Promote the Progress

The Federal Circuit's recent opinion in American Chef v. Lamb-Weston has gotten me thinking about the tricky business of patent valuation. At issue in the case is the proper interpretation of a claim limitation that requires "...heating the dough to a temperature...." The patentee asked the court to apply a claim interpretation that essentially changed the word "to" to "at". The patentee wanted the claim to read "...heating the dough at a temperature..." because heating dough to the specific temperature range recited in the claim would burn it to a crisp. The defendent, for obvious reasons, was not performing such a heating step.

As a claim interpretation case, American Chef is not necessarily suprising. So, what does the case have to do with patent valuation? Its a reminder that timing is everything.

The decision potentially limits the scope of any issued patent claim that includes a "heating to..." step. While each patent is its own universe, and a full legal analysis is necessary to determine whether a claim does or does not read on a particular product or process, decisions like American Chef lurk in the legal texts awaiting unsuspecting patent claims.

Most importantly, though, these decisions can be handed down at any time, and apply to all issued patents. American Chef reminds us that the law of claim interpretation, and thus patent valuation, changes frequently. At its best, the legal component of a valuation analysis is a snapshot of the value of a patent. It represents a single point in a time continuum. Ideally, for important patent valuations, you should watch the whole movie, or at least flip through several snapshots. The analysis should be treated as fungible, and should be updated as appropriate.

Posted by J Matthew Buchanan at 03:28 AM | Permalink

The USPTO has launched a searchable form of its assignment database for issued patents and published applications. The search form allows you to search by a variety of parameters, and will give entire chain-of-title results for a document. Also, you can search by Assignor and/or Assignee, and get a list of all corresponding patents and published applications.

This is a welcome addition to the growing bundle of electronic services offered by the patent office.

Note that the database covers both patents and trademarks.

The top level of the searchable database is here.

The search form for trademark assignments is here.

Posted by J Matthew Buchanan at 09:00 AM | Permalink

Recently, the the USPTO announced that the University of California is the university that was awarded the most patents in 2003. The UC newspaper has posted an article that details some of the revenue UC has generated (and is generating) from its portfolio. The article also points out that the University intends to use its portfolio as leverage in negotiations with the governor on budget cuts.

Posted by J Matthew Buchanan at 08:53 AM | Permalink | TrackBacks (1)

The WIPO PCT Newsletter for February, 2004 is now available. The newsletter has a thorough summary of the recently expanded electronic filing program for PCT applications. Perhaps most practical, the Newsletter includes a table that lists the Receiving Offices that are ?prepared to accept the filing of international applications in electronic form.?

As of 12 February, 2004, only six (6) RO?s will accept electronic PCT applications using the new PCT-SAFE program. The US RO is not on the list, but the EP RO is.

On a side note, WIPO should be commended for its production of the PCT Newsletter. The Newsletter is a tremendous resource for relevant current information Also, the Newsletter is published in .pdf format, and takes advantage of many features of the .pdf format that make the document very useable. For example, the Newsletter includes a thorough set of bookmarks, and has live hyperlinks. Use of the article tool in Acrobat 6.0 would be a welcome addition to future versions of the Newsletter.

E-mail any comments you may have regarding the Newsletter to WIPO.

Posted by J Matthew Buchanan at 08:26 AM | Permalink

WIPO announced the deployment of its electronic filing program for PCT patent applications. Electronic filing requires use of the PCT-SAFE software.

Posted by J Matthew Buchanan at 08:45 AM | Permalink

The United States patent is an important public document that serves many purposes. For example, the claims define the subject matter from which the owner has the right to exclude others from making, using, and selling. Thus, the claims place the public on notice of the protected territory. Also, the patent provides a description of the invention - a teaching of how to make and use the invention.

Anyone who works with patents regularly, though, will tell you that these important documents could contain much more information to make them more useful for the public. I?ve thought about this issue quite a bit lately, and have made a list of changes that, I believe, would make the issued U.S. patent a better public document.

If there is a theme to the list, it has to be electronic patent documents with up-to-date information. These electronic documents could be generated, not simply displayed, each time a user requests the patent. Thus, a patent may look one way on Monday, and may look different on Thursday. Sound confusing? Read on, and I bet you?ll agree that this approach would make the United States patent a more useful document.

The changes are, in no particular order:

1. A current recitation of the owner of the patent.

Ownership information is gathered when patents are issued and prior to printing of the ?ribbon copy.? But, after issuance, ownership of the patent can change, sometimes several times over. The electronic versions of patent documents should always have a current listing of the owner of the patent, at least according to USPTO records. If you pull an e-copy on Monday, it should list the owner of record as of Monday. Pull another copy of the same patent on Thursday, and it should reflect any ownership changes recorded in the USPTO on Tuesday and Wednesday. This seems like a simple database query to me.

2. A graphical representation of the patent family

Issued US patents currently contain a text section that lists related applications and patents. But, the text of this section can be cumbersome, and it only includes the prior history of the patent family. The patent document should include a graphical representation of the patent family that is always up to date. Again, as with item 1 above, the electronic copy should pull relevant information from a master database and give the user a current picture of the prior and subsequent family history. The information should be depicted graphically, using distinct icons to represent relationship type, and should place each of the applications and issued patents in the family on a timeline.

3. An indication of the term expiration date

Calculating a patent term can be a challenging task. Patent term extensions and restorations only complicate the issue. The patent document should include a definite expiration date, preferably right next to the issue date. Also, again using the database query idea, electronic versions of the patent document could include a current expiration date that would account for any term extensions obtained after issuance.

4. Make the bar code useful

Awhile back, I called the patent office in an attempt to find out what data is included in the bar code on issued U.S. patents. No one could give me an answer (side note: if you know, please e-mail me). The patent document should include a bar code that codes for the number of the patent, and the patent office should provide a public database that lists all relevant data keyed to the patent number. Imagine being able to scan a stack of patents, and collect the inventor names, priority dates, claim text, and other information into a searchable database. In minutes you?d be able to produce meaningful database reports instead of staring at the paper stack for months. Again, it?s a simple database query. If the bar code included the patent number (maybe it does already), a bar code scanner could put the number into a database on your local machine, which could then consult the USPTO public database over the internet and download all relevant fields in the background.

5. Provide a graphical representation of the prosecution history

A proper analysis of a patent requires a thorough analysis of the prosecution history. But, a lot can be gleaned from a quick glance at a file history. The patent document should include a graphical representation of the prosecution history, indicating milestones such as amendments, appeals, etc. with distinctive icons.

6. Include claim 1 on the cover

The patent document should include one figure and one claim right on the cover. The claim should be the broadest included in the issued patent, which normally will be claim 1.

7. Provide a graphical representation of the chain-of-title

The patent document should include a simple flowchart of the complete history of the title to the patent. This could be joined with item number 1 above, and could always be kept current for electronic versions of the patent by querying a database as part of the generation of the electronic document. Databases are wonderful tools.

I plan on updating this post occasionally as I have more ideas. Feel free to e-mail me any ideas you have on the topic.

Posted by J Matthew Buchanan at 08:44 AM | Permalink | Comments (1)

A compromise was reached yesterday by the House Judiciary and Appropriations Committees regarding the patent and trademark fee bill (H.R.1561). Under the compromise, fees collected by the patent office that exceed the amount appropriated will be deposited into a Patent and Trademark Fee Reserve Fund. Apparently, the Fund will be rebated to USPTO users.

Both the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA) endorsed the compromise as an acceptable approach to the fee diversion issue.

Review the summary of H.R. 1561.

In thinking about this only briefly, a few thoughts come to mind. If the patent office actually refunds monies to applicants, how will the program be administered? Will the funds be sent back to the attorney or agent (if there is one)? Will this create a huge burden on law firms? If a deposit account is used, can the account simply be credited? How will the "rebates" be appropriated? I see the development of a huge administrative section at the patent office that simply collects money, shuffles paper, calculates returns, and mails checks. Maybe the IRS should handle the chore....

Posted by J Matthew Buchanan at 08:31 AM | Permalink

In Australia, an Advisory Council on Intellectual Property (ACIP) is seeking comments on patents and experimental use.

Specifically:

"To examine whether some types of patents are inhibiting research and development in Australia and determine whether both Australian researchers and business would benefit from introducing an experimental use exception provision (or some other provision) into the Australian patent legislation. In examining this question, ACIP should consider whether an experimental use exemption would help researchers more effectively use the patent system to commercialise their research and development."

The relevant dates are:

ACIP expects to circulate an Issues Paper in February 2004 with a request for written submissions by 30 April 2004 and plans to hold consultations during May 2004.

The website states that a registration was due by 12-15-03, but it is not clear if that is a firm deadline.

See the link here.

Posted by J Matthew Buchanan at 09:21 AM | Permalink

The USPTO released its list for the top ten patent-receiving universities for 2003. The schools on the list are not suprising, but the disparity between the top university (University of California) and the rest of the list is. Very interesting.

The list is here.

Posted by J Matthew Buchanan at 08:38 AM | Permalink

Microsoft previously announced that it would make changes to its Windows operating system and Internet Explorer browser because of the recently upheld infringement decision against Microsoft and in favor of Eolas Technologies. Now, Microsoft states that it will wait for the Patent Office to complete its review of the Eolas patent.

This article summarizes the Microsoft actions and announcement.

Posted by J Matthew Buchanan at 08:19 AM | Permalink

The FY2005 budget proposed by the Bush administration apparently allocates all user fees collected by the PTO to the PTO. The end of fee diversion will provide the PTO with much-needed funds for various quality-improvement efforts, including hiring and training of Examiners, continuation of the electronification of processes and records, and the move to new facilities.

Keep in mind that the funds at issue are not tax dollars paid by the general public, but tax dollars paid by the innovators of the world via filing and other PTO fees.

The PTO notes that the proposed budget assumes approval of the currently proposed PTO fee schedule.

See the PTO press release here.

Posted by J Matthew Buchanan at 09:04 AM | Permalink