Promote the Progress

Jeremy Blachman is one of the most interesting people I have met in the blogosphere. Heck, he’s probably one of the most interesting people I’ve met anywhere. I still think his insight into the mind of a big firm partner and the big firm approach to the practice of law is creepy. You see, Jeremy has never practiced a day in his life and only recently graduated from law school. But, as the Anonymous Lawyer, he nailed it. And now you can buy his first book. Here’s to a long and succesful writing career. ‘Atta boy, Jeremy.

The Patent and Trademark Office’s proposed rule that would place limits on RCE and continuation practice has certainly sent shockwaves throughout the patent community.  As we await the Office’s response to the comments on the proposed rule, a serious question about the authority to implement such a rule remains.

…does the addition of specific authority to limit continuation applications in the Patent Act of 2005 imply the absence of such authority under current law?There is no question, though, that the Office sees RCE and continuation practice as significant contributing factors to the current backlog of applications.  The Office has been trying to secure appropriate statutory authority to place limits on continuation practice for some time.  Consider Section 8 of the Patent Act of 2005, which would allow the Director to limit the circumstances under which an application is entitled to the benefit of an earlier filing date under 35 U.S.C. section 120, so long as resulting regulations don’t “…deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.” (emphasis added)

Here’s an interesting thought – does the specific granting of this authority to the Director in the Patent Act of 2005, which is the most significant legislative attempt at comprehensive patent reform to date, imply that the current law does not include such a grant of authority?

E-mail me any comments or questions you have.

For convenience, 35 U.S.C. section 120 and Section 8 of the Patent Act of 2005 are each reproduced below:

35 U.S.C. Sec. 120. Benefit of earlier filing date in the United States
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

The Patent Act of 2005 (109 H.R. 2795) – SEC. 8. CONTINUATION APPLICATIONS
(a) In General- Chapter 11 is amended by adding at the end the following:
`Sec. 123. Limitations on continuation applications
`The Director may by regulation limit the circumstances under which an application for patent, other than a divisional application that meets the requirements for filing under section 121, may be entitled to the benefit under section 120 of the filing date of a prior-filed application. No such regulation may deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.’.

I often speak with corporate leaders about inventiveness and innovation, and how to increase the organization’s output in both areas. My underlying message is always an old Woody-ism, “you win with people.” Employees. Employees. Employees. That’s why I’m now telling them to read this post (“the Che post”, as we’ve come to call it) from Pamela Slim over and over and over.

One of my side projects is writing Technolawyer’s IP Memes newsletter with fellow rethinkers Doug and Steve. In this week’s issue, we had a little fun with the eBay v. MercExchange decision. Don’t get me wrong…we presented a serious analysis of the case, too. But, we thought it would be fun to look at the case from the perspective of a patent troll (we had to use our completely subjective definition of the term since we haven’t seen a universally-accepted working definition yet).

The result, we think, is the best example of humor in patent law that we can find (don’t forget that we are somewhat biased here).

I have reproduced this meme below. If you’d like to read our memes regularly, sign up for your free Technolawyer account here and pick the IP Memes Newsletter when configuring your account . As incentive, we’re planning on presenting the case from both the infringer’s and the district court judge’s point of view in future editions. Now those will surely be hilarious.

So here it is – eBay, from a troll’s perspective.

Ugh! I went and spent thousands of dollars on this freakin’ patent in a bankruptcy sale and now what do I have? Nothing!

I thought I was making a smart investment. It surely wasn’t easy … I did a lot of due diligence upfront. I researched the validity of the patent (I made a judgment call on that – ya never know, of course). I also researched the market and potential damages involved (I made a judgment call on that, too … not every company is a public company). Then I really got to work. I researched the question of infringement (I made a huge judgment call here, heck, I might even call it an educated guess; “you never know how the court will read the claims” is what the lawyers have told me thousands of times).

Then I got ready to beg. I began the search for a law firm to take the inevitable lawsuit(s) on contingency. Much to my surprise, this part was amazingly easy (think of the commercial with the surprised home owner hosting several bankers in her living room, all of whom are bidding on her one refinancing loan). Finally, I felt I was ready. Armed with all of my hard work and a modest checkbook, I went to the fire sale with my fingers-crossed, hoping to be the highest bidder. I got a huge surprise – nobody else showed up! I was the only bidder on the damn thing! No way.

My initial surprise quickly gave way to self-doubt, though. I began to question the soundness of my research. “I must be way off,” I told myself.

But then it came to me…lightning struck, so to speak. A flash of genius hit me – I was the only one who did the research. Whoa … the next thought was even bigger. I could make a business out of this. Hmm. Secretly, I also wondered if I could patent the idea .. hmm.

Anyway, back to reality.

I spent a lot of time and a lot of money (well, ok, not so much money) on this thing and now I’ve got nothing. eBay … damn eBay. How ironic is it that the company that made good little capitalists out of every housewife in the country has killed my business idea? Justice Kennedy and his comrades granted every district court judge in the country permission to shine a flashlight up my you-know-what when I try to obtain the right that this thing is supposed to give me – the right to exclude.

I can hear the line of questioning now:

Q: “Did you ever try to make this thing?”

A: “Uh, no, I’m not a manufacturer, I’m an investor.”

(I can hear my lawyers yelling at me for that answer, but what the heck, it’s the truth.)

Q: “Was your first contact with my client, the infringer, an attempt to extract licensing fees?”

A: “Uh, yeah. I want money. Ain’t that the American Way?”

(Now my lawyers are waving their arms at me.)

Q: “So you want money … that we can give you. Money is no problem … we’ve made millions off of the invention covered by your patent. But this exclusion thing … why in the world do you want to deny the public the ability to purchase our beautiful, albeit infringing, product?” (I smell something fishy on that one. Must be bait. I’ll take it.)

A: “I want more money. Moooooorrrrre Moooonnnnnnnnneeeeeeyy. The only way to get more money from you cheap bastards is to threaten you with a shut down. Don’t you get it?” (Uh oh, now my lawyers are actually screaming at me. Did I do something wrong? We’re on the same team here, guys, it’s a contingency case … it’s more money for you, too. What the heck?)

Ugh. No way I want to go through that. Forget this whole patent thing. I guess I’ll go look into a Dunkin’ Donuts franchise or something easy like that. Maybe I could start selling troll dolls on eBay. Hmm … there’s an idea. I heard something about rapid prototyping .. maybe I could do some good with that. Hmm.

…

Think it’s funny? Not so much? Any other comments? E-mail me.

We tried to stir up the Blawg Review pot a few weeks ago on Rethink(IP).  The results were less than stellar.  Kevin Heller did shake things up a bit with his Blawg Review #58.  He nailed it.  The secret?  Shaken, not stirred.

Tonight, C-SPAN is airing two separate programs on last week’s CAFC Judicial Conference.  A half-hour segment will air at 6PM Eastern on C-SPAN and an hour and a half program will air at 8PM Eastern on C-SPAN3.  You can view the program for last week’s conference here and the full C-SPAN schedule here.

The most interesting portion of the conference, I suspect, was the panel discussion on “The Federal Circuit Looking Ahead:  The most important issues facing the Federal Circuit in the next ten years.“  Plenty of interesting discussion there, I’m sure.  Professor Kimberly Moore, who was recently nominated by President Bush to serve as a Circuit Judge for the CAFC, was scheduled to be part of the panel.  That surely added another level of interest to the discussion.

Go set you Tivo.

Following on the record pace of its counterpart in the House, the Senate Subcommittee on Intellectual Property finally appears ready to address patent reform issues. Senator Hatch is set to preside over a hearing on post grant review procedures and litigation reforms. The hearing, entitled “Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Reforms” is scheduled for Tuesday, May 23, 2006 at 2:00.

You can listen to the live audio feed via C-SPAN’s Capitol Hearings site.

Representative Darrell Issa (R-CA) has introduced a bill in the House to “establish a pilot program in certain United States district courts to encourage enhancement of expertise in patent cases among district judges.” Representative Adam Schiff (D-CA) is an original co-sponsor on the bill, HR5418.

From the press release: “The core intent of the pilot program is to steer patent cases to judges that have the desire and aptitude to hear patent cases, while preserving the principle of random assignment to help avoid forum shopping. The pilot project will last no longer than 10 years, and periodic studies will occur to determine the pilot project’s success.“

Representative Issa has been somewhat active in the patent oversight hearings thus far, and has shown a good deal of interest in patent policy in general. Good reason – he holds a few patents of his own.

You can view and/or download a .pdf of HR 5418 here.

The bill has been referred to the House Committee on the Judiciary, which will, in turn, refer it to the Subcommittee on Courts, the Internet, and Intellectual Property.

UPDATE: Representative Issa’s office is providing a one-page summary of the bill. View and/or download a .pdf of it here.

The United States Patent and Trademark Office is apparently exploring the idea of opening a “satellite office” in Denver. Nice. This is fresh, out-of-the-box thinking by the PTO that could lead to long-term solutions on the pendency and quality issues. How? For one, it allows the government to tap a whole new labor market for Examiners. Think about it. An associate in our firm is apparently daydreaming about it.