Top Stories of the week: EPO Fee Increases; iPad Trademark Dispute; Non Patentable Abstract Ideas; IBM’s Patent Abandonment Strategy; GE Wins Wind Turbine Patent Appeal; Copyright: Law firms Sued for Submitting Prior Art to the USPTO
THE IPAD SAGA CONTINUES AND ROLLS BIGGER: After hearing heated arguments on 22 February, a day later, the Shanghai Pudong New District Court issued a decision refusing an interim injunctive application by Proview Technology Shenzhen Company Limited (“Proview Shenzhen”) – the registered owner of the IPAD trade marks in China, to stop Apple Computer Trading (Shanghai) Company Limited (“Apple Shanghai”) from selling iPad tablets in China. Full update.
METHOD CLAIMS ON AVOIDING TAX LIABILITY FOR PROPERTY PURCHASES ARE NOT PATENT ELIGIBLE: Method claims for a tool enabling property owners to avoid tax liability when buying and selling real estate properties are not eligible for patent protection because they are directed to abstract ideas, the Federal Circuit held February 27, 2012. Fort Properties, Inc. v. American Master lease LLC, Fed. Cir., No. 2009-1242, 2/27/2012. Like the claims in Bilski v. Kappos, the Court explained, the patent claims here disclose an investment tool, particularly a real estate investment tool designed to enable tax-free exchanges of property, which is an abstract concept. The Court was not persuaded that the abstractness of claims as a whole was outweighed by the physicality of legal documents showing real property ownership that must be publicly recorded or by computer implementation of the process. Full judgement.
IBM’S PATENT ABANDONMENT STRATEGY (by Dennis Crouch): It is well known that IBM receives more US patents than any other company. The company also abandons more patents than any other company. Once a patent issues, the patent holder must pay maintenance fees in order to avoid abandonment. Fees are due at 3½, 7½, and 11½ years after issuance and each subsequent fee is substantially higher. Thus, under the current schedule, the first fee is $1,130, the second fee is $2,850, and the third fee is $4,730. In recent years, IBM has abandoned thousands of patents for failure to pay the fee due at 3½ years from issuance. IBM’s rate of abandonment is more than double that of other major patent holders. More details.
GE WINS WIND TURBINE PATENT APPEAL – USITC Must Now Determine Whether to Block Mitsubishi Wind Turbine Imports: GE v.USITC and Mitsubishi (Fed. Cir. 2012); Wind turbine technology is coming into its own. GE and Mitsubishi are both global leaders. Mitsubishi imports wind turbines into the US, and GE filed a complaint with the US International Trade Commission (USITC) alleging infringement of three patents. Patent Nos. 7,321,221, 6,921,985, and 5,083,039. The ‘039 patent expired in 2011 and, because the USITC’s only remedy is injunctive relief to stop ongoing and future infringement, the court has dismissed all charges associated with that expired patent. More details
COPYRIGHT: LAWFIRMS SUED FOR SUBMITTING PRIOR ART TO THE USPTO
- John Wiley & Sons and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff (MBHB) (N.D. Ill.) (Complaint)
- American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg(D.Minn) (Complaint)
The Hoboken publishing company (John Wiley) and the non-profit American Institute of Physics have continued their quest to pursue copyright infringement charges against US patent attorneys who submit copies of journal articles to the US Patent Office during the patent application process. The submission of those documents is required by law and attorneys who fail to submit known and relevant prior art can be subject to ethics charges and the associated patents held unenforceable. Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use. Firms already pay for access to the articles and the USPTO also has its own access to most of the articles. The issue is whether the patent applicants must pay an additional fee for making a copy for the USPTO and an additional copy for the in-house file. More details.
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