Washington State Patent Law Association Files Amicus Brief in Bilski

On April 4, 2008 the Washington State Patent Law Association (WSPLA) filed an amicus brief in support of Petitioner Bernard L Bilksi and Rand A Warsaw in the case currently under en banc consideration by the CAFC, In re Bilksi. My earlier posts on this case can be found here and here.

WSPLA's brief was signed by Michael Swope over at Woodcock Washburn. Also on the brief were Grzegorz S Plichta (Woodcock Washburn), Dale Bar, President of WSPLA and lawyer at Lee and Hayes, and Peter J Knudsen, IP counsel for Nastech Pharmaceutical Co., Inc.

Dennis Crouch over at Patently O, has a good summary of all Amicus Briefs filed in the case.

Professor Karl Manheim of Loyola Law School Speaks to Seattle Patent Lawyers About Patent Reform Legislation

Professor Karl M. Manheim from the Loyola University Law School (LA) spoke to Seattle area patent lawyers today about pending patent reform legislation pending in both houses of Congress. Professor Manheim's talk was given at the monthly meeting of the Washington State Patent Lawyer's Association (WSPLA). Professor Manheim is the Loyola director of the Program for Law & Technology at the California Institute of Technology and Loyola Law School. The talk was very informative, covering all areas of both bills, HR 1908 and S 1145. Topics discussed included the hotly debated "first-to-file" provisions of the proposed legislation, which Professor Manheim was quick to describe as the "first inventor to file," placing emphasis on the legislation's continued requirement for filings in the name of the inventor. What was interesting to me is the fact that the original version of HR 1908 included a provision where companies could file in their own name under a representation that the inventor was under an obligation to assign. This provision was removed from HR 1908 after obvious protests from independent inventors, but according to Professor Manheim, it remains in the the Senate bill, S 1145. In fact, there appear to be many significant differences between the Senate and House versions of this legislation. Professor Manheim directed us to a chart prepared by attorneys from Foley Hoag LLP attempting to set forth, on a provision by provision basis, the differences between Senate and House patent reform legislation pending in both houses of Congress. Professor Manheim's comment on this chart was that it seemed "generally accurate," at least insofar as the legislation existed in September 2007. So far, there is no complete version of the Senate bill available and because the Senate did not establish a subcommittee on IP, discussions are being conducted within the broader Senate Judiciary Committee. Here is a link to the complete ("engrossed") version of the HR 1908 as of September 2007.

"It's All About Quality" Says Senior Legal Advisor to USPTO, Elizabeth L. Dougherty to Patent Lawyers in Seattle

Speaking today to a packed room full of Seattle patent lawyers disenchanted with current USPTO policy on, among other topics, continuations and claims rules, Senior PTO Legal Advisor Elizabeth L. Dougherty spoke sanguinely about the future of the controversial rules without providing specific information regarding the Office's current litigation position. Today's keynote address in Seattle was at the monthly meeting of the Washington State Patent Law Association at the Washington Athletic Club. The original topic of Ms. Dougherty's address was "Overview of the New USPTO Rules Effective 11/01/07 (Re: Continued Examination Filings, Applications Containing Pat. Indistinct Claims, etc.)." Not surprisingly, this topic was changed in view of ongoing litigation between the USPTO and GlaxoSmithKline/Tafas over the proposed rule changes. If for some reason you haven't heard, or haven't followed this case, here and here are some links to get you up to speed.

Ms. Dougherty was tight-lipped about the ongoing case, saying only that the USPTO plans to "defend vigorously" its new rules and that the lawsuit was seen inside the office as "bigger" than the new rules; explaining that its outcome could impact "more broadly, the rule making ability of all government agencies" not just the PTO.

In view of the ongoing litigation, Ms. Doughtery's topic was changed to the "Future of Patents and the USPTO." That future is bright according to her presentation, which summarized the recent statistical update released a couple weeks ago by the office. For a complete listing of recent stats from the USPTO, click here (pdf). While the statistics show a dramatic decrease in allowance rate (from over 70% in 2000 to about 54% currently), Ms Dougherty explained that this is because of the USPTO's focus on quality. Quality was the theme of the presentation which also discussed various pilot programs within the USPTO aimed at increasing quality, including a peer review process where the public may comment on published applications.

Despite her somewhat grumpy audience, I thought Ms. Dougherty's presentation was well received. She also came bearing gifts, including neat squishy USPTO light bulbs. If the new rules ever go into effect, you can expect these "stress relievers" will get a lot of use.

Here is a complete copy of the slides for her presentation.
Future%20of%20Patents%20and%20the%20USPTO%20%2880145198%29.pdf

Comments Posted on Proposed BPAI Rules

Dennis Crouch has a couple good posts on the proposed rule changes for patent appeals.

Local commentators include the Washington State Patent Law Association, Intellectual Ventures, and Microsoft.


wspla%282%29.doc
microsoft%282%29.doc