BP/G Radio Intellectual Property Podcast

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Entries Tagged as 'Patents'

Raising the Bar - Patent Reform EPO-Style

March 5th, 2010 · Comments

Guest:  Bjorn Andersson, Strom & Gullikson

Bjrn_01forweb.jpgPatents, or patent procedures, need to be reformed (like a bad child?). At least some people think so. The U.S. Congress is debating various proposals that would, among other things, modify reasonable royalty and willful infringement analyses and let the USPTO set its own fees.  Meanwhile USPTO Director David Kappos is working mightily to unblock the patent backlog.  So what's going in Europe?  The European Patent Office (EPO) is working to "Raise the Bar" for patent quality and prosecution.  Specifically, the EPO has been acting to limit the number of patent claims prosecuted and divisional applications filed.  These seem procedural, but if process ultimately prevents you from getting full scope of patent protection, that's substantive. 

We were fortunate to have Bjorn Andersson, Senior Patent Attorney of Swedish patent firm Strom & Gullikson in our offices for a brief chat.  Bjorn, with S&G CEO Lars Schonbeck in tow, helped us dig in on the EPO reform efforts and figure out the big changes - some of which are going into effect next month.  Along for the ride was fellow M&G lawyer, Dennis Daley with practical thoughts on impact on US patent filers.  Give a listen and see whether the EPO can win the race for patent reform.

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Tags: Uncategorized · Patents · Global IP

SEO and Internet Search Patents: A Chat with Bill Slawski

July 20th, 2009 · Comments

Guest:  Bill Slawski, SEO by the Sea (CEO)

We like SEO (search engine optimization) on BP/G Radio because it raises a number of IP issues – trademarks as key words, corporate and personal “brand,” false advertising and internet search engine patents (see previous discussion with Peter Quale). To keep the conversation going, we called up Bill Slawski, a nationally-recognized SEO consultant/blogger and principal at SEO by the Sea – see: http://www.seobythesea.com/ (this is a great blog).

Bill is a lawyer and former Delaware court administrator who helped move trial court records onto the web. In digging deep on internet search for the court system, he developed a facility with SEO and a fascination with the patented technology that drives search engine function. Search engine patents are often a roadmap of where the technology is going – not just where it has been. And Bill is one of the few SEO (or other) commentators who digs in on search engine patents and finds useful business information. We chatted with Bill about SEO and search engine IP, learning some of the secrets of the giants (Google, Yahoo, MS). While we had Bill on the phone, we also talked public access to court records (always a thorny issue).

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Tags: Patents · SEO

Thrown Under the Bus: Bilski and Patentability of Business Methods

December 16th, 2008 · Comments

Guests: Prof. Tom Cotter of the University of Minnesota Law School; Prof. Carl Moy of William Mitchell College of Law

When is a method of doing something patentable? Specifically, assuming a process is new, useful and non-obvious, what substantive test controls whether the patent law should protect a given process under 35 U.S.C. §101? Courts have struggled to formulate an all purpose test – one that would accommodate the range of technical innovation. Perhaps the inquiry was simpler in times when basic mechanical, electrical and chemical engineering questions were being resolved (such as the vulcanization of rubber – see Goodyear's method patent #3633). There are few, if any, philosophical disputes that the patent system was intended to, and does, cover such inventive processes. The U.S. economy move from a manufacturing base to an information base posed new challenges. Would the system evolve to protect new information and business method innovations - such as a tax refund system?? Sometimes, yes – see H & R Block's U.S. Pat. No. 7,177,829.

In determining whether a given process is patentable, courts have applied various tests, including: (a) “useful, concrete and tangible result” test of State Street Bank (Fed. Cir.'s original effort to resolve business method problem child); (b) Freeman-Walter-Abele test (CCPA jurisprudence); (c) machine-or-transformation (S. Ct. in Benson); and (d) technological arts test (proposed by some Bilski amici). In its en banc Bilski decision, the Federal Circuit has now provided its official position on the matter: the Benson machine-or-transformation test governs exclusively and all the other tests are thrown under the bus (Prof. Moy's phraseology – see below). While the Court was careful to state that there are no bright-line exclusions of business method and software subject matter, the Court also noted that these arts must meet the machine-or-transformation test. Most agree that business method patent practice will be a little trickier going forward (perhaps the Court's intent?).

So now what? Of all the tests, why this one? Further, why use the cleaver of §101 to tighten patent eligibility when the scalpels of §§102, 103 and 112 do just fine? Is this the death of business method and software patents (as some have suggested)? Have we now in fact closed the debate on the patentability of business methods!?! (slight chuckle). Or will it all be resolved with careful claim drafting?

To help part the waters and clear the clouds on this evolving law, we turned to the academy - Prof. Tom Cotter of the University of Minnesota and Prof. Carl Moy of William Mitchell College of Law (each with some pointedly distinct views). We do a quick-fire dissection of the decision, take a quick romp of significant caselaw back to 1850 (when Goodyear was working on rubber), and ponder impact going forward. Joining us as well for a bit of pontification are a few colleagues with particular interest in Bilski (Denise Kettelberger; Rob Kalinsky; Ben Tramm; Al Vredeveld; Eric Chad). Stay tuned for more developments (review by the Supremes?).

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Tags: Patents

The Thunder Down Under: Australia Veers from US on Obviousness

June 7th, 2008 · Comments

NeiIt’s interesting how different countries define legal acts in different ways.  Or maybe it’s just annoying.  For example, how does it serve justice, common sense or clarity in the law to have a particular human act be a felony in one state, a misdemeanor in another, and totally legal in a third (think of the evolving law on medical uses of hemp).  That could be explained by varying acceptance of social conduct between population groups.  But what about more esoteric topics such as the definition of “contract?”  After a few hundred years of jurisprudence, we may have finally gotten to a point where the basic elements of contract formation do not vary wildly between US states.  But step outside the US or put goods into international commerce and now your US-executed contract may not be valid under the CISG (UN Convention on Contracts for the International Sale of Goods).  Better race to the courthouse.

Thankfully, mercifully, decades of effort by international study groups, negotiators, ambassadors and legislatures have resolved all international variances in intellectual property law.  Yes, in the early years of the 21st century, we can look with pride across a global expanse of harmonious and uniform application of patent, trademark and copyright laws. 

And if you’re not laughing out loud, you should be.  Why, take patent law.  We can’t even get international accord on the definition of a patentable invention.  For example, a good incorporating new technology sold once publicly in the US without the benefit of a pending patent application works a worldwide forfeiture of patent rights (for the vast majority of countries requiring absolute novelty).  Maybe there’s a valid policy in pushing inventors to seek protection before commercialization.   But go deeper on what an invention is. 

To be patentable, an invention must be novel and non-obvious.  Or, on the latter point, in different parlance, show an “inventive step.”  On the issue of obviousness in the US, there are widely varying opinions on how different an invention must be from prior art to be a patentable invention (all employing multi-factor tests).  KSR hardly settled the matter.  More inventions are being attacked in the US on obviousness grounds than ever, suggesting greater uncertainty for all concerned.

So in an effort to get some distance from the maelstrom at home, we spoke with Neil Ireland, a patent attorney at the Phillips Ormonde & Fitzpatrick firm in Melbourne, Australia (www.pof.com.au).  Maybe it’s having summer in December that keeps the Australians a little more flexible.  But as Neil shares, their High Court is going in the opposite direction of the US Supreme Court and making it easier to show “inventive step” (non-obviousness).  The High Court, in a widely discussed case, recently reaffirmed that an “inventive step” can be shown with a mere “scintilla” of invention.  See Lockwood Security Products Pty Ltd. v. Doric Products Pty Ltd. (High Court 2007), opinion at http://www.austlii.edu.au/au/cases/cth/high_ct/2007/21.html.  Before you rush to file patent lawsuits in Australia, there is no presumption of patent validity.  Once a patent goes into the Australian federal courts, it’s de novo review.  So your patent will get a hard look no matter what.  Listen carefully as Neil tells all.  Then, we’ll be back shortly with the rest of the answer on international IP harmonization….

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Tags: Patents