Archive for the ‘Govt Policy/PTO Policy’ Category

Limelight Networks v. Akamai Tech. – Cert. Denied

Monday, April 18th, 2016

Today the Supreme Court declined to hear Limelight’s petition for cert. on the question of whether an accused infringer may be held liable for direct infringement of a claim to a method where multiple parties perform the steps of the method.

On August 13, 2016, the S. Ct. remanded the en banc decision of the Fed. Cir. that set forth the law of divided infringement under s. 271(a), and found that Limelight directly infringed U.S. Pat. No. 6,108,703. The court held that an entity will be found responsible for others’ performance of method steps “(1) where that entity directs or controls others’ performance, [or] (2) where the actors form a joint enterprise.”  (more…)

Biotech’s PR Problems Continue

Friday, February 15th, 2013

Maybe “Fish gotta swim” but the FDA has extended the approval period for transgenic Salmon genetically engineered to reach market weight sooner. No evidence at all has been presented that filets from these fish would present a danger human consumers – and may well provide a benefit to an increasingly hungry world.

This report once again reminded me how far scientific advances in biotech have exceeded the industry’s attempts to explain their benefits to the consuming public. As biotech companies wisely sold the advantages of herbicide resistant corn, cotton and soybeans to farmers well prior to their “launch”. Farmers were tired of using herbicides that could kill their human handlers. By the time the Supreme Court decided that plants were patentable (in 2002), about 65% of U.S. corn was transgenic (and patented as well). However, the EU countries don’t grow much corn, and the lack of lobbying there contributed to the general ban on imports of genetically engineered crops and sandwich shops that advertise that their snacks have no GMO’s.


Re-Election of Obama Keeps Patent Law and Policy on Track

Wednesday, November 7th, 2012

At least Director Kappos does not have to clean out his desk. The re-election of President Obama gives him another four years of job security – if he and his hard-working staff don’t burn out first. No matter what you think of the AIA, Director Kappos has done a remarkable job of proposing implementing regulations for its many new procedures. Apart from issuing rules by the bushel, he has been “tasked” with opening three new satellite offices. He has begun to develop guidance in non-AIA areas such as patenting diagnostic assays post-Prometheus. The defeat of President Obama might well have caused a return to the Rogan years of a “know nothing” [about patent law] Commissioner.

A President Romney surely would have supported repeal of “Obamacare”. No matter what you think of the more controversial parts of the law, it also contains the outline of procedures to approve generic biologicals, a way to cut healthcare costs that is long overdue. At least the players can continue to move forward, and not be put into limbo or returned to the starting line to run a race with new rules.


Patent Office Broadens “First Action Interview” Pilot Program

Wednesday, May 18th, 2011

On May  17, 2011, the Patent Office issued a press release and guidelines that effectively permit applicants with pending applications in all art areas to request—and be granted– an interview with the Examiner prior to the first office action.  Of course, there are strings attached in terms of number of claims, restriction without traverse if multiple invention, etc. Also, upon request the Examiner – when the application is taken up for action – will issue of Pre-Interview Communication, citing relevant art from a search and indicating potential rejections or objections. Prior to the interview, the applicant must file proposed amendments and remarks, if applicant decides to proceed with the interview.

Note that this program does not decrease the time from filing to first office action, and seems to require a lot of work by both parties before any “face-to-face” discussions can occur. Since the Examiner has to both search and formulate rejections/objections prior to scheduling the interview, this sound more like an interview-by-right after a first office action  which, of course, we practitioners already have. The guidelines do guarantee that both parties will be prepared prior to the interview, and certainly that is of some value. However, if agreement is not reached, the Examiner can hand the application a “First Action Interview Office Action”. The applicant only gets 30 days to reply (“with limited extension of time”). But there are other options all along the way, so I recommend reading the detailed PTO Guidelines before jumping into this program.  Finally, I did not see that this procedure completely supplants an Examiner’s ability to grant a request for a “normal” pre-first action interview which, in my experience, many examiners in Group 1600 are willing to permit. So, apparently, both applicants and Examiners can “opt out” of this program.