January 2008 Archives

The Patent Prosecution Highway is a program by the USPTO that enables an applicant, who received a ruling from a foreign patent office that at least one claim in an application is patentable, to request that the foreign office fast-track examination of corresponding claims in corresponding applications. According to the USPTO, the PPH enables a patent office to benefit from work previously done by the other office, and results in applicants obtaining corresponding patents faster and more efficiently.

 The USPTO has been involved in a pilot PPH program with the Japanese Patent Office since summer of 2006 and with the UK Intellectual Property Office since September 2007. On January 3, 2008, the USPTO and the JPO had announced that the PPH program will now be implemented on a full-time basis. Additionally, the USPTO launched two more pilot PPH programs with the Korean and Canadian Intellectual Property Offices. The pilot programs are set to last for one year, though they may be extended for up to year or cancelled at any point, depending on activity volume and other factors.

Under Chinese Trademark Law, a trademark owner with products belonging to different classes under the Nice Classification must register its trademarks separately in each class. Wang Jun, an apparel dealer in Wuhan, had discovered that while Louis Vuitton had registered its trademarks
 for such products as apparel, leather products, jewelry and precious metals while leaving the product patent in China void and empty. Wang then successfully registered the trademark "LOUYIVEITEN" and, in late 2003, obtained a patent on a package design similar to that of LV's handbags.

In 2004, LV requested the Chinese State IP Office to invalidate Wang Jun's patents on the grounds that the pattern elements of Wang Jun's design are largely LV's world famous patterns; since LV had long ago registered its trademark in China, LV posited that Wang's patent was in conflict with LV's priority right. The Chinese IP Office ruled that LV did not provide sufficient evidence and refused to invalidate Wang's patents.

 Wang has offered to sell the patent to LV for US$17.5M or, alternatively, for a consideration of 1 yuan and the grant of an exclusive franchise in Wuhan. LV has refused to do so, and its future in the Chinese market is currently uncertain.

In Baldwin Graphic Systems, Inc. v. Siebert, Inc., the Federal Circuit confirmed that the use of the indefinite articles "a" or "an", in an open-ended claim containing the transitional phrase "comprising", carries the meaning of "one or more".

 Baldwin sued Siebert for infringement of a number of claims in its patents of systems for cleaning a cylinder of a printing press using cleaning fabric and methods for making those systems. The District Court found no infringement, construing the phrase "a pre-soaked fabric roll" to mean a single roll and relying on the subsequent use of the phrase "said fabric roll" to reach that conclusion. The Federal Circuit disagreed, stating that “[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising'" and emphasized that such an interpretation is best described as a rule, rather than a presumption or convention.

 Additionally, the Federal Circuit stated that the subsequent use of the term "said" or the definite article "the" does not change the plural rule, but rather simply reinvokes the non-singular meaning. Exceptions to the rule arise only where a patentee "evince[s] a clear intent to limit 'a' or 'an' to 'one'" or where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.

On January 16, 2008, the Supreme Court is set to hear arguments in the Quanta v. LG Electronics case. The case involves the patent exhaustion doctrine, which states that a patent holder may not restrict the manner in which a purchaser of the patented product uses it after the sale.

LG had licensed several patents to Intel and required the company to notify its customers not to combine Intel technology with non-Intel components. While Intel complied, several of Intel's customers—Quanta being one of them—did not, prompting LG to initiate an infringement suit. While the District Court ruled that LG's patents were exhausted, the Court of Appeals for the Federal Circuit reversed, stating that there was no exhaustion due to the notification that LG required Intel to send to its customers.

 Twenty-seven amicus briefs have been filed since the Supreme Court decided to hear the case. Companies that generate a large percentage of their revenue from patent licensing argue that a licensor should be able to collect royalties from different levels of the production chain, while supporters of Quanta argue that the first purchaser of a patented technology should be able to pay a full royalty to the patent holder.

On December 11th, 2007, the PTO's proposed changes to the Information Disclosure Statement rules have been approved by the US Office of Management and Budget and thus passed the last regulatory review prior to implementation of the rules.

An Information Disclosure Statement is a document through which an applicant can fulfill (in part) the duty of disclosure under Rule 56 of Patent Office regulations. Using an IDS, an applicant can fulfill the Rule 56 duty of disclosure by submitting copies of prior art references and any other material relevant to patentability. Under the current rules, there is no limit on the number of references that can be filed with an IDS, and, if an IDS is filed after the first action on the merits, the PTO charges a late filing fee.

Under the new rules, the PTO will no longer charge a fee for late filing; however, applicants will now only be allowed to submit no more than 20 references without explanation. Those applicants who submit a greater number of references or "very long" documents will be required to review their submissions and provide information as to their materiality and as to why the application is not preempted by the references.

Effectively, this aspect of the new rules will shift the burden of examination to the applicant, making IDS submission more costly and burdensome. Other changes to the IDS rules will be discussed in a future post.