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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Entries in Patent Prosecution (6)


"When Patents Attack!... Part Two" from This American Life

"When Patents Attack... Part Two!" was a recent episode of This American Life.  It is a radio show and podcast episode discussing patents, licensing, "patent trolls" and the like.

The podcast is pessimistic about patents.  There are solutions and strategies to many of the topics.

  • Liability can come from unexpected places--buy licensed raw materials, do not waive indemnity from suppliers, even better make it express in a purchasing agreement
  • The Eastern District of Texas is a hostile jurisdiction--file a local declaratory judgment action upon receipt of a cease and desist letter.
  • Everyone else is settling--consider joint defense agreements

Email me your questions about the when patents attack podcast and I will collect and publish the questions and answers.

By the way, I am a podcast fan.  A podcast is a syndicated episode (typically audio) that can be played later--kind of like a DVR for radio on your computer or smartphone.  The following list are my favorite five podcasts, the link is to their webpages and the RSS feed can be found there:

  1. ESPN: The B.S. Report with Bill Simmons.  A sports/pop culture podcast
  2. Filmspotting; Streaming Video Unit (SVU)  Film critics discuss movies through the streaming video (e.g. Netflix) prism.
  3. Shields and Brooks: PBS NewsHour Podcast  A civilized discussion of the week's politics.
  4. Sound Opinions  Music podcast featuring new music review, classic album dissections, etc.
  5. Valtimax Business Strategy and Marketing Podcast  Dave Lorenzo shares his business knowledge

"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."


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.”


Revised Novelty Standard under AIA

The Leahy-Smith America Invents Act (AIA) changed the standard for novelty under 35 USC § 102.   This language establishes the First-to-File System.  The purpose of this blog is to provide information to non-patent attorneys and inventors.  In this case, while the language of the statute is "legalese", the wording of the statute is significant enough to post directly.

The amended statute now reads as the following:

‘‘§ 102. Conditions for patentability; novelty
‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
H. R. 1249—3
‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
‘‘(2) the claimed invention was described in a patent issued under section 151, or in an  application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint
inventor; or
‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
‘‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;
‘‘(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying
the provisions of subsection (b)(2)(C) if—
‘‘(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
‘‘(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
‘‘(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
PRIOR ART.—For purposes of determining whether a patent or
H. R. 1249—4
application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
‘‘(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section
120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’’.
(2) CONTINUITY OF INTENT UNDER THE CREATE ACT.—The enactment of section 102(c) of title 35, United States Code, under paragraph (1) of this subsection is done with the same
intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453; the ‘‘CREATE Act’’), the amendments
of which are stricken by subsection (c) of this section.
The United States Patent and Trademark Office shall administer
section 102(c) of title 35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent
and Trademark Office.
(3) CONFORMING AMENDMENT.—The item relating to section 102 in the table of sections for chapter 10 of title 35, United States Code, is amended to read as follows:
‘‘102. Conditions for patentability; novelty.’’.


My Theory about the Decreasing Number of Claims in Patents

European patent rules are affecting the number of claims in US patents.  That is my theory.

A widely-read blog, Patently-O, noted Decreasing Patent Claim Counts.  Their theory is, there are three primary factors that converge to explain the bulk of the decrease. (1) In 2004 the USPTO more than doubled the application fee associated with filing more than 20 claims in a single patent application. The reaction to that fee increase has now filtered through the system and most of the drop in average claim count is driven by a major reduction in the number of patents issued with more than 20 claims.  (2) In addition to increased-fees associated with a larger claim set, the USPTO appears to have ramped-up its restriction practice over this same time period – effectively causing applications to be split into two or more patents. (3) Finally, there is anecdotal evidence that the demand for patent claims has dropped based on general economic conditions and a perception that recent legal rulings have reduced the value of patent rights.

I disagree.

European patent fees are probably caused the drop in the number of claims toward 15 total claims.

European rules have significant costs for applications with more than 15 claims. This rule went into affect April 1, 2008. See EPO announcement on fees.

The timing of the European rule matches the timing of the drop in US claims.

As a result of the rule, incoming US National Phase/European Priority claim cases almost all have 15 or fewer claims.

In addition, when I write as US case that is going to be filed in Europe, the 15 claim "limit" influences my claim drafting.

European/PCT Unity of Invention standards also affect the number of claims. The unity of invention standard generally results in a more focused claim set. The result is more sister applications, each with a smaller claim set. This affects both the number of claims in incoming applications as well as well as the number of claims in US cases that will be outgoing to Europe or PCT.

A European patent attorney associate of mine, Adrian Hocking, (Adrian's email ) offers a European Patent Cost Calculator, which illustrates the effect of the number of claims on European filing costs.

Request a consultation if you are considering extending your US patent rights to Europe.  There are special considerations that significantly affect your costs.