News & Updates

February 2010 Newsletter

Extend Your Patent Term
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  • Controversial Proposed Patent Rules Rescinded
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  • Go “Green” – Go Fast
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  • Sacrifice One Application and Accelerate Another
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  • Appeals Rules May Not Change Much After All
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  • Avoid Inequitable Conduct
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  • ICANN Going Global
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  • Hefty Fines For False Patent Marking
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  • Save More Money by Filing Online
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  • Patents

    Extend Your Patent Term

    In a recent case (Wyeth v. Kappos), the Federal Circuit issued an opinion concerning how Patent Term Adjustment (PTA) should be calculated.  The USPTO’s method of calculating PTA will now be revised based on the new standard.  The result favors patent owners, and will typically lead to greater length patent terms in the future.  Owners of previously issued patents may be able to secure amended calculations of PTA conforming to the new standard.

    As background, PTA is a process by which additional time is added to the standard patent term of 20 years from the earliest priority date when the USPTO causes undue delays during prosecution of the patent application.  PTA is normally calculated by the USPTO after the application has been allowed.  The two most common reasons behind adjusting the term of a patent are that the USPTO has not provided “prompt” responses (A-delay) and that the application pendency exceeded three years (B-delay).  PTA is subject to an overlap limitation whereby if A-delay periods overlap with B-delay periods, the larger of the two controls.

    Previously, the USPTO recognized overlap anytime both A-delay and B-delay occurred, reasoning that the B-delay guarantee started with the patent application date rather than three years later.  The Federal Circuit’s new interpretation holds that the B-delay guarantee begins three years after the filing date, effectively limiting overlap to only those instances in which A-delay occurs more than three years from the filing date.

    Because the effect of the new interpretation is to add patent term in cases where the USPTO miscalculated, patent owners should consider whether they may be eligible for additional PTA under the new standard.  The USPTO recently announced guidelines regarding requests for recalculation of PTA in light of the revised standard.  According to the guidelines, the USPTO will recalculate patent terms for free for patents issued prior to March 2, 2010, and for which a request is made no later than 180 days after issuance.

    Please contact us if you have any questions regarding PTA or would for us to request review of previous PTA calculations for issued patents.

    Controversial Proposed Patent Rules Rescinded

    After a long fight, the USPTO withdrew its proposed rules package regarding restrictions for continuations and claim limitations.  The challenge to the proposed rules, brought by plaintiffs Tafas, SmithKline Beecham Corp. et al., had made its way to the Federal Circuit.  The withdrawal of the proposed rules occurred following the confirmation of David Kappos as the new director of the Patent Office.  Following the withdrawal of the proposed rules, the Federal Circuit granted dismissal of the case, but denied a motion for vacatur of the district court judgment against the Patent Office.

    Go “Green” – Go Fast

    The USPTO is introducing a new pilot program which will accelerate the examination of certain pending “green” technology patent applications (including areas such as environmental quality, energy conservation, renewable energy, and greenhouse gas emission reduction). Under normal circumstances, patent applications are examined in the order that they are filed.  Currently, the average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision.

    Under the new program, pending patent applications in green technologies which were filed prior to December 8, 2009, are eligible to be accorded special status and receive expedited examination, which will have the effect of reducing the time it takes to patent these technologies by an average of one year.  For the first 3,000 applications related to green technologies in which a proper petition is filed before December 8, 2010, the agency will examine the applications on an accelerated basis.  The policy behind the program is that earlier patenting of these technologies enables inventors to secure funding, create businesses, and bring vital green technologies into use much sooner.

    Additional details on the USPTO pilot program will be available in the Federal Register: USPTO Notice

    Please contact us if you would further information on the pilot program or believe you have a case which may be eligible for accelerated review.

    Sacrifice One Application and Accelerate Another

    The USPTO has launched a pilot program that will give small entity applicants having two or more patent applications currently pending greater control over the priority in which their applications are examined, while also reducing the backlog of unexamined patent applications pending before the USPTO.  This pilot program will allow a patent application from a small entity to receive special, accelerated status if the applicant is willing to abandon an application that has not been examined.  According to USPTO director David Kappos, “[t]he program will accelerate protection for important innovations from independent inventors while reducing our unacceptable backlog.  Getting these inventions to the marketplace quickly will also help stimulate the economy and create jobs.”  The program is being adopted on a temporary basis until February 28, 2010.  Applicants who wish to take advantage of the plan must submit the necessary materials before this designated deadline.  Whereas new patent applications are normally taken up for examination in the order they are filed, applications made special under this pilot program will be advanced out of turn to the front of the examination queue.

    Please contact us if you are interested in learning more about this pilot program for small entity applicants.

    Appeals Rules May Not Change Much After All

    The United State Patent & Trademark Office (USPTO) is considering modifications to rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals.  Changes to the BPAI rules were first proposed in 2007 and finalized in June 2008 (“final rules”).  However, those changes were withdrawn by the USPTO on the day before they were scheduled to become effective.

    Based on the previously submitted comments and public concerns regarding the final rules, the USPTO has recently issued a Notice seeking public comment on possible revisions to the final rules.  A roundtable discussion regarding the proposed revisions is set to be held January 20, 2010 and written comments are to be submitted by February 12, 2010.

    More specifically, the changes the USPTO is considering are: (1) deleting portions of the final rules that require the filing of (a) a jurisdictional statement, table of contents, table of authorities, and statement of facts in appeal briefs, (b) a table of contents, table of authorities, and statement of additional facts in reply briefs, and (c) a table of contents and table of authorities in requests for rehearing filed in ex parte appeals; (2) deleting portions of the final rules that require the appellant to specifically identify which arguments were previously presented by the Examiner and which arguments are new; (3) deleting portions of the final rules that require specific formatting requirements and page limits for appeal briefs, reply briefs, and requests for rehearing; (4) deleting portions of the final rules that require appellants to provide a list of technical terms and other unusual words for an oral hearing; (5) allowing the Examiner to continue to enter a new ground of rejection in an examiner’s answer (as is allowed under the current rules); and (6) not allowing the Examiner to file a supplemental examiner’s answer in response to the appellant’s reply brief.

    Generally, the proposed modifications will substantially align the final rules with the rules currently in effect.  In practice, only minor changes to the appeal and reply brief would be necessary if the proposed modifications take effect.  Fortunately, the USPTO has proposed that the most onerous provisions of the final rules be deleted.

    For further details, the official USPTO Notice is available here.  Please check back on our website ( in the future, as we will provide further information once the proposed modifications are finalized and/or additional modifications are proposed.

    Avoid Inequitable Conduct

    The Federal Circuit has recently affirmed a Northern District of California decision finding, among other things, U.S. Patent No. 5,820,551 (the ‘551 patent) unenforceable due to inequitable conduct. Therasense, Inc.  v. Becton, Dickinson and Co., Case No. 2009-1511 (Fed. Cir. 2010).  During prosecution before the U.S. Patent and Trademark Office (USPTO), the ‘551 patent was rejected on prior art grounds.  In order to avoid the rejection, the Applicant submitted a declaration attesting that the cited prior art’s disclosure of an element being “optionally, but preferably” present in the disclosed device would be interpreted by one of ordinary skill as being “required”.  The Applicant then failed to disclose to the USPTO statements made by the Applicant to the European Patent Office (EPO) in a related European application.  During a proceeding before the EPO, the Applicant argued that the identical prior art language was “unequivocally clear” that the particular element was “optionally utilized” in the disclosed device.  The Federal Circuit found that the Applicant violated its duty of disclosure for failing to make the USPTO aware of the contrary position presented to the EPO.

    As a result of the Therasense decision, inventors and their patent attorneys should be mindful of the assertions made to the USPTO and patent offices abroad.  In the event contrary representations are made to another forum, an Applicant should consider whether the USPTO should be made aware of the statements.

    To download a copy of the Therasense decision, please click here.  Please contact us if you would like to discuss this case in greater detail.


    ICANN Going Global

    ICANN (the body responsible for regulating domain names) is expanding the domain name system to better reach an international audience.  Domain names consisting of non-latin characters, including Chinese, Arabic, and Hebrew, are now permitted.  The program enables countries and territories that use languages based on scripts other than Latin to offer their users domain names in non-Latin characters.  The domain names are currently available only to governments and administrations of countries and territories.  However, it is expected that ICANN will eventually expand the program beyond government entities.  There are a number of requirements which must be met before the domain name will be issued, including a demonstration that the domain name constitutes a meaningful representing of the corresponding country or territory name.

    To learn more about the program, you can access ICANN’s website at


    Hefty Fines For False Patent Marking

    As many patent owners and licensees are aware, U.S. law allows manufacturers of patented products to mark the product with the number of the relevant patent (or simply “patent pending” if a patent has been applied for).  This not only allows a patent plaintiff to collect damages for infringement which occurred prior to the accused infringer receiving actual notice, but also may provide a benefit with respect to the perceived quality of the product.  However, the law also imposes penalties for products which are improperly marked.

    Under the statute, a party who falsely marks an unpatented article with a patent number or even the word “patent” may be subject to a fine of “not more than $500 for every such offense.”  35 U.S.C. § 292.  The statute also contains an intent element, requiring that liability be limited to those cases where the false marking was done “for the purpose of deceiving the public.”

    Despite the language referring to a penalty “for every such offense,” many courts have interpreted the statute as limiting the total damages to a single $500 fine, even in cases where large quantities of a product are mismarked over a period of time.  This interpretation is based in part on London v. Everett H. Dunbar, a 1910 1st Circuit case evaluating a previous version of the statute.  179 F. 506.  That version, before being revised in 1952, listed the statutory damages as “not less than one hundred dollars” for each offense.  The London court held that the total damages should still be limited to $100, reasoning that a minimum $100 fine for each unit sold would be out of proportion to the product value in cases involving very cheap products.  Courts continued to follow this interpretation, even after the damages provision was revised from “not less than $100” to “not more than $500” per offense.

    However, a recent ruling from the Federal Circuit held that each falsely-marked unit of a product may qualify as a “separate offense” when evaluating damages under the statute.  In Forest Group, Inc. v. Bon Tool Co., the court found that the 1952 statutory revision from a minimum to a maximum fine eliminated the policy concerns regarding excessive damages for cheaper products, as courts now have the discretion to award damages based on a much lower per-unit amount.  93 U.S.P.Q.2d 1097 (Fed. Cir. 2009).  The opinion also noted that Congressional intent favored a per-article award based on another statutory provision which permits members of the public to bring false marking actions on behalf of the government and keep half of any proceeds, reasoning that no plaintiff would go to the expense of pursuing litigation in order to split a single $500 award.

    Based on the holding in Forest, manufacturers should to be careful to ensure that any product marked with a patent number or “patent pending” is covered by the listed patent and that the patent is still enforceable.  Particular attention should be paid to products which are manufactured in large quantities, as a total damage award for false marking may quickly escalate based on the per-unit calculation.

    Please contact us if you would like more information on patent marking.


    Save More Money by Filing Online

    The Copyright Office increased its fees for certain types of filings effective August 1, 2009.  The new fee schedule can be found at  Under the new fee schedule, the fee for online registration for a basic claim would remain unchanged at $35 for electronic filing.  However, the fee for paper registration filings for a basic claim using the multipurpose form CO is increased from $45 to $50; the fee for paper registration filings for a basic claim using Form PA (performing arts works, including motion pictures), Form SR (sound recordings), Form TX (literary works), Form VA (visual arts works), or Form SE (single serial issues) is increased from $45 to $65.