Section 293 and Baseball

The following was written by my colleague, Darby & Darby principal, Steve Lipman.

In my recent efforts to learn the name of the “Section 293 Notice” representative of a client’s U.S. patent, I came upon the following incredible story. By the way, for those of you who may not know about a “Section 293 Notice,” it is a provision of Title 35 that gives a foreign owner of a U.S. patent the option of designating a U.S. representative for service of process relative to its U.S. patent; otherwise, the foreign owner can be sued on the patent in the District Court for the District of Columbia.

Since I was informed by a client that it believed it had designated a 293 representative in NY, I looked in PAIR to confirm that belief. Strike number one. I then searched the entire PTO website to find where such information may exist in the bowels of the PTO. Strike number two. Now, with bases loaded in the bottom of the ninth, I telephoned the PTO directly and, after speaking to four different people in four different PTO “departments” – none of whom had ever heard of Section 293, I thought I had struck out and left all three runners on base …. but then, as I was about to drag my bat back to the dugout, my phone rang. It was Marilyn Ricks (703.756.1169), the Manager of a “Records Branch” in “Shirlington.” Since I spent 11 years at the PTO I knew Shirlington well (it is just South of Arlington, VA, where the PTO used to be located ), and still includes a great movie theater that my wife and I used to frequent, Ms. Ricks (an incredibly sweet and friendly person) and I hit it off immediately. (Get the “hit” pun?). By the way, the alleged “NY-style” delicatessen that used to be in Shirlington left town long ago (as I did), but I was always bothered by the fact that my first lunch at the “Shirlington Deli” included a pastrami sandwich served on white bread

Ms. Ricks admitted sheepishly that she really did not know too much about Section 293, but she did reveal that there was a “Green Ledger Book” in her Records Branch that has hand-written entries "about 293.” Ms. Ricks had no idea how “the Book” made its way to her Branch, but it was her understanding that “the Book” had been around since about 1960. The bad news for me, however, was that not a single hand-written entry had been made in “the Book” since 2004 – thus likely indicating, assuming no mistake had been made by the Records Branch, that no such NY representative had been designated by the client under Section 293 – or attempted to be recorded in the PTO by the client. Ms. Ricks and I shared a couple of laughs about “the Book,” and then said our goodbyes with some nice memories about the ol’ Shirlington Movie Theater.

One of several morals to this story is that the PTO is not as “E-savvy” as it portrays itself. Another moral is that baseball is a wonderful game, especially when one plays catch with ones father on a beautiful cornfield.

Steve Lipman

Peer To Patent Project Is Catching On

In a previous post, I argued for the continued patentability of software. I recognize the existence of "bad" software patents or patents on software that were improvidently granted. I also recognize the economic inefficiencies created by legal patent monopolies for software methods and systems that are old or obvious. Notwithstanding these problems, I still believe that getting rid of all software patents would be bad for the economy and bad for the industry. Instead of restricting the scope of patentable subject matter to exclude certain classes of technology, we (patent lawyers, software engineers, and anyone interested in technology as an industry) should endeavor to increase the quality of patent examination, especially in terms of searching for prior art.

The USPTO recognizes this and in June of this year it started a pilot project in coordination with New York Law School's Do Tank, with the stated mission "to prove that organized public participation can improve the quality of issued patents." The project is called the "Peer to Patent Project" and it involves "1) review and discussion of posted patent applications, 2) research to locate prior art references 3) uploading prior art references relevant to the claims, 4) annotating and evaluating submitted prior art, and 5) top ten references, along with commentary, forwarded to the USPTO."

According to a recent post on the Peer-to-Patent Blog the project has had 186,043 page views from 32,457 unique viewers in 126 different countries/territories. Currently, 1737 people have signed up to be reviewers and have cited 106 instances of prior art on 22 applications.
There are currently 17 active patent applications for review.

1) Honey monkey network exploration
2) Dynamic readjustment and interpolation of progress method and system
3) Methods of enhancing media content narrative
4) Systems and methods for clinical decisions crawler agent
5) System and method for managing storage system performance as a resource
6) Method and apparatus for selectively executing different executable code versions which are optimized in different ways
7) Crossbar arithmetic processor
8) Smart drag-and-drop
9) Methods and apparatus to implement annotations based thunking
10) Method of obtaining data samples from a data stream and of estimating the sortedness of the data stream based on the samples
11) Security systems for protecting an asset
12) Method for configuring a windfarm network
13) Technique to modify a timer
14) Cross-cutting detection of event patterns
15) User interface paradigm for manufacturing applications
16) Computer compliance system and method
17) Vector length tracking mechanism
18) Relocating page tables

This project is particularly noteworthy for its ability to bring together the industry's Hatfields and McCoys. Project Sponsors include Intellectual Ventures, IBM, Microsoft, and Computer Associates, HP, GE, and Red Hat. The project is also obtaining broad grass-roots support from the likes of the Electronic Frontier Foundation. This post from the EFF calls for participation in gathering prior art for one published patent application, the Smart Drag and Drop application owned by Yahoo!.

PTO Rule Changes Enjoined: Developing Story

This just in from reliable sources in the ED of VA, the USPTO has been enjoined from implementing rule changes tomorrow. Judge Cacheris has apparently entered an injunction and this will most certainly be appealed by the USPTO in an emergency motion to the CAFC. More on this developing story in a bit.

Patent Office Publishes Long-Awaited Guidelines for Obviousness Rejections

Today the U.S. Patent office finally published examination guidelines for determining obviousness of an invention under 35 U.S.C. 103 in view of the Supreme Court decision in KSR International v. Teleflex Inc. The guidelines were published "to assist USPTO personnel to make a proper determination of obviousness under 35 U.S.C. 103 and provide an appropriate supporting rationale."