the direction of the USPTO from rejecting patent applications to actually granting patent applications (the USPTO allowance rate has recently dropped close to 42% from a previous average of 70%).  In a recent e-mail to Patent Examiners, Director Kappos stated the following which is welcome news to everyone involved with patents:

One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.

On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality.  Let’s be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution.

When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. … [B]y engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection.

Only time will tell if the Patent Examiner’s actually follow the lead of the new Director.

Microsoft Ordered to Stop Selling MS Word

Along with $200 million in compensatory and $40 million in punitive damages, a Texas court has ordered Microsoft to stop selling Microsoft Word for violating i4i Ltd.’s U.S. Patent No. 5,787,449.  See U.S. Patent No. 5,787,449, the  Permanent Injunction and the Final Judgment.  Below is a portion of the Court Order:

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

  1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;
  2. using any Infringing and Future Word Products to open an XML file containing custom XML;
  3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;
  4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and
  5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order. 

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

1.      selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;

2.      using any Infringing and Future Word Products to open an XML file containing custom XML;

3.      instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;

4.      providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and

5.      testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order.

David Kappos Confirmed as New Director of the U.S. Patent & Trademark Office (USPTO)

*** From the USPTO August 7, 2009 ***

David Kappos Confirmed as Patent and Trademark Office Director
The U.S. Senate today confirmed David Kappos as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO).

U.S. Commerce Secretary Gary Locke issued the following statement:

“We are grateful to the Senate for its swift confirmation of David Kappos to lead the U.S. Patent and Trademark Office. “It’s no secret that the agency currently faces significant and persistent challenges, but David is the right person to meet them and carry out my top priority for the USPTO — dramatically reducing the unacceptably long time it takes to process patent applications.”

Kappos Background

Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.

He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.

Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.

Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.