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April 2008 Archives

USPTO's proposed Final Rules held invalid

By Timothy J. Maier on April 11, 2008 11:44 AM | No Comments | No TrackBacks

The District Court for the Eastern District of Virginia recently granted summary judgment to Tafas and GlaxoSmithKline, finding that the USPTO's proposed Final Rules were an improper extension of the Office's authority.

 According to the Court, the authority granted to the Patent Office under 35 U.S.C. §2 is limited to rules governing "conduct of proceedings" before the Office, and does not extend to the issuance of substantive rules, which the Court defined as "any rule that affects individual rights and obligations." The Court then found that the proposed Rules, including those limiting claims and continuations were substantive, as they "alter existing law and limit the rights of applicants…under the Patent Act."

 The Court held: Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).

 The USPTO is planning to appeal the ruling to the CAFC.

CAFC holds that strong prima facie case of obviousness not overcome by secondary indicia of non-obviousness

By Timothy J. Maier on April 4, 2008 10:17 AM | No Comments | No TrackBacks
Agrizap v. Woodstream involved a patent (5,949,636) held by Agrizap, Inc. covering a method and apparatus for electrocuting pests such as rodents. Woodstream Corp., first licensed and then begain producing its own version of the product, prompting a suit by Agrizap for fraudulent misrepresentation and patent infringement. The jury found the patent to be valid and infringed; however, the district court granted Woodstream's JMOL motion that the patent was not infringed.

On appeal, the CAFC affirmed the JMOL, stating that the '636 patent was obvious in light of Agrizap's earlier patent (5,269,091) for another pest electrocution device, with the only difference between the two being the trigger mechanism. The '091 patent disclosed a mechanical switch to complete its circuit; the '636 patent disclosed a resistive switch, which was well-known in the prior art.

The court, citing KSR v. Teleflex, found the '636 patent to be "a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results." Furthermore, the court found that secondary evidence of non-obviousness, such as the commercial success of the product, Woodstream's copying of the product, and a long-felt need for electronic rat traps was insufficient to overcome the strong prima facie case of obviousness.

Chinese Patent applications on the rise

By Timothy J. Maier on April 1, 2008 12:27 PM | No Comments | No TrackBacks

According to the Chinese State Intellectual Property Office, the SIPO received 694,153 patent applications in 2007, an increase of 21.1% from 2006. Chinese applicants made up 84.5% of the yearly total, with the rest being filed from abroad. Additionally, the SIPO received 5,401 Patent Cooperation Treaty applications in 2007—a 41.2% increase from 2006—with 96.7% of the applications being filed by Chinese applicants. The majority of PCT applications were related to the high-tech and telecommunications industries.

 The SIPO granted 351,782 patents in 2007, with 50,150 of those going to foreign applicants.

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