The recent SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 USPQ2d 1300 (TTAB 2010), case reminds us that applicants who file trademark applications based on a bona fide intent to use a mark in commerce need to have supporting documentation and/or objective evidence in the form of real life facts and actions to demonstrate that they possessed the requisite bona fide intention to use the mark at the time the application was filed.  Without such evidence, a third party may ultimately be able to prevent the US Patent and Trademark Office (“USPTO”) from registering the applied for mark.

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Just like many other forms of property, such as houses, cars, etc. where once you become the owner of the property, you record your ownership rights to put others on notice, for patents, you do the same thing.  Under the patent laws, 35 U.S.C. § 261, one must file an assignment of a patent against that patent in the U.S. Patent and Trademark Office within three months from its purchase (or before a subsequent purchase), else the assignment is void against any subsequent purchaser of the patent who does not have notice of the prior assignment.  The costs for filing are currently $40 per patent, plus any legal costs, but the costs of not filing could be enormous if a dispute arises later about the ownership of the patent.

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In the wake of the U.S. Supreme Court decision in KSR (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2 1383 (2007)), responding to 35 USC §103 or obviousness-type rejections where the examiner has to combine one or more prior art references in order to reject all of the features of a claim have become much more challenging.  Prior to KSR the teaching-suggestion-motivation (TSM) test set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1996), was applied to determine obviousness.  The prior art references were required to provide some teaching, suggestion or motivation to be properly combined to reject the features of a claim.  Accordingly, an argument could be made in responding to a 103 rejection that the prior art references could not be properly combined because there was no teaching, suggestion or motivation for their combination to provide the claimed invention. 

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On October 1st, 2009, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a precedential opinion in Ex Parte Rodriguez rejecting an appealed LSI Logic Corporation patent application for its lack of disclosure of a specific algorithm for carrying out the claimed software invention.  The Board felt that the specification of the patent application did not “enable those skilled in the art to make and use the . . . invention without undue experimentation.”  The opinion was remarkable for reasons that go beyond its content.  The Board convened a panel of seven judges instead of the normal three, and chose to issue the opinion under an operating procedure that makes the opinion a precedent for deciding future appeals within the Patent and Trademark Office as well as for patent examiners in examining applications.

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The United States Patent and Trademark Office (“USPTO”) launched its first electronic filing system (“EFS”) pilot program in 1999.  The EFS system has grown in popularity ever since.  Now, anyone with a Web-enabled computer can access the EFS-Web system and can file a patent application, without downloading any special software. 

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On August 31, 2009, the United States Court of Appeals for the Federal Circuit (“CAFC”) handed down its decision in In re Bose, 91 USPQ2d 1938 (Fed. Cir. 2009).  The collective sigh of relief taken by trademark attorneys across the country created enough wind energy to power a mid-size city.  The CAFC had overruled the Draconian rule of Medinol Ltd. v. NeuroVasx, Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003), which previously applied a “knew or should have known” standard to allegations of fraud on the Trademark Office.  In its place, In re Bose had re-instated an “intent” element for proving fraud against the Trademark Office, aligning the offense with common law concepts of fraud. 

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On September 13th, the United States Court of Appeals for the Federal Circuit decided American Medical Systems, Inc. v. Biolitec, Inc., which involved an important issue in patent claim interpretation: when does the preamble of a patent claim constitute a limitation of that claim? 

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Who doesn’t like to cut to the front of a long line?  In certain situations, the Patent Prosecution Highway (PPH) and Patent Cooperation Treaty-Patent Prosecution Highway (PCT-PPH) programs may provide for innovators to do just that.

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When is PPH or PCT-PPH Possibly a Good Idea?

There are certain situations where it may be advantageous to use the PPH or PCT-PPH programs, recognizing that this is a case-by-case basis analysis that requires careful consideration of a number of factors under competent guidance from experienced counsel.

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             Alleged patent infringers have been increasingly using claims of Inequitable Conduct on the part of a patent holder as a defense when being sued for patent infringement.  If a court finds that a patent holder failed to disclose material information to the patent office during the process of obtaining a patent, the court can invalidate the claims of the patent under the Inequitable Conduct defense.  The current test for determining Inequitable Conduct is a three prong test including a materiality prong, intent prong, and balancing prong.  The materiality prong relates to the importance of the material that the patent holder failed to provide the Patent Office, and is judged on three levels: if the material had been submitted (1) no examiner would have issued the patent; (2) the examiner in the specific case would not have issued the patent; (3) it may have influenced the examiner.  The intent prong of the test relates to if the patent holder intentionally deceived the patent office by withholding the information.  Various courts have created different levels for judging the intent of a patent holder from a low level that the “applicant should have known of the information and submitted it” to a much higher level that the “patent holder had a specific intent to withhold the information.”   The balancing prong of the test allows for a finding of Inequitable Conduct when the proof of one prong is low, but the proof of the other prong is high. 

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