Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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"An Inventor's Lament" Misses a Few Strategies

Stephen G. Perlman, a well-known inventor quoted in the NY Times Bits Blog lamented:

Part of the problem for onLive [Mr. Perlman's company] ... was that it was five years before government patent examiners looked at the application for its basic patent--and three years before it was granted.  All the while, .... onLive could not enforce its patent or use its patent asset to help raise further funding.

Mr. Perlman overlooks two possible strategies:

  1. Track One Prioritized Examination
  2. Requesting early publication and Establishing Provisional Rights Under 35 USC 154(d)

Track One Prioritized Examination provides that applicants may be a fee for an expedited examination.  Thee fee is $4,800 for large entities and $2,400 for small entities.  The program promises examination within one year.

35 USC 154(d) provides that a defendant can serve a published application on a potential defendant.  The defendant can be liable for damages retrospectively from the time of receiving the defendant infringes claims in the publication, which are ultimately allowed.

If Perlman could have pursued these strategies, his prosecution time would have been shorter.  His competitors would have avoided the threat of liability and his company might have been saved.

The blog post can be read at "In the High-Tech Patent Wars, an Inventor's Lament."


Increased Patent Office Fees Efective October 5

The Department of Commerce increased the Patent Office fees by five percent (5%) to account for inflation.  Trademark fees are not changed.

The announcement in the CFR is available for reading.

The 10/05/2012 Fee List is also available.


Free Webinar: Managing the Social Media Hurricane

The president of a client of mine, Jason Beukeman of Whet Travel, is hosting a free webinar in conjunciton with the Miami Beach Chamber of Commerce.

The webinar will focus on using social media to further your business goals, staying ahead of the ever-increasing list of social media sites, and dealing with the deluge of resulting correspondence.

For the full brief, check out the online invite.

On an editorial side, Jason really knows how to use social media.  He sold out an entire cruise ship in two days using it!  His target market is the crazy electronic dance music scene, but the techniques can be used by any business.


Myriad Genetics v. USPTO

The Federal Circuit upheld Myriad’s right to patent “isolated” genes known as BRCA1 and BRCA2, which account for most inherited forms of breast and ovarian cancer.  But the court denied the biotechnology company’s effort to patent methods of “comparing” or “analyzing” DNA sequences.

Read the Federal Circuit Opinion.

Dennis Crouch summarized the opinion in Patently-O:

On remand from the Supreme Court (GVR), a three-member panel of the Court of Appeals for the Federal Circuit has released its highly anticipated decision in AMP v. Myriad. The key results:

  1. Affirmed: The courts properly have jurisdiction over the declaratory judgment case.
  2. Reversed: Myriad's composition claims to isolated DNAs, including cDNAs fall within the scope of Section 101 patentable subject matter.
  3. Affirmed: Myriad's method claims directed to comparing or analyzing gene sequences are not subject matter eligible.
  4. Reversed: Myriad's method claim to screening potential cancer therapeutics via in vitro changes is subject matter eligible."

This decision largely follows the decision previously released by the same panel in 2011. Each member of the court wrote separate opinions, with the opinion of the court filed by Judge Lourie, Judge Moore concurring in part and Judge Bryson dissenting in part. In dissent, Judge Bryson again employed his leaf analogy – arguing that a gene that was merely isolated from the human body cannot itself be patentable in the same way that a naturally grown leaf does not become patentable simply because it is plucked from its tree. Judge Bryson writes:

[E]xtracting a gene is akin to snapping a leaf from a tree. Like a gene, a leaf has a natural starting and stopping point. It buds during spring from the same place that it breaks off and falls during autumn. Yet prematurely plucking the leaf would not turn it into a human-made invention. That would remain true if there were minor differences between the plucked leaf and the fallen autumn leaf, unless those differences imparted "markedly different characteristics" to the plucked leaf.

The majority (here judges Lourie and Moore) disputed the leaf analogy based upon the apparent technical difficulty of isolating human DNA.

It is also important to dispute the dissent's analogy to snapping a leaf from a tree. With respect, no one could contemplate that snapping a leaf from a tree would be worthy of a patent, whereas isolating genes to provide useful diagnostic tools and medicines is surely what the patent laws are intended to encourage and protect. Snapping a leaf from a tree is a physical separation, easily done by anyone. Creating a new chemical entity is the work of human transformation, requiring skill, knowledge, and effort.

Prof. Crouch comments continue that he expects the decision to be reheard en banc.

The opinion shows that patent relating to DNA remain patentable subject matter.  However, care must be taken in drafting the claims.

Also notable, the ACLU was one of the appellants.  The American Civil Liberties Union, which brought the case, argued that patents on human genes violated the First Amendment and patent law because genes are “products of nature.”


Village People Singer Wins Battle to Terminate Label's Copyright

Village People singer, Victor Willis, won a judgement from a California Court dismissing his record label's request to prevent him from terminating the label's rights to the music that he wrote.

The termination of a copyright transfer under Section 203 went into effect in 1978.  However, because the provision requires 35 years from the transfer, only the first works are becoming eligible.

As the New York Times reports:

The termination rights provision was included in a revision of copyright law that went into effect in 1978, meaning that recording artists and songwriters can in 2013 begin to regain ownership of work whose control they signed away early in their careers, when they had little bargaining power. As a result, artists like Bruce Springsteen, Billy Joel, the Eagles and other big names from the 1970s will soon be eligible to reclaim ownership of recordings that have sold millions of copies and made millions of dollars for song publishers and the four major record companies. Sales of recorded music have dropped by more than half since 2000.

To terminate a transferee's copyrights, specific notice provisions must be followed.

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