Prosecution Lunch October 2010

Bits and Pieces from the Patent Side Crowing about reduction in pending cases –From 750K a year ago to about 708K now As of Oct. 5, 168K utility patents issued in 2010 –Calendar 2009: 167,350 –Record: 173,772 in calendar 2006 –Current pace: 1/3 more utilities in 2010 than in 2009; surpass record number in a few weeks

Bits and Pieces from the Patent Side New System of “Quality Metrics” –For reviewing “overall patent quality” –Derived from 7 separate metrics, including propriety of final and in-process actions, degree to which search and FAOM comport with “best practices,” and internal/external quality surveys Extension of First Action Interview Program –Available for applications filed as of given dates, in given art groups –Possibility of facilitating early allowance –Request for FAI must be filed by April 1, 2011

Patent Term Adjustments Wyeth v. Kappos (FC 2010): undercalculated PTA New PTA challenge may be brewing re: appeals –Many appeals return to Ex’r during briefing period, never reach BPAI –Examiner maintains control over the case during that period 35 U.S.C. 154(b)(1): three parts for term guarantee –For delayed PTO responses (e.g. delay over 4 mos. in appeal) –For total pendency over 3 years (not incl. BPAI review) –For delays due to appeals if patent issued after decision PTO has rejected PTA where notice and brief filed, then rejection withdrawn, if withdrawal is within 4 months of filing the brief

Business Methods in Canada Amazon.com v. Canada (Canada Fed. Ct. 2010).Canada Fed. Ct CIPO rejected one-click appn. as “business method” –Not within definition of “invention” in the Patent Act –Notably, relevant statute closely follows 35 U.S.C. 101 Federal Court of Canada reversed –Business methods patentable in appropriate cases –Mere “business scheme” or “disembodied idea” not patentable because they have no “practical embodiment” –Eligible because (1) system claims require machine as essential element and (2) method claims use “cookies, computers, the internet and the customer’s own action” with physical effect on those elements –Remanded for “expedited re-examination”

Prior-Inventor Rights, NOT Prior-User Rights Solvay v. Honeywell (Fed. Cir. 2010)Fed. Cir Honeywell had invention in US before Solvay’s invention date –Copied from Russian agency under contract –No commercial use/publication before Solvay application 102(a): several in US knew invention prior to Solvay’s invention date –Honeywell kept confidential—no “public” knowledge, no invalidation –No prior-user defense here—only for business methods 102(g)(2): invention by another was in US, not abandoned, suppressed, or concealed –But: Russians were original inventor; not an invention in the US –Honeywell not a prior inventor because it copied another’s work FC: “inventor” under 102(g)(2) means “original inventor” –originality “inherent to the notion of conception,” ergo “invention in this country” means original invention in US

World Intellectual Property Indicators, 2010 Report based on 2008, some 2009 data Trademark applications down 0.9% in 2008; Madrid registrations down 12.3% in 2009 Patent applications up 2.6% in 2008, but 8 “large patent offices” show 2.7% decrease in 2009; 4.5% decline in PCTs in 2009 Entire report available through WIPO