IP Law Alert : Intellectual Property Lawyers & Attorneys : Gibbons Law Firm : Copyrights, Patent Infringement, Unfair Competition

A Message from the Chair, David E. De Lorenzi:

"Congress Needs to Act" is the first article published by Judge Paul R. Michel since his retirement from the Federal Circuit, where he served as the Chief Judge. Judge Michel's below speech was given on July 21, 2010, at the Global Intellectual Property Center of the U.S. Chamber of Commerce, providing commentary on the current state of the nation's patent system and how the system can be improved to bolster US economic growth.

Judge Michel will be a featured speaker on these same topics in October at the Gibbons Institute/NJIPLA Fall program in Newark, New Jersey. More details on the October program will be posted next month.

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When the United States Court of Appeals for the Federal Circuit decided Bon Tool, it unwittingly triggered an avalanche of litigation against major corporations brought under 35 U.S.C. § 292, the false marking statute. The opinion resolved a split of authority regarding whether a manufacturer of a product could be subjected to a fine based on each article that had been falsely marked, or each decision to mark the article. Combined with the fact that the qui tam nature of the false marking statute obviated the need to establish traditional Article III standing, a new breed of patent trolls sprung into existence seemingly overnight, dedicated to the task of tracking down mis-marked products, and seeking to share half of a maximum $500 per falsely marked item bounty. The economic appeal in bringing such suits is obvious. A major manufacturer could potentially produce millions of falsely marked articles. Even if a court decided not to assess the full $500 penalty (which it has discretion to do), a successful plaintiff could still stand to reap a sizeable award based on the sheer number of falsely marked articles injected into the stream of commerce. Since that time, several cases have been decided that have helped to provide guidance to litigants on both sides of this rapidly evolving area of law.

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The Gibbons Institute of Law, Science & Technology hosted a webinar on July 1 to discuss the U.S. Supreme Court decision in Bilski v. Kappos that addressed the limitations on the patentability of business methods. More than 50 people listened to this webinar, which featured Erik Lillquist, Senior Associate Dean and Professor of Law, Seton Hall University School of Law; Robert E. Rudnick, Director, Intellectual Property, Gibbons P.C., and David W. Opderbeck, Associate Professor of Law and Director, Gibbons Institute of Law, Science & Technology, Seton Hall University School of Law.

The panelists reviewed, analyzed and discussed the implications of this decision with regard to patent protection in those industries employing business method and related software patents. Of particular interest to industry professionals and patent practitioners, Robert Rudnick provided a helpful list of best practices and tips for obtaining corresponding patent protection and enforcement in view of this important Supreme Court decision.

The webinar has been archived online and can be accessed by clicking here.

Robert E. Rudnick is a Director in the Gibbons Intellectual Property Department.

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The United States Patent and Trademark Office (USPTO), in an attempt to offer patent applicants more choices, recently proposed establishing a three-tiered examination system. Under the current system, with the exception of accelerated examination and those cases granted “special” status, all non-provisional patent applications go into the same queue for examination and are taken up in due course. Under the new proposal, an applicant would be able to choose either prioritized examination (Tier I), traditional examination (Tier II) or delayed examination (Tier III).

USPTO’s Goal is to Reduce Time to Issuance to One Year
Currently, a first office action occurs on average at 27.2 months and a patent takes, on average, 34.6 months to issue.

Tier I priority examination, is shooting for 4 months to first office action and 12 months to issuance. The goal of the proposed amendment is to provide applicants more flexibility in managing prosecution, reducing prosecution pendency, and enhancing efficiency, all without impacting the current workload or time to issuance of traditional (Tier II) applications.

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