Intellectual Property Attorneys - IP Lawyers

September 2007 Archives

Tech Industry Lobbies to Limit Damages for Patent Infringement

By Timothy J. Maier on September 26, 2007 12:26 PM | No Comments | No TrackBacks
The Coalition for Patent Fairness, a group representing tech companies such as Intel, Cisco, Apple, Microsoft and others, has recently steered a favorable bill through the House and the Senate Judiciary committee. At the nexus of the bill is a provision limiting damages for patent infringements not to the entire product, but rather to the component in question.

This provision is advantageous to tech firms, who are frequently defendants in infringement suits and would like to keep damages as low as possible. Tech products frequently have thousands of patented parts, and if a manufacturer impinges on one of those patents, the damages for the component would be a fraction of those for the entire product .

On the opposing side of this dispute are the pharmaceutical companies. At the moment, the penalty for infringement can go well beyond the economic impact of the invention itself. This is advantageous for the drug companies, who are often plaintiffs in patent lawsuits and seek to maximize the deterrent for copying of their patents.

So far, it appears that the tech companies have the upper hand. Stay tuned for more information as this dispute develops.

New USPTO Rules on Claims, Continuing and Related Applications, and Final Action Practice

By Timothy J. Maier on September 14, 2007 4:11 PM | No Comments | No TrackBacks

On August 21, 2007, the United States Patent and Trademark Offices (USPTO) published final rules concerning claim examination and continuation practice, which may affect U.S. patent prosecution practice, depending on the circumstances of one's portfolio. While the rules become effective on November 1, 2007, certain patent prosecution actions taken prior to this date May affect the options available after November 1, 2007.

Under the new rules, applicants may file only one Request for Continued Examination (RCE) and two continuation or continuation-in-part applications in a single application family; a petition justifying the filing will be necessary if the number of the above applications exceeds the limits.  If an application family already contains two continuation applications as of August 21, 2007, one more continuation application may be filed. However, if an application family contains one or more RCEs prior to November 1, 2007, further RCEs filed after that date will require a petition. Divisional applications that claim only unexamined, non-elected inventions may be filed if a prior application was subject to a restriction requirement.

The number of claims that will be examined without an Examination Support Document will likewise be limited to five independent claims and twenty-five total claims. This limit will apply to any patent application that has not received a First Office Action on the Merits (FAOM) before November 1, 2007. Applications not in compliance with the new limits May be subject to a reduction in patent term adjustment
If an application claims more than one invention, and the applicant files a Suggested Requirement for Restriction (SRR) prior to an FAOM or restriction requirement, the claim limit may be exceeded. However, the amount of elected claims in the SRR must still be below the 5/25 threshold.

Multiple applications may count against the 5/25 claim limit in certain circumstances; for example, the claims of commonly owned copending applications having a patentably indistinct claim will be counted towards the limit. For applications filed on or after November 1, 2007, the new rules will require applicants to identify commonly owned applications or patents with at least one inventor in common and with filing or claimed priority dates within two months of each other. For applications filed prior to November 1, 2007, the identification will have to be made by February 1, 2008.

The new rules affect various other prosecution practices and strategies, including, but not limited to preparation of new applications, reexamination, deferring examination, reissue and the use of prosecution practices that promote efficiency. Any future action in a patent family should consider the effects of the new rules.

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