Civ Pro (or Federal Rules of Civil Procedure (FRCP) for non-lawyers and non-law students out there) was one of my least favorite law school courses and one I didn't appreciate much until I became an attorney. It's one of those classes where you don't really understand the context and the implications of the rules until you see it in action.
Like many rules, FRCP is a living document and its rules change from time to time. Recently, there were changes to rules 26, 37, and 84. These rules, while not directed specifically towards patent litigation cases, help curb the activity of non-practicing entities (NPEs) or "patent trolls." In other words, good news for defendants.
Let's take a look at each of the rules and determine what it means for plaintiffs and defendants in patent litigation cases.
On average, patent applicants generally see two office actions per each prosecution round. The second office action is usually the "final" office action, and most applicants are usually really confused by what they should do next.
I like to start out by telling my clients that final does not really mean final, and prosecution isn't really over unless you want it to be over. So what comes next? Here are the options that I lay out- easiest to hardest:
A while ago, I talked about how to prepare a PCT-EASY .Zip File. Lately, I've noticed a trend from the receiving office (USPTO), here is a follow up on what happens after you file a PCT application and what to do if you are invited to correct any defects. Just as a disclosure, when I talk about the receiving office (RO) here, I mean the USPTO. I haven't submitted PCT applications to other ROs. And another side note- remember that at least one applicant has to be a US national or resident in order for you to designate the USPTO as the RO. If that is not the case, then you cannot use the USPTO as the RO.
Now, what happens after you file a PCT application? Just as you receive an e-receipt after filing a normal US patent application, you will also receive one for your PCT application if you use EFS-Web to file. Then it should take you about 1-2 weeks to receive something in the mail from the RO.
A while back, my friend interviewed me for her article on revenge porn. (She writes for Vivala and runs her own blog Zenfulie.) At first, you may be scratching your head and asking yourself what revenge porn has to do with IP. Well, there's an important copyright issue to consider. Check out her article on Vivala to find out!!!
Full disclosure here, before I dive into this article, I've never played World of Warcraft and would be considered a "noob" (which is equivalent to rookie I guess). Nothing against World of Warcraft - I'm just terrible at video games and this game is way beyond my skill level. But today, one of my contributors sent me this article and I found it pretty interesting, so here we are.
As you may know, World of Warcraft (WoW) has been around for a while. Blizzard launched WoW back in 2004, so as you can imagine, the game has evolved and updated significantly over the last 12 years. Apparently last year, a group of gamers launched Nostalrius, which was a server devoted to running an early version of WoW (some versions are not as good as previous ones). As of earlier this month, however, Blizzard shut down Nostalrius... Reason? To protect WoW's Intellectual Property (I guess some combinations of patents, trademarks, and/or copyrights). To allow Nostalrius to continue running would be to basically allow them to infringe upon Blizzard's IP, and Blizzard was not willing to grant a license to a pirate server.
While I was handling some litigation matters today, I thought about my last article and thought I'd follow up re: Kylie v. Kylie. I was disappointed to find out that nothing happened because the parties decided to suspend the proceeding to settle. Although this was to be expected (as most cases settle), I really wanted to read Jenner's response and follow up with this proceeding.
But I would like to point out something that is important to remember for many pro se litigants.
Long before Kylie Jenner became famous for being famous (thanks in part to Paris Hilton and Ryan Seacrest), the only other celebrity named Kylie that I knew was Kylie Minogue. In recent years, Kylie Jenner has been building some star power of her own by receiving media attention. Now, she has her own website (that you need to pay monthly subscription to access some of her contents) and a long list of products with her name splattered all over it.
So naturally, as any smart business woman would do, Kylie Jenner has filed several trademark applications before the USPTO, one of which brings me much interest.
It's been over a year since I wrote my article about SpaceX so this is a long overdue part 2 article on IPR re: SpaceX v. Blue Origin. I thought I'd write it because SpaceX is launching Falcon 9 rocket this Friday.
By the way, it's crazy that IPRookie's been around for some time now. Quick shout out to my loyal readers.
I want to remind everyone that back in August 2014, SpaceX filed two petitions (instituting two separate cases): one for Blue Origin's method claims (Claims 1 through 13) and one for Blue Origin's system claims (Claims 14, 15) in U.S. Patent No. 8,678,321 (the "'321 Patent") More specifically, SpaceX challenged the '321 Patent on grounds that claims 1-13 were anticipated/obvious under Sections 102 and 103; and claims 14 and 15 were obvious under Section 103. At the time that I posted my previous article, Blue Origin's response to the petition was still due. It turns out, they never filed a preliminary response to the petition.
I watch Shark Tank pretty regularly and I always perk up a little when someone mentions that they have a patent. Most of the times, it's not quite true. What most of the contestants have is a pending patent application, and in a majority of those cases, they have a provisional patent application pending. But these contestants come on the show with a lot of confidence because they know that most of the sharks would give more thought to investing into their company once the "patent bomb" is dropped.
If a contestant has a patent application pending and an offer is made, the offer is usually contingent upon receiving a registered patent. This may sound great to a lot of people because the offer is on the table and all you would have to do is get your application registered. But this is not as simple as it sounds. If you have a provisional pending, that means that you will still have to file a non-provisional patent application. Then your non-provisional patent application would need to be examined. If you request expedited examination (which is something you should probably do if you have an investor waiting), then you will receive a final disposition in approximately 12 months. If you don't request an expedited examination and/or you already filed your non-provisional patent application without requesting one, then it could be a couple of years before your application is examined. You can request expedited examination when you file an RCE, however. Then you will get the next final office action within 12 months of filing your RCE.
But back to my main point- you would have to wait a while before seeing that offer through. This can be highly disadvantageous if you need the money right now. Sometimes a shark may offer a loan if a contestant needs the money but usually it's a losing situation for the contestant because he/she has to pay back the loan with interest and/or he/she is still asked to give up a percentage of his/her company. Then it comes down to a business decision. Is the loan worth the business connection and the expertise of a shark?
I usually do a 10-15 minute consultation before taking on a project and a lot of people are worried about patent infringement from the beginning. Not about infringing upon other people's patents, but about others infringing upon their future patent. It's often difficult to answer questions regarding what would happen if someone infringed upon their future patent (when there is not even an application pending). The best that I can respond is to say that I would have to investigate and conduct an infringement analysis to decide whether there is actually an infringement, and if there is: 1) send a cease and desist letter; and/or 2) dive into a lawsuit.
When filing a patent application, the first thing you should be worried about is the patentability of your invention, not patent infringement. This means making sure that your invention: 1) qualifies as a patentable subject matter; and 2) is patentable in light of prior art. There are other things to take into consideration as well of course, such as enablement, statutory bar, and inventorship, among other things, but we won't go into that right now.
How do you know that your invention is patentable? Well, you won't know for sure (even when your application is pending) because the USPTO makes the ultimate decision on whether your invention will be allowed or not, but the best thing to do is to conduct a patent search (before filing a patent application and sometimes even during). And if your patent search comes with a patentability analysis*, then you may be able to identify some novel features of your invention to highlight in your application.