Intellectual Property Directions

This blog is not a newspaper of record like the Times or the Post, but in case you haven’t heard, the District Court has issued a permanent injunction barring the Patent Office from implementing the much maligned “administrative” rules changes it announced last year.

The court ruling essentially states that limiting the number of continuation filings, for example, is not an administrative change but instead is a substantive change to what had been allowed by law.

Although one can never tell the underlying thought processes of the parties to a legal proceeding, I have to wonder if the USPTO understands the difference between an an administrative change (a new format for a patent application form) and a substantive change (new limits on how many patent applications can be filed).

In any case, the sky has not fallen (no new PTO rules) but we are still waiting for the other shoe to drop (patent reform legislation).

McDermott Will & Emery reports in their January ‘08 IP Update (see Patent Reform Efforts Revitalized with Release of Senate Judiciary Committee Report) that:

Efforts to reform United States patent laws were revitalized on January 14, 2008, when the U.S. Senate Committee on the Judiciary issued its draft report about the proposed Patent Reform Act of 2007 (S. 1145), which urged the Senate to pass the bill.  The 106-page report summarized the key features and goals of the bill, but did not introduce new proposals.  The House of Representatives passed its version of the bill in September 2007.

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Supporters hope to bring the bill to a vote by February 2008, but it is unlikely to pass without substantive revisions.  While the House Judiciary Committee passed the bill unanimously last year, it eliminated the controversial post-grant review provision during mark-up. 

Wilmer Hale reported today that:

Briefs for summary judgment are due on December 20, 2007, as are amicus curiae briefs. Oppositions are due on January 22, 2008, and rebuttals on February 1, 2008. A summary judgment hearing is scheduled for February 8, 2008. On October 31, 2007, Judge James Cacheris granted a preliminary injunction preventing the USPTO from implementing the changes in the Claims and Continuations Final Rule on November 1, 2007, until the case could be heard on its merits. Thus, the new rules will not take effect at least until mid-February 2008, and it remains to be seen if the proposed “continuation rules” will be modified further.

Pending the implementation of the new patent office rules, some companies employ a patent strategy of creating a long chain of continuation applications (including divisional apps) as a way to extend the coverage of their initial invention while maintaining their original priority date. Sometimes, however, it appears the intent of this strategy has primarily been to fool the competition as to exactly how far back a particular claim can be traced. The recent CAFC decision in Zenon Environmental v. US Filter shows us that this chain must be forged carefully in order not to make a fool of the applicant himself.

The patent in question, owned by Zenon, was filed in May of 2001 and is the sixth in a series of applications. The application was a:

Zenon sued US Filter for infringing this patent and lost not only the infringement case against US Filter but also lost its patent - the right to stop anyone else. US Filter’s attorneys took the effort to trace the heritage of the claims in the patent and observed that the patent was not entitled to claim priority from the original patent in the chain. In particular, US Filter asserted that the intervening patents failed to incorporate by reference a key element disclosed in the original patent and thus broke the chain of priority because the asserted claims were not supported by each patent in the family chain.Zenon argued that it had an “incorporate by reference” clause in its application, but the court ruled that the clause, as intended and as written, addressed only a subsection of the original application (for a different part of the invention) and thus did not provide the priority chain for the part of the invention covered in the disputed patent. Thus, the majority opinion ruled that Zenon’s own prior patent anticipated and thus invalidated its later patent.
In a dissenting option, Judge Newman pointed out that

So, while I agree with Judge Newman, you had best make sure to distinctly and carefully point out what you want to reference from your prior patents.