Parties Ask for Stay in Tafas v. Doll

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The parties in the Tafas v. Doll have filed a “Joint Consent Motion for a Stay of En Banc Proceedings.”  As patent practitioners are painfully aware, Tafas stemmed from the USPTO’s August 21, 2007, new patent-prosecution rules and regulations. The “new regulations” challenged were Rules 75, 78, 114, and 265.  Rule 75 established the number of claims that could be presented in an application without an accompanying examination support document.  Rule 78 established the number of continuing applications that could be filed within a patent family.  Rule 114 established the number of requests for continuations that could be filed within a patent family.  Finally, Rule 265 set forth the requirements for an examination support document.

Tafas, later joined by GlaxoSmithKline, challenged the validity of the new regulations, and the United States District Court for the Eastern District of Virginina granted summery judgment for him (and GSK), enjoining the USPTO from implementing and enforcing the new regulations.  Much to the dismay of most patent practitioners, on appeal, the Court of Appeals for the Federal Circuit affirmed, in part, and reversed, in part, that decision.  The CAFC only agreed with the district court that Rule 78 was invalid and remanded the case to the district court for further consideration of the remaining issues.  Then, on July 6, 2009, the CAFC granted Taffas and GSK’s petition for rehearing en banc.

Well, all of the parties involved now want to wait and see what will happen since David Kappos has been nominated as Under Secretary of Commerce for Intellectual Property and Director of the USPTO.  If Kappos is confirmed after his Senate Judiciary Committee nomination hearing, which is scheduled to begin tomorrow, July 29, 2009, then Kappos could moot the entire case by rescinding the rules at issue.

Accordingly, last Friday, July 24, 2009, in their Joint Consent Motion for a Stay of En Banc Proceedings, all of the parties in the case asked the court to stay all en banc proceedings, including briefing and oral arguments, until 60 days after Kappos’s confirmation.  Hopefully, Kappos is confirmed; hopefully, he rescinds the new rules; and, hopefully, he does so quickly.

Google Library Project Preliminary Settlement – Being Scrutinized Worldwide

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googlrWe are used to the Recording Industry Association of America aggressively litigating against individuals and organizations, trying to impede copyright infringements of musical works through peer-to-peer networks and/or other file-sharing technologies.  The original Napster was converted to a pay-based music subscription service years ago and, more recently, Kazaa did the same.
 
In light of the heated litigation in the music distribution industry, it was not surprising, by analogy, that Google quickly caught the attention of the Author’s Guild (AG) and Association of American Publishers (AAP) when Google started a massive book-scanning initiative and made the content electronically available over the Web.  This project, known as the Google Library Project (sometimes referred to as “Google Book Search” and formerly known as “Google Print”) led to numerous lawsuits soon after its inception.  After fighting for a few of years over copyright issues, Google reached a preliminary settlement with the AG and AAP for $125 million and also by establishing a royalty registry.  
 
The preliminary settlement has already caught the attention of numerous critics, including the U.S. Department of Justice (DOJ).  The DOJ was inundated with public comments, questioning whether the settlement would give Google monopolistic rights to distribute, for example, numerous out-of-print books.  The DOJ has not formally opposed the settlement, but has started investigating what effects the settlement may have on competition. 
 
A few days ago, public scrutiny of the terms of the Google Library Project preliminary settlement was extended beyond the U.S. borders.  The European Commission (EC) is proactively requesting comments from European Union (EU) authors and publishers, arranging a meeting between EC representatives and EU authors and publishers early in the fall.  During that meeting, the EC hopes to discuss the terms of the preliminary settlement, presumably to evaluate how an analogous settlement in the EU might impact copyrights, as well as antitrust considerations.
 
Although Google’s Library Project continues to grow, there are certainly a lot of remaining issues to resolve.

IP Philanthropy Can Be Ecologically Responsible

Posted on Categories Environmental Law, Intellectual Property LawLeave a comment» on IP Philanthropy Can Be Ecologically Responsible

img_logo1Since early 2008, there has been an interesting project in IP philanthropy.  At that time, the World Business Council for Sustainable Development (WBCSD) established an initiative called the Eco-Patent Commons.  Member companies of the Eco-Patent Commons are able to “pledge” patents from their portfolios which cover technologies that provide environmental benefits.  Pledging patents into the Eco-Patent Commons is not a transfer of title, but instead is a promise by the patent owner to not enforce the pledged patents against users of the technology (while maintaining rights to defensively terminate the pledge under certain circumstances).

Based on the economic conditions of the last couple of years, I am amazed that companies are willing to allow others to freely practice inventions which would otherwise generate licensing revenues.  However, some companies have done exactly that.

Continue reading “IP Philanthropy Can Be Ecologically Responsible”

Welcome, Nominee Kappos

Posted on Categories Intellectual Property LawLeave a comment» on Welcome, Nominee Kappos

kapposLike most patent practitioners, I am very pleased with President Obama’s recent nomination of a new Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO).  The nominee is David Kappos, vice president and assistant general counsel for intellectual property at IBM.  Kappos has over 20 years of intellectual property experience and manages IBM’s patent and trademark portfolios.  Worth noting is that each year, IBM obtains more U.S. patents than nearly any other company. 

In Kappos’s capacity as VP and assistant general counsel for IP at IBM, his views on many substantive patent law issues are well known.  For example, he is not a fan of pure business method patents (preferring, for example, the machine-or-transformation test).  He also generally supports harmonization efforts, including “opposition-like” post-grant review procedures.  His opinions on such issues have been praised by many and criticized by some.  Interestingly, some have also criticized his nomination for not emphasizing his potential to fix various problems of the USPTO, but instead focusing on his knowledge of the patent system in general. 

I, on the other hand, am relieved that his nomination has been surrounded by discussions of his general knowledge of the patent system.  Continue reading “Welcome, Nominee Kappos”