Patent Fee Shifting Becoming More Frequent

16 Sep

In a development I think is good for patent law, patent litigation is rapidly moving toward  the English system where loser pays the fees of the winner. However, the current trend is just for patent plaintiffs to get hit for legal fees where the suit is deemed frivolous. These awards are very much on the rise lately as Courts take control over the situation. I am pleased that the Courts and not Congress has taken this to heart, as that gives Courts much more flexibility to address the problem of abusive patent litigation while hopefully not undermining legitimate patent plaintiffs from asserting valid patents against invention thieves.  This stems from the Supreme Court in the Octane Fitness decision throwing out the “exceptional case” standards previously imposed by the Federal Circuit Ct. of Appeals and in Highmark v Allcare  requiring increased deference by the Federal Circuit to District Ct fee shifting awards.  See an article by the EFF on this topic. Here are two cases of recent note:

Google gets $1.3 million from a patent troll.

FindtheBest v Lumen View Entertainment 

This is concurrent with the Supreme Court decision in Alice v CLS Bank that created a judicially legislated “abstract idea” test on patentability to make it much more difficult to obtain or enforce computer-related patents.  That is both welcome and dangerous.  Far too many patents have the invention “do this known thing, except do it with a computer”. But, now the pendulum has swung the other way. We have yet to find a recent decision where the District Court has sustained a computer software patent in the face of an abstract idea challenge. It is ever so tempting for U.S. District Court judges to get rid of a tediously complex patent infringement case by just saying “invalid as being an abstract idea” so the Judge can move on to some type of more familiar case.

The Supreme Court, seeing the glut of proposed legislation to stop “abusive patent litigation”, took the matter over, I think, in large part to get Congress out of its meddling ways. It should rightfully be the Courts and not Congress that set the rules for fee shifting.

It is a dark time for inventors.  And, a dark time for American inventors is, sadly, a dark time for America. The lure of the incentive of patents was one of the driving forces for Thomas Edison in bringing America out of the dark of the gaslight age and into the light of the electric light bulb.

In our litigious society, we might gain by switching to the English fee system where the loser pays the fees of the winner. I just hope the courts see fit to impose fee shifting in both directions and not just use it to punish patent plaintiffs while exempting patent defendants. Patent fee shifting is perhaps best used to prevent abuse of the poor by the rich, so when Google gets $1.3M in fee shifting against a small patent plaintiff that sends the wrong message, a chilling one that says every small patentee better not assert a patent unless it is a slam dunk case for infringement.



Australia more favorable to subject matter patentability

10 Sep

Patently-O has reported a favorable Australian patent decision upholding subject matter patentability for the Myriad patents and has criticized the US Supreme Court for it’s anti-patent bias as regards products that are clearly the result of human ingenuity, i.e. invention.

Patently-O article


33 Months for Moviehouse Copyright infringer

26 Aug

Consider this interesting case from the UK where a copyright pirate was sentenced to 33 months in jail for downloading Fast & Furious 6 from the back of a moviehouse and then posting it where it was downloaded 700,000 times.


EC Trademark – Confusion of Marks Descriptive only in Some Member States

02 Aug

The INTA (International Trademark Association) reports a recent decision holding that AQUA ADMIRABILIS perfumes are likely to be confused as to source with AQUA MIRABILIS perfumes and thus denied registration of the later in this article


PTO touted rating as top for job satisfaction – perhaps here’s why – Uggghh!

01 Aug

Over the course of more than four years, the U.S. Patent and Trademark Office knowingly wasted and misused more than $5 million in taxpayer dollars by paying salaries to paralegals who had so little work to do, they used the time to watch television, do laundry, surf the Internet, go on Facebook, shop online and exercise, an investigation by the Office of the Inspector General of the U.S. Department of Commerce has revealed.


In a related story, the USPTO touts its rating as best place to work in the US Government.


Embarrassing and pathetic.


Speaking Death to Small Inventors

25 Jul

In a speech to Stanford Law School entitled “Speaking Truth to Patents”, Michelle Lee gives a great talk on what her approach will be, “pro patent system”.

“Now, I wouldn’t call myself “anti-patent,” nor would I call myself “pro-patent,” whatever those labels mean. But let me be clear: I am, without reservation, “pro-patent system.” What do I mean by “pro-patent system”? It means that I believe that a strong patent system is essential to fostering the innovation that drives our economy.” Sounds good rolling off the tongue, but what to her is “a strong patent system”?

It appears that to Director Lee, a “strong patent system” includes fewer patents, more expensive patent prosecution, more challenges to patents, more risk to patent plaintiffs, and all that translates to a further slant in favor of big business. For example, she speaks favorably of ‘higher standards for claim clarity”, which is very pro big business (small inventors have trouble with drafting claims, big businesses have patent attorney highly trained in drafting claims). If there is a desire for more clarity in claims, shouldn’t we force patent examiners to write the claims? I have been an advocate of that for 30 years, but not big business as that would level the playing field and big business naturally wants the system slanted pro business. Perhaps there is room to urge Ms. Lee to back up her rhetoric with support for having patent examiners write the allowable claims. That would also enormously simplify patent prosecution and bring certainty to the system and thus lower costs, and would also save time. The current mode of expecting an independent inventor to write a decent patent claim is unrealistic, and the courts treat such sloppy unclear claims with great disrespect and with great uncertainty that undermines the purpose of patent claims, which is to lend certainty to the system by providing notice of what’s covered and what’s not covered.

She is, as predicted, very focused on so-called “abusive patent litigation” but does not provide any useful detail about what is abusive and what is not abusive, and just speaks generalities  “abusive litigation is a flaw in an otherwise great system” she says, “If we care about the system, we have to bring our expertise and experiences to bear on how we can address this problem before it threatens to undo so much of what we’ve all worked so hard to build together. ” She appears to be looking for answers rather than providing solutions. Hopefully, with time, that will change.

The patent system as currently structured is so heavily slanted against small inventors and in favor of big business as to be just what Thomas Jefferson feared, a rich man’s tool used by the politically well connected to control the economy to obtain unnatural benefits.  James Madison tried to structure a simple patent system that leveled the playing field between rich and poor and rewarded the first and true inventor, not the richest or most politically connected. That is patents are increasingly FTF (For The Fatcats). Keeping with the acronym, we now have FTF (First To File – where big businesses with big patent staffs routinely win the race to the PTO and squeeze out little guys) and FTF (Fast Track for Fatcats – pay for priority so the rich can get their patents fast and little guys get bypassed and wait even longer) and FTF (Fudge The Figures – the PTO reports in new self-serving skewed ways how the system is supposedly improving), FTF (Forfeit the Fees – continued fee diversion despite promises it is stopped to tax small inventors and keep them out of the system) and FTF (Farmout To Foreigners – where we send examination work to Russians, Koreans, and Europeans rather than do it here – just think we send our best new technology to the Russians and even pay them to examine it!), FTF (Fortunes to Fight – patent enforcement litigation routinely costs over a million dollars, often much more) and it all sums up likely to FTF (Forfeit The Future). The system is out of whack and needs a major correction to where small inventors have an equal chance.

So what will her pronounced focus be: ending “abusive patent litigation”, further implementation of the AIA (America Invents Act of 2011 or as I call it the America Stops Inventing Act or “ASIA” since that is where all the new jobs it “creates” will be going), the bloatation of the USPTO with new satellite offices and more bureaucrats, and perpetuating the current system, but she also strikes a promising tone in saying “we must acknowledge that the patent system doesn’t belong to a narrow set of patent stakeholders, but to all of us. Currently “all of us” seems to not include small and micro inventors”. Hopefully, that can change, but much of the change needed is not at the USPTO at all, but legislatively and in the courts to make it feasible for small inventors to obtain and enforce patents to get back to the original goal of making patents a reward based on natural rights rather than richness, to make patents more of a reward for invention and less a reward for being rich and hiring a rich lawyer to keep you rich.


Fed Circuit kills all pending false marking cases retroactively. Are patent infringers next to be dismissed?

11 Jul

In a policy move based on illogic, the Federal Circuit affirmed a USDC decision dismissing a qui tam false marking suit based on false marking occurring prior to passage of the law limiting recovery to actual damages. The law was prospective, but the USDC, affirmed by the CAFC, applies it retroactively in a docket clearing move. This is a policy move by the Court to clear the massive backlog of qui tam false marking cases by effectively pardoning all those who false marked. The decision is doublespeak, as it says what is clearly a court-made pardon is not a pardon. When a court says black is white and the Fed Circuit affirms, the Fed Circuit is showing that, for it, the ends justify the means. The Court appears to me to have found that the Court’s case management is the priority not the enforcement of legal rights. So, the next move will I suppose come if the pending patent troll legislation passes the best Congress money can buy to kill independent inventors cases at the behest of big business lobbying. This false marking pardon sets the stage for the dismissal of all perceived troll cases using the same logic. That is, why not just pardon willful infringement by big business on the basis that such pardon is not a pardon but what Congress really intended to do. I am not a fan of massive qui tam false marking cases, but that WAS the law. If the Federal Government wants to eliminate rights and deny due process, it seems just compensation should be paid BY THE GOVERNMENT. The 5th Amendment’s just compensation clause is there to protect citizens against Government deprivation of due process or taking of property. So, rather than summary dismissal by court fiat, it seems to me that summary dismissal and some payment of just compensation is the proper route.

Here is the Fed Circuit opinion.


Michelle Lee, What Will You Be?

12 Dec

Uh-Oh! Just as we expected (and feared). Another big software patent strategist as PTO Director. This time, the former Google IP patent strategist, Michelle K Lee.

A founder and current board member of ChIPs (Chief IP Counsels), an organization dedicated to advancing the careers of women in patent-related fields.

Board Member of the “Asian Pacific Fund” dedicated to providing resources to the Asian community.

Manager of the Silicon Valley Branch of the PTO.

What does this all mean. It means “Money makes the world go around, world go around, world go around…In the most peculiar ways.”

Big software wants to kill the enforcement of software patents, with Google leading the charge. Michelle K. Lee was their advocate. Now the legislation is before Congress. The legislation will hurt independent inventors by making patent assertion next to impossible for those who are not blessed with the billions of dollars needed to launch software inventions. Who better to ram through the next BAD legislation than one of its chief proponents. Michelle K Lee. See where she stands in her own words

Deja vu! When Big Software (aka IBM) wanted to ram through “patent reform” (first to file and a host of big business earmarks designed to weaken the patent system and tilt it further toward big business), Senator Patrick “IBM” Leahy nominated the patent strategist from IBM, David “IBM” Kappos to this same influential post. Why? To implement that dastardly legislation to put the screws to small inventors and make patents a big business bonanza not accessible to small inventors. The result was Kappos lobbying hard for patent reform with the promise that the PTO would get to keep its revenues. However, all the bad parts got through and the revenue part got limited by being subject to House Appropriations Committee oversight and yes, with sequestration and the need to look for money sources the promised end to fee diversion was set aside and diversion continues.  Not to be sidetracked by ethical considerations, Kappos pushed on with the implementation starting with all the pro-big business aspects of patent reform, especially two big business specialties,  both acronymed FTF, first Fast Track for Fatcats (big companies can pay to jump to the front of the line, underfunded little guys stay back and get screwed over) and First to File (big companies who have in-house patent attorneys, know the rules, and can file super fast will just be “constructively” deemed the real first inventor, even though they aren’t, rather than let the real inventor get the patent the way it used to be).  So that big companies can better steal employee inventions, provisions were included to allow companies to file without having to even get the inventors’ signatures (that way if the employee objects, the employee is SOL). To raise the ante on enforcement so small guys can’t afford to enforce their patents, new burdensome reexamination and opposition proceedings were set up (to run up the costs of enforcement and delay recovery so inventors go broke if they try to assert a patent). But inventors are, by nature, inventive and they invented a way around this big business crap, and that was to aggregate their patents in one powerful entity that could go toe to toe in litigation with big business. So, big business set out on a publicity and lobbying campaign to call those aggregators “patent trolls”, “non-practicing entities”, “owners of bad patents”, “frivolous patentee”, “frivolous lawsuits”, “unfair litigation”, etc. Michelle K Lee, at Google, was a leading proponent of those labels and that strategy. Once the dastardly deed was done, well David “IBM” Kappos bailed before the inevitable bad fallout from patent reform hit and went to a lucrative law firm position. Was it the payoff for a bad deed well done? Small inventors (who have seen this revolving door game many times before) think they know the answer, big business will surely deny it.

So, round two, big business fights back with more money thrown at Congress to try to stop the patent aggregators, which truth be known is really to stop small inventors who have no other recourse due to prior patent “reform”.  So who does the best White House money can buy and the best Congress money can buy put in now to head the PTO. Naturally, the leading proponent of anti-troll patent reform.  So, now we will see the implementation of patent killing rules and laws to block this end run invented by small inventors to find some modicum of reward for their inventions that are being stolen by Google and other big software firms.  Deja vu, round two.

One of the big complaints is that these patent-killing reforms will just result in sending to Asia the American jobs that might have been created were American inventors given a fair shake.  I hope that appointing an Asian-American is just a coincidence, but one has to wonder if she will have the same sensitivity to the inventors in America as would other possible choices.  She is, after all, a Board Member of the “Asian Pacific Fund” which has as its purpose “a need to increase the resources available to the Asian community.” We hope those resources do not include the inventions created by small American inventors and the ‘Asian community’ is the one that is a welcome part of the American community and not the one centered in Beijing, Seoul and Tokyo. Ms. Lee is from Silicon Valley, which is known as a hotbed of invention, so we can only hope here loyalties are with the startups and small inventors she represented occasionally at Fenwick & West rather than their big software clients like Google where she went before being pushed rapidly up the ladder at the PTO.  I have serious doubts that she is being appointed for any other reason than to see to the implementation of anti-patent troll rules and regulations, but I wonder how strongly she will fight against jobflow to Asia. It is, I submit up to Ms. Lee to prove me and other skeptics to follow wrong. Until then, I am operating under the assumption that her motto will be a warning to small American inventors and patent aggregators “Whatcha gonna do when they come for you? Bad Boys, Bad Boys. Whatcha gonna do when they come for you?”  Next move up to you Ms. Lee! From here in St. Louis in the “Show Me State”, I say show us where your loyalties lie! From the heartland of American, and the Gateway to the West, I say to you, I hope it is here in America, so it can remain the home of Yankee ingenuity! God Bless America, Keep it Strong, Resilient and Ever Creative. In the dreams of our inventors lie our nation’s hope for the future. Don’t let the dreams die! Michelle Lee, What Will You Be?

Bruce Burdick, Managing Attorney, The Burdick Law Firm, Alton, IL & St. Louis, MO

Owner, America Invents IP Blog

Licensed: IL, MO, TX & numerous state & Federal Courts

Registered Patent Attorney since 1974

Past President, Illinois Innovators & Inventors

Member, Inventors Association of St. Louis

Past Chairman, Midwest Inventors Conference 1999-2006

Member or Past Member, American Bar Assoc., Licensing Exec., American Intellectual Property Law Assoc., International Trademark Assoc.

Top IP Contributor 2012 & 2013,

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USPTO issues updated TMEP

30 Oct

On October 30, 2013, the USPTO issued the October 2013 TMEP, which incorporates USPTO trademark practice, amendments to the Trademark Rules, and relevant case law reported prior to October 1, 2013. The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.

The manual is found here


USPTO introduces GSPN which is actually SIPO

22 Oct

SIPO is China’s  State Intellectual Property Office (SIPO) hence the nickname for the database as SIPO. The USPTO provides a link to it at deceptively made to appear like the USPTO is the source of the database. Rather embarrassing for the USPTO if you ask me, to plagiarize SIPO and pass it off as GSPN. It seems to be an admission by USPTO that the USPTO patent searching tools are not up to date with such things as GAPS (Google Advanced Patent Search) or FPO (Free Patents Online & Cobalt IP) or the premium patent search sites like Delphion, Lexis/Nexis, and Pantrop IP. Still SIPO provides English language access to Chines patent publications, something that has been unavailable to most inventors and practitioners before. A proper patent novelty search should now include GSPN.