Category: News

Patent Practitioner Retirement Rate Calculated

A patent attorney who tracks trends for International IP Law Group has calculated the retirement rate of patent practitioners, each a potential employment opportunity.

Research by Zachary Kinnaird shows that approximately 15% of patent practitioners leave the field after 20 years of practice. Based on removals from the Patent and Trademark Office roster, Kinnaird further calculates the annual rate of retirement at about two percent.

Each of these retirements represents a potential job opening, presuming the retiree’s position is not “filled” by attrition. Coupled with newly available positions, the data would seem to suggest that employment prospects are good for those newly registered to practice before the USPTO.

Read Kinnaird’s analysis here.

Who Owns Inventions by Students?

Students pay for their education as a rule, so what if they invent something in the course of their study? It’s not the same as an employment situation. So, who owns the intellectual property? If it’s patentable, who gets to apply?

There is no pat answer, since the field is still very much in flux.

A few years ago, a student at University of Missouri developed a smartphone app that became very popular and, for him, very profitable. Once the University got wind of this, its lawyers jumped in and demanded a share—of the ownership and the profits.

UM eventually backed down, and several colleges revamped their rules to limit their rights to inventions created at the direction of staff. Studies have shown, however, that traditional rules used by colleges to retain ownership of work done either by staff or by students is largely still in place.

Venue “Status Quo” Preserved By Federal Circuit

Without additional legislation that would lead to a change, venue in a patent case is proper in any jurisdiction in which the defendant does business—so says the US Court of Appeals for the Federal Circuit.

In a case decided in April 2016, TC Heartland was accused by Kraft Foods of infringing Kraft’s patents with respect to sales by the defendant of water-enhancing products in Delaware. TC Heartland argued in its response that the case should be dismissed or transferred, saying Congress intended for such cases to be heard where a defendant company “resides”, in this case, Indiana. The district court rejected the case, and TC Heartland filed a writ of mandamus with the Federal Circuit.

In its rejection, the Federal Circuit noted the consistency with which the broad interpretation of corporate “residence” as written in VE Holding v. Johnson Gas Appliance has been considered prevailing law, and that Congress has no intent to change it. The Federal Circuit called TC Heartland’s argument “utterly without merit or logic”.

 

Credit: McDermott Will & Emery via the National Law Review. Read the full story here.

Invalidating a competitor’s patent: too easy?

Very few people have heard of it, but a case currently in front of the Supreme Court of the United States may have a significant impact on how patents are reviewed after they are granted.

In Cuozzo Speed Technologies v. Lee, the nation’s highest court is weighing arguments over whether the United States Patent and Trademark Office can use a different standard than the one used by federal courts to determine the validity of a patent that is being challenged. More than that, writes Forbes contributor David Pridham, the court is questioning the “bizarre” Inter Partes Review system because nearly nine of every 10 challenges brought to the Patent and Trial Appeal Board ended with the cancellation of one or more patent claims. More than two-thirds of those challenges, he writes, were brought by defendants facing patent infringement suits.

“Whatever else you call this ‘bizarre’ system—BusinessWeek last week called it a ‘patent death squad’—it’s clearly a great way for infringers to escape the court’s justice,” writes Pridham. “It has also proved to be a lucrative get-rich-quick scheme for financial speculators, who short the stock of a company owning a valuable patent, then file an IPR against that company and watch the stock drop as investors react to being put in the crosshairs of the ‘patent death squad’.”

Read the full article here.

“Patent Agent Privilege” Confirmed

A three-judge panel of the Federal Circuit has affirmed “patent agent privilege” in granting a petition filed by a Canadian University in a lawsuit over its patents.

Queens University at Kingston sued Samsung in 2014, claiming the company infringed the university’s patents for user interfaces used by so-called smart devices. Documents were requested during discovery that Queens University refused to provide, on the basis that the documents contained privileged communications between patent agents and university employees specific to the patents’ prosecution.

In March 2016, the Federal Circuit agreed with the university, ruling that congressional recognition of an agent’s authority to act is essentially the same as that of a patent attorney, and thus supports independent patent agent privilege. The ruling limits this privilege to communications that are “reasonably necessary and incident to the prosecution of patents before the Patent Office”.

Post-Grant Review: A Closer Look

One of the most significant changes to patent law in recent years is the post-grant review (PGR) program—an important weapon for companies facing infringement suits by patent owners. So, how does the process work—and is it working as intended?

A roundtable panel of patent experts recently convened to discuss PGR, and most support the changes. The review process is streamlined and much faster, they said, leading to as many petition filings in 2015 as there were inter partes reexamination requests over the previous 13 years.

One panelist, however, believes the playing field is not yet level, and suggests further changes. For example, since only a petitioner can submit a declaration by an expert in the appropriate field, it would be more equitable if the USPTO—which has made the same proposal—could accept similar testimonial evidence in support of a patent owner’s response, since an initial determination by the Patent Trial and Appeal Board (PTAB) is difficult to overcome.

Source: Global Media Business Group

Advice from a Patent Law Expert

The Leahy-Smith America Invents Act brought significant changes to the patenting process, both pre- and post-grant of patents. The Patent Bar Exam will be updated starting in mid-March as it continues to reflect those changes.

In January, Patent Attorney Emeritus David Meeks completed the updates to the PatBar® Patent Bar PREP review course. David is an expert on the Exam and has advised students for more than 20 years. He says it is important to keep track of the specific dates on which certain practices changed.

“Although we think the OED will be testing mostly the current practice, that may not always be the case—such as the changes to prior art under 35 U.S.C. 102 and 103.

“Concentrate on current practice, but you need be able to easily spot when it is the former practice that is being tested in a question on the exam, and react accordingly.”

MD Prof Wants Looser Restrictions for PBE—Likely?

A Baltimore, MD, law professor with extensive experience in patent law has written that he’d like to see any US lawyer qualify to sit for the Patent Bar Exam, essentially removing the existing restriction to only those in specific STEM fields. Is that likely to happen? A co-director of the Center for Intellectual Property and Entrepreneurship doesn’t think so.

Writing for Patently-O, University of Missouri School of Law Professor Dennis Crouch says the courts and Congress, together with the USPTO, intentionally shifted focus over the years toward detailed technological improvement, rather than a more abstract notion of an invention.

“My experience is that a technology-savvy patent attorney will be better able to cost-effectively understand the important technological details,” Crouch writes. “The technological-education requirement of the patent bar places one hurdle in that framework, but the market continues to operate in this area as well. For instance, many companies only hire patent attorneys with relevant experience in the appropriate technological area and don’t simply rely upon the ‘patent attorney’ status as a total qualifier.”

Careers Website Recommends Patent Law to Life Scientists

Bio Careers® for post-graduate Life Scientists says there is a “substantial need” among pharmaceutical and biotech companies for professionals who are registered to practice before the USPTO.

J. G. Hilton specialist Robert Hagan says some scientists prefer to prepare for and take the Patent Bar Exam before they attend law school. “For those who pass and become patent agents,” Hagan writes, “it provides a good opportunity to experience the practice of patent law before making the decision to attend law school.” If patent agents then choose to pursue the law degree, “it may provide a great opportunity to work part-time during law school, or even work full-time while attending law school on a part-time basis.”

Hagan says a good home-study course like PatBar® Patent Bar PREP is particularly beneficial for students with existing work and school schedules, allowing them to digest the material and prepare at their own pace to sit for the Exam.